`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
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`IPR2014-01146
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`U.S. Patent No. 8,243,207
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`TABLE OF CONTENTS
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`Page
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`Introduction......................................................................................................1
`I.
`II. Mr. Cook’s Redirect Testimony Regarding The ‘207 Patent Should Be
`Excluded ..........................................................................................................1
`III. Conclusion .......................................................................................................3
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`TABLE OF AUTHORITIES
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`Page
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`Cases
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`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
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`1001*
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`1002*
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`1003*
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`1004*
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`1005*
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`1006*
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`1007*
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`1008-1045
`1046*
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`1047*
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`1048-1053
`1054*
`1055*
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`1056
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`EXHIBIT LIST
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`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
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`* Previously filed.
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`The following is Petitioner’s Reply In Support Of Its Motion To Exclude
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`Certain Inadmissible Testimony of Patent Owner’s Expert Alex Cook. The present
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`motion is being timely filed in accordance with the Scheduling Order that issued
`
`January 9, 2015 (Paper 10).
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`I.
`
`Introduction
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`Patent Owner does not dispute that leading questions are impermissible and
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`that testimony based thereon should be excluded. Instead, Patent Owner argues
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`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
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`record.
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`II. Mr. Cook’s Redirect Testimony Regarding The ‘207 Patent Should Be
`Excluded
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`Patent Owner complains of the alleged brevity of Petitioner’s “analysis.”
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`See Paper 30, p. 2. Patent Owner, however, ignores the discussion of the law and
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`Mr. Cook’s conflicting cross-examination testimony that support Petitioner’s
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`position that Mr. Cook’s redirect testimony should be excluded. See Paper 26, pp.
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`1-3. Indeed, Patent Owner contends that Petitioner did not “cite any legal authority
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`for what constitutes a leading question.” Id. at p. 2. This position completely
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`ignores the entire section of Petitioner’s Motion devoted to legal authority. See
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`Paper 26, pp. 1-2. In this section, Petitioner cited Waddington North Am., Inc. v.
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`Sabert Corp., No. 09-4883, 2011 U.S. Dist. LEXIS 86632, at *46–*50 (D. N.J.
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`Aug. 5, 2011), which explains what constitutes a leading question.1 Id. Petitioner
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`also cited SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1209–10 (Fed. Cir.
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`2013), which provides examples and explanation of why expert testimony provided
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`in response to leading questions from friendly counsel is unhelpful. Id.
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`Patent Owner repeats the testimony that is the subject matter of the present
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`motion in its Opposition. See Paper 30, pp. 2-3. Patent Owner then concludes that
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`the questions therein are not leading. This is clearly incorrect.
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`The first question cited by Patent Owner relates to setting a VCR timer. See
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`Id. at p. 2 As Patent Owner concedes, a question is leading if it “suggests to the
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`witness the answer desired by the examiner.” Id. This first question is leading in
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`that it specifically refers to “setting a timer” as opposed to more broadly asking
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`whether a VCR downloads data.
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`The second question cited by Patent Owner follows the first question and
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`relates to the content of the prior art Dubil reference. See Id. at p. 3. This
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`question uses the term “explicitly state” rather than a more neutral term such as
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`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).
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`“disclose” or “state” to suggest the desired answer to Mr. Cook, which Mr. Cook
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`provides. Id.
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`The last question cited by the Patent Owner relates to whether the Dubil
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`reference teaches or suggests certain features. Id. This question is clearly leading
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`in that it uses the legal term of art “teach or suggest” to signal Mr. Cook to deny
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`such teaching or suggestion, which he did. Id.
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`III. Conclusion
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`In view of the above, as well as the reasons set forth in Petitioner’s Motion
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`(Paper 26), the Board should exclude Mr. Cook’s redirect testimony in Ex. 1054,
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`727:11-728:16.
`
`Date: August 12, 2015
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`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
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`U.S. Patent No. 8,243,207
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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
`
`(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
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`{01794217.1}
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`/Jeannie Ngai/
`Jeannie Ngai
`Ostrolenk Faber LLP
`1180 Ave. of the Americas
`New York, NY 10036
`
`