`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`
`____________
`
`Case IPR2019-01612
`U.S. Patent 7,589,642
`
`____________
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`

`

`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page(s)
`
`LIST OF EXHIBITS ............................................................................................... VI
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`Technology Background ....................................................................... 1
`
`U.S. Patent No. 7,589,642 ..................................................................... 3
`
`Person of Ordinary Skill in the Art ....................................................... 4
`
`III. CLAIM CONSTRUCTION ............................................................................ 5
`
`A.
`
`B.
`
`C.
`
`D.
`
`“Key Code” ........................................................................................... 7
`
`“Keystroke Indicator Signal” ................................................................ 8
`
`“Key Code Signal” ................................................................................ 8
`
`“Key Code Generator Device” .............................................................. 8
`
`IV. THE BOARD SHOULD NOT INSTITUTE INTER PARTES
`REVIEW .......................................................................................................... 9
`
`A. Ground 1: Mishra in Combination with Dubil Does Not Render
`the Challenged Claims Obvious ..........................................................10
`
`1.
`
`Petitioner has not shown that Mishra or Dubil discloses
`Element 1.2: “generating a key code within a key code
`generator device using the keystroke indictor signal” ..............11
`
`a. Mishra does not disclose using a keystroke
`indicator signal to generate a key code ..........................11
`
`b.
`
`Each of Mishra and Dubil does not disclose a “key
`code generator device” ...................................................13
`
`2.
`
`Petitioner has not shown that Mishra or Dubil discloses
`Element 1.3: “modulating said key code onto a carrier
`signal, thereby generating a key code signal”...........................13
`
`a.
`
`Each of Mishra and Dubil does not disclose
`“modulating said key code onto a carrier signal” ...........13
`
`i
`
`
`

`

`b.
`
`c.
`
`Each of Mishra and Dubil does not disclose a “key
`code signal” separate from a “keystroke indicator
`signal” .............................................................................16
`
`Each of Mishra and Dubil does not disclose
`“generating a key code signal” .......................................17
`
`3.
`
`Petitioner has not shown that Mishra or Dubil discloses
`Element 1.4: “transmitting said key code signal from said
`key code generator device to said remote control device” .......17
`
`a.
`
`b.
`
`Each of Mishra and Dubil does not disclose a “key
`code signal” ....................................................................17
`
`Each of Mishra and Dubil does not disclose a “key
`code generator device” ...................................................18
`
`Petitioner has failed to establish motivation to combine
`Mishra and Dubil ......................................................................18
`
`A POSITA would not have combined Mishra and Dubil .........22
`
`4.
`
`5.
`
`B.
`
`Ground 2: Rye in Combination with Dubil Does Not Render the
`Challenged Claims Obvious ................................................................24
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Petitioner has not shown that Rye or Dubil discloses
`Element 2.2: “generating a key code within a key code
`generator device using the keystroke indictor signal” ..............25
`
`a.
`
`Each of Rye and Dubil does not disclose a “key
`code generator device” ...................................................25
`
`Petitioner has not shown that Rye or Dubil discloses
`Element 2.3: “modulating said key code onto a carrier
`signal, thereby generating a key code signal”...........................27
`
`a.
`
`Each of Rye and Dubil does not disclose
`“modulating said key code onto a carrier signal” ...........27
`
`Petitioner has not shown that Rye or Dubil discloses
`Element 2.4: “transmitting said key code signal from said
`key code generator device to an electronic consumer
`device”.......................................................................................27
`
`a.
`
`b.
`
`Each of Rye and Dubil does not disclose a “key
`code signal” ....................................................................27
`
`Each of Rye and Dubil does not disclose a “key
`code generator device” ...................................................28
`
`Petitioner has failed to establish motivation to combine
`Rye and Dubil ...........................................................................28
`
`A POSITA would not have combined Rye and Dubil ..............32
`
`ii
`
`
`

