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
`
`
`
`Petition for Inter Partes Review under
`
`Patent No.: 8,243,207
`
`35 U.S.C. §§ 311–319
`
`and 37 C.F.R. § 42.100 et seq.
`
`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
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,243,207
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`In re Application of: Paul D. Arling
`
`
`
`and Patrick H. Hayes
`
`
`
`Petition for Inter Partes Review under
`
`Patent No.: 8,243,207
`
`35 U.S.C. §§ 311–319
`
`and 37 C.F.R. § 42.100 et seq.
`
`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
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,243,207
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`I.
`
`EXHIBIT LIST ............................................................................... iv
`
`MANDATORY NOTICES ..............................................................1
`
`A. Real Party-In-Interest .................................................................1
`
`B. Related Matters ............................................................................1
`
`C. Lead and Back-Up Counsel.........................................................2
`
`D. Service Information .....................................................................3
`
`II.
`
`PAYMENT OF FEES.......................................................................3
`
`III.
`
`REQUIREMENTS FOR INTER PARTES REVIEW...................3
`
`A. Grounds For Standing .................................................................4
`
`B. Identification of Challenge ..........................................................4
`
`1. Claims for which inter partes review is requested ............4
`
`2. The specific art and statutory grounds on which the
`challenge is based .................................................................5
`
`3. How the challenged claims are to be construed ................6
`
`4. How the construed claims are unpatentable under the
`statutory grounds identified in 37 C.F.R. § 42.104(b)(2) .7
`
`5. Supporting evidence relied upon to support the challenge
`................................................................................................7
`
`IV.
`
`SUMMARY OF THE '207 PATENT..............................................7
`
`A. Summary Of The Prosecution History of the '207 Patent .......9
`
`V.
`
`DETAILED CLAIM CONSTRUCTION.................................... 10
`
`A. Construction of Terms.............................................................. 10
`
`B. "Device" vs. "Appliance"......................................................... 10
`
`C. "Activity Key"........................................................................... 11
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`- ii -
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`VI.
`
`THERE IS A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE '207 PATENT IS
`UNPATENTABLE ........................................................................ 12
`
`A. Claims 12-15 of the '207 Patent Are Unpatentable Over the
`'831 Publication......................................................................... 12
`
`B. Claims 12-15 Are Unpatentable Over Niles in View of the '831
`Publication and/or the '204 Patent.......................................... 13
`
`VII. DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE.............................................. 15
`
`A. Description of the Prior Art ..................................................... 15
`
`1. U.S. Patent Publication No. 2003/0120831 (the "'831
`publication," Exhibit 1005).............................................. 15
`
`2. Niles IntelliControl Reference Manual ("Niles," Exhibit
`1006) ................................................................................... 17
`
`3. U.S. Patent No. 4,527,204 (the "'204 patent," Exibit
`1007) ................................................................................... 18
`
`B. Detailed Grounds for Unpatentability Arguments........ 18
`
`1. Ground 1: Claims 12-15 Are Anticipated by the '831
`Publication Under 35 U.S.C. § 102, and if not
`Anticipated, Are Rendered Obvious by the '831
`Publication Under 25 U.S.C. § 103.................................. 18
`
`2. Ground 2: Claims 12-15 Are Unpatentable as Obvious
`Over Niles Alone or in View of the '831 Publication
`and/or the '204 Patent Under 35 U.S.C. § 103(a)........... 35
`
`VIII. CONCLUSION .............................................................................. 53
`
`
`
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`- iii -
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`I.
`
`EXHIBIT LIST
`
`1001. U.S. Patent No. 8,243,207 (filed September 29, 2009) (issued August 14,
`
`2012) to Paul D. Arling and Patrick H. Hayes.
`
`1002. Prosecution history of U.S. Patent Application Serial No. 12/569,161, which
`
`matured into the '207 patent.
`
`1003. Declaration of Jim Geier, In Support of the Petition for Inter Partes Review
`
`of U.S. patent No. 8,243,207.
`
`1004. 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.
`
`1005. U.S. Patent Publication No. 2003/0120831 (filed December 20, 2001)
`
`(published June 26, 2003) to Thomas Dubil et al.
`
`1006. "IntelliControl Reference Manual" Version. 8.1, April 2002 by Niles Audio
`
`Corporation.
`
`1007. U.S. Patent No. 4,527,204 (filed February 14, 1983) (issued July 2, 1985) to
`
`Daisuke Kozakai.
