IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`Applicant:
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`Case No.:
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`
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`Filing Date:
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`Arling, et. al
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`IPR2014-01146
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`
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`09/29/2009
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`
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`Patent No.:
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`8,243,207
`
`
`
`Universal Remote Control, Inc.
`
`v.
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`
`
`
`
`
`Universal Electronics, Inc.
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`
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`Trial Paralegal: Amy Kattula
`
`Attny Doc.: 059489.144400
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`System and Method
`For Activity Based
`Configuration of an
`Entertainment System
`
`PRELIMINARY RESPONSE OF PATENT OWNER
`PURSUANT TO 37 C.F.R. § 42.107
`
`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
`
`Certificate of Filing: I hereby certify that his correspondence is being electronically filed with the USPTO on this
`21st day of October, 2014.
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`By: /Eric J. Maiers/
`Eric J. Maiers
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. CLAIM CONSTRUCTION .......................................................................... 2
`
`III. THE PETITION DOES NOT MEET THE STATUTORY .................... 10
`
`A. Ground 1: Dubil Does Not Anticipate Or Render Obvious
`Claims 12-15. ...................................................................................... 13
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Dubil Does Not Anticipate Claim 12 Of The ‘207
`Patent. ....................................................................................... 13
`Dubil Does Not Render Obvious Claim 12 Of The
`‘207 Patent. .............................................................................. 20
`Dubil Does Not Anticipate Claim 13 Of The ‘207
`Patent. ....................................................................................... 22
`Dubil Does Not Render Obvious Claim 13 Of The
`‘207 Patent. .............................................................................. 27
`Dubil Does Not Anticipate Claim 14 Of The ‘207
`Patent. ....................................................................................... 28
`Dubil Does Not Render Obvious Claim 14 Of The
`‘207 Patent. .............................................................................. 33
`Dubil Does Not Anticipate Claim 15 Of The ‘207
`Patent. ....................................................................................... 34
`Dubil Does Not Render Obvious Claim 15 Of The
`‘207 Patent. .............................................................................. 35
`
`B. Ground 2: Niles, Alone, Or In View Of Dubil And/Or
`Kozakai Does Not Render Obvious Claims 12, 13, 14,
`And/Or 15. .......................................................................................... 36
`
`1.
`
`2.
`
`3.
`
`Niles Does Not Qualify As A Printed Publication
`Under 35 U.S.C. § 102(b). ....................................................... 36
`Niles, Alone, Or In View Of Dubil And/Or Kozakai
`Do Not Render Obvious Claim 12 Of The ‘207 Patent. ...... 39
`Niles, Alone, Or In View Of Dubil And/Or Kozakai
`Does Not Render Obvious Claim 13 Of The ‘207
`Patent. ....................................................................................... 45
`
`i
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`

`

`IPR2014-01146
`
`4.
`
`5.
`
`Niles, Alone, Or In View Of Dubil And/Or Kozakai
`Does Not Render Obvious Claim 14 Of The ‘207
`Patent. ....................................................................................... 46
`Niles, Alone, Or In View Of Dubil Does Not Render
`Obvious Claim 15 Of The ‘207 Patent. ................................. 48
`
`IV. CONCLUSION ............................................................................................ 52
`
`
`
`ii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`In re Am. Acad. Of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 2
`Bruckelmyer v. Ground Heaters, Inc.,
`445 F.3d 1374 (Fed. Cir. 2006) .................................................................... 37, 38
`Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp.,
`93 F.3d 1572 (Fed. Cir. 1996) .............................................................................. 7
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .........................................................................................passim
`In ResQNet.com, Inc. v. Lansa, Inc.,
`594 F.3d 860 (Fed. Cir. 2010) ............................................................................ 38
`In re Klopfenstein,
`380 F.3d 1345 (Fed. Cir. 2004) .................................................................... 37, 38
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 21
`Kyocera Wireless Corp. v. Int'l Trade Comm'n,
`545 F.3d 1340 (Fed. Cir. 2008) .......................................................................... 37
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) ............................................................................ 36
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ................................................................ 15, 24, 29
`Therasense, Inc. v. Becton, Dickinson & Co.,
`560 F. Supp. 2d 835 (N.D. Cal. 2008) ................................................................ 36
`
`PTAB Decisions
`3D-Matrix, Ltd. v. Menicon Co.,
`Case IPR2014-00398, Paper No. 11 (P.T.A.B. Aug. 1, 2014) ............... 15, 24, 29
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc.,
`IPR2013-00222, Paper No. 12 (P.T.A.B. Aug. 12, 2013) ...........................passim
`eBay, Inc. v. Paid, Inc.,
`CBM2014-00125, Paper 15 (P.T.A.B. Sept. 30, 2014) ...................................... 22
`iii
`
`

