Trials@uspto.gov
`571-272-7822
`
`
`Paper 36
`Entered: December 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIVERSAL REMOTE CONTROL, INC.,
`
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`
`Patent Owner.
`
`____________
`
`Case IPR2014-01146
`Patent 8,243,207 B2
`
`__________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`WILLIAM A. CAPP, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
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`

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`IPR2014-01146
`Patent 8,243,207 B2
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`
`Petitioner Universal Remote Control, Inc. filed a Petition (Paper 1,
`
`“Pet.”) requesting inter partes review of claims 12–15 of U.S. Patent No.
`
`8,243,207 B2 (Ex. 1001, the “’207 patent”). We issued a Decision to
`
`Institute an inter partes review of claims 13–15 of the ’207 patent. Paper 9
`
`(“DI”). After institution of trial, Patent Owner Universal Electronics, Inc.
`
`filed a Patent Owner’s Response (Paper 16, “PO Resp.”) and Petitioner filed
`
`a Petitioner’s Reply (Paper 22, “Reply”). We have jurisdiction under 35
`
`U.S.C. § 318(a).
`
`The instant case came before the Board for a regularly scheduled oral
`
`hearing on the merits on September 2, 2015, the transcript of which is
`
`entered as Paper 35 (“Tr.”). Also before the Board is Petitioner’s Motion to
`
`Exclude. Papers 26, 30, and 32.
`
`After considering the evidence and arguments of counsel and for the
`
`reasons set forth below, we determine that Petitioner has not met its burden
`
`of showing, by a preponderance of the evidence, that claims 13–15 of the
`
`’207 patent are unpatentable.
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`Related Proceedings
`
`Petitioner states that claims 13-15 of the ’207 patent are involved in
`
`Universal Electronics Inc., v. Universal Remote Control, Inc., No. SACV
`
`13-00984 AG (C.D. Cal.).
`
`I. BACKGROUND
`
`A. The ’207 Patent (Ex. 1001)
`
`The ’207 patent, titled System and Method for Activity Based
`
`Configuration of an Entertainment System, relates to methods for
`
`configuring multi-input and/or multi-output home entertainment systems.
`
`Ex. 1001, 1:31–33. The invention routes the outputs and inputs of the
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`various components of an audio/visual (“AV”) system through one central
`
`device, such as an AV receiver, that is referred to generically as the
`
`“entertainment device.” Id. at Abstract, 1:34–36, 9:17–22, claim 13.
`
`A personal computer is used to generate activity configuration
`
`settings. Id. at 8:19–67. The user then downloads configuration data from
`
`the personal computer to the entertainment device. Id. at 9:1–8. Activity
`
`configuration parameters are stored in memory of the entertainment device
`
`for future use in configuration of the home entertainment system when an
`
`indicated activity is requested. Id. at 6:39–41. The stored configuration is
`
`associated with a command value corresponding to an activity key on a
`
`remote control device. Id. at 6:41–43. Thereafter, the entertainment device
`
`serves as a central switching point for content streams in a home
`
`entertainment system. Id. at 9:13–49.
`
`After a configuration is downloaded to or otherwise stored on the
`
`entertainment device, the invention contemplates sending a signal from a
`
`universal remote control device to the entertainment device in order to
`
`initiate a pre-defined configuration of the home entertainment system. Id. at
`
`1:37–45. In addition to the control signals sent to the central entertainment
`
`device, the invention also contemplates sending control signals to other
`
`appliances in the home entertainment system. Id. at 1:45–50. These signals
`
`to the other appliances can be transmitted directly from the remote control to
`
`the other appliances or indirectly by a signal transmitted from the remote to
`
`the central entertainment device, which, in turn, transmits control signals to
`
`the other appliances. Id. Thus, activation of a device mode key may cause
`
`the transmission of data to the central entertainment device to cause the
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`entertainment device to select one of multiple possible sources and/or
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`destinations. Id. at 9:44–49. This feature takes advantage of the fact that the
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`entertainment device has access to appliance status information not available
`
`to the remote control device and the remote control device, in turn, has
`
`access to appliance command functions not available to the entertainment
`
`device. Id. at 1:49–57. Figure 1 of the ’207 patent is shown below.
