RECORD OF ORAL HEARING
Contents
1. inoperable The mere fact that modules were edited on certain dates do not indicate that they were suitable for the intended purpose or that they were complete Moving on to page number 9 So now turning to the second part of the discussion today Claim 1 what we did is we highlighted WON AN O A WO N e NO NO N N O An mm ee me me me e aA BW N e O LD WN A Ua BW Nme O Case No IPR2013 00127 Patent No 6 587 067 the different portions of what Patent Owner attributed to be key features Firstly the directly identified aspect and then the assigning macro pushbutton aspect l m going to page 10 of the materials Just as a preliminary note the patent has expired so amendments are not even possible in this situation and basically what we have in claim construction is a Markman decision by the Court the parallel concurrent litigation That Markman decision occurred days after we submitted our original petition and we submitted a supplemental petition per the request of the Board and under having contacted the Board to indicate the situation we were given the option of either submitting the original petition as is with the indicated changes or getting a new filing date and we opted for the former So in its response Patent Owner advocates for a special definition of library of codes and data to mean a table programmed into the remote control the table comprising a variety of command codes corresponding to a particular appl2. is this in the record MR NICODEMA The source code JUDGE BLANKENSHIP Mapping the claim language to the source code MR NICODEMA That is that comes from the inventor Mr Ellis but our position is that under the Price case the Board can consider JUDGE BLANKENSHIP So it s in Mr Ellis declaration MR NICODEMA Yes JUDGE BLANKENSHIP What paragraph MR NICODEMA Oh it s throughout his declaration Your Honor The source code is Exhibit F to Mr Ellis declaration L I m sorry and beginning at paragraph 34 of Mr Ellis declaration he begins his discussion of the source code Exhibit L and in that paragraph in the preceding paragraphs he talks about the critical functionality of the claims the macro pushbutton and the direct entry claim limitations The point is Your Honor that we re trying to make is that even putting Mr Ellis declaration aside under the Price case the 15 WON AN O A N e NO NO N N O A mm ee me me me e aA A N e O UO WN WD UA BW Nme O Case No IPR2013 00127 Patent No 6 587 067 Board is entitled to consider the source code evidence for what it is and what it discloses JUDGE MEDLEY But we won t do that independently You have to have some kind of testimony to explain to the Board hey this source code this part of the source code equates with this particular step in the claim You can t just and we re not going to independently look at the source co
3. is trying to make a more definite statement of the codes in the library of codes and data than the Appellate Board even considered or contemplated For example the Board said also while the 067 patent specification describes infrared codes the term infrared is not recited in any of the independent claims and we decline Appellant s 28 WON AN O A N e NO NO N N N NO HF mm ee me me me e aA BW N e O WN WBA BW NO KF O Case No IPR2013 00127 Patent No 6 587 067 invitation to import it They were trying to make more of it at that time So and that s available in URC Exhibit 1009 at page 25 So we believe that a learning remote has the ability to send has ability to record different transmission schemes and then play them Transmission schemes can be by several different mechanisms It doesn t have to be any specific thing It could be pulse with modulation It could be digital encoding of different types So that s the first one We think that the learning remote control arguments that they re making are not valid given the claim constructions of record Second of all there is a discussion that Patent Owner made certain admissions We believe that the admitted that Patent Owner I m sorry forgive me strike that There are assertions that Petitioner made certain admissions of the prior art I believe if you reread the sentences very carefully for example the one concerning source code all that was b
4. of different manufacturers and also the assigning a command macro to a macro pushbutton I refer now to page 3 of the materials What we put on this page are some of the dates of interest including the priority date for the 067 patent which was filed on October 14 1987 There are also relevant dates to the prior art that we have used in our petition and as is instituted in this proceeding for trial And of those different references I would just like to note that at no time has the Patent Owner attempted to antedate the Rumbolt reference which is the last one listed there back to November 20 1985 I want to make that perfectly clear We also want to remind the Board that in its Institution Order that it attributed to the CORE user manual which is the first prior art reference listed there September 1 1987 based on some additional publications in the record At no time did Patent Owner also show attempt to show conception and then diligence so this is strictly a case of where Patent WON AN O A N e NO NO N N N Nme mm me me me me e aA BW N e O UO Ou A nn A o D KF O Case No IPR2013 00127 Patent No 6 587 067 Owner is asserting an actual reduction of practice prior to our prior art references Moving on to page 4 So perhaps the most important argument points are that in general what we are saying to the Board is that the Patent Owner s reduction to practice proof fails for several reasons The first reas