`

`IPR2014-01146
`
`Eizo Corp. v. Barco N.V.,
`IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014) ...................................passim
`Heart Failure Techs., LLC v. CardioKinetix, Inc.,
`IPR2013-00183, Paper No. 12 (P.T.A.B. July 31, 2013) ................................... 44
`Mohawk Resources Ltd. V. Vehicle Service Group, LLC,
`Case IPR2014-00464, Paper 10 (P.T.A.B. Aug. 29, 2014) .......................... 11, 12
`Moses Lake Indus., Inc. v. Enthone, Inc.,
`IPR2014-00243, Paper 6 (P.T.A.B. June 18, 2014) ........................................... 21
`Moses Lake Indus., Inc. v. Enthone, Inc.,
`IPR2014-00246, Paper 6 (P.T.A.B. June 18, 2014) ..................................... 21, 22
`SAS Institute, Inc. v. ComplementSoft, LLC,
`IPR2013-00581, Paper No. 15 (P.T.A.B. Dec. 30, 2013) .................................. 44
`Synopsis v. Mentor Graphics Corp.,
`IPR2012-00042, Paper No. 16 (P.T.A.B. Feb. 22, 2013) ................................... 36
`
`Federal Statutes
`
`35 U.S.C. § 102 .............................................................................................. 1, 36, 38
`35 U.S.C. § 102(b) ............................................................................................. 37, 38
`35 U.S.C. § 103 .................................................................................................passim
`35 U.S.C. § 313 .................................................................................................... 1, 10
`35 U.S.C. § 314(a) ................................................................................................... 10
`
`Regulations
`
`37 C.F.R. § 42.100(b) ................................................................................................ 2
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.107(b) ................................................................................................ 1
`Manuel of Patent Examining Procedure
`MPEP § 2111 ........................................................................................................ 2
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756 48,763 (Aug. 14, 2012) ..................................................... 11
`
`iv
`
`

`

`EXHIBIT LIST
`
`EXHIBIT LIST
`
`
`Ex. 2001 Mohawk Resources Ltd. V. Vehicle Service Group, LLC, Case
`Mohawk Resources Ltd. V. Vehicle Service Group, LLC, Case
`IPR2014-00464, Paper 10 (Aug. 29, 2014)
`IPR2014-00464, Paper 10 (Aug. 29, 2014)
`
`
`
`EX.
`
`2001
`
`
`Ex. 2002
`
`EX.
`
`2002
`
`
`Ex. 2003
`
`2003
`
`EX.
`
`
`Ex. 2004
`
`2004
`
`EX.
`
`Edmund Optics, Inc. v. Semrock, Inc., Case IPR2014-00583, Paper 9
`Edmund Optics, Inc. v. Semrock, Inc., Case IPR2014-00583, Paper 9
`(P.T.A.B. Sept. 19, 2014)
`(P.T.A.B. Sept. 19, 2014)
`
`3D-Matrix, Ltd. v. Menicon Co., Case IPR2014-00398, Paper No. 11
`3D-Matrix, Ltd. v. Menicon Co., Case IPR2014-00398, Paper No. 11
`(P.T.A.B. Aug. 1, 2014)
`(P.T.A.B. Aug. 1, 2014)
`
`Eizo Corp. v. Barco N.V., IPR2014-00358, Paper 11 (P.T.A.B. July
`Eizo Corp. v. Barco N. V., IPR2014-00358, Paper 11 (P.T.A.B. July
`23, 2014)
`23, 2014)
`
`
`Ex. 2005 Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6
`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6
`(P.T.A.B. June 18, 2014)
`(P.T.A.B. June 18, 2014)
`
`EX.
`
`2005
`
`
`Ex. 2006 Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00246, Paper 6
`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00246, Paper 6
`(P.T.A.B. June 18, 2014)
`(P.T.A.B. June 18, 2014)
`
`EX.
`
`2006
`
`
`Ex. 2007
`
`EX.
`
`2007
`
`
`Ex. 2008
`
`2008
`
`EX.
`
`eBay, Inc. v. Paid, Inc., CBM2014-00125, Paper 15 (P.T.A.B. Sept.
`eBay, Inc. v. Paid, Inc., CBM2014-00125, Paper 15 (P.T.A.B. Sept.
`30, 2014)
`30, 2014)
`
`Synopsis v. Mentor Graphics Corp., IPR2012-00042, Paper No. 16
`Synopsis v. Mentor Graphics Corp., IPR2012-00042, Paper No. 16
`(P.T.A.B. Feb. 22, 2013)
`(P.T.A.B. Feb. 22, 2013)
`
`
`Ex. 2009 Dominion Dealer Solutions, LLC v. AutoAlert, Inc., IPR2013-00222,
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., IPR2013-00222,
`Paper No. 12 (P.T.A.B. Aug. 12, 2013)
`Paper No. 12 (P.T.A.B. Aug. 12, 2013)
`
`EX.
`
`2009
`
`
`Ex. 2010
`
`EX.
`
`2010
`
`SAS Institute, Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper
`SAS Institute, Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper
`No. 15 (P.T.A.B. Dec. 30, 2013)
`No. 15 (P.T.A.B. Dec. 30, 2013)
`
`
`Ex. 2011 Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183,
`Heart Failure Techs., LLC v. CardioKinetix, Inc. , IPR2013-00183 ,
`Paper No. 12 (P.T.A.B. July 31, 2013)
`Paper No. 12 (P.T.A.B. July 31, 2013)
`
`EX.
`
`2011
`
`v
`
`

