Universal Remote Control, Inc. v.
`Universal Electronics Inc.
`
`IPR2014-01146 (USPN 8,243,207)
`
`Oral Hearing, September 2, 2015
`Judges Blankenship, Medley and Capp
`
`Universal Electronics Exhibit 2070, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`
`Universal Electronics Inc.
`
`IPR2014-01146 (USPN 8,243,207)
`
`Oral Hearing, September 2, 2015
`Judges Blankenship, Medley and Capp
`
`Universal Electronics Exhibit 2070, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`
`
`Overview
`
`Introduction to U.S. Patent No. 8,243,207 (the
`“‘207 Patent”)
`
`Claim Construction of “Configuration of the
`Entertainment Device”
`
`Dubil Does Not Anticipate Claims 13-15
`
`2
`
`Universal Electronics Exhibit 2070, Page 2
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
`
`Introduction to the ‘207 Patent
`
`Activity based configuration of an entertainment system
`Invention routes outputs and inputs of various AV system
`components through central “entertainment device”
`Upon pressing activity key, invention sends signal from universal
`remote control to entertainment device to initiate predefined
`configuration of AV system
`
`(‘207 Patent, Ex. 1001, Fig. 1; Institution Decision, Paper 9, pp. 2-3.)
`
`3
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`Universal Electronics Exhibit 2070, Page 3
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
`
`Challenged Claim 13 of the ‘207 Patent
`
`13. A method for configuring an audio visual entertainment device
`in communication with a plurality of devices for an activity, comprising:
`associating a command value corresponding to an activity key of a
`controlling device, the configuration of the entertainment device comprising
`at least one of the plurality of devices being used as an audio visual input
`source device for the entertainment device and at least one of the plurality of
`devices being used as an audio visual output destination device for the
`entertainment device; and
`causing the entertainment device to access and use the
`configuration associated with the command value corresponding to the
`activity key of the controlling device in response to the entertainment device
`receiving from the controlling device a signal which includes the command
`value corresponding to the activity key of the controlling device;
`wherein the configuration of the entertainment device is
`downloaded into the entertainment device from a computing device in
`communication with the entertainment device and wherein a configuration of
`the controlling device in which an activation of one or more command keys of
`the controlling device will cause the controlling device to communicate
`commands to the one or more of the audio visual source device and the
`audio visual output destination device is downloaded into the controlling
`device from a computing device in communication with the controlling device.
`(‘207 Patent, Ex. 1001, Claim 13.)
`
`4
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`Universal Electronics Exhibit 2070, Page 4
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
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`Additional Challenged Claims of the ‘207 Patent
`
`“Independent claim 14 is substantially similar in scope to
`claim 13, except that it omits limitations directed to
`downloading device configuration information from a
`computing device.” (Institution Decision, Paper 9, p. 15;
`‘207 Patent, Ex. 1001, Claim 14.)
`
`Claim 15: “The method as recited in claim 14, comprising
`causing the entertainment device to display in a display
`associated with the entertainment device, in response to
`receiving the configuration request signal, a graphical user
`interface for allowing a user to select at least one of the
`plurality of devices to be used in the configuration for the
`entertainment device.” (‘207 Patent, Ex. 1001, Claim 15.)
`
`5
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`Universal Electronics Exhibit 2070, Page 5
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
`
`Claim Construction
`
`Key term: “configuration of the entertainment
`device”
`
`Key term appears in each of challenged Claims
`13-15 of the ‘207 Patent
`
`6
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`Universal Electronics Exhibit 2070, Page 6
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
`
`“configuration of the entertainment device”
`
`“Active” Construction
`“require[s] transmission of a signal to
`the entertainment device such that the
`configuration thereof contemplates
`affirmatively selecting an AV input
`source and an AV output destination
`and affirmatively performing
`switching actions accordingly.”
`
`(Institution Decision, Paper 9, p. 9 (emphases added).)
