Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 12
`Date: April 1, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`____________
`
`IPR2019-01613
`Patent 8,004,389 B1
`____________
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Roku, Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`
`§§ 311–319 to institute an inter partes review of claims 2–5 and 7–15 of
`
`U.S. Patent No. 8,004,389 B1 (Ex. 1001, “the ’389 patent”). Paper 2
`
`(“Pet.”). Universal Electronics, Inc. (“Patent Owner”) filed a Preliminary
`
`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`

`

`IPR2019-01613
`Patent 8,004,389 B1
`
`Response. Paper 6 (“Prelim. Resp.”). Pursuant to our authorization, Paper
`
`8, Petitioner filed a Reply and Patent Owner filed a Sur-Reply. Papers 10,
`
`11. Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`
`demonstration of a reasonable likelihood that Petitioner would prevail with
`
`respect to at least one challenged claim, we grant the Petition and institute an
`
`inter partes review. The Board has not made a final determination regarding
`
`the patentability of any claim.
`
`
`
`I. BACKGROUND
`
`A. The ’389 Patent
`
`The ’389 patent “relates generally to remote control devices and, more
`
`specifically, to relaying key code signals through a remote control device to
`
`operate an electronic consumer device.” Ex. 1001, 1:15–18. Each of such
`
`key code signals “corresponds to a function of the selected electronic device,
`
`such as power on, power off, volume up, volume down, play, stop, select,
`
`channel up, channel down, etc.” Id. at 1:33–36. A set of key codes
`
`associated with a particular electronic device is referred to as a “codeset.”
`
`Id. at 1:31–33. The number of key code signals may be large, particularly
`
`when a single remote-control device is used to control multiple electronic
`
`devices. Id. at 1:46–54. Accordingly, the inventor of the ’389 patent sought
`
`a system “for enabling a remote control device to control a selected one of
`
`multiple different electronic consumer devices without requiring the codeset
`
`associated with the selected electronic consumer device to be stored on the
`
`remote control device.” Id. at 1:58–61.
`
`2
`
`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`

`

`IPR2019-01613
`Patent 8,004,389 B1
`
`
`Figure 1 of the ’389 patent is reproduced below.
`
`
`
`Figure 1 illustrates a system for relaying a key code through a remote control
`
`device to an electronic consumer device. Id. at 3:9–11. System 10 includes
`
`remote control device 11, key code generator device 12 (shown as a set-top
`
`box), first electronic consumer device 13 (shown as a video cassette recorder
`
`(“VCR”)), and second electronic consumer device 14 (shown as a television
`
`set). Id. at 3:13–16, 3:26–29, 3:35–36. With remote control device 11, a
`
`user responds to on-screen displays 15 of television set 14, generated by key
`
`code generator device 12, “to step through a sequence of menu screens to
`
`identify the codeset corresponding to the device that is to be controlled.” Id.
`
`3
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`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`

`

`IPR2019-01613
`Patent 8,004,389 B1
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`at 3:20–24, 3:35–41. For example, system 10 may, in this way, identify the
`
`appropriate codeset to enable remote control device 11 to communicate with
`
`VCR 13 and television set 14. Id. at 3:35–43.
`
`An alternative embodiment uses an “autoscan functionality” in which
`
`the user is “prompted by successive screens on display 15 to push the power-
`
`on key of remote control device 11 multiple times.” Id. at 8:1–7. As the
`
`user repeatedly presses the power-on key, “key code generator device 12 in
`
`turn generates key codes using different codesets until the electronic
`
`consumer device performs a desired function,” such as turning on. Id. at
`
`8:14–18. The user is prompted to stop pressing the power-on key once the
`
`user sees the desired function being performed by first electronic consumer
`
`device 13. Id. at 8:18–21. “When the user stops pressing the power-on key,
`
`then the key code generator device 12 identifies the codeset of the last
`
`transmitted key code to be the codeset used by the electronic consumer
`
`device.” Id. at 8:23–26.
`
`The ’389 patent explains that, in some instances, key code generator
`
`device 12 is capable of communicating with remotely maintained database
`
`of codesets 39 over network 38, which may be the Internet. Id. at 8:40–43.
`
`A new codeset, such as may be associated with a new electronic consumer
`
`device introduced into the market, may thus be distributed from database 39
`
`via network 38 and stored on a mass-storage hard disk within key code
`
`generator device 12. Id. at 8:43–51.
`
`After generating a key code, key code generator device 12 modulates
`
`the key code onto a carrier signal, such as an RF signal, to generate “first
`
`key code signal 19.” Id. at 4:43–45. Figure 5 of the ’389 patent is
`
`reproduced below.
`
`4
`
`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`