`
`
`
`
`
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`- iv -
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`Petitioner Universal Remote Control, Inc. ("Petitioner" "URC") respectfully
`
`requests inter partes review of claims 12-15 of U.S. patent No. 8,243,207 (the
`
`"'207 patent," attached as Ex. 1001) in accordance with 35 U.S.C. §§ 311–319 and
`
`37 C.F.R. § 42.100 et seq.
`
`I. MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Petitioner provides the following
`
`mandatory disclosures:
`
`A. Real Party-In-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Universal Remote
`
`Control, Inc. is the real party-in-interest.
`
`B. Related Matters
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that claims 12-15 of the
`
`'207 patent are involved in the litigation presently styled Universal Electronics
`
`Inc., v. Universal Remote Control, Inc., Ohsung Electronics Co., Ltd., and Ohsung
`
`Electronics U.S.A., Inc., Case No. SACV 13-00984 AG (JPRx) (C.D. Cal.) ("2013
`
`UEI Litigation"). The claims of the '207 patent were first asserted against
`
`Petitioner in a First Amended Complaint in the above matter served on July 22,
`
`2013. Ex. 2004. Petitioner was the sole defendant on July 22, 2013 and thus the
`
`only defendant served with the First Amended Complaint at that time. Id. The
`
`patents-in-suit in the 2013 UEI Litigation are U.S. Patent Nos. 5,228,077,
`
`
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`- 1 -
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`
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`5,255,313, 5,414,761, 5,552,917, RE39,059, 6,407,779, 7,831,930, 7,126,468,
`
`7,589,642, and 8,243,207. Id.
`
`This Petition for inter partes review is directed to U.S. Patent No. 7,243,207.
`
`In the 2013 UEI Litigation, patent owner Universal Electronics Inc. ("UEI")
`
`specifically identified claims 12-15 in the First Amended Complaint Id.
`
`Accordingly, and in reliance upon UEI's omission of express claims of
`
`infringement with regard to any other claims of the '207 patent in the 2013 UEI
`
`Litigation to date, Petitioner seeks inter partes review of asserted claims 12-15 of
`
`the '207 patent.
`
`Petitions for inter partes review corresponding to the asserted claims of the
`
`remaining nine patents in the 2013 UEI Litigation have already been filed. In light
`
`of this, the Patent Trial and Appeal Board (PTAB) may wish to assign one or more
`
`of these other inter partes review actions related to this matter to a common, single
`
`panel of Administrative patent Judges for administrative efficiency regarding either
`
`coordination or consolidation.
`
`C.
`
`Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel:
`
`Lead Counsel
`Douglas A. Miro, Reg. No. 31,643
`Ostrolenk Faber LLP
`1180 Avenue of the Americas
`
`Back-Up Counsel
`Peter H. Kang, Reg. No. 40,350
`pkang@sidley.com
`Theodore W. Chandler, Reg. No. 50,319
`
`
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`- 2 -
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`New York, NY 10036
`Telephone: (212) 596-0500
`Facsimile: (212) 382-0888
`dmiro@ostrolenk.com
`
`USPTO Customer No. 02352
`
`
`tchandler@sidley.com
`Ferenc Pazmandi, Reg. No. 66,216
`fpazmandi@sidley.com
`Sidley Austin LLP
`1001 Page Mill Rd.
`Building One
`Palo Alto, CA 94304
`Telephone: (650) 565-7000
`Facsimile: (650) 565-7100
`USPTO Customer No. 37803
`
`D.
`
`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above.
`
`II.
`
`PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge to Deposit Account No.
`
`15-0722 $9,000 for the request fee required by 37 C.F.R. § 42.15(a)(1) and
`
`$14,000 for the Post-Institution fee required by 37 C.F.R § 42.15(a)(2) for this
`
`Petition for Inter Parties Review. Review of four claims is being requested, so no
`
`excess claims fee is included in this fee calculation. The undersigned further
`
`authorizes payment for any additional fees that might be due in connection with
`
`this Petition to be charged to the above referenced Deposit Account.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the '207 patent is satisfied.
`
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`A. Grounds For Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the '207
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from petitioning for inter partes review of the '207 patent on the grounds
`
`identified herein. Neither Petitioner, nor any party in privity with Petitioner, has
`
`filed a civil action challenging the validity of any claim of the '207 patent. The
`
`'207 patent has not been the subject of a prior inter partes review by Petitioner or a
`
`privy of Petitioner.