`
`“Passive” Construction
`“the entertainment device and
`associated input and output
`appliances are ‘configured’ by
`selectively powering on and
`powering off the input and output
`appliances so that, for example, only
`one input appliance supplies an active
`input signal to the entertainment
`device and only one output appliance
`renders the output signal. Such a
`broad construction would cause the
`claims to read on AV receivers and
`other entertainment devices that
`passively transmit signals from
`input to output appliances without
`necessarily engaging in any
`switching activity.”
`(Institution Decision, Paper 9, p. 9-10 (emphases added).)
`
`7
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`Universal Electronics Exhibit 2070, Page 7
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
`
`The ‘207 Specification Confirms That “configuration of the
`entertainment device” Requires Affirmatively Performing Switching
`Actions
`Summary of the Invention:
`“This invention relates generally to improved methods for
`configuring a multi-input and/or multi-output home entertainment
`system to match a user’s desired activities. In such systems, the
`outputs and inputs of the various components are generally
`routed to and switched through one central device such as
`an AV receiver. The inventive methods described herein
`comprise a cooperative effort between the AV receiver and
`an associated universal controlling device such as a remote
`control in which activation of an activity key or button on the
`controlling device results in transmission of a signal to the AV
`receiver to initiate certain previously defined configuration
`actions….”
`
`(‘207 Patent, Ex. 1001 at 1:34-42 (emphases added);
`Patent Owner Response, Paper 16, pp. 7-8.)
`
`8
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`Universal Electronics Exhibit 2070, Page 8
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
`
`The ‘207 Specification Confirms That “configuration of the
`entertainment device” Requires Affirmatively Performing Switching
`Actions
`
`Characterizes invention as a whole.
`Not limited to any preferred a preferred embodiment
`Invention requires “cooperative effort” between
`entertainment device (AV receiver) and controlling device
`(universal remote control). (‘207 Patent, Ex. 1001 at 1:34-42
`(emphases added).)
`Entertainment device that passively transmits signals from
`input to output devices without any switching activity is not
`“cooperative effort” between entertainment device and
`controlling device
`
`(Patent Owner Response, Paper 16, pp. 7-8;
`Cook Decl., Ex. 2029, ¶¶ 39-40.)
`
`9
`
`Universal Electronics Exhibit 2070, Page 9
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`
`
`The ‘207 Specification Confirms That “configuration of the
`entertainment device” Requires Affirmatively Performing Switching
`Actions
`
`Petitioner’s expert admits that the “Summary
`of the Invention” of the ‘207 patent discloses
`an invention in which it is “very clear” “that
`the various components are generally
`routed to and switched through one
`central device such as an AV receiver.”
`(Geier Dep. Tr., Ex. 2030, 90:11-92:24 (emphasis
`added); Motion for Observation re Cross-Examination of
`James T. Geier (“Mot. for Observation”), Paper 27, p. 4.)
`
`10
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`Universal Electronics Exhibit 2070, Page 10
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`
`
`The ‘207 Specification Confirms That “configuration of the
`entertainment device” Requires Affirmatively Performing Switching
`Actions
`
`“audio and video inputs and outputs … may comprise analog or
`digital signals and exemplary AV receiver 102 may be
`provisioned with analog-to-digital (ADC) converters, digital-to-
`analog (DAC) converters, video decoders, HDMI
`encoder/decoders, CODECs, format converters, etc., all as
`necessary to implement the input/output switching and
`routing functionality.” (‘207 Patent, Ex. 1001 at 4:63-5:3 (emphasis
`added).)
`
`• Switching may be achieved in many ways, but AV receiver
`must implement some form of active switching (Patent Owner
`Response, Paper 16, pp. 8-9; Cook Decl., Ex. 2029, ¶ 42.)
`
`11
`
`Universal Electronics Exhibit 2070, Page 11
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`
`
`The ‘207 Specification Confirms That “configuration of the
`entertainment device” Requires Affirmatively Performing Switching
`Actions
`
`As the Board noted:
`“Audio/video outputs of a group of various media source
`appliances such as for example a set top box (“STB”) 104, a first
`DVD player 106, a second DVD player 108, a game console
`110, and a CD changer 112 are all connected as inputs to an AV
`receiver 102. AV receiver 102 in turn functions to switch the
`currently desired input media stream to one or more designated
`outputs of AV receiver 102 which are, in turn, connected to
`various audio and/or video rendering devices such as TV 114,
`projector 118, and/or loudspeakers 116….”
