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 MOTION TO EXCLUDE CERTAIN INADMISSIBLE
`
`TESTIMONY OF PATENT OWNER’S EXPERT ALEX COOK
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with
`the USPTO on this 29th day of July, 2015
`
`By: /Jeannie Ngai/
`Jeannie Ngai
`
`{01788832.1}
`
`
`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 MOTION TO EXCLUDE CERTAIN INADMISSIBLE
`
`TESTIMONY OF PATENT OWNER’S EXPERT ALEX COOK
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with
`the USPTO on this 29th day of July, 2015
`
`By: /Jeannie Ngai/
`Jeannie Ngai
`
`{01788832.1}
`
`
`
`IPR2014-01146
`
`U.S. Patent No. 8,243,207
`
`TABLE OF CONTENTS
`
`Page
`
`Introduction......................................................................................................1
`I.
`Statement of the Law.......................................................................................1
`II.
`III. Mr. Cook’s Redirect Testimony Regarding The Alleged Disclosure Of Prior
`Art Should Be Excluded ..................................................................................2
`A. Mr. Cook’s Admissions.........................................................................2
`B.
`Analysis .................................................................................................3
`IV. Conclusion .......................................................................................................3
`
`{01788832.1}
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`i
`
`
`
`IPR2014-01146
`
`U.S. Patent No. 8,243,207
`
`TABLE OF AUTHORITIES
`
`Page
`
`Regulations
`
`37 C.F.R. §42.62(a)....................................................................................................1
`
`Cases
`
`SkinMedica, Inc. v. Histogen Inc.,
`727 F.3d 1187 (Fed. Cir. 2013) .......................................................................2
`Waddington North Am., Inc. v. Sabert Corp.,
`2011 U.S. Dist. LEXIS 86632 (D. N.J. Aug. 5, 2011)................................2, 3
`
`Rules
`
`Fed. R. Evid. 611(c)...................................................................................................1
`
`{01788832.1}
`
`ii
`
`
`
`IPR2014-01146
`
`U.S. Patent No. 8,243,207
`
`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.
`INTENTIONALLY SKIPPED
`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)
`INTENTIONALLY SKIPPED
`Transcript of June 17, 2015 Deposition of Alex Cook
`Reply Declaration of James T. Geier
`
`1001*
`
`1002*
`
`1003*
`
`1004*
`
`1005*
`
`1006*
`
`1007*
`
`1008-1045
`1046*
`
`1047*
`
`1048-1053
`1054*
`1055*
`
`* Previously filed.
`
`{01788832.1}
`
`iii
`
`
`
`IPR2014-01146
`
`U.S. Patent No. 8,243,207
`
`The following is Petitioner’s Motion To Exclude Certain Inadmissible
`
`Testimony of Patent Owner’s Expert Alex Cook. The present motion is being
`
`timely filed in accordance with the Scheduling Order that issued January 9, 2015
`
`(Paper 10) and the Notice of Joint Stipulation filed on July 16, 2015 (Paper 24).
`
`I.
`
`Introduction
`
`Inadmissible testimony should not be a part of this trial record. Following
`
`Petitioner’s cross-examination of Mr. Cook, Patent Owner engaged in a redirect
`
`examination. During this redirect examination, Patent Owner asked impermissible
`
`and leading questions in an effort to cover up Mr. Cook’s acknowledgements with
`
`respect to the teachings of the prior art that contradicted Patent Owner’s arguments
`
`in support of validity of claims 13-15 of the ’207 patent. This testimony should be
`
`excluded because it was provided in response to leading questions that amounted
`
`to no more than attorney argument. Petitioner’s counsel objected to these
`
`impermissible questions during the deposition. Petitioner requests exclusion of the
`
`testimony set forth in Ex. 1054 at 727:14-728:16.
`
`II.
`
`Statement of the Law
`The Federal Rules of Evidence apply in this proceeding. See 37 C.F.R.
