Trials@uspto.gov
`571-272-7822
`
`Paper No. 25
`Entered: October 6, 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 IPR2014-01084
`Patent 7,126,468 B2
`____________
`
`Held: September 2, 2015
`____________
`
`BEFORE: HOWARD B. BLANKENSHIP, SALLY C.
`MEDLEY, and LYNNE E. PETTIGREW, Administrative Patent
`Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`September 2, 2015, commencing at 10:00 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`571-272-7822
`
`Paper No. 25
`Entered: October 6, 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 IPR2014-01084
`Patent 7,126,468 B2
`____________
`
`Held: September 2, 2015
`____________
`
`BEFORE: HOWARD B. BLANKENSHIP, SALLY C.
`MEDLEY, and LYNNE E. PETTIGREW, Administrative Patent
`Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`September 2, 2015, commencing at 10:00 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`
`
`
`
`
`
`
`
`
`
`PETER H. KANG, ESQ.
`FERENC PAZMANDI, ESQ.
`Sidley Austin LLP
`1001 Page Mill Road, Building 1
`Palo Alto, California 94304
`
`
`KEITH J. BARKAUS, ESQ.
`Ostrolenk Faber LLP
`1180 Avenue of the Americas
`New York, New York 10036
`
`ERIC J. MAIERS, ESQ.
`MATTHEW J. LEVINSTEIN, ESQ.
`Greenberg Traurig LLP
`77 West Wacker Drive, Suite 3100
`Chicago, Illinois 60601
`
`
`
`
`
`
`
`
`
` 2
`
`
`
`
`
`1
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE MEDLEY: Good morning. Please be seated.
`This is the hearing for IPR2014-01084 between Petitioner,
`Universal Remote Control, and Patent Owner, Universal
`Electronics. Per the August 4th order, each party will have 30
`minutes of total time to present argument. Petitioner, you'll begin
`first with your case with respect to the challenged claims and
`grounds for which we instituted trial, and, Patent Owner, you will
`have time to respond, the full 30 minutes. And then Petitioner,
`you may reserve rebuttal time, if you'd like.
`At this time we would like the parties to please
`introduce yourselves, beginning with Petitioner.
`MR. KANG: Good morning, Your Honors. My name
`is Peter Kang, Sidley Austin. We represent Petitioner, Universal
`Remote Control. With me is Dr. Ferenc Pazmandi of my firm
`and our co-counsel, Keith Barkaus, of Ostrolenk Faber.
`JUDGE MEDLEY: Thank you.
`And Patent Owner?
`MR. MAIERS: Good morning, Your Honors. Eric
`Maiers of the law firm Greenberg Traurig, representing Patent
`Owner, Universal Electronics, and with me is Matthew
`Levinstein, also with Greenberg Traurig.
`JUDGE MEDLEY: Thank you.
`When you're ready.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 3
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`
`MR. KANG: Good morning, Your Honors. My name
`is Peter Kang. In this IPR, the fundamental issue is whether the
`claims should be construed so narrowly, as the Patent Owner
`asserts, such that the claim meaning deviates from the plain
`meaning of the terms and the specification. The term at issue or
`phrase at issue is "updating the status of an appliance," and the --
`in our view the claims should be construed properly, in which
`case there is no dispute that the prior art reference, Cohen, does
`disclose updating the status of -- the state of the appliance.
`Cohen does disclose this by monitoring, capturing, and
`logging transmitted commands for channel change or channel
`selection from a remote control. Even under the Patent Owner's
`narrow construction of "updating," the Cohen reference, in fact,
`invalidates the claim as well.
`So, if we can go to Exhibit 1057, page 2, just generally,
`this patent at issue today, the '468 patent, deals with monitoring
`command transmissions from a remote control to an
`entertainment system. The specification teaches us -- and you
`can see in the figure there, Figure 1 -- that there are commands
`transmitted from the remote to the system, and the system in the
`specification uses what's called a command receiver, which could
`be a device separate and apart from the appliances themselves,
`such as the TV, or it may be integrated into one or more of the
`appliances, and that command receiver performs the functions of
`monitoring and updating the state of the appliances.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 4
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`
`If we could turn to page 3 of Exhibit 1057, the issue of
`updating the state is in roughly two parts. So, the first issue is
`updating. In the preliminary response, Patent Owner proposed a
`definition of "updating" that was rejected by the Board in the -- in
`this decision on institution.