`

`IPR2019-01613
`Patent 8,004,389 B1
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`
`
`
`Figure 5 illustrates a twelve-bit key code modulated onto first key code
`
`signal 19 using pulse-width modulation. Id. at 5:7–8. Remote control
`
`device 11 receives first key code signal 19 on an RF transmission from key
`
`code generator device 12, and relays the key code to the appropriate
`
`electronic consumer device, such as VCR 13, in the form of second key code
`
`signal 22. Id. at 5:45–52. The electronic consumer device receives second
`
`key code signal 22, recovers the key code, and, if the key code is correct for
`
`the device, performs the function desired by the user. Id. at 6:5–9, 8:14–26.
`
`
`
`B. Illustrative Claim
`
`Independent claims 2, 4, and 12 are illustrative of the challenged
`
`claims and are reproduced below.
`
`2. A method comprising:
`(a) receiving a keystroke indicator signal from a remote
`control device, wherein the keystroke indicator signal indicates
`a key on said remote control device that a user has selected;
`(b) generating a key code within a key code generator
`device using the keystroke indicator signal, wherein said key
`code is part of a codeset that controls an electronic consumer
`device;
`(c) modulating said key code onto a carrier signal,
`thereby generating a key code signal;
`(d) transmitting said key code signal from said key code
`generator device; and
`
`5
`
`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
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`

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`IPR2019-01613
`Patent 8,004,389 B1
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`
`(e) identifying said codeset using input from a user of
`said remote control device, wherein said codeset is identified
`when said user stops pressing a key on said remote control
`device.
`
`Ex. 1001, 10:36–52.
`
`
`
`4. A remote control device comprising:
`a receiver that receives a first key code signal, wherein
`said first key code signal is generated by modulating a key code
`onto a first carrier signal, said first carrier signal falling within a
`radio frequency band;
`a transmitter that transmits a second key code signal,
`wherein said second key code signal is generated by modulating
`said key code onto a second carrier signal, said second carrier
`signal falling within an infrared frequency band; and
`a keypad that includes a key that corresponds to said key
`code, wherein said key code corresponds to a function of an
`electronic consumer device, and wherein said remote control
`device is contained within a single structure.
`
`Id. at 10:56–11:2.
`
`
`
`12. A remote control device, comprising:
`a keypad;
`an RF receiver;
`an IR transmitter; and
`means for receiving a key code from said RF receiver
`and for sending said key code to said IR transmitter such that
`said key code is modulated onto an IR carrier signal, said IR
`carrier signal with said key code modulated thereon being
`transmitted from said remote control device by said IR
`transmitter, wherein said remote control device is contained
`within a single structure.
`
`Id. at 12:7–16.
`
`6
`
`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`