`

`
`
`Universal Electronics, Inc. (“UEI” or “Patent Owner”), respectfully submits
`
`this Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. §
`
`42.107 in response to the Petition for Inter Partes Review of Claims 12-15 of U.S.
`
`Patent No. 8,243,207 (the “‘207 patent”) filed by Universal Remote Control, Inc.
`
`(“URC” or “Petitioner”). This Preliminary Response is timely under 37 C.F.R. §
`
`42.107(b) because UEI filed this Response within three months of July 21, 2014,
`
`the mailing date of the Notice of Filing Date Accorded to Petition and Time for
`
`Filing Patent Owner Preliminary Response (Paper 3).
`
`I.
`
`INTRODUCTION
`
`Petitioner alleges that challenged claims 12-15 of the ‘207 patent are (1)
`
`anticipated under 35 U.S.C. § 102 or are rendered obvious under 35 U.S.C. § 103
`
`by U.S. Patent Publication No. 2003/0120831 (“Dubil”) and (2) rendered obvious
`
`under 35 U.S.C. § 103 by IntelliControl Reference Manual, Version 8.1 (“Niles”),
`
`alone, or in view of Dubil and/or U.S. Patent No. 4,527,204 (“Kozakai”).
`
`Petitioner does not always make clear which combinations of prior art it is relying
`
`on to invalidate each challenged claim.
`
`The Board should decline to institute inter partes review proceedings based
`
`on each of the above grounds because each suffers from one or more fatal defects.
`
`For example, rather than specifically identify where each limitation of each
`
`challenged claim can be found in its dual anticipatory / single-reference
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`
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`

`

`IPR2014-01146
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`obviousness Ground 1, Petitioner simply waves its hand over the reference (Dubil)
`
`and concludes without support that the limitations are either expressly, inherently,
`
`and/or obviously disclosed. In any case, the two main references relied upon by
`
`Petitioner, i.e., Dubil and Niles, each fails to disclose all of the limitations of each
`
`of the challenged claims. Moreover, Petitioner’s obviousness combinations do not
`
`identify any motivation to combine the references by one of ordinary skill in the
`
`art. Indeed, Petitioner never mentions, let alone applies, the Graham obviousness
`
`test. The Petition does not present a single cogent and complete basis for invalidity
`
`that meets the requirements for inter partes review. For these reasons, Petitioner
`
`has not met its burden to demonstrate a reasonable likelihood that any of Claims
`
`12, 13, 14, and/or 15 are invalid, and thus the Board should decline to institute
`
`inter partes review.
`
`II. CLAIM CONSTRUCTION
`At the outset, Patent Owner agrees with Petitioner that because the ‘207
`
`patent has not expired, the Board must construe its claims under the “broadest
`
`reasonable interpretation” standard. In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d
`
`1359, 1364 (Fed. Cir. 2004); MPEP § 2111; 37 C.F.R. § 42.100(b).
`
`Claim 12 of the ‘207 patent reads as follows:
`
`A method for configuring an audio visual entertainment device in
`communication with a plurality of devices for an activity, comprising:
`
`
`
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`2
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`