`
`’207 Patent – Figure 1
`
`
`
`Figure 1 illustrates an AV system in which the outputs of source
`
`appliances such as set top box 104, first DVD player 106, second DVD
`
`player 108, game console 110, and CD changer 112 are all connected as
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`inputs to an AV receiver or “entertainment device” 102. Id. at 2:27–32. AV
`
`receiver 102 (the entertainment device) switches the input stream to
`
`designated outputs which are connected to various home entertainment
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`system devices such as TV 114, projector 118, and/or speakers 116. Id. at
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`2:33–38. Also illustrated is a universal remote control or “controlling
`
`device” 100 that transmits commands to the appliances. Id. at 2:44–46.
`
`B. Illustrative Claim
`
`We instituted a trial on Petitioner’s challenge to claims 13–15. DI 20.
`
`Claim 13, reproduced below, is an independent claim:
`
`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 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; 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.
`
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`IPR2014-01146
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`
`C. The Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 13–15 of the ’207 patent under 35 U.S.C.
`
`§ 102 as anticipated by U.S. Patent Pub. 2003/0120831 A1, published June
`
`26, 2003 (Dubil). Ex. 1005. Petitioner supports its position with declaration
`
`testimony from James T. Geier. Ex. 1003.
`
`II. MOTION TO EXCLUDE EVIDENCE
`
`Petitioner moves to exclude deposition testimony from Patent
`
`Owner’s expert, Mr. Cook, elicited on re-direct examination. Paper 26, 1.
`
`Petitioner objects to counsel’s redirect examination of Mr. Cook as
`
`constituting leading questions. Paper 26, 1. Patent Owner opposes the
`
`motion. Paper 30. Petitioner filed a reply to Patent Owner’s opposition.
`
`Paper 32.
`
`During re-direct examination, counsel for Patent Owner asked its own
`
`expert witness, Mr. Cook, three questions. Ex. 1054, 727:14-16; 727:24-
`
`728:1; and 728:9–10. Counsel did not ask open ended questions designed to
`
`elicit a narrative description or explanation. Id. Rather, the questions were
`
`phrased narrowly so as to elicit either a “yes” or “no” answer. Id.
`
`The admissibility of evidence in an IPR proceeding generally is
`
`governed by the Federal Rules of Evidence. See 37 C.F.R. § 42.62(a),
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48758. Under Federal
`
`Rule of Evidence 611(c), leading questions should not be used on the direct
`
`examination of a witness except as may be necessary to develop the witness’
`
`testimony. “A leading question is one that suggests to the witness the
`
`answer desired by the examiner.” McCormick, EVIDENCE § 6 (7th ed.
`
`2013). Questions that begin, “Isn’t it true that” or “Don’t you agree that”
`
`typically suggest the answer and are leading. Other types of questions, such
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`IPR2014-01146
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`as questions that call merely for a yes or no answer or that ask the witness to
`
`choose between alternatives posed by the questioner, may or may not be
`
`leading, depending on the context in which the question is asked, the tone of
`
`voice employed, and the body language or conduct of counsel. See, e.g.,
`
`United States v. Warf, 529 F.2d 1170, 1174 (5th Cir. 1976) (prosecutor
`
`improperly led witness to make identification by pointing at the accused).
`
`Patent Owner argues that none of the questions posed by counsel gave
`
`Mr. Cook an indication of the desired answer. Paper 30, 3. In reply,
`
`Petitioner points to contextual cues in the questions that it asserts suggest an
`
`answer. Paper 32, 2–3.1
`
`The re-direct examination of Mr. Cook took place by deposition
`
`outside of our presence. We did not have an opportunity to view the
`
`demeanor of the witness or counsel. Neither did we have an opportunity to
`
`observe any non-verbal cues such as tone of voice, gestures, or other body
`
`language of interrogating counsel. Nevertheless, we can observe from the
`
`overall context of the questions whether counsel was leading Mr. Cook. We
`
`agree with Petitioner that counsel’s questions, while nominally phrased to
`
`elicit either a “yes” or “no” answer, also contained contextual cues sufficient
`
`to suggest the answer that counsel desired to elicit. The three questions that
`
`were asked of Mr. Cook on re-direct examination are impermissible leading
`
`questions under Federal Rule of Evidence 611. We GRANT Petitioner’s
`
`motion to exclude the re-direct examination of Mr. Cook.
`
`
`1 First question - “setting a VCR timer” Ex. 1054, 727:14;
` Second question - “explicitly state” Id. at 727:24; and
` Third question - “Does Dubil teach or suggest any way that . . .” Id. at
`728:9–10 (emphasis added).