`

`IPR2019-01613
`Patent 8,004,389 B1
`
`
`C. Evidence
`
`Petitioner relies on the following references:
`
`Mishra
`Dubil
`Caris
`Skerlos
`Lambrechts
`Yazolino
`Van Ee
`
`
`
`US 2001/0005197 A1
`US 8,132,105 B1
`US 7,562,128 B1
`US 4,426,662
`US 6,909,378 B1
`US 5,329,370
`US 6,774,813 B2
`
`June 28, 2001
`Mar. 6, 2012
`July 14, 2009
`Jan. 17, 1984
`June 21, 2005
`July 12, 1994
`Aug. 10, 2004
`
`Ex. 1005
`Ex. 1006
`Ex. 1008
`Ex. 1009
`Ex. 1011
`Ex. 1012
`Ex. 1013
`
`In addition, Petitioner relies on a Declaration by Samuel H. Russ,
`
`Ph.D. Ex. 1003.
`
`
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 2–5 and 7–15 on the following grounds.
`
`Pet. 3.
`
`Claim(s)
`Challenged
`2, 3
`4, 7–15
`5
`2, 3
`4, 11
`5, 8
`10, 12, 15
`13, 14
`
`
`
`35 U.S.C. §1
`
`References
`
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Mishra, Dubil, Van Ee
`Mishra, Dubil
`Mishra, Dubil, Lambrechts
`Caris, Skerlos, Van Ee
`Caris, Skerlos
`Caris, Skerlos, Lambrechts
`Caris, Skerlos, Yazolino
`Caris, Skerlos, Yazolino, Lambrechts
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended various provisions of 35 U.S.C. Because
`the ’389 patent was filed before March 16, 2013 (the effective date of the
`relevant amendment), the pre-AIA versions of those provisions apply.
`
`7
`
`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
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`

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`IPR2019-01613
`Patent 8,004,389 B1
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`
`E. Real Parties in Interest
`
`The parties identify only themselves as real parties in interest.
`
`Pet. 73; Paper 4, 2.
`
`
`
`F. Related Matters
`
`Both parties identify Universal Electronics, Inc. v. Roku, Inc.,
`
`No. 8:18-cv-01580 (C.D. Cal.), as involving the ’389 patent (“the related
`
`litigation”). Pet. 73; Paper 4, 2.
`
`The ’389 patent is one of several patents owned by Patent Owner that
`
`are challenged by Petitioner in various petitions for inter partes review,
`
`including in IPR2019-01595, IPR2019-01608, IPR2019-01612,
`
`IPR2019-01614, IPR2019-01615, IPR2019-01619, IPR2019-01620, and
`
`IPR2019-01621. See Pet. 74; Paper 4, 2. The parties also note that the
`
`following applications claim the benefit of the filing date of the ’389 patent:
`
`U.S. Patent Appl. No. 13/068,820 (now U.S. Patent No. 9,355,553); U.S.
`
`Patent Appl. No. 15/153,095 (now U.S. Patent No. 9,911,325); U.S. Patent
`
`Appl. No. 15/864,339; and U.S. Patent Appl. No. 16/057,544. Pet. 74; Paper
`
`4, 2.
`
`
`
`II. ANALYSIS
`
`A. Legal Principles
`
`A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
`
`the differences between the claimed subject matter and the prior art are
`
`“such that the subject matter as a whole would have been obvious at the time
`
`the invention was made to a person having ordinary skill in the art to which
`
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`8
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`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
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`IPR2019-01613
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`406 (2007). The question of obviousness is resolved on the basis of
`
`underlying factual determinations, including: (1) the scope and content of
`
`the prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of skill in the art; and (4) when in evidence, objective
`
`indicia of nonobviousness, i.e., secondary considerations.2 Graham v. John
`
`Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Additionally, the obviousness inquiry typically requires an analysis of
`
`“whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`
`v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`
`
`
`B. Level of Ordinary Skill in the Art
`
`In determining whether an invention would have been obvious at the
`
`time it was made, we consider the level of ordinary skill in the pertinent art
`
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`
`resolving the level of ordinary skill in the art lies in the necessity of
`
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`
`
`2 At this time, the parties do not address objective indicia of nonobviousness,
`which accordingly do not form part of our analysis. See Pet. 72 (“Petitioner
`is not aware of any alleged secondary considerations by Patent Owner.
`Petitioner believes that Patent Owner has not, to date, made any non-
`conclusory assertions of any secondary considerations of non-
`obviousness.”).
`
`9
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`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
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`