`

`C.
`
`Ground 3: Caris in Combination with Skerlos Does Not Render
`the Challenged Claims Obvious ..........................................................35
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Petitioner has not shown that Caris or Skerlos discloses
`Element 1.2: “generating a key code within a key code
`generator device using the keystroke indictor signal”
`Element 2.2: “generating a key code within a key code
`generator device using the keystroke indictor signal” ..............35
`
`a.
`
`Each of Caris and Skerlos does not disclose
`generating a “key code generator device” ......................36
`
`Petitioner has not shown that Caris or Skerlos discloses
`Element 1.3: “modulating said key code onto a carrier
`signal, thereby generating a key code signal”
`Element 2.3: “modulating said key code onto a carrier
`signal, thereby generating a key code signal”...........................37
`
`a.
`
`b.
`
`Each of Caris and Skerlos does not disclose “said
`key code” for modulating onto a carrier signal ..............37
`
`Each of Caris and Skerlos does not disclose
`“generating a key code signal” .......................................37
`
`Petitioner has not shown that Caris or Skerlos discloses
`Element 1.4: “transmitting said key code signal from said
`key code generator device to said remote control device”
`Element 2.4: “transmitting said key code signal from said
`key code generator device to an electronic consumer
`device”.......................................................................................37
`
`a.
`
`b.
`
`Each of Caris and Skerlos does not disclose a “key
`code signal” ....................................................................38
`
`Each of Caris and Skerlos does not disclose a “key
`code generator device” ...................................................38
`
`Petitioner has failed to establish motivation to combine
`Caris and Skerlos ......................................................................39
`
`A POSITA would not have combined Caris and Skerlos .........42
`
`V.
`
`CONCLUSION ..............................................................................................44
`
`CERTIFICATION UNDER 37 C.F.R. § 42.24 .......................................................45
`
`CERTIFICATE OF SERVICE ................................................................................46
`
`
`
`
`
`
`
`
`iii
`
`
`

`

`
`FEDERAL CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ........................................................ 28, 29, 39, 49
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`No. 2018-2140, 2019 U.S. App. LEXIS 32613 (Fed. Cir. Oct. 31,
`2019) ................................................................................................................... 51
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .............................................................. 28, 38, 49
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 28, 39, 49
`
`Microsoft Corp. v. Enfish, LLC,
`662 Fed. Appx 981 (Fed. Cir. 2016) ................................................. 27, 37, 38, 48
`
`Personal Web Techs. v. Apple Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ................................................................ 28, 38, 49
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 12
`
`Sanofi-Aventis Deutschland GMBH v. Mylan Pharms. Inc.,
`No. 2019-1368, 2019 U.S. App. LEXIS 34328 (Fed. Cir. Nov. 19,
`2019) ................................................................................................................... 51
`
`Securus Technologies, Inc. v. Global Tel*Link Corp.,
`701 Fed. Appx. 971 (Fed. Cir. 2017) ...................................................... 27, 38, 48
`
`SpaceCo Business Solutions, Inc. v. Moscovitch,
`IPR2015-00127, Paper 16 (P.T.A.B. May 14, 2015) .......... 25, 27, 35, 37, 46, 48
`
`FEDERAL STATUTES
`
`35 U.S.C. § 112(6) ............................................................................................. 13, 16
`
`
`
`
`
`iv
`
`
`

`

`REGULATIONS
`
`37 C.F.R. § 42.100(b) .............................................................................................. 12
`
`37 C.F.R. § 42.108(c) ..................................................................................... 8, 16, 17
`
`CONSTITUTIONAL PROVISIONS
`
`Appointments Clause ............................................................................................... 51
`
`
`
`
`
`v
`
`
`

`

`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`EX2001
`
`
`EX2002
`
`
`
`
`Roku’s Proposed Constructions in the District Court
`
`Claim Construction Order, UEI, Inc. v. Peel Techs., Inc., Case No.
`
`8:13-cv-01484 (C.D. Cal. Sep. 17, 2017) (Dkt. 66).
`
`
`
`
`
`
`
`vi
`
`
`