`
`Petitioner certifies this petition for inter partes review is timely filed. URC
`
`was served with the First Amended Complaint for patent infringement of the '207
`
`patent in the 2013 UEI Litigation on July 22, 2014. Ex. 1004. Because the date of
`
`this petition is no more than one year from July 22, 2013, this petition complies
`
`with 35 U.S.C. § 315(b).
`
`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested by Petitioner
`
`is that the PTAB cancel as unpatentable claims 12-15 of the '207 patent.
`
`1.
`
`Claims for which inter partes review is requested
`
`Pursuant to 37 C.F.R. § 42.104(b)(1), Petitioner requests inter partes review
`
`of claims 12-15 of the '207 patent.
`
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`2.
`
`The specific art and statutory grounds on which the
`challenge is based
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '207 patent
`
`is requested in view of the following references, each of which is prior art to the
`
`'207 patent under 35 U.S.C. § 102 (b):
`
`(1) U.S. Patent Publication No. 2003/0120831 to Thomas Dubil et al. (the
`
`"'831 publication") was filed on December 20, 2001 and published on
`
`June 26, 2003, more than a year before the '207 patent was filed. The
`
`'831 publication is thus prior art to the '207 patent at least under 35
`
`U.S.C. §102(b).
`
`(2) IntelliControl Reference Manual, Version. 8.1 ("Niles") was published in
`
`April of 2002 by Niles Audio Corporation, more than a year before the
`
`'207 patent was filed. Niles is thus prior art to the '207 patent at least
`
`under 35 U.S.C. § 102(b).
`
`(3) U.S. Patent No. 4,527,204 (the "'204 patent") was issued on July 2, 1985,
`
`more than a year before the '207 patent was filed. The '204 patent is thus
`
`prior art to the '207 patent at least under 35 U.S.C § 102(b).
`
`The above references were not substantively considered during prosecution
`
`of the '207 patent and present new, non-cumulative technological teachings. A
`
`detailed discussion of the references and their applicability to claims 12-15 of the
`
`'207 patent is provided herein, including at Section VII.A below.
`
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`- 5 -
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`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the '207 patent
`
`is requested on the following grounds.
`
`Ground 1. Claims 12-15 of the '207 patent are anticipated by the '831
`
`publication under U.S.C. § 102(b), and if not anticipated, are obvious in light of the
`
`'831 publication under 35 U.S.C. § 103.
`
`Ground 2. Claims 12-15 of the '207 patent are obvious over Niles in view
`
`of the '831 publication and/or the '204 patent under U.S.C. § 103(a).
`
`3.
`
`How the challenged claims are to be construed
`
`Pursuant to 37 C.F.R. § 42.104(b)(3), the claims of a patent subject to inter
`
`partes review receive the "broadest reasonable construction in light of the
`
`specification of the patent in which [they] appear." 37 C.F.R. § 42.100(b). If
`
`Patent Owner contends a claim limitation should have a meaning other than that
`
`conveyed by the ordinary meaning of the terms of the claim to a person of ordinary
`
`skill in light of the broadest reasonable construction standard, that contention
`
`should be disregarded if no amendment to the claims compliant with 35 U.S.C. §
`
`112 is made conforming the claim language to Patent Owner's proposed meaning.
`
`See 77 Fed. Reg. 48764 (August 14, 2012). Cf., In re Youman, 679 F.3d 1335,
`
`1343 (Fed. Cir. 2012).
`
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`- 6 -
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`4.
`
`How the construed claims are unpatentable under the
`statutory grounds identified in 37 C.F.R. § 42.104(b)(2)
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how claims 12-15 of
`
`the '207 patent are unpatentable under the statutory grounds identified above,
`
`including an identification of where each element is found in the prior art patents
`
`or printed publications, is provided in Section VII.B below.
`
`5.
`
`Supporting evidence relied upon to support the challenge
`
`Pursuant to 37 C.F.R. § 42.104(b)(5), the exhibit numbers of the supporting
`
`evidence relied upon to support the challenges are provided in an exhibit list
`
`provided above. The following text of the present Petition identifies the relevance
`
`of the evidence to the challenges raised and identifies specific portions of the
`
`evidence to support the challenges raised under the grounds of unpatentability.