`IPR2014-01146
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`associating a command value corresponding to an activity key of a
`controlling device with a configuration of the entertainment
`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;
`
`
`causing the entertainment deice 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; and
`
`
`displaying in a display associated with the entertainment device a
`graphical user interface for allowing a user to select at least one of
`the plurality of devices to be used in the configuration;
`
`
`wherein the user selection of at least one of the plurality devices to be
`used in the configuration comprises one or more signals received
`from the controlling device having data indicative of an appliance,
`wherein the one or more signals are transmitted from the
`controlling device to the entertainment device in response to an
`activation of a one or more keys of the controlling device which
`are associated within the controlling device to an appliance being
`selected for use in the configuration, and wherein the controlling
`device further uses the activation of the one or more keys to
`automatically configure itself whereupon 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.
`
`
`(‘207 patent at Claim 12.)
`
`Briefly, Claim 12 of the ‘207 patent discloses a method to configure an
`
`audio visual entertainment device in communication with a plurality of devices for
`
`
`
`3
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`

`

`IPR2014-01146
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`an activity. (‘207 patent at Claim 12.) For example, as shown in Figure 1 of the
`
`‘207, an AV receiver 200 may be connected to a plurality of other devices.
`
`
`
`(Id. at Fig. 1.) A controlling device, e.g., a remote control, has an “activity key”
`
`that has a corresponding command code associated with a configuration of the
`
`entertainment device. (Id. at Claim 12) Figure 2 of the ‘207 patent, reproduced in
`
`part below, shows an example of a remote control 100 with activity keys 200.
`
`
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`4
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`

`

`IPR2014-01146
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`
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`(‘207 Patent at Fig. 2.) The configuration of the entertainment device comprises at
`
`least one of a plurality of devices being used as an audio visual input source and at
`
`least one of the plurality of devices being used as an audio visual output
`
`destination device for the entertainment device. (Id. at Claim 12) For example, in
`
`the “Play game” activity, the input source may be game console 110, and the
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`output destination may be TV 114 and speakers 116. The entertainment device
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`accesses and uses the configuration associated with the command value
`
`corresponding to the controlling device’s activity key in response to a signal sent
`
`from the controlling device that includes the command value corresponding to that
`
`activity key. (Id.)
`
`A display associated with the entertainment device then displays a graphical
`
`user interface that allows a user to select at least one of the plurality of devices to
`
`be used in the configuration. (Id.) For example, Figure 6 of the ‘207, reproduced
`
`in part below, shows two exemplary screens 630 and 632 that may be displayed on
`
`
`
`5
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`

`

`IPR2014-01146
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`the TV 114 associated with the AV receiver 102, for the purposes of enabling the
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`user to select the source (DVD or Blu-ray) and destination (TV or projector) for
`
`the “Watch Movie” activity.
`
`
`
`
`
`(‘207 Patent at Fig. 6.) The user’s selection of the at least one of the plurality of
`
`devices to be used in the configuration includes one or more signals received from
`
`the controlling device that has data indicative of an appliance. (Id. at Claim 12.)
`
`The one or more signals are transmitted from the controlling device to the
`
`entertainment device in response to an activation of one or more keys of the
`
`controlling device which are associated within the controlling device to an
`
`appliance being selected for use in the configuration. (Id.) In the example of
`
`Figure 6 of the ‘207 patent, the user can use the remote control to toggle the input
`
`source between, for example, a DVD player and a Blu-ray player and then select
`
`one to be used for the activity. The controlling device further uses the activation of
`
`the one or more keys to automatically configure itself such that the activation of
`
`
`
`6
`
`