`

`I.
`
`Introduction
`
`Roku, Inc. (“Petitioner”) petitions for Inter Partes Review of Claims 1-4, 6,
`
`8, 9, and 22-25 of U.S. Patent No. 7,589,642 (“the ’642 Patent”), which is owned
`
`by Universal Electronics Inc. (“Patent Owner” or “UEI”). Petitioner relies on a
`
`total of three grounds, each of which fail for several reasons.
`
`For each ground, Petitioner fails to show that the references, alone or in
`
`combination, disclose, teach, or suggest each and every element of the challenged
`
`claims. Petitioner also fails to demonstrate that a POSITA would have been
`
`motivated to combine the references to render the challenged claims obvious.
`
`Thus, Grounds 1-3 fail to present a reasonable likelihood that any of the challenged
`
`claims are unpatentable.
`
`Petitioner thus has not met its burden under 37 C.F.R. § 42.108(c) of
`
`establishing a reasonable likelihood of success that the challenged claims would be
`
`unpatentable in view of the cited references. Accordingly, Patent Owner requests
`
`that the Board deny institution of inter partes review with respect to any of the
`
`challenged claims.
`
`II. Background
`
`A. Technology Background
`
`The challenged ‘642 Patent relates to Patent Owner UEI’s system for
`
`relaying key code signals through a remote control device to operate an electronic
`
`1
`
`
`

`

`consumer device. (EX1001 at 1:6-9.) This system addresses the problem where
`
`consumers have a remote control device for each of multiple types of electronic
`
`consumer devices, such as televisions, stereo radios, digital video disk players,
`
`video cassette recorders, set-top cable television boxes, and set-top satellite boxes.
`
`(Id. at 1:13-20.) These consumer devices may be from various brands and require
`
`different codes to operate. A remote control device that can be configured to
`
`operate different electronic consumer devices is sometimes referred to as a
`
`“universal remote control,” such as that of the ’642 Patent.
`
`In traditional remote control devices, a remote control device controls only
`
`one electronic consumer device. The remote control device is programmed with
`
`specific key codes from a code set associated with the specific electronic consumer
`
`device. (EX1001 at 1:21-28.) Each key code is associated with a button on the
`
`remote control device and corresponds to a function (e.g., power on, power off,
`
`play, stop, etc.) of the selected electronic consumer device. (Id.) Typically,
`
`manufacturers use distinct code sets for the communication between various
`
`electronic consumer devices and their associated remote control devices. (Id. at
`
`1:28-34.) The code sets can differ by bit patterns and timing information. (Id. at
`
`1:34-38.)
`
`Rather than having multiple remote control devices to operate their
`
`electronic consumer devices, consumers may prefer to operate multiple electronic
`
`2
`
`
`

`

`consumer devices using a single remote control device, i.e., a universal remote
`
`control. (Id. at 1:39-42.) To do so, a remote control device would need to either
`
`(1) store many code sets in the memory of a remote control device, or (2) use the
`
`system of the ’642 Patent as summarized below. (See id. at 1:42-55.)
`
`B. U.S. Patent No. 7,589,642
`
`On December 16, 2003, U.S. Patent Application No. 10/737,029 (the “’029
`
`Application”) was filed on behalf of Daniel SauFu Mui, the sole inventor of the
`
`’029 Application. (EX1002 at 2-41.) The ’029 Application issued as U.S. Patent
`
`No. 7,589,642 (the “’642 Patent”), entitled “Relaying Key Code Signals Through a
`
`Remote Control Device,” on September 15, 2009. (Id. at 353; EX1001 at Cover
`
`Page.)
`
`To solve the problem of having multiple remote control devices operating
`
`various electronic consumer devices, the ’642 Patent describes a system that uses a
`
`single remote control device to operate multiple electronic consumer devices. (See
`
`EX1001 at 1:59-2:36.) The system does so by using a key code generator device to
`
`generate key codes from numerous code sets and transmit those key codes on a
`
`carrier signal to a remote control device in a first embodiment or an electronic
`
`consumer device in a second embodiment. (See id. at 3:27-35, 5:37-40, 6:35-42.)
`
`In the first embodiment, a user selects a key on a remote control device,
`
`which creates a keystroke indicator signal. (EX1001 at 3:36-48.) The keystroke
`
`3
`
`
`

