`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Universal Remote Control, Inc.
`
` v.
`
`Universal Electronics, Inc.
`
`Case No. IPR2014-01146
`
`Trial Paralegal: Amy Kattula
`
`
`In re Patent of: Paul D. Arling and
`
`Patrick H. Hayes
`
`Patent No.: 8,243,207
`
`Filed: September 29, 2009
`
`Issued: August 14, 2012
`
`Assignee: Universal Electronics Inc.
`
`Title: SYSTEM AND METHOD FOR
`ACTIVITY BASED
`CONFIGURATION OF AN
`ENTERTAINMENT SYSTEM
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO
`on this 24th day of June, 2015
`
`
`
`
`
`
` By: /Jeannie Ngai/
`Jeannie Ngai
`
`{01751471.1}
`
`
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`TABLE OF CONTENTS
`
`I. 
`II. 
`
`INTRODUCTION ...........................................................................................1 
`CLAIM CONSTRUCTION ............................................................................1 
`A.  Broadest Reasonable Interpretation........................................................1 
`B.  Claim Terms For Construction...............................................................2 
`1.  “Device” v. “Appliance” ..................................................................2 
`2.  “activation key”................................................................................2 
`3.  “configuration of the entertainment device” ....................................3 
`III.  Claims 13-15 of the ‘207 Patent Are Anticipated By Dubil ...........................8 
`A.  Claim 13..................................................................................................8 
`1.  Dubil discloses the “configuration of the entertainment device” ....8 
`2.  Dubil discloses associating “a command value corresponding to an
`activity key of a controlling device with a configuration of the
`entertainment”...........................................................................10 
`3.  Dubil discloses “causing the entertainment device to access and
`use the configuration associated with the command value
`corresponding to the activity key of the controlling device in
`response to the entertainment device receiving from the
`controlling device a signal which includes the command value
`corresponding to the activity key of the controlling device.”...11 
`4.  Dubil discloses “downloading the configuration of the
`entertainment device... into the entertainment device from a
`computing device in communication with the entertainment
`device”.......................................................................................12 
`B.  Claim 14................................................................................................13 
`1.  Dubil discloses a “configuration of the entertainment device”......13 
`2.  Dubil discloses “receiving at the entertainment device from a
`controlling device a configuration request signal, wherein the
`configuration request signal includes a command value
`corresponding to an activity key of a controlling device”........14 
`
`{01751471.1}
`
`
`
`- ii -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`3.  Dubil discloses “causing the command value corresponding to the
`activity key of the controlling device included in the
`configuration request signal to be automatically associated with
`a configuration of the entertainment device.”...........................15 
`C.  Claim 15................................................................................................16 
`III.  Conclusion .....................................................................................................17 
`
`
`
`{01751471.1}
`
`
`
`- iii -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`
`
`Cases 
`
`TABLE OF AUTHORITIES
`
`Page
`
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed Cir 1988)................................................................................2
`
`Philips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..........................................................................2, 7
`
`Regulations 
`
`37 C.F.R. §42.100(b) .................................................................................................1
`
`M.P.E.P. 2111.01 ...................................................................................................1, 6
`
`{01751471.1}
`
`
`
`- iv -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`1001*
`
`1002*
`
`1003*
`
`1004*
`
`1005*
`
`1006*
`
`1007*
`
`EXHIBIT LIST
`
`U.S. Patent No. 8,243,207 (filed September 29, 2009) (issued
`August 14, 2012) to Paul D. Arling and Patrick H. Hayes.
`
`Prosecution history of U.S. Patent Application Serial No.
`12/569,161, which matured into the '207 patent.
`Declaration of Jim Geier, In Support of the Petition for Inter
`Partes Review of U.S. patent No. 8,243,207
`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
`
`U.S. Patent Publication No. 2003/0120831 (filed December 20,
`2001) (published June 26, 2003) to Thomas Dubil et al.
`
`"IntelliControl Reference Manual" Version. 8.1, April 2002 by
`Niles Audio Corporation.
`U.S. Patent No. 4,527,204 (filed February 14, 1983) (issued July 2,
`1985) to Daisuke Kozakai.
`
`1008-1045
`
`INTENTIONALLY SKIPPED
`
`1046
`
`1047
`
`Amended Notice of Deposition Of Alex Cook in Case No.