`

`IPR2014-01146
`
`one or more command keys of the controlling device will cause the controlling
`
`device to communicate commands to one or more of the audio visual source device
`
`and the audio visual output destination device. (‘207 Patent at Claim 12.)
`
`Continuing with the example of Figure 6 of the ‘207 patent, if the user were to
`
`select the DVD player as the input source, the remote control may send a command
`
`to the DVD player to power the DVD player on.
`
`The claimed advantage of the ‘207 patent is a method comprising “a
`
`cooperative effort between [an] AV receiver[, or other entertainment device,] 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[, or other entertainment device,] to
`
`initiate certain previously defined configuration actions….” (‘207 patent at col. 1,
`
`ll. 38-43.)
`
`“device” and “appliance”
`
`A.
`Petitioner requests that the Board construe the terms “device” and/or
`
`
`
`“appliance” to have identical meanings, but Petitioner does not provide a
`
`construction for either of those terms. As Petitioner notes, “the use of different
`
`claim terms suggests distinct objects being described.” (Pet. at 10 (citing Ethicon
`
`Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996)).)
`
`Indeed, Petitioner’s interchangeability argument would render the challenged
`
`
`
`7
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`

`

`IPR2014-01146
`
`claims needlessly confusing. For example, the specification of the ‘207 patent
`
`states that a claimed “controlling device” may be a remote control. (‘207 patent at
`
`col. 1, ll. 39-40.) However, if the Board was to substitute the word “appliance” for
`
`“device,” i.e., if the claim could be interpreted to require a “controlling appliance,”
`
`then the broadest reasonable interpretation of “controlling appliance” may well
`
`exclude a remote control, which would be an absurd result.
`
`Petitioner has not articulated any reason why the broadest reasonable
`
`interpretation standard requires the Board to construe two non-technical terms, i.e.,
`
`“device” and “appliance,” inconsistent with their ordinary and customary
`
`meanings. The fact that the specification used the terms interchangeably in one
`
`instance where one of ordinary skill in the art would reasonably use the terms
`
`interchangeably (Pet. at 10-11), does not mean that the terms are synonymous in all
`
`instances. Accordingly, the Board should construe “device” and “appliance”
`
`according to their ordinary and customary meanings.
`
`“activity key”
`
`B.
`Petitioner also proposes that the Board construe “activity key” to mean “any
`
`key or button on the remote control that corresponds to a configuration of the
`
`system.” (Pet. at 11.) Petitioner’s proposed construction of “activity key” is too
`
`broad.
`
`
`
`8
`
`

`

`IPR2014-01146
`
`First, Petitioner has read out the word “activity” from the claim term
`
`“activity key.” An “activity key” must correspond to an activity. To conclude
`
`otherwise would vitiate the claim term.
`
`Second, Petitioner’s use of “the system” in its construction is ambiguous.
`
`As noted above, the challenged claims refer to certain “devices” and/or
`
`“appliances,” but do not reference any “system.” Thus, it is unclear what “the
`
`system” in Petitioner’s construction is meant to encompass.
`
`Second, although an “activity key” corresponds to a configuration of the
`
`entertainment device, Petitioner simply ignores other portions of the specification
`
`that confirm that the “activity key” must also transmit a signal to the entertainment
`
`device. (‘207 Patent at col. 1, ll. 39-42 (“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”.) Notably, Petitioner cites
`
`to that very same passage in its Petition, (Pet. at 12,) but ignores that portion of the
`
`specification in its proposed construction. Other passages from the ‘207 patent
`
`also confirm that the “activity key” must transmit a signal to the entertainment
`
`device.
`
`[a]n exemplary controlling device may be provisioned with a series of
`activity selection keys or buttons 200 with designations such as, for
`example, “Watch TV”, “Watch a Movie”, “Listen to Music”, “Play a
`Game”, etc. Activation of such an activity selection key may cause
`AV receiver 102 and/or controlling device 100 to cooperatively place
`
`
`
`9
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`