5. we said earlier was generated largely by the inventors themselves WON AN O A N e NO NO N N N D HF mm me me me me e aA A o N e O WN WB UA BW Nme O Case No IPR2013 00127 Patent No 6 587 067 Moving on to page number 8 Really as we said earlier Co Inventor Ellis admitted that the invention largely relates to software The only piece of evidence relating to software of detailed nature is the software code listed in the exhibit The patented invention being software based it s very important for that exhibit to show that the software was indeed whole and working Even if all the evidence regarding the hardware was found to be credible and the Board ignored our request to consider the lack of proof of testing reduction to practice could not possibly be attributed to a date earlier than April 30 1987 which is the date of the source code printout And in that case if that were to be the case we strongly advocate that the Board consider our arguments that there is not testing provided which should that be the case the unpatentability of Claims 1 3 4 and 6 based on the combination of Rumbolt and Magnavox would still stand I think it s important to note that the mere fact that software existed on a certain date did not mean that the invention worked for its intended purpose so there may have been a revision of code but that the code was not complete and hardware without software that has a completed code is
6. 2013 00127 Patent No 6 587 067 Herr s admissions they do not disclose the direct identity element and based on his failure to use any claim construction of library of codes and data and follow the Board s construction of codes he has not shown convincingly that either CORE or Wozniak meet the library of codes and data element and in fact he concedes that Wozniak does not meet that element JUDGE BLANKENSHIP Well he wasn t testifying as a claim construction expert so MR NICODEMA What s that JUDGE BLANKENSHIP He wasn t testifying as a claim construction expert I think he was using ordinary and customary meaning but that s not the construction that the Patent Owner is advocating MR NICODEMA Well we re advocating the construction of codes that the Board used I think we have to use that JUDGE BLANKENSHIP Well we re talking about directly identify at this point MR NICODEMA Directly identify Well Your Honor my point is on that is Petitioner has an expert and he says I applied Claims 1 to 6 to the prior art and I say they re obvious So now we have to look under the sheets a little bit and say well how did you do that what did you use as the definition of the claim terms to do your analysis He didn t use the California Court s construction He didn t tell us what he did but at his deposition he said well I think Dr 24 WON AN aAa A N e NO NO N N N NO An mm ee me me me e aA BW N e O UO
7. E MEDLEY Yes please if you you may approach the bench Thank you MR BIANCHI Your Honor we would like to reserve 15 minutes for rebuttal I d also like to leave open the option that Mr Reynolds be allowed to argue on rebuttal if necessary JUDGE MEDLEY That s fine MR BIANCHI Okay JUDGE MEDLEY You may proceed MR BIANCHI Thank you Your Honor I appreciate that In our case today we would like to drive home two major points about the IPR The first point that we d like to make is that all through all of the testimony that s been developed and all of the documents of record to this date Patent Owner still has not proved a date of invention earlier than the prior art references and we ll talk a little bit more about those prior art references in the upcoming slides WON AN O A N e NO NO N N N NO An mm ee me me me e aA A o N e O UO WN A nn BW Nme O Case No IPR2013 00127 Patent No 6 587 067 I m referring now to slide page number 2 of your materials So in brief what we re arguing is that the Patent Owner has not produced evidence of the invention working for its intended purposes There are some very phaseal statements to that effect in the record but there is no evidence of testing The second point we would like to make is that the prior art does show all of the key features as characterized by Patent Owner for example the direct entry method of matching remote the remote to appliances
8. ERS May I approach JUDGE MEDLEY Yes Thank you Okay So you have till 1 47 MR NICODEMA Thank you Your Honor Your Honor there are three reasons why the Petitioner has failed to carry its burden of proving Claims 1 through 6 of the 067 patent to be obvious One is that we ve shown through at least the software code which I will discuss that the date of invention for 11 WON AN O A N e NO NO N N N Nme mm ee me me me e aA BW N e O WN WBA BW Nme O Case No IPR2013 00127 Patent No 6 587 067 Claims 1 to 6 precedes all of Petitioner s prior art except Rumbolt And because of that all of their combinations must fail Secondly with respect to the combinations of prior art that include Rumbolt and Magnavox the disclosures of those references in addition to the testimony of UEI s expert Mr Hayes show that Rumbolt teaches away from a combination where pushbuttons would be used in place of the DIP switches that are disclosed in Rumbolt and third even though there was motivation in the art to combine the references as proposed by the Petitioner there would still be at least one and sometimes two claim elements lacking Now I d like on the prior invention we submitted lots of slides and I m going to try to cut to the chase here Your Honor Petitioner s own brief and I believe Petitioner repeated this in his argument just now Petitioner s reply brief of page 7 says if the Board is inclined to consi