`

`indicator signal is sent from the remote control device to a key code generator
`
`device. (Id. at 3:48-50.) The key code generator device uses the received keystroke
`
`indicator signal to generate a key code. (Id. at 4:24-34.) The key code is modulated
`
`onto a carrier signal to generate a key code signal. (Id. at 4:35-5:36.) That key code
`
`signal is transmitted by the key code generator device to the remote control device.
`
`(Id. at 5:37-40.)
`
`The second embodiment works in much the same way as the first
`
`embodiment except that instead of transmitting the key code signal from the key
`
`code generator device to a remote control, it is transmitted directly to an electronic
`
`consumer device. (Id. at 6:7-38.)1
`
`C.
`
`Person of Ordinary Skill in the Art
`
`A person of ordinary skill in the art (“POSITA”) of the technology of the
`
`’642 Patent, at the time of filing, would have had a bachelor’s degree which
`
`involved computer programming coursework, for example, electrical engineering,
`
`computer engineering, computer science, cognitive science, mechanical
`
`engineering, industrial engineering, or a similar degree, and at least one year of
`
`work experience in software programming, user interfaces, or human factors.
`
`Additional education might substitute for some of the experience, and substantial
`
`
`1 The independent claims of the ’642 Patent are related to the first and second
`embodiments, but are not limited to these described embodiments.
`
`4
`
`
`

`

`experience might substitute for some of the educational background.
`
`Petitioner proposes that a POSITA would have had a bachelor’s degree in
`
`electrical engineering or an equivalent degree with two years of work experience
`
`relating to communications and consumer electronics. (Petition at 12, 13.)
`
`III. Claim Construction
`
`The claims are interpreted using the standard articulated in Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005). See 37 C.F.R. § 42.100(b). Under the
`
`Phillips standard, claim terms are generally given their ordinary and customary
`
`meaning as understood by a person of ordinary skill in the art when read in the
`
`context of the specification and prosecution history. Phillips, 415 F.3d at 1313.
`
`However, a claim term will not receive its ordinary meaning if the patentee acted
`
`as his or her own lexicographer and clearly set forth a definition of the disputed
`
`claim term in either the specification or prosecution history. Id. at 1316.
`
`In the related district court action, the Parties agreed on constructions for the
`
`following terms:
`
`Term
`
`Agreed Upon Construction
`
`Key Code
`
`A code corresponding to the function
`
`of an electronic device, optionally
`
`including timing information. (EX1010
`
`at 12.)
`
`5
`
`
`

`

`Keystroke Indicator Signal
`
`A signal, distinct from a key code,
`
`corresponding to a pressed key [on a
`
`remote control]. (EX1010 at 12.)
`
`
`
`In addition, the district court construed two terms for which Patent Owner
`
`proposes that the Board adopt the same constructions. Petitioner did not provide its
`
`own constructions for these terms.
`
`
`
`Term
`
`District Court’s Construction
`
`Key Code Signal
`
`A signal containing a modulated key
`
`Key Code Generator Device
`
`35 U.S.C. § 112(6) applies.
`
`code. (EX1010 at 13-23.)
`
`Function: generate a key code.
`
`Structure: set-top box, television, a
`
`stereo radio, a digital video disk player,
`
`a video cassette recorder, a personal
`
`computer, a set-top cable television
`
`box or a set-top satellite box and
`
`equivalents thereof. (EX1010 at 23,
`
`24.)
`
`6
`
`
`

`

`The key code generator device
`
`performs the steps of “(1) identifying a
`
`codeset usable to communicate with an
`
`electronic consumer device” and
`
`“(2) identifying the key code
`
`corresponding to a pressed key for that
`
`codeset.” (EX1010 at 23-30.)
`
`
`
`Patent Owner reserves the right to put forth additional terms for construction
`
`should the Petition be instituted.
`
`A.
`
`“Key Code”
`
`Petitioner proposes that the term “key code” should be construed as “a code
`
`corresponding to the function of an electronic device, optionally including timing
`
`information.” (Petition at 13.) This construction is supported by the Specification
`
`of the ’642 Patent. (See, e.g., EX1001 at Abstract, 1:25-28, 1:66-2:5, 2:12-13,
`
`3:36-61, 4:28-29, 4:49-50, 7:44-48.) The construction is further supported by a
`
`claim construction order from a prior district court case. (EX2002 at 40-42.) This
`
`construction is consistent with the Parties’ agreement in the district court action
`
`and therefore Patent Owner likewise proposes this same construction.
`
`7
`
`
`