`
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`III. CLAIM INTERPRETATION
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`In an inter partes review, claims are given their broadest reasonable
`
`interpretation consistent with the specification. See 37 C.F.R. § 42.100(b);
`
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015).
`
`Within this framework, terms generally are given their ordinary and
`
`customary meaning, as understood by a person of ordinary skill in the art, in
`
`the context of the entire patent disclosure. In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007), citing Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005) (en banc).
`
`1. “device” versus “appliance” (Claim 13)2
`
`In our Decision to Institute, we construed these terms such that when
`
`the claims refer to either devices or appliances that serve as either input
`
`sources or output destinations that are connected to the entertainment device,
`
`these terms are used interchangeably in the Specification and the claims and
`
`we construed them as having the same meaning. DI 6–7. The parties have
`
`not brought anything to our attention to cause us to modify this construction
`
`for purposes of the final written decision.
`
`2. “entertainment device” (Claims 13 and 14)
`
`The Specification states:
`
`While described in the context of an AV receiver acting a
`central switching point for content streams in a home
`entertainment system, it will be appreciated that any other
`suitably equipped device, for example an advanced cable or
`satellite STB, a personal computer, etc., may be substituted for
`an AV receiver in the practice of the instant invention.
`
`
`2 The term “appliance” appears in claim 12. Ex. 1001, claim 12. Claim 12
`was challenged in the Petition, however, we did not institute a trial as to
`claim 12. DI.
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`Ex. 1001, 9:17–22. Consistent with the foregoing disclosure, in our
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`Decision to Institute, we construed “entertainment device” to encompass AV
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`receivers and substantially similar devices that are capable of being
`
`connected to a plurality of AV input sources and a plurality of AV output
`
`destinations. DI 7. Neither party argues for a different construction in their
`
`respective Patent Owner’s Response and Petitioner’s Reply.
`
`3. “activity key” (Claims 13 and 14)
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`In the Decision to Institute, we adopted Patent Owner’s proposed
`
`construction: “a key that, upon activation, transmits a signal to an
`
`entertainment device that corresponds to a previously defined configuration
`
`for an activity.” DI 8–9.
`
`In its Reply, Petitioner states that our construction in the Decision to
`
`Institute is narrower than necessary. Reply 2. Petitioner does not otherwise
`
`argue for a different construction in its Reply. We maintain our construction
`
`of this term for the reasons set forth in our Decision to Institute.
`
`4. “configuration of the entertainment device” (Claims 13 and 14)
`
`Petitioner’s proposed construction:
`
`an indication of an input device to and an output device from
`the entertainment device.
`
`Reply 4.
`
`Patent Owner’s proposed construction:
`
`requires 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.
`
`PO Resp. 10.
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`Neither party proposed a construction of this term in their respective
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`Petition or Preliminary Response. In our Decision to Institute, we noted that
`
`these terms are susceptible to more than one construction. DI 9–10. In the
`
`absence of receiving proposed constructions from either party, we construed
`
`”configuration of the entertainment device,” on a preliminary basis, as
`
`encompassing home entertainment system configurations that do not require
`
`active switching between input sources and output destinations at the
`
`entertainment device. Id.
`
`Petitioner argues that our Decision to Institute acknowledged that
`
`there are two reasonable interpretations and our governing rules necessarily
`
`require de facto adoption of the broader interpretation. Pet. 3. We reject this
`
`argument. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
`
`(Fed. Cir. 2015) (even under the broadest reasonable interpretation, the
`
`Board's construction cannot be divorced from the specification and the
`
`record evidence). In our Decision to Institute, we gave a relatively broad
`
`construction, on a preliminary basis, to provide the parties with an
`
`opportunity to propose their own constructions and brief the issue with
`
`support from the record, including intrinsic evidence in the Specification.
`
`DI 10. We indicated that our interim construction did not foreclose us from
`
`using a different construction at a later point in the proceeding upon the
`
`development of a more complete record. Id. at 10 n.6.3
`
`Petitioner argues that Patent Owner’s construction improperly imports
`
`additional limitations into the claim. Reply 6–7. Petitioner challenges
`
`Patent Owner’s reliance on selected passages of the Specification as
`
`3 Although we suggested two possible constructions in our Decision to
`Institute, both possibilities were preliminary in nature and we are not
`constrained to adopt either of them for purposes of this final decision.
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`supporting Patent Owner’s claim construction, arguing that such passages
`
`relate to embodiments of the invention that are merely exemplary. Id.
`
`Petitioner argues that including “affirmatively performing switching actions”
`
`in the construction is not present in the claim language as written. Id.
