IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In re Application of: Paul D. Arling
`and Patrick H. Hayes
`
`Universal Remote Control, Inc.
`
`Patent No.: 8,243,207
`
`V.
`
`Filed: September 29, 2009
`
`Universal Electronics, Inc.
`
`Issued: August 14, 2012
`
`Case No. IPR2014-01146
`
`Assignee: Universal Electronics Inc.
`
`Trial Paralegal: Amy Kattula
`
`Title: SYSTEM AND METHOD
`
`FOR MONITORING REMOTE
`
`CONTROL TRANSMISSIONS
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`REPLY DECLARATION OF JAMES T. GEIER
`
`Back
`
`1. My name is James T. Geier. My prior experience and education are
`
`summarized in my previously filed declaration in the above matter dated July 10,
`
`2014 (Ex. 1003). A copy of my current CV is attached hereto as Appendix A.
`
`2.
`
`I have been retained in this matter by Universal Remote Control, Inc.
`
`("Petitioner" or "URC") to rebut the analysis and opinion provided by 1\/Ir. Alex
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`‘
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`Cook in his declaration filed on March 25, 2015 (Ex. 2029) and certain statements
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`made by Patent Owner in the Response of the same date (Paper 12).
`
`3.
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`I am being compensated at the rate of $300 per hour for my work. My fee
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`is not contingent on the outcome of any matter or on any of the technical positions
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`I explain in this declaration. I have no financial interest in Petitioner.
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`4.
`
`I still have no financial interest in the Patent Owner or the ’207 patent nor
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`to my recollection have I ever had any contact with the Patent Owner, or the
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`inventors of the '207 patent, Paul Arling or Patrick Hayes.
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`5.
`
`I have carefully reviewed the Patent Owner’s Response (Paper 12) and
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`the declaration of l\/Ir. Cook (Ex. 2029) in support thereof as well as his deposition
`
`testimony related to his declaration (Ex. 1054).
`
`6.
`
`For convenience, all of the information that I considered in arriving at my
`
`opinions is listed in Appendix B.
`
`7.
`
`l\/Ir. Cook and I generally agree on the relevant field of the '207 Patent as
`
`set forth in paragraph 15 of my prior declaration. See Ex. 1003, 1115 and Ex. 2029,
`
`1116.
`
`8. As previously noted, I have extensive experience in the relevant field,
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`including experience relating to wireless communications and configuration of
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`system components.
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`‘
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`9. As previously explained, I have been informed that "a person of ordinary
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`skill in the relevant field" is a hypothetical person to whom an expert in the
`
`relevant field could assign a routine task with reasonable confidence that the task
`
`would be successfully carried out. I have been informed that the level of skill in the
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`art is evidenced by the prior art references. As I previously noted, the prior art
`
`discussed herein demonstrates that a person of ordinary skill in the art, at the time
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`the ’207 patent was filed, would have a bachelors degree in electrical engineering,
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`telecommunications, or computer science (or an equivalent degree) with two years
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`experience in the communications industry and was aware of programmable
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`universal remote controls, home systems with components controllable by remote
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`controls and/or other components and configurable setups for the home systems.
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`l\/Ir. Cook apparently agrees that these qualifications would be common to one of
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`skill in the art. See Ex. 2029, 1ll8.
`
`10.
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`l\/Ir. Cook, however, indicated that one of skill in the art must also have
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`“design experience with universal remote controls as well as direct user experience
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`with home entertainment systems and the unique problems presented in dealing
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`with a system of components, designed for different components and supplied by
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`different manufacturers.” Id.
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`I disagree that one of ordinary skill in the art would
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`need these additional qualifications.
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`11. As is recognized in the ‘207 patent, universal remote controls that
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`‘
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`controlled multiple components of an entertainment system were well known and
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`used at the time of the invention disclosed in the ‘207 patent such that the design of
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`the remote control itself is not relevant. See Ex. 1001, col. 1, 11. 7-13.
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`12.