9. Trials uspto gov Paper 32 571 272 7822 Entered 6 May 2014 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 IPR2013 00127 Patent 6 587 067 Before SALLY C MEDLEY HOWARD B BLANKENSHIP and WILLIAM V SAINDON Administrative Patent Judges RECORD OF ORAL HEARING APPEARANCES ON BEHALF OF THE PETITIONER TIMOTHY E BIANCHI ESQUIRE Schwegman Lundberg Woessner 1600 TCF Tower 121 South 8 Street Minneapolis Minnesota 55402 Case No IPR2013 00127 Patent No 6 587 067 and THOMAS C REYNOLDS ESQUIRE Schwegman Lundberg Woessner 150 Alamaden Boulevard Suite 750 San Jose California 95113 ON BEHALF OF PATENT OWNER MICHAEL NICODEMA ESQUIRE Greenberg Traurig LLP 200 Park Avenue Florham Park New Jersey 07932 0677 and ERIC J MAIERS ESQUIRE Greenberg Traurig LLP 77 West Wacker Drive Suite 2500 Chicago Illinois 60601 The above entitled matter came on for hearing on Tuesday April 8 2014 commencing at 12 59 p m at the U S Patent and Trademark Office 600 Dulany Street Alexandria Virginia D I NA nn A UN e N N N N D He nm me me me me ne Fm le BW N e I WDB Nn FP WO D KF Case No IPR2013 00127 Patent No 6 587 067 PROCEEDINGS JUDGE MEDLEY Good afternoon This is the hearing for the IPR2013 00127 between Petitioner Universal Remote Contr
10. WN WDA BW Nme O Case No IPR2013 00127 Patent No 6 587 067 Herr I think that directly identify means putting in the manufacturer s codes and ID Okay Well if that s the standard you use sir there is nothing disclosed in CORE or Wozniak that says when you put in those two types of information you directly identify any appliance He has to be bound by what he said That s part of the basis for his opinions So if he used the wrong claim construction if he used the wrong terms his underlying opinion of obviousness must fail Your Honor and I think I m running out of time so I d like to have my co counsel address the motion if it please the Board JUDGE MEDLEY Thank you MR NICODEMA Thank you Your Honor MR MAIERS Just very briefly Your Honors the our motion to exclude presents a very simple issue with a very simple answer and that simple issue is whether testimony elicited from Petitioner s consultant Dr Herr via leading questions on redirect examination should be excluded and the simple answer to that issue is yes it should Federal Rule of Evidence 611 subsection C expressly prohibits leading questions under direct examination The exception of that rule is the case where your witness is a hostile witness Well in this case we have a paid consultant hardly a shining example of a hostile witness Instead you know during Dr Herr s redirect counsel for Petitioner led him through a series of questions essentia
11. actice by March 24 1987 That would also eliminate Magnavox as prior art JUDGE MEDLEY Could you focus on the evidence that establishes that the source code worked for its intended purpose at end of March of 1987 MR NICODEMA I believe that the source code itself by having all of those functionalities in there and all of the comments indicating what the source code did and what the source code was that shows that it worked for its intended purpose I don t believe the Petitioner has cited any cases to the effect that a source code is insufficient to show that an invention worked for its intended purpose The source code is the thing that it wouldn t have come up with the source code if they didn t have all the other things that we show in the documentary evidence that preceded it like the circuit boards and things of that nature the user manual JUDGE MEDLEY I mean I can have source code but unless I run it I don t know that it s actually going to do what it says 14 WON AN O A N e NO NO N N N D An mm ee me me me e aA A o N e O UO WN WDA BW D KF O Case No IPR2013 00127 Patent No 6 587 067 it s going to do So where is the proof in the record that the source code did what it was supposed to do with respect to the claimed invention MR NICODEMA I think the proof in the record Your Honor if we go to the slides if we go to slide 18 maybe that s where we start showing that JUDGE BLANKENSHIP Where
12. ates to proving reduction to practice based on Exhibits A through T which are again largely directed to the hardware and then there s a declaration by Mr Ellis Co Inventor Ellis Much of that evidence the Board had already seen when it instituted trial For example Patent Owner attempted to swear behind the prior art references using a 131 declaration that was included in a different related application The Board expressly rejected that approach because of the adjudicatorial nature of these proceedings vis a vis examinatorial nature We believe the Board was correct to do that Many of the exhibits that are added after that were either prepared by co inventors or have a questionable origin based on the fact that the Co Inventor Ellis who was deposed did not have those documents in his possession In order to establish an actual reduction to practice an inventor s testimony must be corroborated by independent evidence That independent evidence is largely lacking in this evidence proffered by Patent Owner Moving on to slide number 6 The dates that Co Inventor Ellis provided in deposition and in his declaration are ambiguous The allegations regarding reduction to practice in his declaration are vague as to time For example the first prototype built sometime in WON AN O A N e NO NO N N N NO An mm me me me me e aA A o N e O UO WN WB UA BW D KF O Case No IPR2013 00127 Patent No 6 587 067 the fall of 1986
