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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`Applicant:
`
`
`
`
`Case No.:
`
`
`
`Filing Date:
`
`Arling, et. al
`
`
`
`IPR2014-01146
`
`
`
`09/29/2009
`
`
`
`
`
`
`
`
`
`Patent No.:
`
`8,243,207
`
`
`
`Universal Remote Control, Inc.
`
`v.
`
`
`
`
`
`
`Universal Electronics, Inc.
`
`
`
`Trial Paralegal: Amy Kattula
`
`Attny Doc.: 059489.144400
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`System and Method
`For Activity Based
`Configuration of an
`Entertainment System
`
`MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF JAMES T. GEIER
`
`Title:
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`29th day of July, 2015.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: /Eric J. Maiers/
`Eric J. Maiers
`
`

`
`
`
`
`Ex. 2002
`
`
`Ex. 2003
`
`
`Ex. 2004
`
`EXHIBIT LIST
`
`
`Ex. 2001 Mohawk Resources Ltd. V. Vehicle Service Group, LLC, Case
`IPR2014-00464, Paper 10 (Aug. 29, 2014)
`
`Edmund Optics, Inc. v. Semrock, Inc., Case IPR2014-00583, Paper 9
`(P.T.A.B. Sept. 19, 2014)
`
`3D-Matrix, Ltd. v. Menicon Co., Case IPR2014-00398, Paper No. 11
`(P.T.A.B. Aug. 1, 2014)
`
`Eizo Corp. v. Barco N.V., IPR2014-00358, Paper 11 (P.T.A.B. July
`23, 2014)
`
`
`Ex. 2005 Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6
`(P.T.A.B. June 18, 2014)
`
`
`Ex. 2006 Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00246, Paper 6
`(P.T.A.B. June 18, 2014)
`
`
`Ex. 2007
`
`
`Ex. 2008
`
`
`Ex. 2010
`
`eBay, Inc. v. Paid, Inc., CBM2014-00125, Paper 15 (P.T.A.B. Sept.
`30, 2014)
`
`Synopsis v. Mentor Graphics Corp., IPR2012-00042, Paper No. 16
`(P.T.A.B. Feb. 22, 2013)
`
`
`Ex. 2009 Dominion Dealer Solutions, LLC v. AutoAlert, Inc., IPR2013-00222,
`Paper No. 12 (P.T.A.B. Aug. 12, 2013)
`
`SAS Institute, Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper
`No. 15 (P.T.A.B. Dec. 30, 2013)
`
`
`Ex. 2011 Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183,
`Paper No. 12 (P.T.A.B. July 31, 2013)
`
`
`Ex. 2012-2016 INTENTIONALLY SKIPPED
`
`Ex. 2017
`
`Trial Transcript from Universal Electronics, Inc. v. Universal Remote
`Control, Inc., No. 8:12-cv-00329-AG-JPR (C.D. Cal.), Dkt. No. 398-1
`
`
`
`ii
`
`

`
`IPR2014-01146
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`
`
`U.S. Pat. No. 8,243,207
`
`Ex. 2018 Universal Remote Control, Inc.’s (“URC’s”) Initial Disclosures from
`Universal Electronics, Inc. v. Universal Remote Control, Inc., No.
`8:12-cv-00329-AG-JPR (C.D. Cal.)
`
`
`Ex. 2019 URC’s Response to UEI’s Interrogatory at No. 6 from Universal
`Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv-
`00329-AG-JPR (C.D. Cal.)
`
`
`Ex. 2020 Ohsung Website Printout, available at
`http://www.ohsungec.com/02_affli/02_foreign/06.aspx.
`
`
`Ex. 2021 URC’s Amended Initial Disclosures from Universal Electronics, Inc.
`v. Universal Remote Control, Inc., No. 8:12-cv-00329-AG-JPR (C.D.
`Cal.)
`
`
`Ex. 2022 Defendant Ohsung Electronics, USA, Inc.’s Answer to Second
`Amended Complaint, Dkt. No. 76, from 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.)
`
`
`Ex. 2023
`
`LinkedIn Profile of Jak You, available at
`https://www.linkedin.com/pub/jak-you/92/8a5/6b.
`
`09/05/2013 M. Hurley Email to L. Kenneally
`
`
`Ex. 2024
`
`Ex. 2025 Amended Notice of 30(b)(6) Deposition to URC from Universal
`Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv-
`00329-AG-JPR (C.D. Cal.)
`
`
`Ex. 2026
`
`
`Ex. 2027
`
`Joint Stipulation Staying Action Pending Petitions for Inter Partes
`Review of All Asserted Claims, Dkt. No. 87 from 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.)
`
`Joint Statement of the Parties Pursuant to Order Staying Action (ECF
`No. 88) and Joint Request to Continue Status Conference, Dkt. No.
`102 from Universal Electronics Inc., v. Universal Remote Control,
`
`iii
`
`

