IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`Applicant:
`
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`
`
`Case No.:
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`
`
`Filing Date:
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`Arling, et. al
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`
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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
`
`
`
`Universal Remote Control, Inc.
`
`v.
`
`
`
`
`
`
`Universal Electronics, Inc.
`
`
`
`Trial Paralegal: Amy Kattula
`
`Attny Doc.: 059489.144400
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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
`
`System and Method
`For Activity Based
`Configuration of an
`Entertainment System
`
`PATENT OWNER’S OPPOSITION TO 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
`5th day of August, 2015.
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`By: /Eric J. Maiers/
`Eric J. Maiers
`
`
`
`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
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Title:
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`System and Method
`For Activity Based
`Configuration of an
`Entertainment System
`
`PATENT OWNER’S OPPOSITION TO 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
`5th day of August, 2015.
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
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`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
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`
`
`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
`
`
`
`IPR2014-01146
`
`I.
`
`INTRODUCTION
`
`
`
`U.S. Pat. No. 8,243,207
`
`The Board should deny Petitioner’s Motion to Exclude (Paper No. 26)
`
`because Petitioner has failed to meet its burden to show that any evidence is
`
`inadmissible. Specifically, with respect to the redirect examination of UEI’s
`
`expert, Mr. Cook, Petitioner has not provided any analysis why any of Patent
`
`Owner’s counsel’s redirect questions is leading. Instead, Petitioner concludes
`
`without support that the Board should simply disregard all challenged questions
`
`and answers, presumably because they confirm the validity of the challenged
`
`claims.
`
`II. LEGAL STANDARDS
`A motion to exclude evidence must explain why the cited evidence is not
`
`admissible. Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`
`CBM2012-00002, Paper 66, at 61 (P.T.A.B. Jan. 23, 2014) (citing 77 Fed. Reg.
`
`48765, 48767 (Aug. 14, 2012)). The motion to exclude must also: (a) identify
`
`where in the record the objection was originally made; (b) identify where in the
`
`record the evidence sought to be excluded was relied upon by an opponent; (c)
`
`address objections to exhibits in numerical order; and (d) explain each objection.
`
`Id.
`
`
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`
`
`IPR2014-01146
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`
`
`U.S. Pat. No. 8,243,207
`
`III. MR. COOK WAS NOT ASKED LEADING QUESTIONS DURING
`REDIRECT EXAMINATION
`Petitioner has not met its burden of showing that any questions posed to Mr.
`
`Cook during his redirect examination were leading and should be excluded.
`
`Petitioner’s “analysis,” which spans less than one page, does not analyze whether
`
`any specific redirect question was, in fact, leading. Petitioner does not cite any
`
`legal authority for what constitutes a leading question.
`
`Leading questions should not be used on direct examination except as to
`
`preliminary matters. Fed. R. Evid. 611(c).1 A leading question is one that
`
`suggests to the witness the answer desired by the examiner.2 McCormick On Evid.
`
`§ 6 (7th ed.). Petitioner moves to exclude the following portion of Mr. Cook’s
`
`redirect examination, which is comprised of three questions, none of which is
`
`leading:
`
`Q. Does setting a VCR timer to record a program involve
`downloading data to the VCR?
`
`
`
`
`
`MR. BARKAUS: Objection. Leading.
`
`THE WITNESS: Not that I’m aware of. I’ve only ever
`seen VCRs where you can program the timer via the remote control or
`manually on the VCR.
`
`1 The Federal Rules of Evidence apply to inter partes review proceedings, unless
`otherwise provided in the regulations governing inter partes reviews. 37 C.F.R. §
`42.62(a).
`2 Contrary to Petitioner’s suggestion a question is not leading simply by virtue of
`the fact that its response may be a “yes” or a “no.” To be leading, a question must
`go further and actually suggest the answer to the witness.
`
`
`
`2
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`
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`IPR2014-01146
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`
`
`U.S. Pat. No. 8,243,207
`
`
`BY MR. MAIERS:
`
`
`
`Q. Does Dubil explicitly state whether a user configuration
`and activity can be stored in its VCR?
`
`
`
`MR. BARKAUS: Objection. Leading.
`
`
`
`
`
`THE WITNESS: No. I don’t believe the ‘831
`
`publication explicitly discusses storing any type of configuration in a
`VCR.
`
`BY MR. MAIERS:
`
`
`
`Q. Does Dubil teach or suggest any way that data could be
`downloaded to a VCR?
`
`
`
`
`
`
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`MR. BARKAUS: Objection. Leading.
`
`THE WITNESS: I don’t see anywhere that the ‘831
`
`publication discloses downloading any type of data to the VCR.
`
`(Ex. 1054, 727:14:-728:16.) None of these questions, or any others posed to Mr.
`
`Cook on redirect, gave him any indication as to the desired answer. Rather,
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`Petitioner appears to have filed this Motion to Exclude merely because it does not
`
`like the clarifications that Mr. Cook provided during his redirect examination.
`
`In short, Petitioner simply has not met its burden of showing that any of the
`
`three challenged questions posed to Mr. Cook on redirect were leading.
`
`Accordingly, the Board should not exclude Mr. Cook’s redirect testimony.
`
`
`
`3
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`
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`IPR2014-01146
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`
`
`U.S. Pat. No. 8,243,207
`
`IV. CONCLUSION
`For all the foregoing reasons, the Board should deny Petitioner’s Motion to
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`Exclude.
`
`
`
`Date: August 5, 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
`
`
`
`
`
`4
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`
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`IPR2014-01146
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`
`
`U.S. Pat. No. 8,243,207
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`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
`
`
`
`August 5, 2015
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`
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`
`
`
`5
`
`
`Date:
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