`
`Petitioner also argues that Patent Owner’s construction improperly imports
`
`“transmission of a signal” into the claim and that transmission of a signal is
`
`not required by the claim language. Id.
`
`Patent Owner argues that the Specification supports a construction
`
`that requires active switching in the entertainment device. PO Resp. 7-9,
`
`citing Ex. 1001, 2:27–37; 1:34–42; 4:63–5:3. Patent Owner relies on
`
`testimony from Mr. Cook stating that the entertainment device must
`
`implement switching functionality in some manner. Ex. 2029 ¶¶ 38–46.
`
`Extrinsic evidence in the form of expert testimony can be useful to a
`
`court for a variety of purposes, such as to provide background on the
`
`technology at issue, to explain how an invention works, to ensure that the
`
`court's understanding of the technical aspects of the patent is consistent with
`
`that of a person of skill in the art, or to establish that a particular term in the
`
`patent or the prior art has a particular meaning in the pertinent field. See
`
`Phillips, 415 F.3d at 1318. However, conclusory, unsupported assertions by
`
`experts as to the definition of a claim term are not useful to a court. Id. The
`
`Federal Circuit cautions us to discount expert testimony that is at odds with
`
`the written record of the patent. Id. The Federal Circuit cautions us that
`
`extrinsic evidence in general is less reliable than the patent and its
`
`prosecution history in determining how to read claim terms. Id. Expert
`
`testimony is generated at the time of and for the purpose of litigation and
`
`thus can suffer from bias that is not present in intrinsic evidence. Id. We
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`have reviewed Mr. Cook’s testimony at paragraphs 38–46 of his declaration
`
`and find it unhelpful in construing this term. Thus, our claim construction
`
`analysis will focus primarily on the intrinsic record before us.
`
`A claim construction analysis begins with, and is centered on, the
`
`claim language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc.,
`
`256 F.3d 1323, 1331 (Fed. Cir. 2001). In the instant case, claim 13 is
`
`directed to a method for configuring an entertainment device. Ex. 1001,
`
`claim 13. Claim 13 differentiates between a configuration “of the
`
`entertainment device” and a configuration “of the controlling device.” Id.
`
`While the claim language is used in the context of an entertainment system
`
`that includes an entertainment device in communication with a plurality of
`
`devices, there is no explicit mention of a configuration of the entertainment
`
`system as a whole. Id. In the first step, the method associates a command
`
`value of a controlling device activity key with a configuration of the
`
`entertainment device. Id. Such configuration includes at least one input
`
`device and at least one output device. Id. In the second step of the method,
`
`the configuration is accessed and used by the entertainment device. Id. The
`
`third step of the method specifies that the configuration of the entertainment
`
`device is downloaded into the entertainment device from a computing
`
`device. Id.
`
`Similarly, claim 14 is directed to a method of configuring an
`
`entertainment device. Id., claim 14. In the first step, the entertainment
`
`device receives a configuration request signal that includes a controlling
`
`device activity key command value. Id. In the second step, there is an
`
`association between the command value and a configuration of the
`
`entertainment device. Id. The configuration includes at least one input
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`device and at least one output device. Id. In the third step, the entertainment
`
`device accesses and uses the configuration. Id.
`
`The “ordinary and customary meaning of a claim term” is that
`
`meaning that a person of ordinary skill in the art in question, at the time of
`
`the invention, would have understood the claim to mean. See Translogic
`
`Tech., 504 F.3d at 1257; Phillips, 415 F.3d at 1313. Claims should be read
`
`in light of the specification and teachings in the underlying patent. See
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`Proxyconn, 789 F.3d at 1298.4
`
`In the instant case, the Specification discloses that activation of an
`
`activity key on the controlling device results in transmission of a signal to
`
`the entertainment device to “initiate certain previously defined configuration
`
`actions.” Ex. 1001, 1:40–43. The entertainment device includes a control
`
`processor 400 coupled to a memory 402. Id. at 4:51–56. The memory stores
`
`executable instructions to control operation of the entertainment device. Id.
`
`at 5:19–23. The processor 400 may be programmed to cause routing of
`
`signals between various inputs and outputs. Id. at 5:23–27.
`
`Furthermore, the Specification discloses a method whereby a personal
`
`computer may be used to generate command values and associated
`
`configuration choices. Ex. 1001, 8:19–67. After such activity on the
`
`personal computer is completed, the “resulting configuration data” is
`
`downloaded into the entertainment device. Id. at 9:1–8.