`
`IPR2014-01146
`
`
`
`U.S. Pat. No. 8,243,207
`
`Inc., Ohsung Electronics Co., Ltd., and Ohsung Electronics U.S.A.,
`Inc., Case No. SACV 13-00984 AG (JPRx) (C.D. Cal.)
`
`
`Ex. 2028 URC NY Secretary of State, Division of Corporations, Entity
`Information Website Printout
`
`
`Ex. 2029 Declaration of Alex Cook
`
`Ex. 2030
`
`Transcript of 07/22/2015 Cross-Examination of James T. Geier
`
`iv
`
`

`
`
`
`Universal Electronics, Inc. (“UEI or “Patent Owner”) respectfully submits
`
`this motion for observation regarding cross-examination during the July 22, 2015,
`
`deposition of James T. Geier1, a reply declarant of Universal Remote Control, Inc.
`
`(“URC” or “Petitioner”). Patent Owner submits the following observations based
`
`on Mr. Geier’s testimony.
`
`Observation #1
`
`In Exhibit 2030, at 7:18-8:24, Mr. Geier testified that none of his prior
`
`retentions as an expert, regardless of whether he provided deposition or trial
`
`testimony, involved universal remote controls. That testimony is relevant because
`
`it shows that Mr. Geier lacks credibility and the qualifications to testify as a
`
`purported expert concerning patents involving universal remote controls, including
`
`U.S. Patent No. 8,243,207 (the “‘207 patent”).2
`
`Observation #2
`
`In Exhibit 2030 at 20:3-22:14, Mr. Geier testified that he was not aware of
`
`URC and/or UEI before being retained by URC in this IPR proceeding and is not
`
`aware of any of the major competitors in the universal remote control field (other
`
`than Petitioner and Patent Owner as a result of this IPR proceeding). That
`
`testimony is relevant because it shows that Mr. Geier lacks credibility to testify as
`
`
`1 The transcript of Mr. Geier’s cross-examination has been submitted herewith as
`Exhibit 2030.
`2 (Exhibit 1001.)
`
`
`
`

`
`IPR2014-01146
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`
`
`U.S. Pat. No. 8,243,207
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`a purported expert concerning patents involving universal remote controls,
`
`including the ‘207 patent.
`
`Observation #3
`
`In Exhibit 2030, at 24:2-24:11, Mr. Geier admitted that nothing on his CV
`
`relates to work in the universal remote control field for entertainment systems.
`
`That testimony is relevant because it shows that Mr. Geier lacks credibility and the
`
`qualifications to testify as a purported expert concerning patents involving
`
`universal remote controls for configuring entertainment devices, including the ‘207
`
`patent.
`
`Observation #4
`
`In Exhibit 2030, at 42:23-43:10, Mr. Geier testified that the ‘207 patent
`
`relates to security and encryption protocols. That testimony is relevant because it
`
`shows that Mr. Geier lacks a basic understanding of the claimed invention of the
`
`‘207 patent and therefore lacks credibility to testify as a purported expert
`
`concerning patents involving universal remote controls for configuring
`
`entertainment devices, including the ‘207 patent.
`
`Observation #5
`
`In Exhibit 2030, at 71:7-16 and 72:4-11, Mr. Geier admitted that he has not
`
`designed any universal remote controls specifically designed to directly control
`
`entertainment systems. That testimony is relevant because it shows that Mr. Geier
`
`
`
`2
`
`