`IPR2014-1146 (Paper 19)
`Decision Institution of Inter Partes Review in Case No IPR2014-
`1146 (Paper 9)( January 9, 2015)
`
`1048-1053
`
`INTENTIONALLY SKIPPED
`
`1054
`
`Transcript of June 17, 2015 Deposition of Alex Cook
`
`Reply Declaration of James T. Geier
`1055
`* Previously filed.
`
`{01751471.1}
`
`
`
`- v -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`Petitioner Universal Remote Control, Inc. ("Petitioner" or "URC") hereby
`
`replies to the Response of the Patent Owner filed on March 25, 2015 (“Response”
`
`Paper 16). The present reply is being timely filed in accordance with the
`
`Scheduling Order (Paper 10) in the above matter and the Joint Stipulation of the
`
`Parties dated May 21, 2015 (Paper 20).
`
`I.
`
`INTRODUCTION
`
`As set forth in detail in the Petition filed July 11, 2014 (Paper 1), and as
`
`acknowledged in the Decision of the Board dated January 9, 2015 (Ex. 1047, Paper
`
`9), claims 13-15 of the ‘207 patent are anticipated by U.S. Patent Publication No.
`
`2003/0120831 to Dubil et al. (“the ‘831 Publication” or “Dubil”, Ex. 1005).
`
`II. CLAIM CONSTRUCTION
`
`A. Broadest Reasonable Interpretation
`
`As the Board recognizes in its Decision, in an inter partes review, claims are
`
`given their broadest reasonable interpretation consistent with the specification. See
`
`Ex. 1047 (Paper 9), p. 6 and 37 C.F.R. §42.100(b). Patent Owner agrees that that
`
`this is the proper standard for claim construction. See Paper 16, p. 2. Under this
`
`standard, the specification is used as a guide to understanding the claim term;
`
`however, it is improper to import limitations from the specification into the claim.
`
`See M.P.E.P. 2111.01 (II) quoting Superguide Corp. v. DirecTV Enterprises,
`
`Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004) (“understanding
`
`{01751471.1}
`
`- 1 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`the claim language may be aided by explanations contained in the written
`
`description, it is important not to import into a claim limitations that are not part of
`
`the claim.”). Further, it is well established that a claim should not be interpreted to
`
`be limited to specific embodiments disclosed in the specification. See Constant v.
`
`Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed Cir 1988) and Philips v.
`
`AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
`
`Patent Owner’s claim construction positions as set forth in its Response
`
`(Paper 16) are inconsistent with all of the tenants of claim construction discussed
`
`above, and thus, must be rejected.
`
`B. Claim Terms For Construction
`
`1. “Device” v. “Appliance”
`
`For the purposes of this Reply, Petitioner will use the meanings of the terms
`
`“device” and “appliance” as well as the terms “entertainment device” and
`
`“controlling device” set forth by the Board in its Decision. See Ex. 1047 (Paper 9),
`
`p. 7.
`
`2.
`
`“activation key”
`
`While Petitioner believes that the Board’s construction of the above term is
`
`narrower than necessary, Petitioner, in the present Reply, will use the construction
`
`set forth by the Board. Id., pp. 8-9.
`
`{01751471.1}
`
`- 2 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`3.
`
`“configuration of the entertainment device”
`
`Neither Petitioner nor Patent Owner proposed this term for construction. In
`
`its Decision, the Board proposed two alternative interpretations of this term and
`
`properly adopted what it deemed to be the broader interpretation. See Ex. 1047
`
`(Paper 9), pp. 9-10. Petitioner respectfully submits that the Board’s
`
`acknowledgement that there are two reasonable interpretations of this claim term,
`
`one of which is broader than the other, de facto requires adoption of the broader
`
`interpretation under the “broadest reasonable interpretation” standard.
`
`Under its “broad” interpretation, the Board concluded that “the
`
`entertainment device and associated input and output appliances are ‘configured’
`
`by selectively powering on and powering off the input and output appliances so
`
`that, for example, only one input appliances supplies an active input signal to the
`
`entertainment device and only one output appliance renders the output signal.” Ex.