`
`Further supporting evidence, including detailed discussions of the respective prior
`
`art references, is provided in the Geier Declaration (Ex. 1003).
`
`IV. SUMMARY OF THE '207 PATENT
`
`The '207 patent is entitled SYSTEM AND METHOD FOR ACTIVITY
`
`BASED CONFIGURATION OF AN ENTERTAINMENT SYSTEM and relates
`
`to a home entertainment system home entertainment system that includes a remote
`
`controlling device (100) and an AV receiver 102 that is coupled to multiple media
`
`source appliances, such as a set-top box (104), DVD players (106, 108), a game
`
`console (110), and a CD changer, and audio or video rendering devices, such as a
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`- 7 -
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`TV (114), a projector (118), and speakers (116). Ex. 1001, 1:27-58 and FIGS. 1
`
`and 2.
`
`
`
`
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`
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`The controlling device (100) and the receiver (102) can be configured in
`
`accordance with the user's desired "activity," such as "Watch TV", "Watch a
`
`Movie", "Listen to Music," "Play a Game" etc. Id. at col. 2, ll. 59-66. In
`
`particular, an activity key of the controlling device is associated with a
`
`configuration of the AV receiver in which one or more of the devices is selected as
`
`an audio visual input source device and one or more of the devices is selected as an
`
`audio visual output destination device. Id. at col. 5 l. 49 to col. 6, l. 51 and Fig. 5.
`
`When the entertainment device receives a signal from the controlling device, the
`
`entertainment device is configured according to the configuration associated with
`
`the activity key of the controlling device. Ex. 1001, Abstract.
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`- 8 -
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`
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`Patent Application Serial No. 12/569,121 (the "'121 application"), which
`
`matured into the '207 patent, was filed on September 29, 2009. There is no claim
`
`for any earlier priority. Thus, the earliest effective filing date of the '207 patent is
`
`the actual filing date of the '121 application, September 29, 2009.
`
`A.
`
`Summary Of The Prosecution History of the '207 Patent
`
`The '121 application was originally filed with 17 claims, one of which was
`
`independent. See Ex. 1002 at pp. 24-27. In a first Office Action, claims 1-3, 5, 6,
`
`8-12, 16, 17 were rejected, and dependent claims 4, 7, 13, 14, 15 were objected to
`
`as being dependent on a rejected base claim. Id. at pp. 83-86. In response,
`
`applicant amended the claims, including rewriting the objected claims in
`
`independent form. For example, the applicants added the limitations of the base
`
`claims and any intervening claims into objected dependent claims 13 and 15,
`
`which require configuring the controlling device such that "an activation of one or
`
`more command keys of the controlling device will cause the controlling device to
`
`communicate commands to the one or more of the audio visual source device and
`
`the audio visual output destination device." Id. at pp. 103-105 & 108. The
`
`applicant added new claims 18-20 and argued that the prior art does not disclose "a
`
`command value corresponding to an activity key of a controlling device included
`
`as a part of a configuration request signal being automatically associated with a
`
`configuration of the entertainment device." Id. at pp. 106-109.
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`Claims 1, 6-8, 17, 9-12, 14, 16, 13, 15, 18, 19, and 20 were subsequently
`
`allowed and renumbered as 1-16 respectively in the issued '207 patent. Thus,
`
`allowed claims 13, 15, 18 and 19 issued as claims 12-15 respectively. See Exhibit
`
`1002, p. 133. No reasons for allowance were provided.
`
`V. DETAILED CLAIM CONSTRUCTION
`
`A. Construction of Terms
`
`Since the '207 patent has not expired, the claims in the presently requested
`
`inter partes review proceeding are to be construed in accordance with the broadest
`
`reasonable construction in light of the specification in accordance with 37 C.F.R.
`
`§42.100(b). Unless otherwise indicated, the terms of the '207 patent are used in
`
`their ordinary and customary sense as one skilled in the relevant field would
`
`understand them under the broadest reasonable construction standard. Further,
`
`Petitioner reserves all rights, as it is entitled under applicable law, to assert the
`
`same or different claim constructions for the '207 patent under the different
`
`standards and different applicable court procedures in the 2013 UEI Litigation.
`
`B.