`
`IPR2014-01146
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`
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`U.S. Pat. No. 8,243,207
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`lacks credibility and the qualifications to testify as a purported expert concerning
`
`patents involving universal remote controls for configuring entertainment devices,
`
`including the ‘207 patent.
`
`Observation #6
`
`In Exhibit 2030, at 86:20-87:16, Mr. Geier admitted that the Board’s broad
`
`construction of “configuration of the entertainment device”3 does not require a
`
`signal to be sent to the claimed “entertainment device.” That testimony is relevant
`
`because it demonstrates how the Board’s broad construction of “configuration of
`
`the entertainment device” directly contradicts the “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 [subsequently] receiving from the controlling device a
`
`[command] signal which includes the command value corresponding to the activity
`
`key of the controlling device” limitations of Claims 13 and 144 of the ‘207 patent,
`
`
`3 “[T]he phrase [configuration of the entertainment device] could be construed
`broadly such 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 appliance supplies an
`active input signal to the entertainment device and only one output appliance
`renders the output signal. Such a broad construction would cause the claims to
`read on AV receivers and other entertainment devices that passively transmit
`signals from input to output appliances without necessarily engaging in any
`switching activity.” (Paper 9, Decision, Institution of Inter Partes Review, 9-10.)
`4 This claim limitation appears in both Claims 13 and 14, differing only in that
`Claim 14 adds the bracketed text. (Ex. 1001, ‘207 patent at Claims 13 and 14.)
`
`
`
`3
`
`

`
`IPR2014-01146
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`
`
`U.S. Pat. No. 8,243,207
`
`which expressly require that the entertainment device receive a signal. (Ex. 1001,
`
`‘207 patent at Claims 13 and 14.)
`
`Observation #7
`
`In Exhibit 2030, at 90:11-92:24, Mr. Geier admits that the purpose of the
`
`“Summary of the Invention” section of a patent is to summarize the invention and
`
`further admits that the summary of the invention for the ‘207 patent discloses an
`
`invention in which it is “very clear” “that the various components are generally
`
`routed to and switched through one central device such as an AV receiver.” This
`
`testimony is relevant because it supports the Board’s proposed narrow construction
`
`of “configuration of the entertainment device.”5
`
`Observation #8
`
`In Exhibit 2030, at 95:3-6 and 102:6-12, Mr. Geier admitted that although he
`
`claims that U.S. Pat. App. Pub. 2003/0120831to Dubil et. al (“Dubil”) discloses a
`
`VCR that can switch between output devices, he has owned many VCRs and
`
`cannot recall any one of them having that functionality. That testimony is relevant
`
`because it casts doubt on Mr. Geier’s ipse dixit that Dubil discloses a VCR having
`
`
`5 “On the one hand, [configuration of the entertainment device] could be construed
`narrowly so as to require transmission of a signal to the entertainment device such
`that the configuration thereof contemplates affirmatively selecting an AV input
`source and an AV output destination and affirmatively performing switching
`actions accordingly.” (Paper 9, Decision, Institution of Inter Partes Review, 9.)
`
`
`
`4
`
`

`
`IPR2014-01146
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`
`
`U.S. Pat. No. 8,243,207
`
`switching capabilities sufficient to meet the Board’s narrow construction of
`
`“configuration of the entertainment device.”
`
`Observation #9
`
`In Exhibit 2030, at 125:6-126:14, Mr. Geier admitted that Dubil does not
`
`explicitly disclose that after a user invokes an activity set, it sends a single
`
`command to the VCR (the alleged “entertainment device” of Dubil) to configure
`
`the entertainment system. That testimony is relevant because it confirms that
`
`Dubil does not disclose the “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 [subsequently]
`
`receiving from the controlling device a [command] signal which includes the
`
`command value corresponding to the activity key of the controlling device”
`
`limitation of Claims 13 and 14 of the ‘207 patent. (Ex. 1001, ‘207 patent at Claims
`
`13 and 14.)
`
`Observation #10
`
`In Exhibit 2030, at 95:7-102:12, Mr. Geier admitted that Dubil does not
`
`explicitly disclose a VCR having output switching capabilities, but that someone of
`
`ordinary skill in the art would nevertheless understand that VCRs could have
`
`output switching capabilities. That testimony is relevant because it demonstrates
`
`that Mr. Geier conflated the anticipation and obviousness standards by looking
`
`
`
`5
`
`