`
`1047 (Paper 9), pp. 9-10. Petitioner agrees that a broad construction of this term is
`
`appropriate and that under the proper construction, the claims of the ‘207 patent
`
`are broad enough to cover powering on and powering off an input device and an
`
`output device as suggested by the Board. Ex. 1055, ¶ 18. The ‘207 patent
`
`specification claims and drawings also support the Board’s conclusion and a broad
`
`interpretation of this claim term.
`
`{01751471.1}
`
`- 3 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`Petitioner respectfully submits, however, that the Board’s conclusion
`
`discussed above takes into account claim terms other than “configuration of the
`
`entertainment device.” Accordingly, Petitioner respectfully submits that
`
`“configuration of the entertainment device” simply means “an indication of an
`
`input device to and an output device from the entertainment device."
`
`Petitioner notes that the construction of this term is simplified substantially
`
`in view of the surrounding claim language. In particular, claim 13 itself helpfully
`
`provides a definition for this term consistent with the broad interpretation adopted
`
`by the Board. See Ex. 1001, col. 12, ll. 15-21. (“the configuration of the
`
`entertainment device comprises at least one of the plurality of devices being used
`
`as an audio visual input source device for the entertainment device and at least one
`
`of the plurality of devices being used as an audio visual output destination device
`
`for the entertainment device”). That is, the language of claim 13 makes clear that
`
`the “configuration of the entertainment device” indicates an input source device to
`
`the entertainment device and an output destination device from the entertainment
`
`device. See Ex. 1055, ¶16. This is particularly relevant since, as the Board notes,
`
`“[a] claim construction analysis begins with, and is centered on, the claim language
`
`itself.” Ex. 1047 (Paper 9), p. 6 citing Interactive Gift Express, Inc. v.
`
`Compuserve, Inc., 256 F. 3d 1323, 1331 (Fed. Cir. 2001).
`
`{01751471.1}
`
`- 4 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`The Abstract of the ‘207 patent similarly describes only identification of an
`
`input device and an output device in support of a broad construction of this term.
`
`See Ex 1001, Abstract (“a configuration of an entertainment device in which at
`
`least one of a plurality of devices is selected as an audio visual input source device
`
`for the entertainment device and at least one of the plurality of devices is selected
`
`as an audio visual output destination device for the entertainment device.”). There
`
`is no limitation or requirement in the Abstract, or anywhere else in the ‘207 patent,
`
`regarding how the input device and output device are indicated. See Ex. 1055, ¶17.
`
`The ‘207 patent explains that “certain controlling device command
`
`transmissions to other appliances in the home entertainment system may also be
`
`initiated as a result of said activity key activation, either unilaterally by the
`
`controlling device or at the request of the AV receiver.” Ex. 1001, col. 1, ll. 45-48.
`
`That is, activation of the activity key in the ‘207 patent results in transmission of
`
`commands to appliances of the home entertainment system. See Exhibit 2029, ¶51
`
`and Ex. 1055, ¶19. Such transmission of commands to components supports the
`
`Board’s contention that the entertainment device is configured by turning source
`
`devices and destination devices on and off.
`
`The ‘207 patent further discloses that the activity selection may be used to
`
`invoke a macro “to perform additional entertainment appliance configuration
`
`functions if desired.” Ex. 1001, col. 8, ll. 9-18. That is, the ‘207 patent explicitly
`
`{01751471.1}
`
`- 5 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`teaches that activation of the activity button may result in transmission of
`
`commands to particular devices for configuration, consistent with the Board’s
`
`broad construction of the “configuration of the entertainment device.” This is also
`
`consistent with the Board’s broad construction and the use of on and off commands
`
`to source devices and destination devices to configure the entertainment device.
`
`To the contrary, Patent Owner’s proposed construction of the “configuration
`
`of the entertainment device” violates several principles of claim construction and
`
`cannot be correct as a matter of law. Specifically, Patent Owner’s claim
`
`construction improperly imports additional limitations into the claim. Patent
`
`Owner’s construction requires “affirmatively performing switching actions” (active
`
`switching). See Paper 16, p. 11. This requirement, however, is not present in the
`
`claim language as written, or in the definition of this term provided in claim 13.
`
`As Patent Owner’s expert Alex Cook confirms, none of the words “active”,
`
`“affirmatively” or “switching” appear anywhere in claim 13 of the ‘207 patent.