`
`"Device" vs. "Appliance"
`
`Generally, the use of different claim terms suggests distinct objects being
`
`described. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579
`
`(Fed. Cir. 1996) ("pusher assembly" and "pusher bar" are not synonyms). The '207
`
`patent specification, however, uses the distinct terms "device" and "appliance"
`
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`- 10 -
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`interchangeably, effectively giving them the same meaning. See Ex. 1003 at ¶ 27.
`
`For example, "[i]f the selected destination device is not powered on, in a preferred
`
`embodiment at step 620 a request may be issued to controlling device 100 via
`
`bidirectional communication link 130 to transmit a 'power on' command to the
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`destination appliance." Ex. 1001 at col. 7, ll. 33-37 (emphasis added). This
`
`sentence internally interchanges the two terms. In addition, step 620 is labeled
`
`"Request remote to power on dest. device." Id. at Fig. 6 (emphasis added).
`
`
`
`Thus the specification uses the terms "appliance" and "device" to refer to the
`
`same object. Ex. 1003 at ¶ 27. Accordingly, for the purposes of this petition, and
`
`mindful of the broadest reasonable interpretation, Petitioner considers the terms
`
`"device" and "appliance" as used in the claims to be interchangeable with each
`
`other.
`
`C.
`
`"Activity Key"
`
`An "activity key," as used in the '207 patent, and in accordance with the
`
`broadest reasonable construction, is simply any key or button on the remote control
`
`that corresponds to a configuration of the system. See Ex. 1003 at ¶ 28. The '207
`
`patent does not explicitly define what an activity key is. Id. Rather, it simply
`
`describes an activity key as corresponding to a command value, which is
`
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`- 11 -
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`associated with a configuration of the system. Id.; See also Abstract; col. 6, ll. 41-
`
`43. "Activity key" is also equated with a generic button on the remote control that
`
`has the same characteristics. Ex. 1001 at col. 1, ll. 39-42 ("activation of an activity
`
`key or button on the controlling device results in transmission of a signal to the AV
`
`receiver to initiate certain previously defined configuration actions").
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE '207 PATENT IS UNPATENTABLE
`
`Petitioner provides prior art publications demonstrating anticipation and
`
`obviousness grounds of unpatentability of the '207 patent claims. The following
`
`descriptions will demonstrate these grounds of unpatentability in detail, and they
`
`provide a reasonable likelihood that at least one challenged claim of the '207 patent
`
`is unpatentable.
`
`A. Claims 12-15 of the '207 Patent Are Unpatentable Over the '831
`Publication.
`
`The '831 publication teaches to skilled artisans each and every limitation of
`
`claim 12-15 of the '207 patent, as discussed below. The '831 publication was not
`
`cited during prosecution of the '207 patent, and it is not cumulative of any of the
`
`prior art references discussed during the prosecution of the '207 patent.
`
`The '831 publication discloses, for example, that "[e]ach user activity has a
`
`corresponding mapping of keys on the remote control device to facilitate the user
`
`activity." Ex. 1005 at Abstract. Thus, as discussed below in more detail, the '831
`
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`- 12 -
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`publication anticipates, but it at least renders obvious, configuring the controlling
`
`device such that its keys will control the selected activity's source and destination
`
`devices, as required by original dependent claims 13 and 15 (issued claims 12 and
`
`13), which was the feature that apparently resulted in issuance of these claims.
`
`Supra at IV.A.
`
`The '831 publication also discloses that the "user invokes an activity set,
`
`using, for example, selection keys on the remote control device." Ex. 1005 at ¶31.
`
`Thus, as discussed below in more detail, the '831 publication anticipates, but it at
`
`least
`
`renders obvious, automatically associating a configuration of
`
`the
`
`entertainment device with the command value of the activity key in the
`
`configuration request, as required by issued claim 14 (added as claim 18 during
`
`prosecution), which the applicant argued was missing in the prior art. Supra at
`
`IV.A.
`
`B. Claims 12-15 Are Unpatentable Over Niles in View of the '831
`Publication and/or the '204 Patent.
`
`Niles in view of the '831 publication and/or the '207 patent teach each and
`
`every limitation of claim 12-15 of the '207 patent. Niles and the '831 publication
`
`and/or the '204 patent were not cited during prosecution of the '207 patent, and are
`
`not cumulative of any of the prior art discussed during the prosecution of the '207
`
`patent.
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`Niles discloses, for example, that "[o]nce a Master Key is selected, the
`
`Function keys correspond to the functions of that selected source. However, the
`
`volume and mute keys are usually programmed to control the preamp only." Ex.