`
`(‘207 Patent, Ex. 1001 at 2:24-37 (emphasis added);
`Institution Decision, Paper 9, pp. 9-10.)
`
`12
`
`Universal Electronics Exhibit 2070, Page 12
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`
`
`“configuration of the entertainment device”
`
`“Active” Construction
`“require[s] transmission of a signal to
`the entertainment device such that the
`configuration thereof contemplates
`affirmatively selecting an AV input
`source and an AV output destination
`and affirmatively performing
`switching actions accordingly.”
`
`(Institution Decision, Paper 9, p. 9 (emphases added).)
`
`“Passive” Construction
`“the entertainment device and
`associated input and output
`appliances are ‘configured’ by
`selectively powering on and
`powering off the input and output
`appliances so that, for example, only
`one input appliance supplies an active
`input signal to the entertainment
`device and only one output appliance
`renders the output signal. Such a
`broad construction would cause the
`claims to read on AV receivers and
`other entertainment devices that
`passively transmit signals from
`input to output appliances without
`necessarily engaging in any
`switching activity.”
`(Institution Decision, Paper 9, p. 9-10 (emphases added).)
`
`13
`
`Universal Electronics Exhibit 2070, Page 13
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
`
`“configuration of the entertainment device”
`
`• Plaintiff’s expert admitted that the passive construction
`does not require signal to be sent to claimed
`“entertainment device.” (Ex. 2030, 86:20-87:16; Motion for
`Observation re Cross-Examination of James T. Geier, Paper 27, pp. 3-4.)
`• Contradicts highlighted language of the following
`limitation:
`“causing the entertainment device to access and use
`the configuration associated with the command value
`corresponding to the activity key of the controlling
`device in response to the entertainment device
`receiving from the controlling device a signal which
`includes the command value corresponding to the
`activity key of the controlling device.”
`(‘207 Patent, Ex. 1001, Claims 13 -14 (bracketed text appears only in Claim 14)
`(emphasis added); Mot. for Observation, Paper 27, pp. 3-4.)
`
`14
`
`Universal Electronics Exhibit 2070, Page 14
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
`
`Prior Art at Issue
`
`Dubil
`“Dubil discloses a remote control
`device that provides commands
`based on the configuration of
`components in an AV system.”
`(Institution Decision, Paper 9,
`p.10.)
`
`Pressing “activity set” key on Dubil
`remote control maps set of
`functions to the Dubil remote
`control itself and may transmit
`commands to various home
`entertainment system components.
`(Patent Owner Response, Paper
`16, p. 15; Cook Decl., Ex. 2029, ¶¶
`62-63.)
`
`15
`
`Universal Electronics Exhibit 2070, Page 15
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`
`
`Dubil Does Not Anticipate Claims 13-15
`
`Dubil does not meet proper construction of “configuration of
`the entertainment device”
`– Dubil’s VCR (the alleged entertainment device) does not
`affirmatively select output components or perform
`switching actions. (Patent Owner Response, Paper 16, p.
`11; Cook Decl., Ex. 2029, ¶ 53.)
`– VCR is passthrough device that does not perform any
`switching operations to select outputs. (Patent Owner
`Response, Paper 16, p. 12; Cook Decl., Ex. 2029, ¶ ¶ 54-
`57.)
`– Plaintiff’s expert cannot recall any VCR he ever owned
`that was capable of switching between output devices.
`(Geier Dep. Tr., Ex. 2030, 95:3-6; 102:6-12; Mot. for
`Observation, Paper 27, pp. 4-5.)
`– Plaintiff’s expert admits that Dubil does not explicitly
`disclose a VCR having output switching capabilities.
`(Geier Dep. Tr., Ex. 2030, 95:7-102:12; Mot. for
`Observation, Paper 27, pp. 5-6.)
