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 RESPONSE TO PATENT OWNER’S MOTION FOR
`
`OBSERVATION REGARDING CROSS-EXAMINATION OF JAMES T.
`
`GEIER
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with
`the USPTO on this 5th day of August, 2015
`
`By: /Jeannie Ngai/
`Jeannie Ngai
`
`{01791079.1}
`
`
`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 RESPONSE TO PATENT OWNER’S MOTION FOR
`
`OBSERVATION REGARDING CROSS-EXAMINATION OF JAMES T.
`
`GEIER
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with
`the USPTO on this 5th day of August, 2015
`
`By: /Jeannie Ngai/
`Jeannie Ngai
`
`{01791079.1}
`
`
`
`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.
`
`{01791079.1}
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`i
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`IPR2014-01146
`
`U.S. Patent No. 8,243,207
`
`The following is Petitioner’s Response to Patent Owner’s Motion For
`
`Observation Regarding The Cross-Examination Of James T. Geier. This response
`
`is being timely filed in accordance with the Scheduling Order that issued January
`
`9, 2015 (Paper 10).
`
`Response To Observation #1
`
`Patent Owner’s assertion that Mr. Geier’s credibility is in question based on
`
`the alleged lack of his prior retentions related to universal remote controls is
`
`without merit in view of Mr. Geier’s testimony related to his prior retentions
`
`contrary to these assertions in Exhibit 2030 at p.8, l. 15 to p. 9, l. 23. Patent Owner
`
`also neglects to cite to Exhibit 1003, ¶¶4, 5 and 6 explaining Mr. Geier’s
`
`experience in wireless communication and system control or Exhibit 1055,
`
`Appendix A including Mr. Geier’s CV which lists his extensive experience in these
`
`fields.
`
`Response To Observation #2
`
`Patent Owner’s assertion that Mr. Geier lacks credibility because he was not
`
`aware of either Petitioner or Patent Owner prior to being retained and was not
`
`aware of the major competitors in the universal remote control field is meritless
`
`and irrelevant. Mr. Geier testified that he believed there were competitors in the
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`IPR2014-01146
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`U.S. Patent No. 8,243,207
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`market, other than Petitioner and Patent Owner, but did not recall specific names of
`
`other manufacturers. See Exhibit 2030, at p. 21, l. 13 to p. 22, l. 1.
`
`Response To Observation #3
`
`Patent Owner’s assertion that Mr. Geier lacks credibility because “nothing
`
`on his CV relates to work in the universal remote control field for entertainment
`
`systems,” is simply wrong as can be seen with respect to Mr. Geier’s testimony in
`
`Exhibit 2030, p.8, l. 15 to p. 9, l. 23; p. 11, l. 20 to p. 12, l. 17; p. 13, ll. 10-23 and
`
`Exhibit 1055, Appendix A.
`
`Response To Observation #4
`
`Patent Owner’s contention that Mr. Geier lacks credibility because he
`
`indicated that the ‘207 patent relates to security and encryption protocols is also
`
`incorrect. In the portion of Exhibit 2030 referred to by Patent Owner in support of
`
`this erroneous assertion, Mr. Geier testified that part of the subject matter of the
`
`‘207 patent relates to security and encryption protocols. See Exhibit 2030, p. 42, l.
`
`23 to p. 43, l. 10. Mr. Geier then clarified this relationship in Exhibit 2030 at p. 40,
`
`ll. 6-11 and p. 42, ll. 10-22.
`
`{01791079.1}
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`IPR2014-01146
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`U.S. Patent No. 8,243,207
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`Response To Observation #5
`
`Patent Owner’s contention that Mr. Geier lacks credibility because he has
`
`not designed universal remote controls specifically designed to control
`
`entertainment systems is meritless and incorrect in light of Mr. Geier’s testimony
`
`in Exhibit 2030, at p. 49, ll. 5-14 and p. 71, l. 3 to p. 72, l. 2.