`And if we go to slide 4, so in the -- in the formal
`response, Patent Owner has now taken the tack of arguing that
`updating now requires, instead of where they were arguing before
`that it requires rewriting, it now requires a specific device to do
`the function of updating.
`Now, Claim 27 is the method -- the independent method
`claim that the parties have briefed, primarily as the representative
`claim, and as you can see from the plain terms of the method
`claim, there is no express limitation there of which device is
`performing the function of updating, or the last method step of
`updating, and, therefore, on the plain meaning, plain face of the
`term -- of the claim itself, the term "updating" does not have a
`specific limitation as to which device in the system should be
`performing this step of the method, and, therefore, that -- on the
`face of the claim alone, the Patent Owner's claim construction
`should be rejected.
`If we could turn to page 5 of the exhibit, 1057, looking
`at the specification also, the specification does not support the
`Patent Owner's position. The specification teaches that the way
`one specific embodiment does this updating is by using state
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 5
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`tables, and so the abstract specifically says it monitors remote
`control transmissions for the purposes of updating state tables.
`And in column 9, starting at line 12, the specification
`teaches that the state tables could be in either the appliance or the
`command receiver or even the remote control device, and it says,
`for example, the appliance 12 may consult a locally maintained
`state table or a general state table maintained by command
`receiver or a remote device such as a personal computer.
`Hence, therefore, the specification itself does not
`support the Patent Owner's position that the function or method
`step of updating has to be performed only by one specific device.
`Therefore, under the proper claim construction, Cohen, the prior
`art reference, does disclose updating.
`If we can turn to page 6 of Exhibit 1057, so in their
`brief, Patent Owner did admit that to the extent any device in
`Cohen is updating data representing an appliance state, it is the
`entirely separate, outside world host computer and not monitor
`34. Under the proper claim construction, if it does not matter
`which device is doing the updating for the claims, then this
`attempt to distinguish Cohen from the claim fails, because there is
`an admission that there is some form of updating being performed
`by Cohen, and the only distinction, therefore, is an irrelevant one
`under the claim terms.
`If we can turn to page 7 of Exhibit 1057, even under the
`Patent Owner's -- what we believe is an improper claim
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 6
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`construction, Cohen does disclose updating as required by a
`specific device. In Cohen, page 7 of Exhibit 1057 has the
`abstract portions of the specification in Figure 1. Figure 1 shows,
`in structure 34 -- which we pointed to with an arrow -- and
`structure 34 in Cohen is referred to as monitor 34. That is the
`analogue to command receiver in the '468 patent.
`Cohen is a system which stores tuning information for
`monitoring which channels a user is tuning to, and as Cohen
`discloses at column 4, channel selection using the remote control
`is stored in monitor 34 for future retrieval. And as you can see
`from Figure 1, monitor 34 is a pullout and is integrated in the
`television receiver in the figure and, therefore, is integrated in the
`local system as required by Patent Owner's erroneous claim
`construction.
`If we look at page 8 of Exhibit 1057, Figure 2 of Cohen
`discloses that this monitor 34 device, which we've outlined in
`yellow and you can see the reference numeral in the bottom right,
`comprises a microprocessor with a RAM, and the specification
`teaches us, at column 5, that the RAM stores information
`regarding the tuning of the entertainment system for later
`retrieval, and, therefore, the storage required or the updating
`required at a specific location that is in the system itself is done
`and disclosed by Cohen in monitor 34 using that RAM and,
`therefore, satisfies even the Patent Owner's claim construction.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 7
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`
`JUDGE PETTIGREW: Counsel, do you rely on any
`states in Cohen besides channel for the "updating the channel"
`limitation?
`MR. KANG: Your Honor, we believe that's enough,
`that's sufficient, and that's what we rely on, yes.
`JUDGE PETTIGREW: Is the channel --
`MR. KANG: Yes.
`JUDGE PETTIGREW: When the channel is changed,
`that's updating?
`MR. KANG: The state, yes.
`JUDGE PETTIGREW: Updating the state. Yes, I'm
`sorry, updating the state.
`MR. KANG: Yes.
`So, if we can turn to the next slide, actually, page 9 of
`Exhibit 1057, Patent Owner admits that Cohen captures and logs
`remote control transmissions in monitoring device 34, and since
`the Board has ruled in the institution decision that "update" means
`bring up to date, the logging of remote control transmissions in
`Cohen satisfies the "update" verb or limitation itself.
