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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 REPLY IN SUPPORT OF ITS 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 12th day of August, 2015
`By: /Jeannie Ngai/
`Jeannie Ngai
`
`{01794217.1}
`
`

`

`IPR2014-01146
`
`U.S. Patent No. 8,243,207
`
`TABLE OF CONTENTS
`
`Page
`
`Introduction......................................................................................................1
`I.
`II. Mr. Cook’s Redirect Testimony Regarding The ‘207 Patent Should Be
`Excluded ..........................................................................................................1
`III. Conclusion .......................................................................................................3
`
`{01794217.1}
`
`i
`
`

`

`IPR2014-01146
`
`U.S. Patent No. 8,243,207
`
`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`
`SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1209–10 (Fed. Cir. 2013)..........2
`
`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) ......................................................2
`
`{01794217.1}
`
`ii
`
`

`

`IPR2014-01146
`
`U.S. Patent No. 8,243,207
`
`1001*
`
`1002*
`
`1003*
`
`1004*
`
`1005*
`
`1006*
`
`1007*
`
`1008-1045
`1046*
`
`1047*
`
`1048-1053
`1054*
`1055*
`
`1056
`
`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
`
`Waddington North Am., Inc. v. Sabert Corp., No. 09-4883, 2011
`U.S. Dist. LEXIS 86632
`
`* Previously filed.
`
`{01794217.1}
`
`iii
`
`

`

`IPR2014-01146
`
`U.S. Patent No. 8,243,207
`
`The following is Petitioner’s Reply In Support Of Its 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).
`
`I.
`
`Introduction
`
`Patent Owner does not dispute that leading questions are impermissible and
`
`that testimony based thereon should be excluded. Instead, Patent Owner argues
`
`that Petitioner has failed to identify any leading questions in Mr. Cook’s testimony.
`
`See Paper 30, p. 1. Patent Owner’s position is incorrect and unsupported by the
`
`record.
`
`II. Mr. Cook’s Redirect Testimony Regarding The ‘207 Patent Should Be
`Excluded
`
`Patent Owner complains of the alleged brevity of Petitioner’s “analysis.”
`
`See Paper 30, p. 2. Patent Owner, however, ignores the discussion of the law and
`
`Mr. Cook’s conflicting cross-examination testimony that support Petitioner’s
`
`position that Mr. Cook’s redirect testimony should be excluded. See Paper 26, pp.
`
`1-3. Indeed, Patent Owner contends that Petitioner did not “cite any legal authority
`
`for what constitutes a leading question.” Id. at p. 2. This position completely
`
`ignores the entire section of Petitioner’s Motion devoted to legal authority. See
`
`Paper 26, pp. 1-2. In this section, Petitioner cited Waddington North Am., Inc. v.
`
`{01794217.1}
`
`1
`
`

`

`IPR2014-01146
`
`U.S. Patent No. 8,243,207
`
`Sabert Corp., No. 09-4883, 2011 U.S. Dist. LEXIS 86632, at *46–*50 (D. N.J.
`
`Aug. 5, 2011), which explains what constitutes a leading question.1 Id. Petitioner
`
`also cited SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1209–10 (Fed. Cir.
`
`2013), which provides examples and explanation of why expert testimony provided
`
`in response to leading questions from friendly counsel is unhelpful. Id.
`
`Patent Owner repeats the testimony that is the subject matter of the present
`
`motion in its Opposition. See Paper 30, pp. 2-3. Patent Owner then concludes that
`
`the questions therein are not leading. This is clearly incorrect.
`
`The first question cited by Patent Owner relates to setting a VCR timer. See
`
`Id. at p. 2 As Patent Owner concedes, a question is leading if it “suggests to the
`
`witness the answer desired by the examiner.” Id. This first question is leading in
`
`that it specifically refers to “setting a timer” as opposed to more broadly asking
`
`whether a VCR downloads data.
`
`The second question cited by Patent Owner follows the first question and
`
`relates to the content of the prior art Dubil reference. See Id. at p. 3. This
`
`question uses the term “explicitly state” rather than a more neutral term such as
`
`1 A copy of this authority is provided as Ex. 1056 for the convenience of the
`Board. See 37 C.F.R. 42.13(d).
`
`{01794217.1}
`
`2
`
`

`

`IPR2014-01146
`
`U.S. Patent No. 8,243,207
`
`“disclose” or “state” to suggest the desired answer to Mr. Cook, which Mr. Cook
`
`provides. Id.
`
`The last question cited by the Patent Owner relates to whether the Dubil
`
`reference teaches or suggests certain features. Id. This question is clearly leading
`
`in that it uses the legal term of art “teach or suggest” to signal Mr. Cook to deny
`
`such teaching or suggestion, which he did. Id.
`
`III. Conclusion
`
`In view of the above, as well as the reasons set forth in Petitioner’s Motion
`
`(Paper 26), the Board should exclude Mr. Cook’s redirect testimony in Ex. 1054,
`
`727:11-728:16.
`
`Date: August 12, 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
`
`{01794217.1}
`
`3
`
`

`

`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: August 12, 2015
`
`{01794217.1}
`
`/Jeannie Ngai/
`Jeannie Ngai
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`New York, NY 10036
`
`

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