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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Applicant:
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`Case No.:
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`Filing Date:
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`Arling, et. al
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`IPR2014-01146
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`09/29/2009
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`Patent No.:
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`8,243,207
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`Universal Remote Control, Inc.
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`v.
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`Universal Electronics, Inc.
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`Trial Paralegal: Amy Kattula
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`Attny Doc.: 059489.144400
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`System and Method
`For Activity Based
`Configuration of an
`Entertainment System
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`MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF JAMES T. GEIER
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`Title:
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this
`29th day of July, 2015.
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`By: /Eric J. Maiers/
`Eric J. Maiers
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`EXHIBIT LIST
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`Ex. 2001 Mohawk Resources Ltd. V. Vehicle Service Group, LLC, Case
`IPR2014-00464, Paper 10 (Aug. 29, 2014)
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`Edmund Optics, Inc. v. Semrock, Inc., Case IPR2014-00583, Paper 9
`(P.T.A.B. Sept. 19, 2014)
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`3D-Matrix, Ltd. v. Menicon Co., Case IPR2014-00398, Paper No. 11
`(P.T.A.B. Aug. 1, 2014)
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`Eizo Corp. v. Barco N.V., IPR2014-00358, Paper 11 (P.T.A.B. July
`23, 2014)
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`Ex. 2005 Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6
`(P.T.A.B. June 18, 2014)
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`Ex. 2006 Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00246, Paper 6
`(P.T.A.B. June 18, 2014)
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`Ex. 2007
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`Ex. 2008
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`Ex. 2010
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`eBay, Inc. v. Paid, Inc., CBM2014-00125, Paper 15 (P.T.A.B. Sept.
`30, 2014)
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`Synopsis v. Mentor Graphics Corp., IPR2012-00042, Paper No. 16
`(P.T.A.B. Feb. 22, 2013)
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`Ex. 2009 Dominion Dealer Solutions, LLC v. AutoAlert, Inc., IPR2013-00222,
`Paper No. 12 (P.T.A.B. Aug. 12, 2013)
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`SAS Institute, Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper
`No. 15 (P.T.A.B. Dec. 30, 2013)
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`Ex. 2011 Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183,
`Paper No. 12 (P.T.A.B. July 31, 2013)
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`Ex. 2012-2016 INTENTIONALLY SKIPPED
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`Ex. 2017
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`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
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`ii
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`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.)
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`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.)
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`Ex. 2020 Ohsung Website Printout, available at
`http://www.ohsungec.com/02_affli/02_foreign/06.aspx.
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`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.)
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`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.)
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`Ex. 2023
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`LinkedIn Profile of Jak You, available at
`https://www.linkedin.com/pub/jak-you/92/8a5/6b.
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`09/05/2013 M. Hurley Email to L. Kenneally
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`Ex. 2024
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`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.)
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`Ex. 2026
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`Ex. 2027
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`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.)
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`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,
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`iii
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`Inc., Ohsung Electronics Co., Ltd., and Ohsung Electronics U.S.A.,
`Inc., Case No. SACV 13-00984 AG (JPRx) (C.D. Cal.)
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`Ex. 2028 URC NY Secretary of State, Division of Corporations, Entity
`Information Website Printout
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`Ex. 2029 Declaration of Alex Cook
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`Ex. 2030
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`Transcript of 07/22/2015 Cross-Examination of James T. Geier
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`Universal Electronics, Inc. (“UEI or “Patent Owner”) respectfully submits
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`this motion for observation regarding cross-examination during the July 22, 2015,
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`deposition of James T. Geier1, a reply declarant of Universal Remote Control, Inc.
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`(“URC” or “Petitioner”). Patent Owner submits the following observations based
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`on Mr. Geier’s testimony.
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`Observation #1
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`In Exhibit 2030, at 7:18-8:24, Mr. Geier testified that none of his prior
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`retentions as an expert, regardless of whether he provided deposition or trial
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`testimony, involved universal remote controls. That testimony is relevant because
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`it shows that Mr. Geier lacks credibility and the qualifications to testify as a
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`purported expert concerning patents involving universal remote controls, including
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`U.S. Patent No. 8,243,207 (the “‘207 patent”).2
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`Observation #2
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`In Exhibit 2030 at 20:3-22:14, Mr. Geier testified that he was not aware of
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`URC and/or UEI before being retained by URC in this IPR proceeding and is not
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`aware of any of the major competitors in the universal remote control field (other
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`than Petitioner and Patent Owner as a result of this IPR proceeding). That
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`testimony is relevant because it shows that Mr. Geier lacks credibility to testify as
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`1 The transcript of Mr. Geier’s cross-examination has been submitted herewith as
`Exhibit 2030.
`2 (Exhibit 1001.)
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`a purported expert concerning patents involving universal remote controls,
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`including the ‘207 patent.
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`Observation #3
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`In Exhibit 2030, at 24:2-24:11, Mr. Geier admitted that nothing on his CV
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`relates to work in the universal remote control field for entertainment systems.
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`That testimony is relevant because it shows that Mr. Geier lacks credibility and the
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`qualifications to testify as a purported expert concerning patents involving
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`universal remote controls for configuring entertainment devices, including the ‘207
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`patent.
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`Observation #4
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`In Exhibit 2030, at 42:23-43:10, Mr. Geier testified that the ‘207 patent
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`relates to security and encryption protocols. That testimony is relevant because it
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`shows that Mr. Geier lacks a basic understanding of the claimed invention of the
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`‘207 patent and therefore lacks credibility to testify as a purported expert
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`concerning patents involving universal remote controls for configuring
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`entertainment devices, including the ‘207 patent.