`Figure 3 of Cohen shows the flow chart for how that is
`done in that specific embodiment. An IR signal is received, and
`then at step 80, the system of Cohen logs the event data. And as
`Judge Pettigrew asked, the event data in this instance that we're
`relying on is, of course, the channel selection.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 8
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`
`Let's turn to that issue, if we can turn to page 10 of
`Exhibit 1057. So, the state is -- the second part of the claim -- of
`the phrase that's in dispute, the Patent Owner argues that channel
`selection data does not represent the state of the target appliance.
`Now, on the face of the claim itself, the plain meaning,
`just a state of an intended target appliance, there is no qualifier or
`limitation on what kind of state it is, and it is striking that in the
`briefing the Patent Owner does not propose an express claim
`construction of "state" that would somehow exclude channel
`selection.
`If we turn to page 11 of Exhibit 1057, the Patent
`Owner's argument appears to be that simply because the Cohen
`reference does not expressly say a channel selection is a state and
`because the '468 patent does not expressly say that channel
`selection is a state, that somehow that that -- that the reference
`doesn't read on the claim.
`So, the patent tells us that what is stored in the state
`tables of the '468 patent, the states, are simply storing parameters
`that are indicative of the transmission of the commands to an
`appliance. That is what the "states" in the state tables of '468 are
`storing.
`
`Figure 4 gives exemplary state tables and shows, for
`example, power, volume, mute, power again, play, fast-forward,
`and, of course, in the table -- exemplary tables, there are ellipses,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 9
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`indicating to any ordinary reader that this -- that these are just
`exemplary and other things qualify as states.
`Under no fair reading of the specification of the '468
`patent could channel selection not be a parameter indicative of
`the transmission of a command to the appliance. Channel
`selection is a command transmitted by a remote control to an
`appliance, and that is a parameter that is stored in Cohen in the
`state tables.
`So, the fact that it's not expressly named as one of the
`parameters is, we believe, too formalistic. The disclosure of what
`qualifies as a state in the '468 patent is certainly not limited in any
`way that would exclude channel selection.
`JUDGE PETTIGREW: Do you have a proposed
`construction for the term "state"?
`MR. KANG: In our briefing, we have actually referred
`directly to this quote, and we would say that state is a parameter
`that indicates or is indicative of the transmission of a command to
`an appliance. We may have used the word "conditional," I don't
`remember exactly, but to the extent -- I think the Board also in
`the institution decision referenced this portion of the
`specification, and we agree with that.
`JUDGE PETTIGREW: Well, in the institution
`decision, I don't think we expressly construed the term "state."
`We were looking at "state table."
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 10
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`
`MR. KANG: Right, but they are related, and so we
`definitely do -- for purposes of now seeing Patent Owner's formal
`response, we rely on this portion of the specification in Figure 4
`for our claim construction.
`If you look at page 12 of -- I'm sorry.
`So, if we -- going back to Cohen, Cohen logs and
`captures channel selection. There's no dispute about that. Figure
`3 of Cohen, which we showed on a previous slide, shows that that
`event data is logged. Patent Owner admitted that. And,
`therefore, that disclosure of Cohen is updating a state of the target
`appliance, because channel selection is inherently a parameter
`that is indicative of a transmission from the remote, a
`transmission of a command from the remote.
`If we look at page 12 of Exhibit 1057, there is a
`secondary issue regarding dependent Claims 33 and 49. Both
`claims require that the data be maintained "locally" within a
`device that receives the transmission, and as I discussed earlier
`with regard to slide 7, the Cohen reference does disclose locally
`maintaining the data in monitor 34.
`As we've seen in Figure 1 of Cohen, monitor 34, which
`is the structure that is performing this update function, is shown
`as a pullout from the television itself, and if we look at slide 8 of
`Exhibit 1057, Figure 2 of Cohen is described in Cohen as an
`alternate view of the system of Figure 1, and monitor 34 is shown
`in more detail, and, of course, it has the RAM there. So, the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 11
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`event data that is logged by Cohen is stored locally by monitor 34
`as required by dependent Claims 33 and 49.