`
`1006 at pp. 3-4. The '831 publication also discloses that "[e]ach user activity has a
`
`corresponding mapping of keys on the remote control device to facilitate the user
`
`activity." Ex. 1005 at Abstract. As noted below, the '204 patent similarly discloses
`
`pressing the play button on the remote control will send commands to both the
`
`source device (the video tape recorder) and the output device (the television). Ex.
`
`1007 at col. 5, l. 68 to col. 6, ll. 17. Thus, as discussed below in more detail, Niles
`
`and the '831 publication and/or the '204 patent render obvious configuring the
`
`controlling device such that its keys will control the selected activity's source and
`
`destination devices, as required by original dependent claims 13 and 15 (issued as
`
`claims 12 and 13), which the Examiner found missing in the art of record. Supra
`
`at IV.A.
`
`Niles also discloses a "home theatre automation system expressly designed
`
`to provide true one-touch operation. … When you press a Master Key, the built-in
`
`microprocessor has the intelligence to decide which components need to be
`
`powered up, depending on what Master Key was selected and the On/Off state of
`
`the components." Ex. 1006 at p. 1. The '831 publication also discloses that the
`
`"user invokes an activity set, using, for example, selection keys on the remote
`
`
`
`- 14 -
`
`
`
`control device." Ex. 1005 at ¶31. Thus, as discussed below in more detail, Niles
`
`and the '831 publication render obvious automatically associating a configuration
`
`of the entertainment device with the command value of the activity key in the
`
`configuration request, as required by issued claim 14 (added as claim 18 during
`
`prosecution), which the applicant argued was missing in the prior art. Supra at
`
`IV.A.
`
`VII. DETAILED EXPLANATION OF HOW THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), Petitioner provides in the following
`
`description a detailed comparison of the claimed prior art references and a detailed
`
`comparison of the claimed subject matter to these prior art references specifying
`
`where each element of challenged claims is found in the prior art references.
`
`Further information and details supporting the unpatentability of claims 12-15 of
`
`the '207 patent over the prior art can be found in the Geier Declaration (Ex. 1003),
`
`hereby incorporated by reference herein.
`
`A. Description of the Prior Art
`
`1.
`
`U.S. Patent Publication No. 2003/0120831 (the "'831
`publication," Exhibit 1005)
`
`The '831 publication was filed on December 20, 2001 and published on June
`
`26, 2003. The '831 publication discloses a remote control that identifies which
`
`
`
`- 15 -
`
`
`
`particular devices are to be used as input and as output in a multi-component
`
`system according to an activity set. Ex. 1005 at ¶[0017]; Abstract and Fig. 1.
`
`
`
`
`
`An entertainment device is configured according to the activity set to use the
`
`identified devices. See id. at ¶¶[0009], [0019] and FIG. 5. The '831 publication
`
`discloses setting up the configurations using the remote control, controlling
`
`appliances using the remote control, and configuring the remote control according
`
`to the selected configuration. Ex. 1005 at ¶¶[0009], [0031] and FIGS. 3 and 4.
`
` The '831 further discloses downloading configurations from a computing device.
`
`
`
`
`
`Id. at ¶[0034].
`
`
`
`- 16 -
`
`
`
`2.
`
`Niles IntelliControl Reference Manual ("Niles," Exhibit
`1006)
`
`Niles is dated April of 2002. Niles discloses a system including "an
`
`ergonomically designed RF (radio frequency) Tabletop Remote Control and an
`
`'intelligent' Main System Unit (MSU)." Ex. 1006 at p. 1. Niles discloses that the
`
`"Main System Unit is the 'brain' of the IntelliControl system. Once a RF command
`
`is issued from the Tabletop Remote, the MSU processes the command and controls
`
`all functions of the system." Id. at p. 4. The Main System Unit also stores
`
`configurations associated with home theater equipment, and keys on the remote
`
`control are associated with configurations to access the respective configuration
`
`upon actuation of the appropriate key. Id. at FIG. 9 and pp. 22-28.
`
`Configurations may be downloaded from a computing device and a menu or other
`
`display of available inputs and outputs of the theater system may be displayed. Id
`
`
`
`at p. 26.
`
`
`
`- 17 -
`
`
`
`3.