`
`
`4 The PTO also should consult the patent’s prosecution history in
`proceedings in which the patent has been brought back to the agency for a
`second review. Id. Although Petitioner filed the prosecution history in the
`record (Ex. 1002), neither party cites to the prosecution history in their
`respective claim construction briefing.
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`Thus, as “configuration of the entertainment device” is used in the
`
`Specification and the claims, it is an entity or construct that can be
`
`“downloaded” from a personal computer to an entertainment device.
`
`Ex. 1001, claim 13. It is similarly a construct or entity that can be
`
`“access[ed] and use[d].” Id. Furthermore, the “configuration” pertains to
`
`the entertainment device, as opposed to the controlling device or
`
`audio/visual entertainment system as a whole. Finally, the term
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`“configuration of the entertainment device” appears to be used
`
`interchangeably with “configuration data.” See id. at 9:2.
`
`Judges are free to consult dictionaries at any time when construing
`
`claim terms so long as the dictionary definition does not contradict any
`
`definition found in or ascertained by a reading of the patent documents. See
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`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1585 n.6 (Fed. Cir.
`
`1996). The plain English language dictionary meaning of “configuration” is
`
`“the arrangement of the parts of something.”5 In the context of computer
`
`science, it refers to the particular choice of hardware items and their
`
`interconnection that makes up a particular computer system.6
`
`Under the common English language definition, a configuration of the
`
`entertainment system, as a whole, would refer to the arrangement and
`
`interconnection of the entertainment device with its various input source and
`
`output destination devices. Similarly, a configuration of the entertainment
`
`device would refer to an arrangement internal to the entertainment device
`
`that would allow the entertainment device to connect to and communicate
`
`with input and output devices.
`
`5 http://www.thefreedictionary.com/configuration (last accessed
`November 27, 2015).
`6 Id.
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`However, as the term is used in the Specification, configuration of the
`
`entertainment device can assume one of two possible meanings. On the one
`
`hand, it can refer to the state or condition of the entertainment device after it
`
`has been configured. In other words, after the entertainment device has been
`
`configured, it would exhibit a configuration of the entertainment device.
`
`However, the Specification admits of another possible meaning. The
`
`Specification teaches that a personal computer is used to generate command
`
`values and associated configuration choices after which the “resulting
`
`configuration data” is downloaded to the entertainment device. Ex. 1001,
`
`8:19–9: 8. Thereafter, “the entertainment device accesses and uses the
`
`configuration associated with the command value corresponding to the
`
`activity key of the controlling device.” Id., Abstract (emphasis added). The
`
`entertainment device can “access and use” such configuration, in part,
`
`because it has memory that stores executable instructions that are intended to
`
`control the operation of the entertainment device. Id. at 4:19–30.
`
`Thus, before it is physically “configured,” the entertainment device
`
`stores executable instructions in memory to control the various electronic
`
`components within the entertainment device.
`
`Once all user selections have been made, at step 512 the activity
`configuration parameters may be finalized and stored in AV
`receiver memory 402 for future use in configuring the home
`entertainment system when the indicated activity is called for,
`e.g., the final configuration is stored and associated with the
`received key command value corresponding to the activity key
`that was activated at the start of the configuration process.
`
`Id. at 6:36–43 (emphasis added). In other words, after the entertainment
`
`device is configured, it exhibits a configuration of the entertainment device.
`
`However, before it is configured, the entertainment device stores in memory
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`executable instructions and data (“the final configuration”) that is associated
`
`with an activity key command. Id. at 6:41. It stores the configuration
`
`information “for future use.” Id. at 6:39. The entertainment device then
`
`later accesses and “uses” the configuration. Id., Abstract. The memory in
`
`the entertainment device may store a plurality of sets of such executable
`
`instructions, each set of which also may be considered to be a configuration
`
`of the entertainment device. Id. at 5:43–48 (“various activities”).
`
`As between the foregoing two possibilities, we think the latter
`
`construction is the correct one. The claims indicate that a configuration of
`
`the entertainment device is a construct that can be “downloaded” from a
`
`computer. Id., claim 13. It is also a construct that can be “access[ed] and
`
`use[d]” in association with a controlling device activity key commend value.
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`Id. These attributes are more consistent with a set of executable instructions
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`and data that is stored in memory than a physical state or configuration of
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`the entertainment device after it has been configured. Id. at 6:38 (“finalized
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`and stored”); 6:41 (“stored and associated”).