`
`See Ex. 1054, p, 555, ll. 10-19, 556, ll. 4-7. Patent Owner’s construction
`
`improperly adds these additional limitations into claim 13. As noted above,
`
`importing limitations into the claim is impermissible. See M.P.E.P. 2111.01, II
`
`quoting Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69
`
`USPQ2d 1865, 1868 (Fed. Cir. 2004).
`
`{01751471.1}
`
`- 6 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`Patent Owner’s proposed construction also improperly requires
`
`“transmission of a signal.” Id. Patent Owner stated, and Mr. Cook agreed, that it
`
`is activation of the activity key that “transmits a signal to an entertainment device.”
`
`Paper 16, p. 5 and Ex. 1054, p. 589, ll. 9-17. Transmission of a signal therefore is
`
`not required by the “configuration of the entertainment device” or this term would
`
`be redundant.
`
`Patent Owner cites to certain portions of the specification of the ‘207 patent
`
`that allegedly require “active” or “affirmative switching.” Patent Owner, however,
`
`ignores both the claim language of claim 13 and the broader discussions in the
`
`specification that support the broad interpretation discussed above. In addition, all
`
`of the specific embodiments referred to by the Patent Owner are clearly described
`
`as “exemplary.” See Ex. 1001, Col. 2, ll. 19-20; col. 6, ll. 52-53. Claim terms
`
`should not be limited to specific embodiments discussed in the specification. See
`
`Philips, 415 F.3d at 1323. Further, neither Patent Owner nor Mr. Cook have
`
`identified any portion of the ‘207 Patent that would exclude or contradict the broad
`
`claim construction adopted by the Board, because no such sections exist. See Ex.
`
`1054, p. 572, 10 to p. 573, 4 and Ex. 1055, ¶20. Thus, the broad construction
`
`adopted by the Board is consistent with the specification of the ’207 patent.
`
`In light of the above, Petitioner’s proposed construction, consistent with that
`
`suggested by the Board, is supported by the specification and required by the
`
`{01751471.1}
`
`- 7 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`“broadest reasonable interpretation” standard required in the present proceeding.
`
`Patent Owner’s proposed construction cannot be correct and must be rejected.
`
`III. Claims 13-15 of the ‘207 Patent Are Anticipated By Dubil
`
`Consistent with the Decision of the Board dated January 9, 2015, claims 13-
`
`15 of the ‘207 patent are invalid as anticipated by Dubil.
`
`As set forth at pages 25-35 of the Petition filed July 11, 2015 (Paper 1), U.S.
`
`Patent Publication No. 2003/0120831 to Thomas Dubil et al. (“the ‘831
`
`publication” or “Dubil”, Ex. 1005) discloses all of the limitations of claims 13-15
`
`of the ‘207 patent. Consistent with these arguments, the Board found that
`
`“[p]etitioner has shown a reasonable likelihood of prevailing in establishing that
`
`claims 13-15 are unpatentable under 35 U.S.C. § 102 as anticipated by Dubil.” Ex.
`
`1047 (Paper 9), p. 20.
`
`A. Claim 13
`
`In its Response, Patent Owner identified specific claim terms of claim 13
`
`that are allegedly not disclosed by Dubil. As is described below, and in the
`
`Petition, however, Dubil discloses each and every limitation of claim 13 of the
`
`‘207 patent.
`
`1.
`
`Dubil discloses the “configuration of the entertainment
`device”
`
` Patent Owner contends that Dubil does not disclose the “configuration of
`
`the entertainment device.” This is incorrect. Patent Owner’s argument relies on its
`
`{01751471.1}
`
`- 8 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`improper construction of this term discussed above. See Paper 16, p. 11. Neither
`
`Patent Owner nor its expert provide any opinion as to the disclosure of Dubil
`
`relative to the broader claim construction adopted by the Board. See Ex. 1054, p.
`
`549, ll. 7-14. As the Board has indicated, Dubil discloses this limitation under the
`
`Board's broader construction. Ex. 1047 (Paper 9), pp. 14-15.
`
`While Patent Owner’s construction of this claim term is incorrect, as
`
`explained above, and thus, their arguments based thereon are moot, even if it were
`
`correct, Dubil discloses this limitation. In Fig. 4, Dubil illustrates exemplary
`
`activity sets in which source and destination devices are indicated for a desired
`
`activity. See Ex. 1005, Fig. 4. As Mr. Cook agreed, the “Watch TV” activity may
`
`either use the cable interface or satellite receiver as the input device and either the
`
`television or surround sound (audio system) as the audio output device. See Ex.
`
`1005, Figs. 1 and 4; Ex. 1054, p. 607, ll. 10-15 and p. 611, ll. 3-6 and Ex. 1055,
`
`¶25. The VCR 113 is the only component that is connected to all of these input
`
`and output devices. See Ex. 1005, Fig. 1, Ex. 1055, ¶24 and Ex. 1054, p. 617, ll. 1-
`
`8. Thus, Dubil discloses that the VCR 113 provides switching between the cable
`
`interface and the satellite receiver as source devices and between the TV and
`
`surround sound (audio system) as output destination devices based on the activity
`
`that is selected. See Ex. 1055, ¶25. Thus, Dubil discloses to one skilled in the art
`
`{01751471.1}
`
`- 9 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`the same affirmative switching that Patent Owner requires under its incorrect claim
`
`construction.
`
`2.
`
`Dubil discloses associating “a command value
`corresponding to an activity key of a controlling device with
`a configuration of the entertainment”
`
`Patent Owner argues that the Petition does not make clear how Dubil
`
`discloses this limitation. See Paper 16, p. 13. This is incorrect. Patent Owner’s
`
`statements ignore the explicit description of this feature both in the Petition and in
`
`Mr. Geier’s declaration. See Paper 1, p. 26, Ex. 1003, ¶44, Ex. 1005 ¶ [0031].
`
`Patent Owner’s position also ignores the Board’s agreement that these statements
`
`establish that it was likely that Dubil discloses this limitation. See Ex. 1047 (Paper
`
`9), p. 15.
`
`Dubil discloses an activity set, with an input device and output device
`
`connected to the VCR 113, associated with a key on the remote 150. See Paper 1,
`
`p. 26 and Ex. 1003, ¶44. Patent Owner and Mr. Cook acknowledge that Dubil
`
`discloses pressing one of the activity set keys to transmit “a set of commands to
`
`various home entertainment system components.” See Paper 16, p. 15; Ex, 2029,
`
`¶63 and Ex. 1054, p. 663, ll. 6-13. Patent Owner’s Expert, Alex Cook, also
`
`acknowledges this explicit disclosure in Dubil and agrees that activation of an
`
`activity set key invokes an activity set in Dubil. See Ex. 2029, ¶ 63 and Ex. 1054,
`
`p. 655, ll. 4-8. That is, Patent Owner and Mr. Cook concede that Dubil discloses
`
`{01751471.1}
`
`- 10 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`that pressing an activity set key transmits commands indicating the input device
`
`and output device of the VCR. Id.
`
`In light of the above, Dubil discloses “a command value corresponding to an
`
`activity key of a controlling device with a configuration of the entertainment
`
`device.”
`
`3.
`
`Dubil discloses “causing the entertainment device to access
`and use the configuration associated with the command
`value corresponding to the activity key of the controlling
`device in response to the entertainment device receiving
`from the controlling device a signal which includes the
`command value corresponding to the activity key of the
`controlling device.”
`
`Patent Owner argues that Dubil does not disclose a controlling device that
`
`sends a signal containing a command value to the entertainment device in response
`
`to activation of one of the activity keys in the remote control. See Paper 16, p. 16.
`
`Patent Owner concedes that Dubil discloses that activation of an activity set key on
`
`the remote 150 transmits “a set of commands to various home entertainment
`
`system components,” but incredibly contends that this is done without associating
`
`a command value corresponding to the key with a configuration of the
`
`entertainment device. Paper 16, p. 17. This position simply defies logic. As noted
`
`above, and as Mr. Cook agrees, Dubil discloses that an activity set identifies the
`
`selected input and output devices connected to VCR 113. See Ex. 1054, p. 658, ll.
`
`10-17. Patent Owner and Mr. Cook concede that activation of an activity set key
`
`{01751471.1}
`
`- 11 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`transmits “a set of commands to various home entertainment system components.”
`
`Paper 16, p. 17. Patent Owner yet concludes that no command is transmitted to
`
`select the inputs and outputs. This is simply incorrect. See Ex. 1055, ¶ 26.