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`IPR2019-01613
`Patent 8,004,389 B1
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`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of ordinary
`
`skill in the art” is a hypothetical construct, from whose vantage point
`
`obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
`
`1998). “This legal construct is akin to the ‘reasonable person’ used as a
`
`reference in negligence determinations” and “also presumes that all prior art
`
`references in the field of the invention are available to this hypothetical
`
`skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir.
`
`1993)).
`
`Supported by the testimony of Dr. Russ, Petitioner proposes that a
`
`person of ordinary skill in the art “would have a bachelor’s degree in
`
`electrical engineering or equivalent degree with two years of work
`
`experience relating to communications and consumer electronics.” Pet. 10
`
`(citing Ex. 1003 ¶¶ 16–19). Patent Owner proposes instead that a person of
`
`ordinary skill in the art “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.” Prelim. Resp. 4. According to Patent Owner, “[a]dditional
`
`education might substitute for some of the experience, and substantial
`
`experience might substitute for some of the educational background.” Id.
`
`For purposes of this Decision, we adopt Petitioner’s articulation.
`
`Although Patent Owner acknowledges Petitioner’s statement, id. at 5, Patent
`
`Owner provides no explanation for the more specific requirements it sets
`
`forth for work experience. In addition, unlike Petitioner’s proposal, Patent
`
`Owner’s statement is not supported by testimonial evidence. We note,
`
`10
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`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
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`IPR2019-01613
`Patent 8,004,389 B1
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`though, that for the limited purpose of determining whether to institute an
`
`inter partes review, we would reach the same conclusion under either
`
`proposed standard.
`
`
`
`C. Claim Construction
`
`For petitions filed after November 13, 2018, as here, the Board uses
`
`“the same claim construction standard that would be used to construe the
`
`claim in a civil action under 35 U.S.C. 282(b), including construing the
`
`claim in accordance with the ordinary and customary meaning of such claim
`
`as understood by one of ordinary skill in the art and the prosecution history
`
`pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). The following
`
`terms are addressed by the parties.
`
`
`
`1. “key code”
`
`The parties agree that the term “key code,” which is recited in each of
`
`challenged independent claims 2, 4, and 12, should be construed as “a code
`
`corresponding to the function of an electronic device, optionally including
`
`timing information.” Pet. 11; Prelim. Resp. 8. This construction was
`
`adopted by the district court in the related litigation. Ex. 1010, 12. The
`
`district court’s construction is consistent with the ordinary and customary
`
`meaning of the phrase in light of the Specification, and we adopt the
`
`proposed construction for purposes of this Decision. See, e.g., Ex. 1001,
`
`4:57–61.
`
`
`
`11
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`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
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`

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`IPR2019-01613
`Patent 8,004,389 B1
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`2. “keystroke indicator signal”
`
`The parties agree that the term “keystroke indicator signal,” which is
`
`recited in challenged independent claim 2, should be construed as “a signal,
`
`distinct from a key code, corresponding to a pressed key [on a remote
`
`control].” Pet. 11; Prelim. Resp. 8 (alterations in original). This
`
`construction was adopted by the district court in the related litigation.
`
`Ex. 1010, 12–13. The district court’s construction is consistent with the
`
`ordinary and customary meaning of the phrase in light of the Specification,
`
`and we adopt the proposed construction for purposes of this Decision. See,
`
`e.g., Ex. 1001, 3:59–66.
`
`
`
`3. “key code signal”
`
`In the related litigation, the parties proposed different constructions of
`
`“key code signal,” which is recited in challenged independent claims 2
`
`and 4. Ex. 1010, 13. The district court provided a construction that differs
`
`from both parties’ proposed constructions, namely “a signal containing a
`
`modulated key code.” Id. at 13–23. Patent Owner proposes that this
`
`construction be adopted for this proceeding. Prelim. Resp. 8–9. Petitioner
`
`does not specifically advocate for a particular construction but contends that
`
`the challenged claims are unpatentable both under the district court’s
`
`construction and under the construction proposed by Patent Owner in the
`
`related litigation, i.e. “a signal containing a key code.” Pet. 11–12.
`
`The district court’s construction is consistent with the ordinary and
`
`customary meaning of the phrase in light of the Specification, and we adopt
`
`it for purposes of this Decision. See Ex. 1010, 13–23.
`
`
`
`12
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`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
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`