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`The approach to system control taken in the ‘207 patent is no different
`
`than that taken when controlling any multi-component system, which would have
`
`been well known to anyone with the education and industry experience that 1\/Ir.
`
`Cook and I both agree would be common to one skilled in the art. See 11 9, infra
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`and Ex. 2029,1118.
`
`13. Nonetheless, even assuming the unnecessarily high level of skill that 1\/Ir.
`
`Cook requires, one skilled in the art would understand that the ‘831 publication
`
`discloses all of the features of claims 13-15. That is, the higher level of skill
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`required by one of ordinary skill in the art in accordance with 1\/Ir. Cook’s
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`experience would not affect my opinion that the ‘831 publication, as understood by
`
`one skilled in the art, discloses all of the limitations of claims 13-15 of the ‘207
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`patent as set forth in my prior declaration dated July 2014 in this matter. See Ex.
`
`1003.
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`14.
`
`Based on my experience, I have an established understanding of the
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`relevant field in the relevant timeframe and qualify as at least one of ordinary skill
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`in the art even in view of 1\/Ir. Cook’s inappropriately high skill level requirement
`
`for one of ordinary skill in the art.
`
`-
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`15.
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`In its Decision to Institute Trial, the Board identified the term
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`“configuration of the entertainment device” as a common term in each of claims
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`13, 14 and 15 that required construction. See Ex. 1046 (Paper 10), p. 9. Neither
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`Patent Owner nor Petitioner previously identified this term as requiring
`
`construction.
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`16.
`
`Based on my review of the ‘207 patent, I believe that the meaning of this
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`term is clear in view of the plain language of the claims. Specifically, claim 13
`
`specifies “the configuration of the entertainment device comprises at least one of
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`the plurality of devices being used as an audio visual input source device for the
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`entertainment device and at least one of the plurality of devices being used as an
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`audio visual output destination device for the entertainment device.” Ex. 1001,
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`col. 12, 11. 15-20. That is, this term merely requires indicating at least one input
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`device to the entertainment device and at least one output device of the
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`entertainment device.
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`17.
`
`Based on my review of the ‘207 patent, neither the claim language nor
`
`the specification of the ‘207 explicitly limits how the indication of the input device
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`and the output device is implemented.
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`18.
`
`I agree with the Board’s conclusion that as properly construed, the
`
`entertainment device and associated input and output appliances may be
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`‘configured’ by “selectively powering on and powering off the input and output
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`‘
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`
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`appliances so that, for example, only one input appliances supplies an active input
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`signal to the entertainment device and only one output appliance renders the output
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`signal.” Paper 10, pp. 9-10.
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`19.
`
`Consistent with the Board’s conclusion, the ‘207 patent explicitly teaches
`
`that activation of the activity key may result in transmission of commands to
`
`appliances in the home entertainment system. See Ex. 1001, col. 1, 11. 45-47. That
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`is, the ‘207 patent discloses that activation of the activity key may trigger
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`transmission of commands to control appliances in the entertainment system, such
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`as powering source devices and destination devices on and off as suggested by the
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`Board.
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`20.
`
`Based on my review of the ‘207 patent, I see no language that would
`
`exclude the the broad interpretation of the term “configuration of the
`
`entertainment device” applied by the Board in its Decision and discussed above.
`
`21.
`
`In home entertainment systems, there are multiple configurations of
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`input, or source, devices and output, or destination, devices that may be used to
`
`accomplish various desired activities. For instance, if a user wants to watch a
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`movie, a chosen input/device could be the DVD player, and the chosen
`
`output/destination device could be the TV. Alternatively, if the user wants to listen
`
`to music, the input/source could be the tuner, and the output/destination could be
`
`the amplifier.
`
`‘
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`22.
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`Fig. 1 of the ‘831 publication illustrates an exemplary home
`
`entertainment system including multiple devices which can be configured in
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`various configurations using different source devices and different destination
`
`devices. See Ex. 1005, Fig. 1 and paragraph 0017. The ‘831 publication refers to
`
`the particular components that support a user activity as an activity set. Ex. 1005 ,
`
`paragraph 0018.