13. d It was construed to mean transmission schemes for relaying data to a controlled apparatus and Evans does not meet this definition Evans is a learning remote and the only thing it stores from the remote that it s getting information from is waveforms and waveforms are a literal copy of the electronic signals sent from the device remote to the learning remote that requires a lot of memory The Board s construction of codes as transmission schemes is very different A transmission scheme is something that is derived from waveform but it is not the waveform It has some characteristics of the waveform and when a command is issued to an appliance the waveform is reconstructed based on the information in the transition scheme That requires a small amount of memory as you can imagine 21 WON AN O A N e NO NO N N N Nme mm ee me me me e aA BW N e O WN WBA BW Nme O Case No IPR2013 00127 Patent No 6 587 067 Your Honor whereas copying the literal waveform requires a lot of memory so they re very different Now Dr Herr does not apply the Board s definition of code to the Evans reference He does not construe the term library of codes and data at all He doesn t tell us what definition he used so his declaration does not demonstrate that the combination of Rumbolt Magnavox and Evans even if you could combine them would disclose each and every element of Claims 2 and 5 and he doesn t say why a person skilled
14. d data from the library to the macro pushbutton So the Board has already found that Rumbolt and Magnavox failed to teach or disclose these limitations so where does the Petitioner find them They try to find them in the Evans reference Now Evans does not disclose this additional limitation of Claims 2 and 5 because it doesn t disclose a library of codes and data Counsel for Petitioner mentioned Mr Hayes testimony where he construed the term library codes and data and that it requires a certain amount of pre programming and counsel seemed to suggest 20 WON AN O A N e NO NO N N O HF mm ee me me me e aA BW N e O UO Ou A nn BW D KF O Case No IPR2013 00127 Patent No 6 587 067 that we came up with that definition after the Board s decision instituting this IPR for some nefarious purpose or to get around the Board s decision Not so We weren t permitted to submit expert testimony in the preliminary Patent Owner s response and it s perfectly proper to have expert testimony on claim terms that were never construed And interestingly Dr Herr does not attempt to construe library of codes and data at all He doesn t say what he means by it so how can he possibly apply a construction which he hasn t given us to the prior art Another important point Your Honor is in the Board s decision July decision Footnote 6 The Board recognized that in the re examination proceeding on the 067 patent codes was construe
15. d for I ll make one more comment Your Honors In the appellate record that interpreted the different language of the claims back in the re examination appeal Appellant which is UEI the Patent Owner proposed a plural modulation scheme definition that the Board rejected as well so it was advocating that the nuance definitions that were proffered by the Patent Owner are not appropriate and it rejected those definitions And I believe that s the end of my comments Your Honor Thank you JUDGE MEDLEY Okay Thank you All right We re adjourned Thank you very much for your time in coming We ll take it under advisement Concluded at 1 52 p m 31 I LU R D Case No IPR2013 00127 Patent No 6 587 067 PETITIONER Timothy Bianchi tbianchi slwip com Tom Reynolds treynolds slwip com PATENT OWNER Michael A Nicodema nicodemam gtlaw com Gary R Jarosik jarosikg gtlaw com Eric J Maiers maierse gtlaw com 32
16. de and try to figure it out on our own so that s what I think Judge Blankenship was trying to get at where is that explanation MR NICODEMA Well the explanation is Mr Ellis declaration JUDGE MEDLEY Okay So we need to look at that MR NICODEMA Now Your Honor if I may move on to the substance of the prior art combinations themselves first the combination of Rumbolt and Magnavox When we look at the combinations I think we need to look at the declaration of Dr Herr the Petitioner s expert Because under KSR I mean I think we all agree here because we both submitted expert testimony that this is not one of these simple inventions the rare case where expert testimony is not helpful or useful Now if we look at Dr Herr s declaration and we have this in our slides but I ll just summarize to save time he makes conclusory statements about why you could combine prior art references He doesn t say why you can combine them He doesn t say that the combination would work for the intended purpose of the claims He 16 WON AN O A WO N e N N N D NN nn mm FP mm mm RW N e O LC Ou nn A D KF Case No IPR2013 00127 Patent No 6 587 067 doesn t say he doesn t actually he doesn t use the California courts claim construction which is the construction that I believe both parties agree that has to be used He says that he read the prosecution history in the patent and he came up with some ord
17. der the software code as evidence then CORE Wozniak and Evans would be eliminated as prior art references Now in making that statement Petitioner relies upon the date on the face of the software code the April 30 1987 date but the code itself shows that all the critical functions to the claims were reduced to practice by March 24 1987 which also would eliminate Magnavox as prior art And if that s the case then all of the Petitioner s combinations must fail because we have demonstrated a prior invention Now on the issue of corroboration Your Honor it s UEI s position that the Petitioner is attempting to hold us to an artificially 12 WON AN O A N e NO NO N N O A mm ee me me me e aA A Wo N e O UO Ou A nn BW D KF O Case No IPR2013 00127 Patent No 6 587 067 high standard and if we look at slide 11 in our presentation we have a quotation from the Federal Circuit s decision in Price v Symsek and that decision basically says corroboration is not necessary to establish what a physical exhibit before the Board includes and in that case documentary evidence was at issue Now the Petitioner concedes that the software code discloses all the critical limitations of the claims They did not file any objections which I believe they were compelled to do file evidentiary objections on the admissibility of the software code JUDGE MEDLEY Can you direct us to where they concede that all the elements are