`

`B.
`
`“Keystroke Indicator Signal”
`
`Petitioner proposes that the term “keystroke indicator signal” should be
`
`construed as “a signal, distinct from a key code, corresponding to a pressed key [on
`
`a remote control].” (Petition at 14.) This construction is supported by the
`
`Specification of the ’642 Patent. (See, e.g., EX1001 at Abstract, 1:66-2:2, 3:46-4:3,
`
`4:43-47, 4:54-58, 9:9-14.) The construction is further supported by a claim
`
`construction order from a prior district court case. (EX2002 at 42-45.) This
`
`construction is consistent with the Specification, the prior claim construction order,
`
`and the Parties’ agreement, which the district court adopted, and therefore Patent
`
`Owner likewise proposes this same construction for this proceeding.
`
`C.
`
`“Key Code Signal”
`
`Petitioner identified Patent Owner’s proposed construction and the
`
`construction from the district court’s order in the district court action without
`
`providing its own proposed construction. (Petition at 14.) The district court’s order
`
`provided a construction for “key code signal” as “a signal containing a modulated
`
`key code.” (EX1010 at 13-23.) This construction is supported by the Specification
`
`of the ’642 Patent. (See, e.g., EX1001 at 1:34-38, 4:35-37, 4:42-5:36, 5:45-63.)
`
`Patent Owner therefore proposes this same construction for this proceeding.
`
`D.
`
`“Key Code Generator Device”
`
`Petitioner identified Patent Owner’s proposed construction and the
`
`8
`
`
`

`

`construction from the district court’s order in the district court action without
`
`providing its own proposed construction. (Petition at 14, 15.) The district court’s
`
`order construed the term “key code generator device” under 35 U.S.C. § 112(6).
`
`The district court construed the function as “generate a key code” and the structure
`
`as a “set-top box, television, a stereo radio, a digital video disk player, a video
`
`cassette recorder, a personal computer, a set-top cable television box or a set-top
`
`satellite box and equivalents thereof.” (EX1010 at 23, 24.) The district court’s
`
`order also noted that the key code generator device performs the steps of
`
`“(1) identifying a codeset usable to communicate with an electronic consumer
`
`device” and “(2) identifying the key code corresponding to a pressed key for that
`
`codeset.” (EX1010 at 23-30.) This construction is supported by the Specification of
`
`the ’642 Patent. (See, e.g., EX1001 at 3:9-12, 4:24-26, 6:24-25, 7:4-43, 7:60-8:18,
`
`8:28-9:14, 9:60-66.) Patent Owner therefore proposes this same construction for
`
`this proceeding.
`
`IV. The Board Should Not Institute Inter Partes Review
`
`When Petitioner’s alleged prior art references are considered in the proper
`
`timeframe and in an accurate context, it is clear that Petitioner has failed to carry
`
`its burden of proving a likelihood that any of the challenged claims are
`
`unpatentable. See 37 C.F.R. § 42.108(c).
`
`
`
`9
`
`
`

`

`Petitioner argued that the challenged claims of the ’642 Patent are obvious
`
`over the following references: Mishra, Dubil, Rye, Caris, and Skerlos. Each of
`
`these references is deficient.
`
`Mishra, Rye, and Caris fail to disclose, among other things: (1) using a
`
`keystroke indicator signal to generate a key code; (2) a key code generator device;
`
`and (3) separate key code and keystroke indicator signals. Moreover, Dubil and
`
`Skerlos fail to disclose, among other things, modulating a key code onto a carrier
`
`signal.
`
`Further, Petitioner and its expert failed to show that a POSITA would have
`
`combined, or been motivated to combine, the references in each of the alleged
`
`grounds.
`
`Pursuant to 37 C.F.R. § 42.108(c), Petitioner must demonstrate that there is a
`
`reasonable likelihood that at least one challenged claim of the ’642 Patent is
`
`unpatentable to warrant institution of an inter partes review. Petitioner has not
`
`done so here, and thus the Board should deny institution.
`
`A. Ground 1: Mishra in Combination with Dubil Does Not Render
`the Challenged Claims Obvious
`
`Petitioner asserts that Claims 1, 3, 4, 6, 8, and 9 are obvious in view of the
`
`combination of Mishra and Dubil. However, Petitioner fails to show that the
`
`references disclose, teach, or suggest each and every element of the challenged
`
`claims. Further, Petitioner fails to demonstrate that a POSITA would have been
`
`10
`
`
`