`
`23.
`
`It is my understanding, as one skilled in the art, that the cable interface
`
`114 and the satellite receiver 115 are connected to the VCR 113 and may be
`
`selected as input source devices thereto. Similarly, the television 110 and the
`
`audio system 111 are connected the VCR and may be used as output destination
`
`devices thereof. See Ex, 1005, Fig. 1 and paragraph 0017. The lines used in Fig. 1
`
`to connect these devices are conventionally used to show such connections
`
`between components.
`
`24.
`
`It is my understanding, as one skilled in the art, that Fig. 4 of the ‘831
`
`publication illustrates different configurations (activity sets) of input and output
`
`devices that are used to perform certain activities desired by the user. See Ex.
`
`1005, Figs. 1 and 4 and paragraphs 0014 and 00028. As illustrated in Fig. 4, the
`
`Watch TV activity may use either cable interface 114 or the satellite receiver 115
`
`as an input source device and either the television 110 (TV) or the audio system
`
`111 (Surround) as an output destination device. The VCR 113 is the only device
`
`
`-
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`that is connected to all of these input and output devices and routes information
`
`among all of the input and output devices.
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`25.
`
`In light of the above, it is my understanding that the ‘831 publication
`
`discloses that the VCR 113 will select either the cable interface 114 or the satellite
`
`receiver 115 as an input device and the television 110 (TV) or the audio system
`
`111 (Surround) as an output device for audio, at least, based on the specific activity
`
`that is desired.
`
`26.
`
`The ‘831 publication discloses that activation of a key on the remote
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`control 150 invokes the desired activity (activity set). Ex. 1005, paragraph 0031.
`
`Activation of this key also results in transmission of commands to components of
`
`the entertainment system, as Patent Owner acknowledges in its Response. See
`
`Paper 16, p. 17. Based on the above, these commands, which are associated with
`
`the activity set are retrieved, including commands sent to the VCR 113 to provide
`
`the desired input device and the desired output destination device for the activity.
`
`27.
`
`The ‘831 publication also discloses that an activity set may be built or
`
`selected by manipulating graphic objects. Ex. 1005 , paragraph 0035.
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`Manipulation of graphic objects would take place on a display screen using some
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`sort of graphical user interface, as l\/Ir. Cook acknolwedges. Ex. 1054, p. 711, l. 19
`
`to p. 712, l. 8. The ‘831 publication discloses a display device that dispays a menu
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`related to the activity set. Ex. 1005 , paragraph 0031. In addition, the ‘831
`
`‘
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`publication discloses a personal computer, which would typically have a display
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`device, as Mr. Cook acknowledges. Ex. 1054, p. 718, 11. 12-17. In either case, it is
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`my understanding as one skilled in the art that the display is associated with the
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`VCR 113 which is used to invoke the activy set that is either set up or otherwise
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`displayed on these display elements.
`
`
`
`Availabili for Cross-Examination
`
`28.
`
`In signing this declaration, I recognize that the declaration may be filed
`
`as evidence in a contested case before the Patent Trial and Appeal Board of the
`
`United States Patent and Trademark Office. I also recognize that I may be subject
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`to cross examination in the case and that cross examination will take place within
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`the United States. If cross examination is required of me, I will cooperate to the
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`best of my ability to appear for cross examination within the United States during
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`the time allotted for cross examination.
`
`Right to Supplement
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`29.
`
`I reserve the right to supplement my opinions in the future to respond to
`
`any arguments that the Patent Owner raises and to take into account new
`
`information as it becomes available to me.
`
`Jurat
`
`30.
`
`I declare that all statements made herein of my own knowledge are true
`
` ‘
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`and that all statements made on information and belief are believed to be true; and
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`further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code.
`
`31.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`James T. Geier
`
`Dated: June 24, 2015
`
`
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`APPENDIX A
`
`James T. Geier
`
`CONTACT INFORMATION
`
`Name: James T. Geier
`
`Title: Principal Consultant
`Company: Wireless—Nets, Ltd.