18. eing said there is that Patent Owner has made it clear that software is the invention You can look at the testimony It s very clear Those key features of the software would have to be done by any working software prototype The only thing we have is source code and you can t decipher that source code and the expert testimony fails to teach how that code was tested and whether it worked for its intended purposes and that s our point on that Patent Owner makes much about the expert in the testimony concerning the Markman proceeding As we indicated and clarified earlier we filed our petition five days or so forgive me it s a few 29 WON AN O A N e NO NO N N O An mm me me me me e aA BW N e O LD Ou A nn BW D KF O Case No IPR2013 00127 Patent No 6 587 067 days before the Markman order which came very quickly No one expected anything like that to happen so quickly and we did communicate with the Board and tried to make sure we did the right thing We did contact the Board My co counsel Mr Reynolds was on the phone with the Board and so we did try to do the right thing The expert was testifying from the claim construction that we proffered and he was testifying based on his declaration which the Board found ample evidence even given the new claim construction offered by the District Court for purposes of instituting trial on Claims 1 through 6 As far as the arguments concerning combination of ref
19. erences Patent Owner makes much about certain features about power supplies and aspects that are simply not recited in claims So what they re trying to do is expand the meaning of the claims to require further additional hardware that would have to be available Our record is very clear on what the combination motivations are I m not going to go through all of those again but they are of record and they re more than just a bald assertion that it would have been obvious to combine We feel like the Board must have considered that also in its institution order or it would have pointed that out as it has done in several other petitions before it in the past One other thing we d like to say is that although we strongly disagree with the assertions made about leading questions with respect 30 WON AN O A N e NO NO N N O An mm me me me me e a A o N e O LD WN A nn BW Nme O Case No IPR2013 00127 Patent No 6 587 067 to Dr Herr s testimony what we will do is stand on the record that we have already created responding to that because we believe it is responsive to all of those issues And finally what we have is Patent Owner asserting that the Magnavox reference is a very brief reference and does not teach adequately to provide a 103 rejection However we believe the Board has already considered that in its order for institution and we also believe that the reference does have ample teaching of what it was provide
20. iance of different manufacturers This was raised for the first time after the Board s institution We believe that this was an attempt to differentiate from the prior art because the Board had already decided in its order to institute that the number of times that whether the codes were pre programmed or not was not required by the claim language itself It should not matter how the codes were programmed into the remote because the claims do not require a certain pre programming step per Se 10 WON AN O A N e DO NO NO KF nm KF Y D e Ou nm a RA D KF D 23 24 25 Case No IPR2013 00127 Patent No 6 587 067 I believe I m coming close to the end of my 15 minutes Your Honor Do you have the time remaining JUDGE MEDLEY Yeah one minute MR BIANCHI One minute So just to summarize and finish up the last few slides we believe that the prior art was correctly noted as by the Board as concluding the key features of the alleged invention as deemed by Patent Owner We believe that the prior art references show obviousness of the claimed invention and we ask that the Board cancel Claims 1 through 6 for obviousness under the proffered grounds and I will reserve the rest of my time for rebuttal JUDGE MEDLEY Thank you Okay Patent Owner MR NICODEMA Your Honor does our 30 minutes include the argument on our motion JUDGE MEDLEY Yes MR NICODEMA It does JUDGE MEDLEY Yes MR MAI
21. in the art would have been motivated to combine Evans with Rumbolt or Magnavox to begin with He just says in his declaration one of ordinary skill would be motivated to combine Evans with Rumbolt and Magnavox to meet the claim element Basically that s what he says and that s not a motivation to combine That s more of a hindsight reconstruction where you know what the claim elements are and you re looking for bits and pieces of prior art to meet the claim element and he doesn t say how even if these three references were combined they would work to the purposes recited in Claims 2 and 5 So Petitioner again has failed to prove obviousness of Claims 2 and 5 Lastly Wozniak and CORE Now Dr Herr concedes that neither CORE nor Wozniak discloses a remote control that can be matched to a particular appliance through direct identification using pushbuttons That s what our motion is about So Dr Herr was asked straight out at his deposition what does directly identify in the claims mean and that was a good question asked 22 WON AN O A N e NO NO N N N Nme mm me me me me e nA A o N e O UO Ou A nn BW D KF O Case No IPR2013 00127 Patent No 6 587 067 because how could we know how we apply the prior art to the claims if we don t know what claim construction to use So he said directly identify means to use the user ID and the model number and he admitted that based on that definition which he used neither W