`

`IPR2014-01146
`
`the exemplary home entertainment system into a user-specified state
`which has been associated with that activity….”
`
`(‘207 patent at col. 2, l. 63 – col. 3, l.3.)
`
`Upon actuation of an activity button on controlling device 100, for
`example 202 “Watch a Movie” and receipt of the resulting appropriate
`key command value communication by AV receiver 102….
`
`(Id. at col. 6, ll. 54-57.)
`
`Accordingly, the Board should construe “activity key” to mean “a key that,
`
`upon activation, transmits a signal to an entertainment device that corresponds to a
`
`previously defined configuration for an activity.”
`
`III. THE PETITION DOES NOT MEET THE STATUTORY
`REQUIREMENT OF 35 U.S.C. § 314(a)
`
`“The Director may not authorize an inter partes review to be instituted
`
`unless the Director determines that the information presented in the petition filed
`
`under section 311 and any response filed under section 313 shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least 1of
`
`the claims challenged in the petition.” 35 U.S.C. § 314(a). For at least the reasons
`
`set forth below, Petitioner has not shown that there is a reasonable likelihood that
`
`any one of Claims 12, 13, 14, and 15 of the ‘207 Patent is unpatentable.
`
`Petitioner’s shot-gun approach to its Petition fails to meet the Board’s
`
`requirements, particularly with respect to Petitioner’s thinly-supported obviousness
`
`combinations and dual anticipatory / single-reference obviousness Ground 1.
`
`
`
`10
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`