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`IPR2019-01613
`Patent 8,004,389 B1
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`4. “key code generator device”
`
`In the related litigation, the parties disputed whether “key code
`
`generator device,” which is recited in challenged independent claim 2,
`
`should be construed according to the provisions of 35 U.S.C. § 112 ¶ 63
`
`(“An element in a claim for a combination may be expressed as a means or
`
`step for performing a specified function without the recital of structure,
`
`material, or acts in support thereof, and such claim shall be construed to
`
`cover the corresponding structure, material, or acts described in the
`
`specification and equivalents thereof.”). Ex. 1010, 23–24. In advocating for
`
`construction as such a means-plus-function limitation, Petitioner contended
`
`that “[t]he structure is indefinite due to lack of sufficient corresponding
`
`structure.” Id. In contrast, Patent Owner argued that the term is not
`
`governed by 35 U.S.C. § 112 ¶ 6 and should instead be construed as “an
`
`electronic consumer device, other than a remote control, that identifies a
`
`codeset and generates a key code from the identified codeset.” Id. As an
`
`alternative position, Patent Owner contended that “[t]o the extent 35 U.S.C.
`
`§ 112(6) applies, the corresponding structure is 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.” Id.
`
`The absence of the word “means” in the phrase creates a rebuttable
`
`presumption that § 112 ¶ 6 does not apply. Williamson v. Citrix Online,
`
`
`3 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112 ¶ 6, as
`35 U.S.C. § 112(f). Because the ’389 patent has a filing date prior to
`September 16, 2012, the effective date of § 4(c) of the AIA, we refer to the
`pre-AIA version of 35 U.S.C. § 112. See AIA § 4(e).
`
`13
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`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
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`LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). The district court found that
`
`“the presumption against means-plus-function claiming is overcome” and
`
`applied § 112 ¶ 6 to interpret “key code generator device.” Ex. 1010, 26. In
`
`its interpretation, the court found that “the relationship between the claimed
`
`components fails to provide information to conclude that the coined term
`
`‘key code generator device’ connotes sufficient structure.” Id.. In doing so,
`
`the court determined that “the claimed function is to generate a key code.”
`
`Id.
`
`In considering the corresponding structure, the district court rejected
`
`Petitioner’s contention that the structure is indefinite. See id. at 29 (“The
`
`disclosure in the patent specification supports the conclusion that ‘key code
`
`generator device 12’ is a corresponding structure clearly linked to the recited
`
`function of ‘generat[ing] a key code.’” (alteration in original)). Instead, the
`
`district court arrived at its articulation of the corresponding structure by
`
`observing that “[t]he disclosure for ‘key code generator device 12’ explains
`
`that it generates a key code by (1) identifying (or being informed of) a
`
`codeset usable to communicate with the electronic device and (2) identifying
`
`the key code corresponding to a pressed key for that codeset.” Id. Because,
`
`according to the district court, “this disclosure effectively provides a
`
`software-like algorithm describing what the key code generator device must
`
`do to ‘generate’ a key code,” the district court incorporated such algorithmic
`
`features in its identification of the corresponding structure. Id. (noting
`
`testimonial evidence that off-the-shelf versions of the devices identified by
`
`the Specification would require modification to be able to perform the
`
`recited function).
`
`14
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`Universal Electronics Inc., Exhibit 2006
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
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`IPR2019-01613
`Patent 8,004,389 B1
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`The district court accordingly supplemented its identification of the
`
`function of the recited “key code generator device” (i.e., “to generate a key
`
`code”) with the following structure: “a set-top box, television, stereo radio,
`
`digital video disk player, video cassette recorder, personal computer, set-top
`
`cable television box or satellite box . . . performing 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 . . . and equivalents thereof.” Id. at 30 (citations to
`
`Specification of the ’389 patent omitted).
`
`In this proceeding, Patent Owner proposes that we adopt the district
`
`court’s construction of “key code generator device.” Prelim. Resp. 9.
`
`Petitioner does not specifically advocate for a particular construction but
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`contends that the challenged claims are unpatentable both under the district
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`court’s construction and under the construction originally proposed by
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`Patent Owner in the related litigation. Pet. 12–13. For purposes of this
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`Decision, and recognizing the preliminary nature of our findings and
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`conclusions herein, we adopt the district court’s construction.
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`Nevertheless, we note a potential inconsistency in that construction
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`that may result from the further recitation in independent claim 2 of
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`“(e) identifying said codeset using input from a user of said remote control
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`device, wherein said codeset is identified when said user stops pressing a
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`key on said remote control device.” Ex. 1001, 10:49–52. Specifically, it is