`Address: 685 North Enon Road, Yellow Springs, Ohio 45387 U.S.A.
`Email: jimgeier@wireless—nets.com
`Cell Phone: +1 937-829-0008
`Website: wvvvv.wireless—nets.com
`
`PROFILE
`
`James Geier has 30 years experience in the communications industry designing, analyzing and
`implementing communications systems, wireless networks, and mobile devices. James is the author of
`over a dozen books on mobile and wireless topics, such as including Designing and Deploying 802.11n
`Wireless Networks (Cisco Press), Implementing 802.1X Security Solutions (Wiley), Wireless Networking
`Handbook (New Riders) and Network Re—engineering (McGraw—Hill). He has been an active participant
`within IEEE standards organizations, such as the IEEE 802.11 Working Group and the Wi—Fi Alliance. He
`has sen/ed as Chairman of the IEEE Computer Society, Dayton Section, and various conferences.
`
`PROFESSIONAL EXPERIENCE
`
`President, CEO, and Cofounder — Health Grade Networks LLC. (Aug 2014 — present)
`o
`Provides strategic direction and management of the company implementing wireless network
`solutions for customers.
`
`Principal Consultant and Founder — Wire/ess—Nets, Ltd. (Apr 2000 — present)
`o Designs mobile devices, such as smart phones, and implemented corresponding softwarel
`firmware for various startup firms.
`o Designs and integrates Wi—Fi, Bluetooth and Ethernet transceivers into mobile devices, such as
`smart phones, hospital patient monitors, cable T.V. boxes, and bar code scanners.
`
`Product Engineer I Manager — Monarch Marking Systems (Aug 1996 — Mar 2000)
`o Designed and implemented RF radios for Monarch‘s bar code scanners and printers.
`o
`Integrated Ethernet transceivers into tabletop printers.
`o Designed and implemented wireless middleware software for improving performance between
`mobile wireless devices and application servers.
`o Designed and implemented wireless network infrastructures for wireless bar code scanners and
`portable printers used in retail and manufacturing applications.
`
`(Mar 1994 to Jul 1996)
`Senior Systems Engineer — TASC, Inc.
`o Designed and implemented an enterprise—wide Ethernet and wireless network for Dayton Power
`and Light to support the migration from mainframe to client/sen/er systems.
`o Designed an information system architecture that supports internal and external communications
`forthe U.S. Navy‘s NSSN attack submarine.
`o Analyzed requirements for hardware, software, and support of the Joint Logistics Systems Center
`(JLSC) Materiel Management Standard System (MMSS) for the combined U.S. militaries.
`
`Senior Systems Engineer - Adroit Systems, Inc. (Aug 1992 to Feb 1994)
`o Researched and analyzed emerging wireless network technologies as part of the Department of
`Defense Airborne Reconnaissance Data Link Architecture (ARDA) study, supporting
`communications for airborne systems.
`
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`o Designed a software tool that aids network engineers in planning, upgrading and maintaining
`shipboard computer networks — based on a Small Business Innovative Research (SBIR)
`government grant obtained from the U.S. Navy.
`
`Systems Design Engineer — Information Systems Center, Captain U. S. Air Force (Sep 1990- Jun 1992)
`o
`Evaluated the effectiveness of wireless LAN technology for use in mobile and portable military
`environments.
`
`o Represented the Air Force as part of the IEEE 802.11 Wireless LAN standards development.
`o Designed and implemented large—scale LANs and WANs for various government organizations.
`
`Systems Test Engineer — AFCC Operational Test and Evaluation Center, Lieutenant U. S. Air Force (Sep
`1986 — May 1989)
`o
`Performed analog, digital, and protocol tests on various government wireless computer networks.
`o Developed testing approaches and methods.
`
`Communications Systems Engineer — 75th TCF, U. S. Air Force (Dec 1977 — Jun 1983)
`o
`Performed acceptance testing of newly—designed radar systems.
`o Maintained automatic tracking radar systems in support of tactical Air Force operations
`worldwide.