`A tertiary issue -- if we can go to page 13 -- that was
`briefed by Patent Owner was whether the Cohen reference was
`considered by the examiner, and it's clear Cohen was not listed in
`IDS. There was no substantive discussion of Cohen by the
`examiner during the prosecution. It's referenced in one paragraph
`in the background section of the specification. It's not listed as
`one of the references considered on the face of the '468 patent,
`and, therefore, the Cohen reference was not, we believe,
`considered during prosecution. And it doesn't matter in the sense
`that, as we've shown, Cohen does disclose all the features that are
`disputed and, therefore, does invalidate, regardless of whether it
`was considered or not.
`And I will reserve the remainder of my time for
`rebuttal.
`JUDGE MEDLEY: Okay, thank you. You have about
`20 minutes left.
`MR. MAIERS: Bear with me for a moment.
`JUDGE MEDLEY: Sure. Take your time.
`MR. MAIERS: I apologize, Your Honors. I may need
`to reset my computer here.
`(Pause in the proceedings.)
`MR. MAIERS: Okay. Good morning, Your Honors.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 12
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`
`So, talking about the '468 patent, the '468 patent
`generally relates to tracking appliance state based on remote
`control transmissions -- or, I'm sorry -- yes, tracking appliance
`state based on remote control transmissions, and as discussed in
`the background of the '468 patent, the invention is useful in
`preventing an appliance from going into an unintended state, and
`in this context, the background describes that there were certain
`remote controls at the time that would attempt to configure your
`home entertainment system by issuing a macro command, which
`is essentially a series of remote control commands that are
`executed in sequence in response to the press of a single button.
`Now, the problem with these macro commands is that
`what happens if the appliance is already in the intended state
`when you issue the macro command. So, for example, your
`television is already turned on, but then you issue the macro
`command that would ordinarily tell your television to turn on
`your VCR, set your inputs, et cetera.
`Well, the problem is if your TV is already turned on and
`you issue that power command to the television, your television is
`going to turn off, and then you're left with a situation where you
`are trying to fiddle with the remote control and trying to get
`everything back to the way it should be.
`Now, the background also talks about some prior art
`remotes that were state-aware, in the sense that these prior art
`remotes would have a memory that would keep track of certain
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 13
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`states of appliances, and, therefore, only issue commands that it
`believed were necessary. While this was an improvement, this
`also suffered from the drawback that those remotes were ignorant
`of what other transmissions were being sent by other remotes to
`the home entertainment appliances.
`For example, you might have a universal remote control
`at home, but you may also have the original remote control for
`your television, and sometimes you may just prefer to use that
`remote control. So, to the extent that you've, for example, been
`using your television remote control all day, as opposed to your
`universal remote control, now your universal remote control is
`out of sync, it doesn't know what state anything's in.
`What the '468 patent does is it tries to solve that
`problem by having a separate device that is, you know, positioned
`on the other end of the spectrum with all of your home
`entertainment appliances that monitors the transmission and, as a
`result of those transmissions, continually updates the state of the
`appliances.
`Now, at issue in this case are Claims 27, 28, 33, and
`there are some others, I don't have them in my notes, but they're
`analogous to 27, 28, and 33, the other ones being
`computer-readable medium versions of these claims. And
`generally what's required in these claims is, one, your device
`receives a transmission from a remote control, and then it
`compares that transmission to a plurality of commands to, one,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 14
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`determine if the transmission from the remote control is one for
`commanding an operation of the intended target appliances; and
`then, two, to update a current state of the intended target
`appliance that would result from executing that command.
`Now, we've got Claim 28 that has the limitation of
`supplementing data with information obtained directly from the
`intended target appliance, and then there's Claim 33, which has
`the limitation of the data being maintained locally within the
`device that receives the transmission.
`We're going to focus in today on -- primarily on the
`updating limitation of Claim 27, and that updating limitation
`includes the phrase "the data," and "the data" refers to -- derives
`an antecedent basis from the preamble, which is "data
`representative of a current state of an intended target appliance,"
`and this is going to be important, because when we talk about the
`prior art, there's a difference between state and mere raw
`transmissions.
`So, moving on to the prior art, the only prior art that's at
`issue in this case is Cohen. The only ground that the Board
`instituted inter partes review on was anticipation. So, all we're
`left with here is whether Cohen anticipates all six of the
`challenged claims, and anticipation is the sole issue for
`consideration. We're not talking about obviousness here.