`
`§42.62(a). Federal Rule of Evidence 611(c) provides in relevant part that
`
`“[l]eading questions should not be used on direct examination except as necessary
`
`to develop the witness’s testimony. . . .” Fed. R. Evid. 611(c). Testimony that is
`
`{01788832.1}
`
`1
`
`
`
`IPR2014-01146
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`U.S. Patent No. 8,243,207
`
`presented in violation of this rule is of no value to the trier of fact. See
`
`SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1209–10 (Fed. Cir. 2013)
`
`(finding an expert’s brief responses to leading questions unhelpful); Waddington
`
`North Am., Inc. v. Sabert Corp., No. 09-4883, 2011 U.S. Dist. LEXIS 86632, at
`
`*46–*50 (D. N.J. Aug. 5, 2011) (explaining that if “a witness cannot recall the
`
`events and has difficulty answering an open-ended question, a [trier of fact] is
`
`entitled to find that testimony not credible. Leading questions rob the [trier of fact]
`
`of the ability to make that determination. Repeated leading questions cause
`
`witnesses to become relatively unnecessary except as sounding boards. The effect
`
`is that the attorney testifies and the [trier of fact] is unable to assess the credibility
`
`of the witness.” (citations and quotations omitted)).
`
`III. Mr. Cook’s Redirect Testimony Regarding The Alleged Disclosure Of
`Prior Art Should Be Excluded
`
`A. Mr. Cook’s Admissions
`
`Mr. Cook acknowledges that the Dubil reference discloses downloading
`
`configuration information. Ex. 2029, ¶74. During cross-examination Mr. Cook
`
`also conceded that Dubil does not limit downloading of information to specific
`
`devices. Ex. 1054, 660:11 – 661:10. During cross-examination Mr. Cook also
`
`acknowledged that VCRs are programmable and store data. Ex. 1054, 685:16 –
`
`{01788832.1}
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`2
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`
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`IPR2014-01146
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`U.S. Patent No. 8,243,207
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`685:14 and 683:16 – 684:4. These statements are contrary to Patent Owner’s
`
`position that Dubil does not disclose downloading data to a VCR. Paper 16, p. 19.
`
`B.
`
`Analysis
`
`Mr. Cook’s redirect testimony in Ex. 1054 at 727:14-728:16 should be
`
`excluded because it was in response to leading questions presented by UEI’s
`
`counsel in an attempt to hide Mr. Cook’s acknowledgements which undermine
`
`UEI’s theory of validity of claims 13-15 of the ‘207 patent, as noted above. In this
`
`testimony, Mr. Cook is used merely to echo UEI’s attorney argument as alleged
`
`expert testimony. Testimony from a friendly witness given in response to leading
`
`questions is nothing more than attorney argument. See Waddington, 2011 U.S.
`
`Dist. LEXIS 86632 at *50. Patent Owner’s attempt to testify via its expert is
`
`particularly egregious in view of Mr. Cook’s prior testimony contrary thereto noted
`
`above.
`
`IV. Conclusion
`
`In view of the above, the Board should exclude Mr. Cook’s redirect
`
`testimony in Ex. 1054 at 727:11-728:16.
`
`{01788832.1}
`
`3
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`
`
`IPR2014-01146
`
`U.S. Patent No. 8,243,207
`
`Date: July 29, 2015
`
`Respectfully submitted,
`
`/Douglas A. Miro/
`Reg. No. 31,643
`OSTROLENK FABER LLP
`1180 Avenue of the Americas, 7th Fl.
`New York, NY 10036
`(212) 382-0700
`Fax: 212-362-0888
`dmiro@ostrolenk.com
`Counsel for Petitioner
`
`{01788832.1}
`
`4
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`
`
`IPR2014-01146
`
`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. 59,614
`James J. Lukas, Reg. No. 59,114
`Matthew J. Levinstein, Pro Hac Vice
`Rob R. Harmer, Reg. No. 68,048
`GREENBURG TRAURIG, P.C.
`77 West Wacker Drive
`Suite 3100
`Chicago, IL 60101
`Maierse@gtlaw.com
`lukasj@gtlaw.com
`levinsteinm@gtlaw.com
`harmer@gtlaw.com
`chiipmail@gtlaw.com
`
`DATED: July 29, 2015
`
`{01788832.1}
`
`/Jeannie Ngai/
`Jeannie Ngai
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`New York, NY 10036
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