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`In view of the foregoing we construe configuration of the
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`entertainment device in claims 13 and 14 as referring to information stored
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`in memory in the entertainment device that can be accessed and used to
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`configure the entertainment device.
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`IV. ANTICIPATION BY DUBIL
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`To anticipate a patent claim under 35 U.S.C. § 102, “a reference must
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`describe . . . each and every claim limitation and enable one of skill in the art
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`to practice an embodiment of the claimed invention without undue
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`experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d
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`1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed.
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`Cir. 2009)). Anticipation [of a patent claim] is a question of fact. See In re
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`Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012).
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`Whether a patent is anticipated is a two-step inquiry. Power Mosfet
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`Tech., LLC. v. Siemens AG, 378 F.3d 1396, 1407 (Fed. Cir. 2004). The first
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`step requires construction of the claims. See id. The second step in the
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`analysis requires a comparison of the properly construed claim to the prior
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`art. See id. As the party challenging the patentability of claims 13–15,
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`Petitioner bears the burden of proving anticipation by a preponderance of the
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`evidence. See 35 U.S.C. § 316(e).
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`A. Dubil (Exhibit 1005)
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`Dubil discloses a remote control device that provides commands
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`based on the configuration of components in an AV system. Ex. 1005,
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`Abstract. One embodiment of Dubil is illustrated in Figure 1 below.
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`In Figure 1, system 100 includes television 110, audio system 111,
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`DVD player 112, VCR 113, cable interface 114, satellite receiver 115, and
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`set-top box 116. Ex. 1005 ¶ 17. Remote control device 150 provides for
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`remote control of some or all of the components 110–116. In operation, the
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`system 100 may receive audio-video information from satellite receiver 115
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`and provide the video to television 110 and the audio to audio amplifier 111.
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`Id. At another point in time, system 100 may provide audio-video
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`information from VCR 113, and provide both the video and the audio
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`information to television 110. Id.
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`Dubil identifies the components of the system. Id. ¶ 18. An “activity
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`set” associates select system functions to particular components to support a
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`particular user activity. Id. Thus, although multiple components of a system
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`may include an audio output signal, an activity set identifies which particular
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`component in the system provides the audio output of the system. Id.
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`Figures 2A and 2B of Dubil are shown below.
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`Figure 2A illustrates an activity set 200a for satellite broadcasts.
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`Id. ¶ 19. Satellite receiver 115 provides AV information to VCR 113 which
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`then provides AV information to the television 110. Id. Alternatively, the
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`system may be configured as illustrated in Figure 2B to view a DVD movie.
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`Id. ¶ 20. In this activity, DVD player 112 is the source of the AV
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`information. Id. DVD player 112 provides the video information to
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`television 110, and the audio information to audio amplifier 111.
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`Dubil discloses an activity manager 510 that has access to a database
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`of user configurations and activity sets 520 and a database of control
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`codes 530. Id. ¶ 30. The activity manager 510 is illustrated in Figure 5 of
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`Dubil shown below.
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`As shown in Figure 5, Dubil’s activity manager 510 receives user
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`input, via a user interface 512, and provides control codes to a remote
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`control device 150 via control interface 514. Id. ¶ 30. The database
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`disclosed in paragraph 30 may be distributed among a variety of storage
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`devices and storage systems. Id.
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`The user interface 512 includes two types of user input processing,
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`namely: (1) creating an activity set; and (2) invoking an activity set.
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`Id. ¶ 31. The user invokes an activity set by selecting keys on the remote
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`control device 150 or by using a menu that is presented on a display device.
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`Id. Based on such selection input, the activity manager 510 accesses the
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`database of user activity sets 520 to determine which component functions
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`are being mapped to which keys on the remote control device 150. Id. The
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`activity set manager 510 accesses the component control code database 530
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`to determine the code that the remote control device requires for the selected
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`activity set. Id. If the activity set 520 includes a preset list or similar
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`command construct, the activity set manager 510 processes the preset list
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`and provides the appropriate commands to the remote control device 150 to
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`effect the commands on the list.
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`In the system depicted in Figure 5, each device (510–530) is
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`connected to the internet. Id. ¶ 37. A third party vendor may provide an
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`internet-based application program for creating the user configuration and
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`activity sets 520. Id. The command codes corresponding to each activity set
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`may be downloaded to a storage device at the user location, such as a set-top
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`box that is configured to provide the activity set codes to the remote