`
`Patent Owner then concludes that Dubil cannot “access and use the
`
`configuration associated with the command value corresponding to the activity
`
`key… in response to the entertainment device receiving from the controlling
`
`device a signal.” Paper 16, p. 17. This position, however, ignores the explanation
`
`in the Petition that the VCR 113 selects an input and output device for the activity
`
`prompted by activation of the activation key. Paper No. 1, pp. 27-28. Mr. Cook
`
`acknowledged that activation of the activity key invokes the activity set which is
`
`stored and retrieved. See Ex. 1054, p. 660, ll. 1-10. Thus, the activity set is clearly
`
`associated with a key and actuation of the key accesses the activity set and result in
`
`transmission of commands. See Ex. 1055, ¶26.
`
`Accordingly, Dubil discloses this limitation to one skilled in the art.
`
`4.
`
`Dubil discloses “downloading the configuration of the
`entertainment device... into the entertainment device from a
`computing device in communication with the entertainment
`device”
`
` Patent Owner argues that Petitioner’s argument on this feature is unclear
`
`despite the explanation provided in the Petition and by Mr. Geier. See Paper 1, p.
`
`28 and Ex. 1003, ¶47. As Mr. Cook concedes, Dubil discloses use of a personal
`
`computer to collect information regarding the configuration of the user’s
`- 12 -
`
`{01751471.1}
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`equipment and creates one or more data sets that can be downloaded to the
`
`equipment. See Paper 1, p. 28; Ex 1005, ¶[0034]; Ex. 1054, p. 679, ll. 18-25.
`
`The use of the term “user’s equipment” in Dubil does not exclude the VCR
`
`113. VCRs are programmable and may be used to store instruction information.
`
`See Ex. 1054, p. 685, l. 16 to p. 686, l4. 1 and p. 683, l. 16 to p. 684, l. 4. Mr.
`
`Cook agrees that Dubil discloses downloading configuration information. Ex.
`
`2029, ¶74. Mr. Cook also acknowledges that Dubil does not require that this
`
`information be stored in any particular component. See Ex. 1054, p.660, l. 11 to
`
`661, l. 10. Thus, contrary to Patent Owner’s argument, Dubil teaches downloading
`
`the configuration information to the VCR. See Ex. 1003, ¶¶47-48.
`
`Accordingly, Dubil discloses this feature to one skilled in the art.
`
`B. Claim 14
`
`Patent Owner contends that Dubil does not anticipate claim 14 because it
`
`allegedly does not disclose certain features thereof. This is incorrect.
`
`1.
`
`Dubil discloses a “configuration of the entertainment
`device”
`
`Patent Owner relies exclusively on its improper construction of this
`
`limitation in its argument that this element of claim 14 is not disclosed by Dubil.
`
`See Paper 16, p. 20. Neither Patent Owner nor Mr. Cook provides any analysis of
`
`this term under the proper construction adopted by the Board (see Ex. 1054, p. 549,
`
`ll. 7-14), presumably because Dubil does disclose this feature as explained above
`
`{01751471.1}
`
`- 13 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`with respect to claim 13. Further, as noted above, even under the improper
`
`construction advanced by Patent Owner, Dubil discloses this limitation.
`
`2.
`
`Dubil discloses “receiving at the entertainment device from
`a controlling device a configuration request signal, wherein
`the configuration request signal includes a command value
`corresponding to an activity key of a controlling device”
`
`Patent Owner argues that the Petition does not make clear how Dubil
`
`discloses this feature despite the explanation provided at pages 31-32 of the
`
`Petition and Mr. Geier’s statements in support thereof. See Paper 1, pp. 31-32 and
`
`Ex. 1003, ¶50. Dubil teaches that the VCR 113 is configured to use the desired
`
`input device and output device and receives a signal associated with the requested
`
`configuration. See Paper 1, p. 31 and Ex. 1003, ¶ 50.
`
`Patent Owner and Mr. Cook acknowledge that activation of an activity set
`
`key of the remote control in Dubil invokes the activity set and transmits “a set of
`
`commands to various home entertainment system components.” See Ex. 2029, ¶63
`
`and Ex. 1054, p. 663, ll. 6-13. In light of this admitted disclosure, Patent Owner’s
`
`position that the VCR does not receive a signal defies logic. See Ex. 1055, ¶ 26.
`
`In light of the above and the pages 31-32 of the Petition, Dubil discloses this
`
`feature of claim 14.