22. inary meaning construction but he doesn t tell us what it is and actually on that point I think it s paragraph 22 of his declaration he says that he studied the prosecution history but at his deposition he admitted that he d never seen it He d never read it So when you have that kind of testimony from an expert it s our position that it s really unreliable to demonstrate that the prior art reads on the claims Now if we look at in contrast Mr Hayes UEI s expert let s take for example the combination of Rumbolt and Magnavox he gave detailed testimony on why Rumbolt would teach away For example he says that okay Rumbolt uses DIP switches inexpensive DIP switches to perform the direct identification step but Rumbolt also has pushbuttons on a keypad but he uses them for a conventional purpose just to operate the remote not to directly identify the appliance itself which is what the claim requires The Petitioner s expert Mr Herr Dr Herr says that well the person of ordinary skill would be motivated to combine Rumbolt with Magnavox which he says discloses the pushbuttons to decrease cost Well Mr Hayes disagrees and I believe his testimony is more robust and authoritative on this issue 17 WON AN O A N e N N N N NN nn mm mm mm mm RW N e O LC Ou nn fF D KF Case No IPR2013 00127 Patent No 6 587 067 For example Mr Hayes testified that DIP switches for directly identifyi
23. ing codes He admitted that at his deposition And nowhere in his declaration does he say that it s inherently disclosed meaning that it would necessarily and inevitably be disclosed He doesn t do that So again we re talking about a failure of proof from their own expert So even if one skilled in the 19 WON AN O A N e NO NO N N N D A mm ee me me me e nA BW N e O LD WN WB UA BW D KF O Case No IPR2013 00127 Patent No 6 587 067 art did combine Rumbolt and Magnavox you still wouldn t meet the direct entry of the direct identity element of the claim So it s our position Your Honor that on the combination of Magnavox and Rumbolt Petitioner has not met its burden of proof of proving the claims of the 067 patent obvious The second combination that they rely upon is Rumbolt Magnavox and Evans and that is directed only to Claims 2 and 5 Now for the reasons that we set out in our brief and I just discussed it s our position that even if you combine Magnavox and Rumbolt they do not disclose direct entry via pushbuttons and there would be no motivation to combine them anyway And in the Board s decision Your Honor the July 16 2013 decision at pages 15 and 16 the Board acknowledged that Rumbolt and Magnavox each failed to teach the additional limitation of Claims 2 and 5 and I ll read it to Your Honor using activation of one or more pushbuttons of the keyboard to assist the subset of the selected codes an
24. lly suggesting to him the answers that they wanted to get For example in reference 25 WON AN O A N e NO NO N N O A mm ee me me me e aA BW N e O UO U A nn BW Nme O Case No IPR2013 00127 Patent No 6 587 067 to the CORE prior art does that he s referring to a specific passage of CORE Does that indicate to you that it is also possible in CORE to have pre programmed remote controller codes Does that indicate to you That s a telltale sign of a leading question You couldn t be more suggestive than that And again a suggestive answer to that is yes it is also possible for CORE to have pre programmed remote controller codes Counsel could have asked phrased the question differently He could have just pointed him to the particular page and the reference that he s referring to and say does that indicate anything to you Leave it open ended He didn t do that Another example of such a question so are those examples of what you were referring to in response to counsel s questions about directly identifying Again suggesting to him the answer suggesting that the answer is yes those are examples of what he s referring to in response to those questions Instead counsel could have just said what are those in reference to certain codes that were identified in the Magnavox article The third example are those typically one number Again suggesting to the witness their expert their paid expert that ye
25. ng an appliance the memory use of that is primarily a low cost ROM whereas as if you use pushbuttons it would require a more expensive RAM and at the time of the 067 patent most microprocessors included a small amount of scratchpad RAM meaning a small amount of RAM and this was volatile and any data would be lost when you lose the power So a key reason Your Honor for using DIP switches was they re manually set and they would preserve the stored identities of the appliances if the batteries were removed or if they had gone bad Now to address the problem with using pushbuttons the 067 patent discloses a large amount of RAM capable of storing all the device identification codes I believe Your Honor in the patent it says that the device is infinitely upgradable because of this and this RAM is directly connected to a lithium backup battery so that if the regular batteries in the remote go bad or removed the lithium backup battery prevents the loss of all the data and the instructions in the RAM memory And the patent also discloses a backup capacitor So if you re going to remove the lithium battery for whatever reason you re not going to lose the instructions and the data stored in RAM Now these additional features require coding They require electronic circuity The lithium battery and the backup capacitor itself costs money It s going to increase the cost not as Dr Herr says decrease the cost So somebody skilled in the art wo