`The prior art must teach the exact same invention, either
`expressly or inherently, and we submit to you that Petitioner has
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 15
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`not provided any -- sufficient support for any inherent disclosure
`of Cohen. So, all we're really concerned with here is the express
`disclosure of Cohen. And just so the record's clear, the other
`challenged claims were Claims 35, 45, and 49.
`Now, we do not believe that Cohen anticipates the
`Claims because, in particular, Cohen does not teach updating data
`representative of a current state. In particular, Cohen only
`teaches -- only teaches logging remote control transmissions, and,
`in fact, Petitioner's slide number 2 stated just that, that Cohen logs
`transmissions. Transmissions are not a state.
`This is significant because when you're talking about
`what a state of an appliance is, you require context. Merely
`knowing that the last command issued was channel up doesn't tell
`you what state the appliance is in, or merely knowing whether the
`last command issued was power doesn't tell you what state the
`appliance is in.
`For example, with respect to the power command, you
`need to know what the previous state of the appliance was in
`order to update the state. So, merely logging commands doesn't
`get you to a state. It's ignorant of the context of the appliance,
`how the appliance works.
`Another example is an appliance may have -- a TV, for
`example, may have four inputs, and you toggle through them one
`at a time when you're selecting your inputs. So, in order to
`correctly update the state, you need to know how many times the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 16
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`input button was pressed and how many inputs the device
`actually has available to it.
`For example, if you started at input 1 and you pressed
`the input button five times, that would take you around the cycle
`one time and then back to input number 2; whereas if you had
`seven inputs on your television, now you'd be at input 6. So, you
`need to have this context to understand -- to update a state, to
`update data representative of a state. Merely logging channel
`transmissions is not updating a state.
`Now, Cohen -- again, like I said, Cohen only logs
`remote control transmissions, and let's look at some snippets from
`Cohen to see exactly what we're talking about here. Whenever
`Cohen is talking about what is or is not logged, it's always
`speaking in reference to signals, commands, not states. So,
`looking at this section from -- this is on slide 5. Looking at the
`section from column 5, line 67, through column 6, line 5 of
`Cohen, we see it's talking about commands, volume commands,
`whether those need to be logged; whether an audio mute signal
`needs to be logged; whether the code received needs to be logged.
`Again, with reference to column 6, lines 29 to 31, it's
`talking about whether a signal is logged. Cohen repeatedly states
`that it is the signals that are logged, not states.
`Now, Cohen also says that those -- that information that
`is logged is transmitted out of Cohen's device to the outside world
`computer. It is separate from the invention of Cohen. That
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 17
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`outside world computer analyzes and interprets the remote
`control signal data captured by Cohen, but what we don't know
`about that outside world computer is what exactly it's doing, how
`it does it, what operations it's performing.
`Again, at column 6, lines 21 to 24, Cohen specifically
`refers to this as an outside world computer. This is a separate
`device. This is not Cohen's device. This is something else that
`Cohen is just transmitting its data out to. So, this is -- why this is
`important is this is not anticipation. This is a separate device,
`separate and apart from Cohen, that is going to perform some
`operation, and we don't know what that operation is.
`JUDGE PETTIGREW: Petitioners aren't relying on
`that, though.
`MR. MAIERS: In fact, they are relying on that. They
`created that new argument in their reply, and we submitted an
`objection on that basis as well, that that was a new argument in
`their reply. So, to the extent that Your Honors are willing to
`entertain that argument, then, you know, we need to make the
`point that that outside world computer is not part of the Cohen
`device that is performing the methods of the Cohen methodology.
`JUDGE PETTIGREW: I understood their reply to be
`responding to this outside world argument that you raised in the
`Patent Owner response. Let me rephrase what I stated earlier.
`Their petition does not rely on this part of Cohen.
`MR. MAIERS: Correct.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 18
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`
`JUDGE PETTIGREW: And analyzing and interpreting
`is not part of the claim.
`MR. MAIERS: Correct, but the claim does require
`updating data representative of state, and the point is that you
`don't have -- merely logging remote transmissions is not data
`representative of a state, that there needs to be something more
`there in order to get the device to understand the state. In order
`for it to be data representative of a state, there needs to be
`something more than just mere transmissions.
`JUDGE PETTIGREW: Well, the examples you were
`giving in --
`MR. MAIERS: Would you like me to go back?