`
`16
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`Universal Electronics Exhibit 2070, Page 16
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
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`Dubil Does Not Anticipate Claims 13-15
`
`Dubil does not “associat[e] a command value
`corresponding to an activity key of a controlling
`device with a configuration of the entertainment
`device” (Claims 13-15)
`– Pressing “activity set” key on Dubil remote control maps set
`of functions to Dubil remote control itself and may transmit
`commands to various home entertainment system
`components. (Patent Owner Response, Paper 16, p. 15;
`Cook Decl., Ex. 2029, ¶¶ 62-63.)
`– Plaintiff’s expert admits Dubil does not explicitly disclose that
`after user invokes an activity set, the Dubil remote sends a
`single command to VCR that configures entertainment
`system. (Geier Dep. Tr., Ex. 2030, 124:8-128:13; Mot. for
`Observation, Paper 27, pp. 5, 6-7.)
`
`17
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`Universal Electronics Exhibit 2070, Page 17
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`Dubil Does Not Anticipate Claims 13-15
`
`For same reasons, Dubil cannot “caus[e] the
`entertainment device to access and use the configuration
`associated with the command value corresponding to the
`activity key of the controlling device in response to the
`entertainment device receiving from the controlling device
`a signal which includes the command value corresponding
`to the activity key of the controlling device.” (Claims 13-
`15)
`– Entertainment device cannot access and use
`configuration in response to receiving a signal if Dubil
`remote does not transmit a signal including a
`command value corresponding to an activity of
`Dubil remote. (Patent Owner Response, Paper 16, pp.
`16-17; Cook Decl., Ex. 2029, ¶¶ 64-66.)
`
`18
`
`Universal Electronics Exhibit 2070, Page 18
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
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`Dubil Does Not Anticipate Claims 13
`
`Dubil does not teach “wherein the configuration of the
`entertainment device is downloaded into the entertainment
`device from a computing device in communication with the
`entertainment device” (Claim 13)
`– Petitioner relies on Dubil ¶ 34 and its vague reference
`to “user’s equipment.” (Patent Owner Response,
`Paper 16, pp.18-19.)
`– When read in context, Dubil ¶ ¶ 34-36 explains that
`user configuration and activity set is downloaded to
`remote control, not Dubil VCR. (Patent Owner
`Response, Paper 16, p. 19; Cook Decl., Ex. 2029, ¶ ¶
`72-74.)
`
`19
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`Universal Electronics Exhibit 2070, Page 19
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
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`Dubil Does Not Anticipate Claims 13-15
`
`20
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`Universal Electronics Exhibit 2070, Page 20
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`
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`Dubil Does Not Anticipate Claims 13-15
`
`21
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`Universal Electronics Exhibit 2070, Page 21
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`
`
`Dubil Does Not Anticipate Claims 13-15
`
`Dubil does not “caus[e] the entertainment device to display
`in a display associated with the entertainment device, in
`response to receiving the configuration request signal, a
`graphical user interface for allowing a user to select at
`least one of the plurality of devices to be used in the
`configuration for the entertainment device.”
`– Dubil display permits selection of activity set, not of
`input/output devices, as required. (Patent Owner
`Response, Paper 16, p. 28; Cook. Decl., Ex. 2029, ¶¶
`90-91.)
`– Dubil display not “associated with the entertainment
`device.” Disclosed “personal computer” GUI not
`associated with the entertainment device. (Patent
`Owner Response, Paper 16, pp. 28-29; Cook Decl.,
`Ex. 2029, ¶¶ 92-93.)
`
`22
`
`Universal Electronics Exhibit 2070, Page 22
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`
`
`Dubil Does Not Anticipate Claims 13-15
`
`‘207 Patent, Ex. 1001, Figure 6
`
`‘207 Patent / Dubil
`Dubil: “The user invokes an activity
`set, using, for example, … a menu
`that is presented on a display
`device.” (Dubil, Ex. 1005, ¶ 31.)
`
`‘207 Patent: Allow user to choose
`desired source device.
`
`‘207 Patent: Allow user to choose
`desired destination device.
`
`23
`
`Universal Electronics Exhibit 2070, Page 23
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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