`
`IPR2014-01146
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`U.S. Pat. No. 8,243,207
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`beyond the four corners of the Dubil reference to the skill and experience of one
`
`having ordinary skill in the art in order to fill in the gaps of Dubil’s disclosure.
`
`Observation #11
`
`In Exhibit 2030, at 103:19-108:8 and 109:14-110:16, Mr. Geier admitted
`
`that Dubil explicitly discloses only a single video output device, namely, a
`
`television, but that someone of ordinary skill in the art would nevertheless
`
`understand that certain DVD players could be portable DVD players with their
`
`own dedicated video displays. That testimony is relevant because it demonstrates
`
`that Mr. Geier conflated the anticipation and obviousness standards by looking
`
`beyond the four corners of the Dubil reference to the skill and experience of one
`
`having ordinary skill in the art in order to fill in the gaps of Dubil’s disclosure.
`
`Observation #12
`
`In Exhibit 2030, at 124:8-128:13, Mr. Geier admitted that Dubil does not
`
`explicitly disclose that pressing an activity key results in the transmission of a
`
`single command to the alleged entertainment device of Dubil (a VCR) but that
`
`someone of ordinary skill in the art would nevertheless understand that pressing an
`
`activity key could result in the transmission of a single command to an
`
`entertainment device. That testimony is relevant because it demonstrates that Mr.
`
`Geier conflated the anticipation and obviousness standards by looking beyond the
`
`
`
`6
`
`

`
`IPR2014-01146
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`
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`U.S. Pat. No. 8,243,207
`
`four corners of the Dubil reference to the skill and experience of one having
`
`ordinary skill in the art in order to fill in the gaps of Dubil’s disclosure.
`
`
`
`Date: July 29, 2015
`
`
`
`
`
`Respectfully Submitted,
`GREENBERG TRAURIG, LLP
`
`
`
`
`
`
`
` /Eric J. Maiers/
`
`
`By: Eric J. Maiers, Reg. No. 59,614
`James J. Lukas, Reg. No. 59,114
`Matthew J. Levinstein, Pro Hac Vice
`Rob R. Harmer, Reg. No. 68,048
`77 West Wacker Drive, Suite 3100
`Chicago, Illinois 60601
`(312) 456-8400
`
`
`
`
`
`7
`
`

`
`IPR2014-01146
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`
`
`U.S. Pat. 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):
`
`Douglas A. Miro
`Keith Barkaus
`Jeannie Ngai
`Ostrolenk Faber LLP
`1180 Avenue of the Americas New
`York, NY 10036
`Telephone: (212) 596-0500
`Facsimile: (212) 382-0888
`dmiro@ostrolenk.com
`kbarkaus@ostrolenk.com
`jngai@ostrolenk.com
`
`Peter H. Kang, Reg. No. 40,350
`Theodore W. Chandler, Reg. No. 50,319
`Ferenc Pazmandi, Reg. No. 66,216
`Sidley Austin LLP
`1001 Page Mill Rd.
`Building One
`Palo Alto, CA 94304
`Telephone: (650) 565-7000
`Facsimile: (65) 565-7100
`pkang@sidley.com
`tchandler@sidley.com
`fpazmandi@sidley.com
`urc@sidley.com
`
` /s/ Matthew J. Levinstein
`Matthew J. Levinstein
`
`
`
`July 29, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`8
`
`
`Date:

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