`JUDGE PETTIGREW: -- in a previous slide, I think it
`was page 5 there. Yes, the example there was volume. Do you
`see that in the first -- the first snippet there?
`MR. MAIERS: Um-hum.
`JUDGE PETTIGREW: That's not what they rely on
`either, as I understand it. They're relying on channel selection.
`MR. MAIERS: Right. Right, but what its indicative of
`is what Cohen is actually logging, that Cohen is focused on
`logging signals themselves.
`JUDGE PETTIGREW: Well, why wouldn't a signal
`saying "go to channel 5" be a signal that's logged?
`MR. MAIERS: That would be -- well, the signal would
`be 5 or channel up, right, but in that situation, you still need to
`
` 19
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`have context to understand the state. So, for example, in channel
`up, I need to know what the previous channel was. If I issue the
`command 5, as you know, there are some TVs that you need to
`enter a zero first in order to get to channel 5. Other TVs, maybe
`they will change to channel 5 after a certain amount of time.
`So, there still needs to be this understanding of how the
`device works in order to be -- in order for it to be data
`representative of a state. Merely logging the transmission itself is
`not reflective of the state.
`So, we talked about the outside world computer, and,
`again, Cohen calls it this outside world computer, a central host
`that is performing analysis on the data to determine what viewers
`are listening or watching to, but it's not saying that this outside
`world computer is determining a state of the device.
`Now, we go on to -- you asked me about channel
`selection, and it's our position that channel selection is not a state,
`and this is partially a matter of burden in the sense that neither the
`'468 patent nor Cohen expressly characterize channel selection as
`a state.
`
`At the outset, it's our position that what Cohen is
`logging is not channel selection itself but just logging, again, the
`commands that are transmitted and then relaying that on offsite
`computer, but to the extent the Board considers that to be channel
`selection, we do not believe that is a state.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 20
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`
`And so the -- looking at the '468 patent, the '468 patent
`describes some examples of what could be a state, none of which
`include channel selection. Cohen, likewise, does not describe
`channel selection as a state.
`What we're left with is in -- along with Petitioner's
`opening petition, they submitted an expert declaration from their
`expert, Mr. Geier, and his lone statement on this issue is simply
`that it was his conclusory, unsupported opinion that channel
`selection is a state, as claimed in the '468 patent, but we don't
`have any further support or explanation as to why that would be a
`state or what is or is not a state.
`JUDGE PETTIGREW: Do you have a proposed
`construction for the claim term "state"?
`MR. MAIERS: We do not, Your Honor. In part, it's
`our position that to the extent that the Petitioner was seeking to
`assert that something was a state, that it was Petitioner's burden to
`propose that construction.
`Moreover, to the extent the Petitioner proposed a
`construction in its reply, which frankly is something that we
`haven't been able to brief or respond to, we note that what was
`stated in that -- in that particular excerpt that they quote from the
`specification is describing what is in a state table, and simply
`because certain information -- just because a state table may
`include -- I believe the word is parameters that are indicative of
`command transmissions -- simply because that can describe some
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 21
`
`
`
`
`
`
`
`Case IPR2014-01084
`Patent 7,126,468 B2
`
`of the things that are in a state table does not mean that any and
`all command transmissions lead to a state. So, again, there needs
`to be something more than just the command transmissions
`themselves in order to get you to that state.
`JUDGE PETTIGREW: But you're still not giving me a
`proposed construction for the term "state."
`MR. MAIERS: We have not proposed -- we have not
`proposed a construction in our papers, Your Honor.
`JUDGE PETTIGREW: Thank you.
`MR. KANG: Just briefly on rebuttal, Your Honor, if
`we could look at Patent Owner's slides, which is Exhibit 2070 at
`page 5. So, first I would note that the portion of the specification
`cited here at column 5, starting at line 67, refers to Figure 3, step
`4, which we presented in our presentation, and step 4 of Figure 3
`talks about logging event data, and, therefore, Patent Owner's, I
`believe, incorrect assertion that Cohen somehow is logging
`signals but not data is undermined by the express disclosure of
`Cohen itself.
`There was some argument that Cohen is somehow only
`logging signals and that signals are not data, which we believe is
`an incorrect reading of Cohen, especially in light of the express
`disclosure in Figure 3, step 4.
`Counsel argued that transmissions are not a state. As
`we said, the specification tells us that a state is a parameter
`representative of a transmitted command. It is not our position
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