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`not apparent that this limitation is consistent with structure that “perform[s]
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`the step[] of . . . (2) identifying the key code corresponding to a pressed key
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`for that codeset.” The district court’s analysis of “key code generator
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`device” asserts that “a codeset corresponding to the desired consumer device
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`must first be identified by the key code generator device 12.” Ex. 1010, 28
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`(emphasis added). And the “autoscan” embodiment described in the
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`Specification of the ’389 patent, and apparently embraced by limitation (e)
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`of claim 2, appears to be described by the district court as an alternative to
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`the algorithm included in its identification of structure corresponding to the
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`“key code generator device.” Id. (“In later embodiments, the specification
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`explains that key code generator device may alternatively rely on an
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`autoscan functionality . . . to initially identify an appropriate codeset for a
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`particular consumer device.” (emphases added)).
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`The record would benefit from further development and clarification
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`of this issue by the parties. In particular, the parties are asked to take
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`specific positions on the proper construction of “key code generator device,”
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`and to explain how those positions account consistently for the additional
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`recitation of limitation (e) in independent claim 2.
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`
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`5. “means for receiving a key code from said RF receiver and
`for sending said key code to said IR transmitter
`such that said key code is modulated onto an IR carrier signal . . .”
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`Challenged independent claim 12 recites “means for receiving a key
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`code from said RF receiver and for sending said key code to said IR
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`transmitter such that said key code is modulated onto an IR carrier
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`signal . . . .” Ex. 1001, 12:11–16. The parties agree that this limitation
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`should be construed under the provisions of 35 U.S.C. § 112 ¶ 6. Pet. 13;
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`Prelim. Resp. 10. The parties also agree that, under such a construction, the
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`function of the recited “means” is “receiving a key code from said RF
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`receiver and for sending said key code to said IR transmitter such that said
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`key code is modulated onto an IR carrier signal.” Pet. 13; Prelim. Resp. 10–
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`11. Patent Owner explicitly proposes that the corresponding structure is “a
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`microcontroller that facilitates the receiving and sending of the key code,”
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`and Petitioner appears to accept such a proposal. Prelim. Resp. 10–11;
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`Pet. 13 (“For the purposes of this Petition and as shown below, the prior art
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`teachings the function and alleged structure of this claim element.”).
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`Because we agree with the parties that the limitation is properly
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`construed as a mean-plus-function limitation, and because the function and
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`structure identified by Patent Owner are both reasonable and accepted by
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`Petitioner, we adopt those identifications for purposes of this Decision.
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`
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`D. Grounds Based on Mishra and Dubil
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`1. Mishra
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`Mishra discloses “a way to program a remote control unit to handle a
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`variety of electronic devices in a fashion which is easy and quick for the
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`user.” Ex. 1005 ¶ 5. Figure 1 of Mishra is reproduced below.
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`Figure 1 is a schematic illustration of control system 10, which includes
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`processor-based system 12 in communication with remote control unit 18.
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`Id. ¶¶ 7, 14. System 12 may be a set-top computer system that works
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`together with conventional television receiver 14. Id. ¶ 14. Remote control
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`unit 18 may include display 32, keypad 34, and joy-stick navigational
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`control 44. Id. ¶ 15. In addition, remote control unit 18 may include