26. ol and Patent Owner Universal Electronics Incorporated At this time we would like the parties to please introduce counsel starting with the Petitioner MR BIANCHI Your Honor I m Timothy Bianchi for Universal Remote Control and this is my co counsel Thomas Reynolds JUDGE MEDLEY Okay Mr Bianchi will you be arguing today MR BIANCHI Yes JUDGE MEDLEY Thank you And then for Patent Owner MR NICODEMA Good afternoon Your Honor Michael Nicodema for UEI along with my partner Eric Maiers JUDGE MEDLEY Mr Nicodema will you be arguing today MR NICODEMA Yes Your Honor I will be presenting UET S main argument Mr Maiers will be arguing our pending motion to exclude a portion of Dr Herr s testimony JUDGE MEDLEY Okay Thank you Each party will have 30 minutes total time to present their arguments Petitioner will WON AN O A WO N e D NO N N NO nn mn mn mm me mm mm em Fm ee A o N e O un A WO NO KF Case No IPR2013 00127 Patent No 6 587 067 begin with the presentation of its case with regard to challenged claims on which basis the Board instituted trial Thereafter Patent Owner you will respond to Petitioner s presentation and then Petitioner you may reserve rebuttal time to respond to Patent Owner s presentation Petitioner you may begin and how much time would you like to reserve if any MR BIANCHI Your Honor would you like paper copies of the presentation for today JUDG
27. on all evidence essentially comes from co inventors There s no independent corroboration of the evidence asserted The second reason is that specific dates are lacking We re given very ambiguous ranges of dates in all of the materials So the dates are lacking and indication of features and differences between the three prototypes referenced by Co Inventor Ellis are lacking a description of the differences As we Stated earlier there s also no evidence of testing which the Board expressly noted in its order instituting trial And finally we want to point out that the patented invention was admittedly software based yet the vast majority of the exhibits attached to Patent Owner s response include printed circuit board information things relating to the circuits that don t necessarily affect the software In general what happened here is that Patent Owner was asked to provide evidence of testing and that it worked that the design that was claimed worked for its intended purpose but all we have are some bald statements made by the Patent Owner their expert I m sorry by Patent Owner s expert in testimony by Ellis WON AN O A N e NO NO N N N D A mm me me me me e aA BW N e O UO WN A nn BW Nme ODO Case No IPR2013 00127 Patent No 6 587 067 I m referring now to page 5 of the slide deck So let s talk about independent corroborating evidence All the evidence relied on in this in Patent Owner s response rel
28. ozniak nor CORE discloses the direct identification element He admitted that Now I know counsel filed a reply where they said no no no you got it all wrong He was talking about in the learning mode and not in the actual use mode after learning Well I don t think that s the case Your Honor because he was asked flat out what do the words directly identify mean in the claims He said what it meant Then he was asked using that definition does CORE or Wozniak disclose it and he said no So they haven t shown that the combination of CORE and Wozniak disclosed the direct identification element Also that combination does not disclose a library of codes and data In paragraph 37 of his declaration Dr Herr concedes that Wozniak does not disclose a library of codes and data and there s no disclosure in CORE of that claim element that meets the Board s definition of codes CORE just like Wozniak just like Evans is a learning remote It stores waveforms It does not create transmission schemes which is part of the Board s definition of the term codes Basically Dr Herr did not tell us what construction of codes or the composite phrase library of codes and data he applied at all So even if CORE and Wozniak were combined they still wouldn t disclose all the claim elements of Claims 1 to 6 because based on Dr 23 WON AN O A N e NO NO N N N NO HF mm ee me me me e aA BW N e O LD A nn BW Nme O Case No IPR
29. s they are typically one number They could have just said how many numbers are there typically So these are three examples of questions of Petitioner s own witness where they were asking very leading questions You know these are not insignificant issues These are issues that go directly to 26 WON AN O A N e NO NO N N O An mm me me me me e aA BW N e O WN A nn BW D KF O Case No IPR2013 00127 Patent No 6 587 067 final conclusions of validity whether particular limitations are disclosed So these are not benign questions These are important questions and I think what the Board should consider is what Dr Herr said in direct on his declaration and in cross examination and not in what he is saying after being suggested his answers by counsel in improper leading questions on redirect And as a result JUDGE MEDLEY Are you asking us to exclude just his redirect testimony or MR MAIERS We re asking to exclude the redirect testimony and then to the extent that counsel for Petitioner or Petitioner I should say relies upon that testimony in its reply brief which it does on page 14 of its reply brief So we re asking that in sum we re asking that the redirect testimony that was elicited by these leading questions as well as the reliance thereupon in page 14 of the reply brief be excluded JUDGE MEDLEY Okay Thank you MR MAIERS Thank you JUDGE BLANKENSHIP I have one question MR MAIERS S