`
`EDUCATION
`
`M.S., Electrical Engineering, Air Force Institute of Technology (1990) —thesis involved designing and
`implementing a wireless mesh network for the U.S. Department of Defense.
`
`B.S., Electrical Engineering, California State University (1985)
`
`M.B.A, University of Phoenix (2001)
`
`MILITARY EXPERIENCE
`
`U.S. Air Force, Dec 1977 — Jun 1992, Commissioned Officer.
`
`BOOK PUBLICATIONS
`
`o Designing and Deploying 802.11ac Wireless LANs, Cisco Press, 2015.
`
`o Designing and Deploying 802.11n Wireless LANs, Cisco Press, 2010.
`
`o
`
`Implementing 802. 1x Security Solutions, Wiley, 2008.
`
`o Deploying Voice over Wireless LANs, Cisco Press, 2007.
`
`o
`
`o
`
`o
`
`Computer Security, Wiley, 2007.
`
`Computer Transfer and Backup, Wiley, 2007.
`
`CC/E Routing and Switching — Official Exam Cortication Guide, 2nd Edition, Cisco Press, 2006.
`
`o Wireless Networks — 5-minute Fixes, Wiley, 2006.
`
`o
`
`PCs — 5-minute Fixes, Wiley, 2006.
`
`o Wireless Networks — First Step, Cisco Press, 2005 (translated to Chinese, French, Hungarian,
`Italian, Korean, Polish, Portuguese, and Romanian).
`
`o
`
`Certified Wireless Analysis Professional — Official Study Guide, McGraw—Hill, 2004.
`
`o Wireless LANs, 2nd Edition, SAMs, 2001.
`
`o Wireless LANs, Macmillan Technical Publishing, 1999.
`
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`o Wireless Networking Handbook, Macmillan (New Riders) Publishing, 1996.
`
`o Network Re—Engineering, McGraw—Hill, 1996.
`
`INDUSTRY AFFILIATIONS
`
`Chairman, IEEE Computer Society - Dayton Section:
`o Managed the 900—member organization and established a continuing education program
`
`Chairman, IEEE International Conference on Wireless LAN Implementation:
`o Managed all aspects of the conference from 5/91 to 12/92.
`
`Member, Wi-Fi Alliance
`o
`Voting member of the Wireless ISP for Roaming (WlSPr) committee.
`
`IEEE 802.11 Wireless LAN Working Group
`o Represented interests of the Department of Defense for dealing with applications and frequency
`allocations.
`
`TEACHING EXPERIENCE
`
`U.S. Naval Post Graduate School
`
`o Developed and regularly instructed a course on wireless network design and security to students
`and faculty.
`
`Wright State University
`o
`Periodically instructed graduate courses on computer communications.
`
`USAF Test and Evaluation School
`
`o Developed and instructed a 240 hour training course on wireless system test and evaluation.
`
`Conferences
`
`o
`
`Regularly gives presentations at international conferences, including Supercomm (Asia),
`Scantech (Germany), and IBC (England).
`
`lnfocomm Solutions
`
`o Developed and instructed workshops in India, Singapore and Malaysia on wireless network
`implementation.
`
`Technology Training Corporation (TTC)
`o Developed and instructed international training courses in Mexico and South America on wireless
`networking and network re—engineering.
`
`Educational Services Institute
`
`o Developed and instructed courses on software project management, software testing, system
`integration and network re—engineering as part of the Project Management Institute (PMI) Project
`Management Professional (PMP) certification program.
`
`Onsite Training
`o
`Regularly instructs workshops on wireless network design and deployment for product
`developers, system integrators, hospitals, and enterprises worldwide.
`
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`LITIGATION RELATED EXPERIENCE
`
`Cases where James Geier has provided testimony at depositions and trials:
`
`Skyhook v. Google
`
`Law firm: Tensegrity
`
`Disclosed as testifying expert on behalf of the plaintiff (Skyhook) in 2012. Analyzed case documents and
`software regarding Wi—Fi—based location systems; wrote an expert report (and deposed) based on
`infringement. Case settled.