`
`U.S. Patent No. 4,527,204 (the "'204 patent," Exibit 1007)
`
`The '204 patent was filed February 14, 1983 and issued on July 2, 1985. The
`
`'204 patent relates to a hand held remote control unit that produces command
`
`signals to control a video tape recorder and an associated television receiver. The
`
`recorder and
`
`television
`
`receiver
`
`include switches
`
`that provide various
`
`interconnections so that all operating modes of the two units are possible. These
`
`switches are actuated by local controllers arranged at each of the particular units.
`
`The controllers receive coded command signals from the remote control that set
`
`switches. The command signals are associated with keys that can be actuated on
`
`the remote control. For example, depressing a single playback key on the remote
`
`control unit will produce coded signals received by the controllers to set the
`
`television receiver to an unused channel and frequency and cause the video tape
`
`recorder to reproduce a prerecorded video tape, with the reproduced signal fed to
`
`the television receiver over the unused channel. Ex. 1007 at Abstract.
`
`B. Detailed Grounds for Unpatentability Arguments
`
`1.
`
`Ground 1: Claims 12-15 Are Anticipated by the '831
`Publication Under 35 U.S.C. § 102, and if not Anticipated,
`Are Rendered Obvious by the '831 Publication Under 25
`U.S.C. § 103.
`
`Claims 12-15 are unpatentable under 35 U.S.C. § 102(b) as being anticipated
`
`by the '831 publication. Ex. 1003 at ¶ 33. To the extent there is any assertion that
`
`these claim are not anticipated by the '831 publication, these '207 patent claims are
`
`
`
`- 18 -
`
`
`
`obvious in light of the '831 publication and are thus invalid under 35 U.S.C. § 103.
`
`The following includes a detailed list of claim elements and descriptions of how
`
`each element reads on the prior art, demonstrating a reasonable likelihood that at
`
`least one of claims 12-15 of the '207 patent are unpatentable.
`
`Claim 12
`
`A method for configuring an audio visual entertainment device in
`
`communication with a plurality of devices for an activity,
`
`comprising:
`
`The '831 publication discloses this limitation. Ex. 1003 at ¶ 34. In the '831
`
`publication, VCR 113 is an audio visual entertainment device in communication
`
`with at least cable receiver 114, satellite received 115, audio system 11 and
`
`television 110. Id; Ex. 1005, Fig. 1. As seen in Figure 1 reproduced below,, the
`
`system of the '831 publication includes an audio-visual entertainment device in
`
`communication with a plurality of other devices for a activity:
`
`
`
`- 19 -
`
`
`
`
`
`Ex. 1005, Fig. 1.
`
`In the '831 system, VCR 113 can be configured to use different inputs and/or
`
`outputs for different activity sets. Ex. 1003 at ¶ 34. "FIG. 2A, for example,
`
`illustrates an activity set 200a for watching or recording satellite broadcasts,
`
`wherein audio-visual information is received by a satellite receiver 115, which
`
`provides the audio-visual information to a VCR device 113 for optional recording.
`
`*** In the example activity set of FIG. 2A, the VCR 113 provides the video and
`
`audio information to the television 110." Ex. 1005 at ¶[0019].
`
`associating a command value corresponding to an activity key of a
`
`controlling device with a configuration of the entertainment
`
`device,
`
`The '831 publication discloses this limitation. Ex. 1003 at ¶ 35. An activity
`
`set (configuration of the entertainment device) is associated with a key (activity
`
`key) on the remote control (the controlling device). Id. "The user invokes an
`
`activity set using, for example, selection keys on the remote control device 150."
`
`Ex. 1005 at ¶[0031]. One skilled in the art would understand that the '831
`
`publication discloses (either expressly, inherently or as a matter of obviousness)
`
`that the activity key must be designated with a value (command value) by which to
`
`reference that activity key. Ex. 1003 at ¶ 35. Thus, the '831 publication discloses
`
`that the command value corresponding to an activity key associated with the
`
`configuration of the entertainment device. Id.
`
`
`
`- 20 -
`
`
`
`the configuration of the entertainment device comprising 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;
`
`The '831 publication discloses this limitation. Ex. 1003 at ¶ 36.
`
`"[A]lthough multiple components of a system may include an audio output signal,
`
`an activity set identifies which particular component in the system provides the
`
`audio output of the system. In like manner, the activity set will identify the
`
`component providing the audio-video information." Ex. 1005 at ¶[0018]; accord
`
`Ex. 1005 at ¶[0019].
`
`causi
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