30. shown in the source code MR NICODEMA Yes We can look at we can go through them slide by slide Slide 18 we can begin with that JUDGE MEDLEY No I m talking about in the record in the written record I m not so concerned about what your slides say I m looking at where in their reply did they say we concede that they MR NICODEMA Oh yes JUDGE MEDLEY That the source code includes every element that s being claimed MR NICODEMA Page 7 of their reply I ll read it to you Your Honor and I think we have a slide on that but I ll read it Page 7 of their reply the last full paragraph before II It says thus the only thing that is known for sure about the software that provided that provided all the critical functionality including the claimed direct 13 WON AN Un A N e NO NO N N N NO A mm me me me me e aA A N e O UO WN A nn BW Nme O Case No IPR2013 00127 Patent No 6 587 067 entry and macro command functions is that a version of it existed as of April 30 1987 and they go on to say that if the Board were to credit that source code then three of the five prior art references would be removed Now when they make that statement they can t just rely on the April 30th date because the document itself which includes many comments describing what s going on there and which we have indicated in our slides show that the critical functionality that the Petitioner speaks of was actually reduced to pr
31. the development prototype built sometime in the winter of 86 to 87 pre production model built sometime in March to April 1987 Very little detail was given about these different prototypes Now Co Inventor Ellis identified two key features of the patent relating to direct entry method of matching a remote to appliances of different manufacturers and assigning a command macro to a macro pushbutton As to when the direct entry was first incorporated into the prototype Ellis testified It had to be early on but I don t have a specific date As to when assigning a macro to macro pushbutton was first incorporated to the working prototype Ellis testified again I don t know for sure Moving on to page number 7 So UEI failed to provide evidence that the prototypes were tested and worked for their intended purpose Corroboration of an existence of a device itself is not sufficient to establish reduction to practice It is also necessary to corroborate that the device worked for its intended purpose And as a result UEI failed to prove that their software invention which is what Ellis testified to is the nature of the subject matter to claims in the patent challenge The software invention was not shown to be tested or that it worked for its intended purpose The only thing that Ellis stated is that it was suitable for its intended purpose but there was no corroborating other evidence other than what he presented as Exhibits A through T which as
32. uld not be 18 WON AN O A N e D NO N N O A mm ee me me me e aA BW N e O LD WN A UA BW Nme O Case No IPR2013 00127 Patent No 6 587 067 motivated to put pushbuttons in place of the DIP switches in Rumbolt because you d only increase the cost And it s interesting Your Honor that the Rumbolt patent itself at column 1 lines 43 to 44 says that his remote control is simple to operate reliable and relatively inexpensive So Rumbolt himself shows the state of the art what people in the art at the time of the invention were thinking in terms of what was simple and easy to operate and less expensive He thought his DIP switch invention fit that category so why would anybody skilled in the art try to replace the DIP switches with pushbuttons that would only increase the cost Now if we turn to Magnavox again Mr Hayes testimony shows that that disclosure in Magnavox that one paragraph disclosure is conclusory and vague It doesn t necessarily and inevitably disclose the use of pushbuttons It could be DIP switches Indeed Rumbolt discloses pushbuttons for a different purpose not direct entry and uses DIP switches for direct entry and there s no disclosure in Magnavox of the backup lithium battery or the capacitor or any of the software and electronics needed to accommodate pushbuttons used for direct identification of appliances and Dr Herr admits that Magnavox does not expressly disclose pushbuttons for enter
33. ure JUDGE BLANKENSHIP What s the status of the District Court action MR MAIERS The District Court action all discovery is closed There was a recent summary judgment order entered I don t know all of the details of that order I do know that there was an issue 24 WON AN O A N e D NO N N NO nn mn mm mm me mm mm em mm e o N e O Q Aa A WO NO KF Case No IPR2013 00127 Patent No 6 587 067 with regard to marking of the 067 patent that was addressed in that order but there wasn t any further validity or claim construction or infringement issues decided in that summary judgment motion JUDGE BLANKENSHIP Allright Thank you JUDGE MEDLEY Okay Petitioner s counsel you have 15 minutes MR BIANCHI Your Honor throughout the briefing Patent Owner has made much about the fact that a remote control that records signals such as a learning remote control is not suitable for inclusion in a combination rejection We really disagree on every count on that For beginners you know the Board in the appellate proceeding in the appeal of the 067 patent in re exam the Board did make a construction The Board said reading the claim term codes in the context of the entire patent we interpret codes as transmission schemes for relaying data to a controlled apparatus That is true and we respectfully submit that all of the prior art references that we have tendered do just that It appears that Patent Owner
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