`
`Response To Observation #6
`
`Patent Owner’s assertion that Mr. Geier’s understanding of the Board’s
`
`broad claim construction of the term “configuration of the entertainment device” as
`
`not requiring a signal to be sent to the claimed “entertainment device” is simply
`
`incorrect. Mr. Geier testified that he agreed with the Board’s broad construction
`
`and referred to Paragraph 18 of his declaration (Exhibit 1055) with respect to his
`
`understanding of this term. See Exhibit 2030, p. 80, l. 7 to 81, l. 2. Mr. Geier also
`
`testified that under this construction, signals may be received by the entertainment
`
`device. Id., p. 84, ll. 16-21. Further, Patent Owner’s argument that the Board’s
`
`broad construction of this term is inconsistent with claims 13 and 14 does not
`
`depend on Mr. Geier’s testimony and is a new and untimely argument.
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`{01791079.1}
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`IPR2014-01146
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`U.S. Patent No. 8,243,207
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`Response To Observation #7
`
`Patent Owner’s contention that Mr. Geier’s testimony regarding the
`
`“Summary of the Invention” section of the ‘207 patent “supports the Board’s
`
`proposed narrow construction of ‘configuration of the entertainment device’” is
`
`incorrect in view of Mr. Geier’s testimony in Exhibit 2030, p. 92, ll. 8-13 and in
`
`Exhibit 1055, ¶¶ 17-20.
`
`Response To Observation #8
`
`Patent Owner’s argument that Mr. Geier’s testimony with respect to the
`
`switching abilities of the VCRs that he has owned casts doubt on his understanding
`
`of the teachings of the Dubil reference is meritless in view of Mr. Geier’s
`
`testimony in Exhibit 2030 at p. 95, l. 7 to p. 98, l. 2; p. 100, l. 16 to p. 101, l. 14
`
`and Exhibit 1055, ¶25.
`
`Response To Observation #9
`
`Patent Owner’s contention that Mr. Geier admitted that Dubil does not
`
`explicitly disclose that after a user involves an activity set, it sends a single
`
`command to the VCR confirms that Dubil does not disclose “causing the
`
`entertainment device to access and use the configuration associated with the
`
`command valued corresponding to the activity key of the controlling device …” is
`4
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`IPR2014-01146
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`U.S. Patent No. 8,243,207
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`incorrect in view of Mr. Geier’ testimony regarding this limitation in Exhibit 1003
`
`at ¶¶46, 52 and in Exhibit 2030, p. 123, l. 17 to p. 125, l. 4.
`
`Response To Observation #10
`
`Patent Owner’s contention that Mr. Geier’s alleged admission that Dubil
`
`does not disclose a VCR having output switching capabilities but that someone of
`
`skill in the art would understand that VCRs could have output switching
`
`capabilities demonstrates that Mr. Geier conflates the anticipation and obviousness
`
`standard is meritless in view of Mr. Geier’s testimony contrary to this in Exhibit
`
`2030, p. 119, l. 19 to p. 120, l. 2 and Exhibit 1055, ¶25.
`
`Response To Observation #11
`
`Patent Owner’s contention that Mr. Geier’s alleged admission that Dubil
`
`explicitly discloses only a single video output device but that someone of skill in
`
`the art would understand that certain DVD players could be portable DVD players
`
`with their own video displays demonstrates that he conflated the anticipation and
`
`obviousness standard is simply incorrect in view of Mr. Geier’s testimony in
`
`Exhibit 2030 p. 119, l. 19 to p. 120, l. 2 and Exhibit 1055, ¶25.
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`{01791079.1}
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`IPR2014-01146
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`U.S. Patent No. 8,243,207
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`Response To Observation #12
`
`Patent Owner’s contention that Mr. Geier’s alleged admission that Dubil
`
`does not explicitly disclose that pressing an activity key results in transmission of a
`
`single command to the VCR of Dubil but that someone of skill in the art would
`
`understand that pressing an activity key could result in transmission of a single
`
`command to an entertainment device demonstrates that he conflated the
`
`anticipation and obviousness standard is meritless in view of Mr. Geier’s testimony
`
`in Exhibit 2030, at p. 123, l. 17 to p. 124, l. 6.
`
`Date: August 5, 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
`
`{01791079.1}
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`6
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`IPR2014-01146
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`U.S. Patent 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):
`
`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: August 5, 2015
`
`{01791079.1}
`
`/Jeannie Ngai/
`Jeannie Ngai
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`New York, NY 10036
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