`
`MTEL v. UPS
`
`Law firm: Reed & Scardino
`
`Disclosed as testifying expert on behalf of the plaintiff (MTEL) in 2014. Analyzed prior art and case
`documents regarding express mail delivery notifications; wrote an expert report (and deposed) based on
`validity.
`
`Motorola v. Microsoft
`
`Law firm: Sidley Austin
`
`Disclosed as testifying expert on behalf of the defendant (Microsoft) in 2012. Analyzed prior art and case
`documents regarding data addressing and update mechanisms; wrote expert reports based on invalidity
`and indirect non—infringement analysis; deposed on each report; testified at the International Trade
`Commission (ITC) in December 2012. Case settled.
`
`Motorola v. Microsoft
`
`Law firm: Sidley Austin
`
`Disclosed as testifying expert on behalf of the defendant (Microsoft) in 2011. Analyzed prior art and case
`documents regarding security / encryption protocols; analyzed product firmware, wrote expert reports
`based on invalidity and non—infringement analysis; deposed on each report; testified at the International
`Trade Commission (ITC) in January 2012. Case settled.
`
`Motorola v. Microsoft
`
`Law firm: Sidley Austin
`
`Disclosed as testifying expert on behalf of the defendant (Microsoft) in 2011. Analyzed prior art and case
`documents regarding application registry and data update technologies; wrote expert reports based on
`invalidity and non—infringement analysis; deposed on each report. Case settled.
`
`Autocell v. Cisco Systems
`
`Law Firm: Hanify & King
`
`Disclosed as testifying expert on behalf of the plaintiff (Autocell) in 2010. Analyzed patents, prior art and
`case documents regarding transmit power control of 802.11 radios and access points; performed lab and
`field testing of alleged infringing products; analyzed product firmware; wrote expert reports based on
`infringement and validity analysis; deposed on each report. Case settled.
`
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`Truckstop.Net v. Sprint Communications
`Law Firm: Holland & Hart
`
`Disclosed as testifying expert on behalf of the plaintiff (Truckstop.Net) in 2004. Reviewed case
`documents; performed testing of 802.11 signal coverage and performance at truck stops located
`throughout the U.S.; wrote expert reports based on test results and review of case documents; deposed
`on each report. Case settled.
`
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`APPENDIX B
`
`Information Considered
`
`The following is a list of materials that I consider in forming my
`
`opinions discussed in the declaration:
`
`1.
`
`U.S. Patent No. 8,243,207 (filed September 29, 2009) (issued August
`
`14, 2012) to Paul D. Arling and Patrick H. Hayes.
`
`2.
`
`Prosecution history of U.S. Patent Application Serial No. 12/569,161,
`
`which matured into the '207 patent.
`
`3.
`
`First Amended Complaint for patent Infringement in Universal
`
`Electronics Inc. v. Universal Remote Control, Inc., Civil Action No.
`
`SACV 13-00984, dated July 22, 2013.
`
`4.
`
`U.S. Patent Publication No. 2003/0120831 (filed December 20, 2001)
`
`(published June 26, 2003) to Thomas Dubil et al.
`
`5.
`
`"IntelliControl Reference Manual" Version. 8.1, April 2002 by Niles
`
`Audio Corporation.
`
`6.
`
`U.S. Patent No. 4,527,204 (filed February 14, 1983) (issued July 2,
`
`1985) to Daisuke Kozakai.
`
`7.
`
`Decision Institution of Inter Partes Review in Case No IPR2014-1146
`
`(Paper 9)( January 9, 2015)
`
`Universal Remote Control Exhibit 1055: Page 16
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`8.
`
`9.
`
`Patent Owner Response in Case No. IPR2014-1146 (March 25 , 2015)
`
`Declaration of Alex Cook (Ex. 2029)
`
`10.
`
`Transcript of June 17, 2015 Deposition of Alex Cook
`
`-2 Universal Remote Control Exhibit 1055: Page 17
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