`

`motivated to combine Mishra and Dubil. Thus, Ground 1 fails to present a
`
`reasonable likelihood that any of the challenged claims are unpatentable.
`
`In particular, institution should be denied because Petitioner failed to show
`
`that the cited references, alone or in any combination, disclose at least elements
`
`1.2, 1.3, and 1.42 of the challenged independent claims. Because each of the
`
`dependent claims includes each of the elements of its underlying independent
`
`claims and Petitioner failed to show that at least the above elements were not
`
`disclosed in the references, Petitioner also failed to establish that there is a
`
`reasonable likelihood that any of the challenged dependent claims are
`
`unpatentable.
`
`1.
`
`Petitioner has not shown that Mishra or Dubil discloses
`Element 1.2: “generating a key code within a key code
`generator device using the keystroke indictor signal”
`
`a. Mishra does not disclose using a keystroke indicator
`signal to generate a key code
`
`Mishra does not disclose Element 1.2.3 Petitioner argues that Mishra
`
`discloses Element 1.2 because Mishra allegedly discloses a set top box that
`
`translates a command signal into a format appropriate for controlling a particular
`
`device, thereby allegedly generating the claimed key code. (Petition at 23
`
`(“Mishra’s set-top box translates the keystroke indicator signal into a format
`
`
`2 Patent Owner has used Petitioner’s numbering of the elements of the ’642
`Patent.
`3 Petitioner does not assert that Dubil discloses Element 1.2. (See generally
`Petition.)
`
`11
`
`
`