`

`IPR2014-01146
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`“Although the parties are given wide latitude in how they present their cases, the
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`Board’s experience is that the presentation of an overwhelming number of issues
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`tends to detract from the argument being presented …. Thus, parties should …
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`focus on concise, well-organized, easy-to-follow argument supported by readily
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`identifiable evidence of record.” Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,763 (Aug. 14, 2012).
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`A Petitioner cannot simply conclude without support that to the extent an
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`allegedly anticipatory prior art reference does not disclose a particular claim
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`limitation, one of skill in the art would know to supply that limitation such that the
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`single-reference renders obvious the challenged claim. Mohawk Resources Ltd. V.
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`Vehicle Service Group, LLC, Case IPR2014-00464, Paper 10 (Aug. 29, 2014) (Ex.
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`2001) (“The crux of Petitioner’s argument is that ‘to the extent that Kogyo is seen
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`as missing any element of any of these claims, each claim still would have been
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`obvious to one of ordinary skill in the art as falling within that level of skill when
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`combined with the teaching of Kogyo. … The petition, however, does not identify
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`any particular limitation of any particular claim that might be missing from Kogyo,
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`nor does it provide any details as to why a person of ordinary skill in the art would
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`have combined any missing element with the teaching of Kogyo. … Without any
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`specific explanation regarding the alleged obviousness of these claims, we are
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`unable to conclude that the information presented shows a reasonable likelihood
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`that Petitioner would prevail….”). Here, Ground 1 suffers from the exact same
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`shortcoming as the petition filed in Mohawk. Petitioner makes a dual anticipatory /
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`single-reference obvious analysis without ever identifying how such reference—
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`here, Dubil—falls short of the claimed invention or why one of ordinary skill in the
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`art would know to supply any of the missing limitations.
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`Petitioner’s Ground 2 is no better, as it mixes and matches alternative,
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`conjunctive and disjunctive language: “Claims 12-15 Are Unpatentable as Obvious
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`Over Niles Alone or in View of [Dubil] and/or [Kozakai] Under 35 U.S.C. §
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`103(a).” (Pet. at 35 (emphasis added).) Thus, Petitioner’s Ground 2 is really four
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`separate grounds: (1) obviousness in view of Niles alone; (2) obviousness in view
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`of Niles in combination with Dubil; (3) obviousness in view of Niles in
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`combination with Kozakai; and (4) obviousness in view of Niles in combination
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`with Dubil and Kozakai. The Board has previously declined to institute inter
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`partes review based on such mix-and-match grounds:
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`Edmund asserts numerous grounds of obviousness over various
`combinations of 15 prior art references, and such grounds are
`characterized by multiple conjunctive and disjunctive “and/or”
`connectors that greatly multiple the total number of asserted grounds.
`The multiple conjunctive and disjunctive connectors significantly
`increases the total number of proposed obviousness challenges, while
`at the same time providing little supporting evidence and analysis for
`each of the proposed alternative obviousness challenges.
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`Edmund Optics, Inc. v. Semrock, Inc., Case IPR2014-00583, Paper 9 (P.T.A.B.
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`Sept. 19, 2014) (Ex. 2002).
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`IPR2014-01146
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`Here, the Petition suffers from the exact same shortcomings as Edmund.
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`The Petition and the supporting Geier Declaration are replete with “and/or”
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`connectors that obfuscate the specific combinations of prior art upon which
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`Petitioner relies. Petitioner’s moving target approach to identifying combinations
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`has made it impossible for Patent Owner to discern which prior art combinations
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`Petitioner is attempting to apply, their purpose, and the motivation for combining
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`them.
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`In view of these as well as the other deficiencies of the Petition, discussed
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`more fully herein, the Board should exercise its discretion and not waste Board
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`resources by instituting inter partes review based on Petitioner’s “more is more”
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`approach to its Petition.
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`A. Ground 1: Dubil Does Not Anticipate Or Render Obvious Claims
`12-15.
`1. Dubil Does Not Anticipate Claim 12 Of The ‘207 Patent.
`Dubil does not anticipate Claim 12 because it does not (i) “configure an
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`audio visual entertainment device,” (ii) “associat[e] a command value
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`corresponding to an activity key of a controlling device with a configuration of the
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`entertainment device,” (iii) “caus[e] the entertainment device to access and use the
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`configuration associated with the command value corresponding to the activity key
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`of the controlling device in response to the entertainment device receiving from the
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`controlling device a signal which includes the command value corresponding to the
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`activity key of the controlling device,” and/or (iv) “display[] in a display associated
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`with the entertainment device a graphical user interface for allowing a user to
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`select at least one of the plurality of devices to be used in the configuration,” (v)
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`“wherein the user selection of at least one of the plurality devices to be used in the
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`configuration comprises one or more signals received from the controlling
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`device….” The alleged “audio visual entertainment device” disclosed by Dubil is
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`“VCR 113” according to Petitioner. (Pet. at 19.)
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`Dubil does not “associat[e] a command value corresponding to an activity
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`key of a controlling device with a configuration of the entertainment device.”
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`Based upon nothing more than the fact that Dubil allegedly discloses an “activity
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`key” and Mr. Geier’s conclusory opinion that parrots the language of the Petition
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`itself, Petitioner concludes that “[o]ne skilled in the art would understand that
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`[Dubil] discloses (either expressly, inherently or as a matter of obviousness) that
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`the activity key must be designated with a value (command value) by which to
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`reference that activity key.” (Pet. at 20 (citing Geier Decl. ¶ 35).)
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`Although the Petition does not make clear how Dubil discloses this claim
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`limitation, Petitioner appears to at least tacitly admit that Dubil does not expressly
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`disclose the “associating a command value corresponding to an activity key of a
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`controlling device with a configuration of the entertainment device” limitation by
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`noting that “the activity key must be designated….” (Pet. at 20 (emphasis added).)
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`Nevertheless, Petitioner’s apparent reliance on the doctrine of inherency falls short.
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`“To establish inherency, the extrinsic evidence must make clear that the
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`missing descriptive matter is necessarily present in the thing described in the
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`reference.” 3D-Matrix, Ltd. v. Menicon Co., Case IPR2014-00398, Paper No. 11
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`at 6 (P.T.A.B. Aug. 1, 2014) (Ex. 2003) (quoting In re Robertson, 169 F.3d 743,
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`745 (Fed. Cir. 1999)) (internal quotations omitted) (emphasis added). A showing
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`of inherency requires more than mere “probabilities or possibilities.” 3D-Matrix,
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`Case IPR2014-00398, Paper No. 11 at 6. The Board in 3-D Matrix found that the
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`petitioner’s inherency analysis was conclusory and lacked persuasive detail
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`because it did “not explain or support, with specific citations” why the limitation at
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`issue was inherently disclosed. Id. at 11.
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`According to Mr. Geier:
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`In my opinion, the ‘831 publication discloses associating
`35.
`a command value corresponding to an activity key of a controlling
`device with a configuration of the entertainment device. See the ‘831
`publication at ¶[0031] (an activity set (configuration of the
`entertainment device) is associated with a key (activity key) on the
`remote control (the controlling device)). One skilled in the art would
`recognize that the activity key must be designated with a value
`(command value) by which to reference that key. Thus the command
`value corresponding to the activity key is associated with the
`configuration of the entertainment device.
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`(Geier Decl. at ¶ 35.) This paragraph does not establish that a co