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`telephone off-hook button 46 and buttons 50, 52 that act as “on” and “off”
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`controls for dedicated electronic devices, such as audio/visual receiver 16.
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`Id.
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`Remote control unit 18 may communicate with system 12 using
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`wireless communication such as infrared or radio-frequency links, and
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`system 12 can translate a command signal received from radio control
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`18
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`unit 18 into a format appropriate for controlling device 16. Id. ¶¶ 18, 20.
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`“That is, it is not necessary to program [remote control unit 18]
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`independently. Instead a variety of codes may be stored in the system 12.”
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`Id. ¶ 20. Thus, when remote control unit 18 transmits a signal corresponding
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`to a known function, system 12 can translate that signal and send
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`information back to remote control unit 18 to control the particular device
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`remote control device 18 is meant to operate. Id. Figure 1 depicts two
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`communication pathways that illustrate this relaying process. Namely,
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`pathway 24 provides bidirectional communication between remote control
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`unit 18 and system 12, while pathway 22 is between remote control unit 18
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`and device 16. Id. ¶ 34.
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`For example, if a user presses a button on remote control unit 18, such
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`as a “channel up button,” remote control unit 18 transmits a command to
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`system 12, which receives the signal and “in turn sends [remote control
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`unit 18] the necessary codes to increment the channel on the TV.” Id. ¶ 37.
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`Remote control unit 18 takes these codes and sends them to the TV using
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`protocols stored in its memory. Id.
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`
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`2. Dubil
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`Dubil “relates to remote control devices and to a service for enabling
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`the programming of remote controls to be used with consumer electronics
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`(CE) equipment.” Ex. 1006, 1:6–8. Figure 1 of Dubil is reproduced below.
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`Figure 1 is a block diagram of system 100, which comprises server 102
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`connected via Internet 104 to appliance 106, such as a set-top box or
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`personal computer, at a user’s home. Id. at 4:48–51. Server 102 includes
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`database 116, which maintains an inventory of control codes for
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`commercially available consumer electronics equipment of various brands
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`and types. Id. at 4:60–62.
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`The user has “universal programmable remote control device 108,”
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`which includes transmitter 112 for sending control codes to electronics
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`equipment, such as TVs, VCRs, CD players, set-top boxes, DVD players,
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`audio pre-amplifiers and tuners, etc. Id. at 4:51–57. Input 114 of remote
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`control device 108 allows for communication with appliance 106. Id. at 57–
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`59. In operation, “[t]he user requests via appliance 106 a code set from
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`server 102 for control of the apparatus, type, brand, serial no., etc., as
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`specified by the user and to be controlled via remote 108.” Id. at 5:6–8.
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`The codes maintained in database 116 are formatted as XML
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`(Extensible Markup Language) documents such that “relevant parameters of
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`a particular control code or command are defined using XML tags.” Id. at
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`4:64–66. “For example, tags are defined for the relevant controllable
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`apparatus to which a code pertains, for its type number, for the IR or RF
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`carrier frequency, for the duty cycle, the protocol type, for the repetition
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`time, for the on/off times of the signal, etc.” Id. at 4:66–5:3. Dubil also
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`discloses different modulation schemes that may be used in transmitting
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`control codes having different bit p