`

`appropriate for controlling a particular device, thereby generating a key code.”
`
`(emphasis in original)).) For support, Petitioner cites to paragraph [0020] of
`
`Mishra. (Id.; see also Russ Decl., ¶ 122.)
`
`Paragraph [0020] of Mishra states:
`
`Having received a command signal from the RCU 18, the system 12
`can translate the command into a format appropriate for controlling a
`particular device 16. That is, it is not necessary to program the RCU 18
`independently. Instead, a variety of codes may be stored in the system
`12. The user may be called upon to indicate the type of devices which
`need to be controlled. When the RCU transmits a signal corresponding
`to a known function (which signal may not be particularly adapted to
`work any particular device), the system 12 can translate that signal and
`send information back to the RCU 18 to enable the RCU 18 to control
`the particular device the RCU 18 is to operate.
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`(EX1005 at [0020] (Mishra) (emphasis added).)
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`Petitioner’s argument misses the point. Element 1.2 recites using a keystroke
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`indicator signal to generate a key code—not translating a keystroke indicator
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`signal to generate a key code. The Petition and Russ declaration fail to provide any
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`description or insight into what Mishra means by “translate,” and fail to provide
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`any explanations as to how translating and using a keystroke indicator signal to
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`generate a key code are the same thing.
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`Further, the teaching of Mishra differs from Element 1.2 and the Parties’
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`stipulated claim construction. For example, Element 1.2 recites a “key code” and a
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`“keystroke indicator signal,” which are distinct. The Parties’ agreed upon claim
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`construction confirms this: the term “keystroke indictor signal” requires that the
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`signal be “distinct from a key code.” (EX1010 at 12, 13.) The Petition and Russ
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`12
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`declaration fail to demonstrate that Mishra’s alleged “key code” is distinct from
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`Mishra’s alleged “keystroke indicator signal.”
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`b.
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`Each of Mishra and Dubil does not disclose a “key
`code generator device”
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`Neither Mishra nor Dubil discloses a “key code generator device.” In the
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`district court’s claim construction order, the district court held that a “key code
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`generator device” is a means-plus-function term that has a function and a structure
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`that performs that function. (EX1010 at 23, 24.) Petitioner identifies system 12 of
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`Mishra as a key code generator device. (Petition at 16-18.) However, system 12 is
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`not a keycode generator device because it does not disclose the function of
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`generating a key code. The Petition and Russ declaration fail to show that either
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`Mishra or Dubil discloses a keycode generator device that includes both the
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`structure and algorithm of the district court’s claim construction.
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`2.
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`Petitioner has not shown that Mishra or Dubil discloses
`Element 1.3: “modulating said key code onto a carrier
`signal, thereby generating a key code signal”
`
`a.
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`Each of Mishra and Dubil does not disclose
`“modulating said key code onto a carrier signal”
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`Petitioner argues that Mishra discloses wireless transmission of control
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`codes, but Petitioner admits that Mishra does not disclose the specific details of
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`how the transmission is performed. (Petition at 24.) Attempting to fill in the gaps,
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`Petitioner argues that a POSITA would have looked at Dubil to describe the
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`transmission of control codes via modulation onto a carrier signal. (Id.) Petitioner
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`13
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`describes Dubil as allegedly disclosing different modulation schemes – frequency-
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`shift key (FSK), biphase, and pulse width modulation (PWM) – as well as using
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`these modulation schemes with an IR or RF carrier frequency to transmit IR or RF
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`codes. (Petition at 24-25.) Petitioner’s description, however, fundamentally
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`misstates Dubil’s disclosure.
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`Dubil discloses a user requesting via appliance 106 a code set from server
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`102 via remote 108. (EX1006 at 5:6-8.) The code set arrives at appliance 106 in the
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`form of an XML file. (Id. at 2:1-3, 2:61-62, 4:33-34, 4:64-66.) The XML file
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`contains tags defined for a controllable apparatus associated with parameters for
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`“carrier frequency, duty cycle, protocol type (FSK, biphase, PWM, etc.), repetition
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`time, on/off times of the signal, bit pattern of the command code,” among others.
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`(Id. at 2:62-3:1, 4:66-5:3.) Appliance 106 uses an XML application 118 to extract
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`codes from the XML file based on the relevant tags. (Id. at 5:14-17.) The codes are
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`then supplied to remote 108 via input 114 for installation. (Id. at 5:18-23.) Remote
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`108 stores the codes in memory 120. (Id.)
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`14
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`Nowhere does Dubil disclose modulating the extracted codes onto a carrier
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`signal. While Dubil discloses that the codes are extracted from an XML file and
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`supplied to remote 108, Dubil does not describe how they are supplied. More
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`importantly, Dubil does not disclose that the extracted codes are supplied
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`specifically via modulation on a carrier signal. (See id. at 5:18-23.) Nor does
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`Petitioner argue as much.
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`Petitioner attempts to rely on the Russ declaration to fill in the gaps of Dubil,
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`but such reliance is improper. The Russ declaration merely repeats the same
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`conclusory statements as the Petition and, likewise, fails to show that Dubil
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`describes modulating control codes on a carrier signal from appliance 106 to
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`remote 108. (See EX1003 at ¶¶ 125-129 (Russ Dec.).)
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`15
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`b.
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`Each of Mishra and Dubil does not disclose a “key
`code signal” separate from a “keystroke indicator
`signal”
`
`Petitioner argues that “[a]s previously explained, Mishra teaches the
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`transmission of control codes to a remote control in response to the user selecting a
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`button on the remote.” (Petition at 24.) However, Petitioner fails to show that
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`Mishra or Dubil, alone or in combination, discloses both a “key code signal” and a
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`“keystroke indicator signal.”
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`As discussed in Section IV.A.1.a above, Mishra discloses receiving a
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`command signal, formatting the same signal, and transmitting the formatted signal.
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`This is different than the claims of the ’642 Patent, which require at least two
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`distinct signals: a keystroke indicator signal and a key code signal. Under the
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`proper claim construction, a keystroke indicator signal and a key code signal are
`
`separate signals. (See EX1010 at 12-13, 13-23.) A keystroke indicator signal is a
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`signal, distinct from a key code, corresponding to a pressed key on a remote
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`control whereas a key code signal is a signal containing a modulated key code.
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`(Id.) Accordingly, Mishra fails to disclose these distinct signals.
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`Dubil similarly fails. Dubil discloses a user requesting a code set from an
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`appliance 106 and, in return, receiving control codes for installation on remote 108.
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`(EX1006 at 5:6-8.) Dubil’s description does not describe the signals used to
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`request and receive the control codes. (See id.) Accordingly, Dubil fails to describe
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`distinct keystroke indicator signals and key code signals.
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`16
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`

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`Thus, Mishra and Dubil, alone or in combination, fail to disclose a key code
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`signal distinct from a keystroke indicator signal as required by Element 1.3.
`
`c.
`
`Each of Mishra and Dubil does not disclose
`“generating a key code signal”
`
`As discussed above, Mishra and Dubil fail to disclose modulating the key
`
`code onto a carrier signal and that the key code signal is distinct from a keystroke
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`indicator signal. (See Sections IV.A.2.a–b.) Because these features are not
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`disclosed in the cited references, the references necessarily fail to di