`
`{01751471.1}
`
`- 14 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`3.
`
`Dubil discloses “causing the command value corresponding
`to the activity key of the controlling device included in the
`configuration request signal to be automatically associated
`with a configuration of the entertainment device.”
`
`Patent Owner again relies on its incorrect interpretation of the “configuration
`
`of the entertainment device” in support of its incorrect argument that this feature is
`
`not disclosed in Dubil. Since Patent Owner’s construction of this term is incorrect
`
`and the Board has acknowledged that under the correct construction, Dubil
`
`discloses this feature, and there is no need to address this portion of Patent
`
`Owner’s argument.
`
`Patent Owner also relies on its argument above to conclude that Dubil does
`
`not disclose a remote control that transmits a configuration request signal to the
`
`entertainment device and argues that Dubil cannot meet any limitation that
`
`includes a “configuration request signal.” This is simply incorrect since it not only
`
`relies on Patent Owner’s flawed claim construction, but Dubil actually discloses
`
`the “configuration of the entertainment device” even under Patent Owner’s
`
`construction, as explained above.
`
`Patent Owner further argues that Petitioner failed to point out any portion of
`
`Dubil in which the activity set of keys causes the remote control to automatically
`
`transmit a signal to the VCR 113 that contains a command value. Paper 16, p. 25.
`
`This is incorrect. As noted above, and as conceded by Mr. Cook, Dubil discloses
`
`that activation of an activity set key invokes the activity set and transmits “a set of
`- 15 -
`
`{01751471.1}
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`commands to various home entertainment system components,” which would
`
`include the VCR 113. See Ex. 2029, ¶63; Ex. 1054, p. 663, ll. 6-13; Paper 16,
`
`p. 15 and Ex. 1055, ¶26.
`
`In light of the above and the pages 33-34 of the Petition, Dubil discloses this
`
`feature of claim 14.
`
`Patent Owner offers no argument with respect to the remaining features of
`
`claim 14, and thus, presumably agrees that Dubil discloses these features.
`
`C. Claim 15
`
`Patent Owner contends
`
`that Dubil does not disclose “causing the
`
`entertainment device to display in a display associated with the entertainment
`
`device, in response to receiving the configuration request signal, a graphical user
`
`interface for allowing a user to select at least one of the plurality of devices to be
`
`used in the configuration for the entertainment device,” as required by claim 15.
`
`This is incorrect.
`
`Mr. Cook conceded during his deposition that one skilled in the art would
`
`understand Dubil to disclose selecting components for an activity on a display by
`
`manipulation of objects on a graphical user interface. See Ex. 1054, p. 712, ll. 9-
`
`19. Mr. Cook further conceded that Dubil discloses at least two display devices
`
`that illustrate activity sets. See Ex. 1054, p. 715, ll. 4-8 and p. 718, ll. 12-17.
`
`{01751471.1}
`
`- 16 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`These displays are associated with the VCR 113, which is controlled based on the
`
`activity set. See Ex. 1055, ¶27.
`
`Contrary to Patent Owner’s position, its own expert has admitted that Dubil
`
`discloses “causing the entertainment device to display in a display associated with
`
`the entertainment device, in response to receiving the configuration request signal,
`
`a graphical user interface for allowing a user to select at least one of the plurality
`
`of devices to be used in the configuration for the entertainment device.”
`
`Patent Owner makes no comment regarding the remaining limitations of
`
`claim 15 and thus presumably agrees that they are disclosed by Dubil.
`
`III. Conclusion
`
`In light of the above, Dubil discloses all of the limitations of claims 13-15 of
`
`the ‘207 patent and the Board should invalidate these claims.
`
`
`
`
`
`
`Date: June 24, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Douglas A. Miro/
`Douglas A. Miro
`Reg. No. 31,643
`OSTROLENK FABER LLP
`1180 Avenue of the Americas
`Seventh Floor
`New York, NY 10036
`(212) 382-0700
`Counsel for Petitioner
`
`{01751471.1}
`
`- 17 -
`
`

`

`Case No.: IPR2014-1146
`
`
`
`U.S. Patent No. 8,243,207
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the below date, I caused the
`
`foregoing to be served upon the following counsel of record via electronic mail
`
`(with counsel’s agreement):
`
`Eric J. Maiers, Reg. No