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`Observation #5
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`In Exhibit 2030, at 71:7-16 and 72:4-11, Mr. Geier admitted that he has not
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`designed any universal remote controls specifically designed to directly control
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`entertainment systems. That testimony is relevant because it shows that Mr. Geier
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`lacks credibility and the qualifications to testify as a purported expert concerning
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`patents involving universal remote controls for configuring entertainment devices,
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`including the ‘207 patent.
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`Observation #6
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`In Exhibit 2030, at 86:20-87:16, Mr. Geier admitted that the Board’s broad
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`construction of “configuration of the entertainment device”3 does not require a
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`signal to be sent to the claimed “entertainment device.” That testimony is relevant
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`because it demonstrates how the Board’s broad construction of “configuration of
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`the entertainment device” directly contradicts the “causing the entertainment
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`device to access and use the configuration associated with the command value
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`corresponding to the activity key of the controlling device in response to the
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`entertainment device [subsequently] receiving from the controlling device a
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`[command] signal which includes the command value corresponding to the activity
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`key of the controlling device” limitations of Claims 13 and 144 of the ‘207 patent,
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`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.)
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`which expressly require that the entertainment device receive a signal. (Ex. 1001,
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`‘207 patent at Claims 13 and 14.)
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`Observation #7
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`In Exhibit 2030, at 90:11-92:24, Mr. Geier admits that the purpose of the
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`“Summary of the Invention” section of a patent is to summarize the invention and
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`further admits that the summary of the invention for the ‘207 patent discloses an
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`invention in which it is “very clear” “that the various components are generally
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`routed to and switched through one central device such as an AV receiver.” This
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`testimony is relevant because it supports the Board’s proposed narrow construction
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`of “configuration of the entertainment device.”5
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`Observation #8
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`In Exhibit 2030, at 95:3-6 and 102:6-12, Mr. Geier admitted that although he
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`claims that U.S. Pat. App. Pub. 2003/0120831to Dubil et. al (“Dubil”) discloses a
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`VCR that can switch between output devices, he has owned many VCRs and
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`cannot recall any one of them having that functionality. That testimony is relevant
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`because it casts doubt on Mr. Geier’s ipse dixit that Dubil discloses a VCR having
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`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.)
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`switching capabilities sufficient to meet the Board’s narrow construction of
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`“configuration of the entertainment device.”
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`Observation #9
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`In Exhibit 2030, at 125:6-126:14, Mr. Geier admitted that Dubil does not
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`explicitly disclose that after a user invokes an activity set, it sends a single
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`command to the VCR (the alleged “entertainment device” of Dubil) to configure
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`the entertainment system. That testimony is relevant because it confirms that
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`Dubil does not disclose the “causing the entertainment device to access and use the
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`configuration associated with the command value corresponding to the activity key
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`of the controlling device in response to the entertainment device [subsequently]
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`receiving from the controlling device a [command] signal which includes the
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`command value corresponding to the activity key of the controlling device”
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`limitation of Claims 13 and 14 of the ‘207 patent. (Ex. 1001, ‘207 patent at Claims
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`13 and 14.)
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`Observation #10
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`In Exhibit 2030, at 95:7-102:12, Mr. Geier admitted that Dubil does not
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`explicitly disclose a VCR having output switching capabilities, but that someone of
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`ordinary skill in the art would nevertheless understand that VCRs could have
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`output switching capabilities. That testimony is relevant because it demonstrates
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`that Mr. Geier conflated the anticipation and obviousness standards by looking
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`beyond the four corners of the Dubil reference to the skill and experience of one
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`having ordinary skill in the art in order to fill in the gaps of Dubil’s disclosure.
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`Observation #11
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`In Exhibit 2030, at 103:19-108:8 and 109:14-110:16, Mr. Geier admitted
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`that Dubil explicitly discloses only a single video output device, namely, a
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`television, but that someone of ordinary skill in the art would nevertheless
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`understand that certain DVD players could be portable DVD players with their
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`own dedicated video displays. That testimony is relevant because it demonstrates
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`that Mr. Geier conflated the anticipation and obviousness standards by looking
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`beyond the four corners of the Dubil reference to the skill and experience of one
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`having ordinary skill in the art in order to fill in the gaps of Dubil’s disclosure.
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`Observation #12
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`In Exhibit 2030, at 124:8-128:13, Mr. Geier admitted that Dubil does not
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`explicitly disclose that pressing an activity key results in the transmission of a
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`single command to the alleged entertainment device of Dubil (a VCR) but that
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`someone of ordinary skill in the art would nevertheless understand that pressing an
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`activity key could result in the transmission of a single command to an
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`entertainment device. That testimony is relevant because it demonstrates that Mr.
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`Geier conflated the anticipation and obviousness standards by looking beyond the
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`four corners of the Dubil reference to the skill and experience of one having
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`ordinary skill in the art in order to fill in the gaps of Dubil’s disclosure.
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`Date: July 29, 2015
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`Respectfully Submitted,
`GREENBERG TRAURIG, LLP
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` /Eric J. Maiers/
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`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
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on the below date, I caused the
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`foregoing to be served upon the following counsel of record via electronic mail
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`(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
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`July 29, 2015
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`Date: