`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`
`
`
`
`
`
`Case No. IPR2019-01613
`U.S. Patent 8,004,389
`
`_____________________
`
`
`DECLARATION OF DR. SAMUEL H. RUSS
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Roku EX1003
`U.S. Patent No. 8,004,389
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`III.
`IV.
`
`V.
`
`VI.
`
`B.
`
`C.
`
`Introduction .................................................................................................... 1
`Qualifications ................................................................................................. 1
`Materials considered ...................................................................................... 4
`Relevant legal standards ................................................................................ 5
`A.
`Level of ordinary skill ............................................................................. 6
`B.
`Claim construction .................................................................................. 7
` “Key code” .................................................................................................... 8 1.
`
`
` “Keystroke indicator signal” ......................................................................... 9 2.
`
` “Key code signal” .......................................................................................... 9 3.
`
` “Key code generator device” ...................................................................... 10 4.
`
` “Means for receiving a key code from said RF receiver and for sending 5.
`said key code to said IR transmitter such that said key code is modulated
`onto an IR carrier signal…” ........................................................................ 11
`C.
`Obviousness ...........................................................................................12
`Overview of the ’389 patent ........................................................................ 12
`A.
`Embodiment 1 – Transmitting a Key Code from a Key Code
`Generator to a Remote Control Device .................................................14
`Background of the Technology ................................................................... 17
`A.
`Infrared Remote Controls and Controlling Electronic Consumer
`Devices Were Well-Known ..................................................................18
`Controlling Electronic Devices Using Key Codes Was Well-
`Known ...................................................................................................25
`Transmitting Key Codes From Electronic Devices Other Than
`Remote Controls Was Well-Known ......................................................30
`Transmitting Key Codes Via Modulating Key Codes Onto
`Carrier Signals Was Well-Known .........................................................40
`“Blasters” Were Well-known Devices Used to Transmit Key
`Codes According to Modulation Parameters ........................................46
`Using a Remote Control as a Relay Device was Well-known ..............50
`
`D.
`
`E.
`
`F.
`
`
`
`- i -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`
`VII.
`
`4.
`
`
`5.
`
`
`3.
`
`
`GROUND 1: Claims 2 and 3 of the ’389 Patent are Unpatentable
`under 35 U.S.C. § 103 Over Mishra In view of Dubil and Van Ee ............. 52
`A. Overview of Mishra...............................................................................53
`B.
`Overview of Dubil .................................................................................55
`C.
`Overview of Van Ee ..............................................................................59
`D.
`Independent Claim 2 .............................................................................62
`[2.P]: “A method comprising:” ................................................................... 62
`1.
`
`2.
`[2.1]: “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;” ..................................................... 63
`[2.2]: “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;” ................................................... 63
`[2.3]: “modulating said key code onto a carrier signal, thereby generating
`a key code signal; and” ............................................................................... 65
`[2.4]: “transmitting said key code signal from said key code generator
`device; and” ................................................................................................ 67
`[2.5]: “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.” .......................................... 68
`E.
`Claim 3: “The method of claim 2, wherein said user is
`prompted by autoscan functionality to press said key on said
`remote control device.” .........................................................................73
`VIII. GROUND 2: Claims 4 and 7-15 of the ’389 Patent are Unpatentable
`under 35 U.S.C. § 103 Over Mishra In view of Dubil ................................ 75
`A.
`Claim 4 ..................................................................................................75
`[4.P]: “A remote control device comprising:” ............................................ 75
`1.
`
`2.
`[4.1]: “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;” ..... 76
`[4.2]: “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” .................................................................................. 78
`- ii -
`
`6.
`
`
`3.
`
`
`
`
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`C.
`
`D.
`
`E.
`
`F.
`
`4.
`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`[4.3]: “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. ” .......................................................................... 80
`B.
`Claim 7: “The remote control device of claim 4, wherein said
`key code is part of a codeset, and wherein said codeset is not
`stored on said remote control device.” ..................................................82
`Claim 8: “The remote control device of claim 4, wherein said
`modulating to generate said first key code signal is performed
`according to a first codeset, and wherein said remote control
`device stores no codeset other than said first codeset.” ........................83
`Claim 9: “The remote control device of claim 4, wherein said
`key code is part of a codeset that includes a plurality of key
`codes, wherein each one of said plurality of key codes
`corresponds to a different function of the electronic consumer
`device, and wherein no more than a single one of said plurality
`of key codes is present on said remote control device at any
`given time.” ...........................................................................................85
`Claim 10: “The remote control device of claim 4, further
`comprising: a microcontroller that determines that a user of said
`remote control device has selected said key and that modulates
`said key code onto said second carrier signal.”.....................................87
`Claim 11: “The remote control device of claim 4, wherein said
`modulating said key code onto said first carrier signal is
`performed by an electronic consumer device taken from the
`group consisting of: a television, a stereo radio, a digital video
`disk player, a video cassette recorder, a personal computer, a
`set-top cable television box and a set-top satellite box.” ......................88
`Claim 12 ................................................................................................89
`G.
`[12.P]: “A remote control device, comprising:” ......................................... 89
`1.
`
`2.
`[12.1]: “a keypad;” ...................................................................................... 90
`
`3.
`[12.2]: “an RF receiver;” ............................................................................. 90
`
`4.
`[12.3]: “an IR transmitter; and” .................................................................. 90
`
`5.
`[12.4]: “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
`
`- iii -
`
`
`
`
`
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`I.
`
`J.
`
`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.” ........................................................................... 91
`H.
`Claim 13: “The remote control device of claim 12, wherein said
`key code is not stored on said remote control device
`immediately prior to said means receiving the key code.” ...................92
`Claim 14: “The remote control device of claim 12, wherein said
`key code is part of a codeset, and wherein said codeset is not
`stored on said remote control device.” ..................................................93
`Claim 15: “The remote control device of claim 12, wherein said
`means is a microcontroller.” ..................................................................93
`GROUND 3: Claim 5 of the ’389 Patent Is Unpatentable under 35
`U.S.C. § 103 Over Mishra In view of Dubil And Lambrechts .................... 93
`A. Overview of Lambrechts .......................................................................93
`B.
`Claim 5: “The remote control device of claim 4, wherein said
`remote control device is taken from the group consisting of: a
`learning remote control device, a cell phone, an RF-enabled
`personal digital assistant (PDA), an RF-enabled wrist watch,
`and an RF-enabled keyboard.” ..............................................................95
`GROUND 4: Claims 2 and 3 of the ’389 Patent are Unpatentable
`under 35 U.S.C. § 103 Over Caris In view of Skerlos And Van Ee ........... 96
`A. Overview of Caris .................................................................................97
`B.
`Overview of Skerlos ..............................................................................99
`C.
`Independent Claim 2 ...........................................................................103
`[2.P]: “A method comprising:” ................................................................. 103
`1.
`
`2.
`[2.1]: “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;” ................................................... 104
`[2.2]: “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;” ................................................. 105
`[2.3]: “modulating said key code onto a carrier signal, thereby generating
`a key code signal;” .................................................................................... 107
`
`3.
`
`
`4.
`
`
`- iv -
`
`
`
`IX.
`
`X.
`
`
`
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`5.
`
`
`6.
`
`
`
`
`XI.
`
`[2.4]: “transmitting said key code signal from said key code generator
`device; and” .............................................................................................. 111
`[2.5]: “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.” ........................................ 111
`D.
`Claim 3: “The method of claim 2, wherein said user is
`prompted by autoscan functionality to press said key on said
`remote control device.” .......................................................................118
`GROUND 5: Claims 4 and 11 of the ’389 Patent are Unpatentable
`under 35 U.S.C. § 103 over Caris In View of Skerlos. ............................. 120
`A.
`Claim 4 ................................................................................................120
`[4.P]: “A remote control device comprising:” .......................................... 120
`1.
`
`2.
`[4.1]: “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;” ... 121
`[4.2]: “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” ................................................................................ 124
`[4.3]: “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. ” ........................................................................ 127
`B.
`Claim 11: “The remote control device of claim 4, wherein said
`modulating said key code onto said first carrier signal is
`performed by an electronic consumer device taken from the
`group consisting of: a television, a stereo radio, a digital video
`disk player, a video cassette recorder, a personal computer, a
`set-top cable television box and a set-top satellite box.” ....................129
`GROUND 6: Claims 5 and 8 of the ’389 Patent are Unpatentable
`under 35 U.S.C. § 103 Over Caris In view of Skerlos And
`Lambrechts ................................................................................................. 129
`A. Motivation to Combine Caris and Skerlos with Lambrechts ..............129
`B.
`Claim 5: “The remote control device of claim 4, wherein said
`remote control device is taken from the group consisting of: a
`
`3.
`
`
`4.
`
`
`XII.
`
`
`
`
`- v -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`C.
`
`learning remote control device, a cell phone, an RF-enabled
`personal digital assistant (PDA), an RF-enabled wrist watch,
`and an RF-enabled keyboard.” ............................................................131
`Claim 8: “The remote control device of claim 4, wherein said
`modulating to generate said first key code signal is performed
`according to a first codeset, and wherein said remote control
`device stores no codeset other than said first codeset.” ......................134
`XIII. GROUND 7: Claims 10, 12, and 15 of the ’389 Patent are
`Unpatentable under 35 U.S.C. § 103 Over Caris In view of Skerlos
`And Yazolino ............................................................................................. 136
`A.
`Claim 10: “The remote control device of claim 4, further
`comprising: a microcontroller that determines that a user of said
`remote control device has selected said key and that modulates
`said key code onto said second carrier signal.”...................................136
`Claim 12 ..............................................................................................140
`B.
`[12.P]: “A remote control device, comprising:” ....................................... 140
`1.
`
`2.
`[12.1]: “a keypad;” .................................................................................... 140
`
`3.
`[12.2]: “an RF receiver;” ........................................................................... 141
`
`4.
`[12.3]: “an IR transmitter; and” ................................................................ 141
`
`5.
`[12.4]: “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.” ......................................................................... 141
`C.
`Claim 15: “The remote control device of claim 12, wherein said
`means is a microcontroller.” ................................................................143
`XIV. GROUND 8: Claims 13 and 14 of the ’389 Patent are Unpatentable
`under 35 U.S.C. § 103 Over Caris In view of Skerlos, Yazolino, And
`Lambrechts ................................................................................................. 143
`A.
`Claim 13: “The remote control device of claim 12, wherein said
`key code is not stored on said remote control device
`immediately prior to said means receiving the key code.” .................143
`
`
`
`
`- vi -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`B.
`
`Claim 14: “The remote control device of claim 12, wherein said
`key code is part of a codeset, and wherein said codeset is not
`stored on said remote control device.” ................................................145
`Other evidence relevant to obviousness .................................................... 145
`
`
`
`XV.
`
`
`
`
`
`
`- vii -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`
`
`I, Samuel H. Russ, declare as follows:
`
`I.
`
`INTRODUCTION
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`
`1.
`
`
`I have been asked by Roku, Inc. (“Roku”) to provide expert opinions
`
`in the above-captioned Inter Partes Review proceeding involving U.S. Patent No.
`
`8,004,389 (“the ’389 patent”), which is entitled “Relaying Key Code Signals
`
`Through A Remote Control Device.”
`
`2.
`
`
`I am being compensated by Roku on an hourly basis for the time I
`
`spend in connection with this proceeding. My compensation is not dependent in
`
`any way on the substance of my opinions or in the outcome of this proceeding.
`
`II. QUALIFICATIONS
` My qualifications for forming the opinions set forth in this declaration 3.
`
`
`are summarized here and explained in more detail in my curriculum vitae, which is
`
`attached as Exhibit 1004. Exhibit 1004 also includes a list of my publications and
`
`the cases in which I have testified at deposition, hearing, or trial during the past
`
`four years.
`
`4.
`
`
`I received a Bachelor’s degree in Electrical Engineering from the
`
`Georgia Institute of Technology (“Georgia Tech”) in 1986 and a Ph.D. in
`
`Electrical Engineering from Georgia Tech in 1991.
`
`5.
`
`
`From 2007 to the present, I have been a member of the faculty of the
`
`University of South Alabama as an Assistant and Associate Professor in the
`
`
`
`- 1 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`
`Department of Electrical and Computer Engineering. During that time, I have won
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`awards for excellent teaching and have been actively publishing research in home
`
`networking and digital video recording (DVR) technologies. I am active in the
`
`Institute of Electrical and Electronic Engineers (IEEE) and am a Distinguished
`
`Lecturer for the IEEE Consumer Electronics Society. As a consultant, I have
`
`conducted briefings for members of the financial community on technology trends
`
`in the cable, satellite, and IPTV sectors.
`
`6.
`
`
`From 2000 to 2007, I worked for Scientific-Atlanta (now Cisco’s
`
`Service Provider Video Tech. Group), where I managed a cable set-top box (STB)
`
`design group that designed four STB models, including the Explorer 4200
`
`(nonDVR) and 8300 (DVR) models. Both models sold several million units. As
`
`design-group manager, I was responsible for managing the design and prototyping
`
`activities of the group and for interfacing with other groups (especially integrated-
`
`circuit design, procurement, software developers, the factory where prototypes
`
`were built, and product managers) and for maintaining the hardware and
`
`mechanical development schedule. Since the products were produced in extremely
`
`high volumes, the projects had very high visibility in the company, and therefore
`
`carried a great deal of responsibility.
`
`7.
`
`
`Also while at Scientific-Atlanta, I became a staff expert in home
`
`networking, conducting demonstrations of wireless video
`
`technology and
`
`
`
`- 2 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`
`managing a group that developed a new coaxial home networking system. The
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`coaxial system won a Technology and Engineering Emmy® Award in 2013. I
`
`became a staff expert in DVR reliability, and led a team that improved the
`
`software, hardware, repair, and manufacturing processes. I am a named inventor on
`
`fifty-one (51) patent applications that were filed while I was at Scientific-Atlanta,
`
`twenty eight (28) of which have issued as U.S. patents as of the writing of this
`
`report.
`
`8.
`
`
`From 1999 to 2000, I was a Staff Electrical Engineer and then Matrix
`
`Manager at IVI Checkmate (now Ingenico), where I managed the hardware design
`
`team that completed the design of the eN-Touch 1000 payment terminal. This
`
`terminal was in widespread use, for example, at the self-checkout at Home Depot.
`
`9.
`
`
`I also served on the faculty of Mississippi State University from 1994
`
`to 1999 as an Assistant Professor in the Department of Electrical & Computer
`
`Engineering where I taught circuit board design and two-way interactive video
`
`classes, among other things.
`
`10.
`
`
`I have also authored 32 journal articles and conference papers. A
`
`recent conference paper on digital video recording won second place in a “best
`
`paper” competition at the 2011 International Conference on Consumer Electronics
`
`in Las Vegas, NV.
`
`
`
`- 3 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`
`
` My curriculum vitae, which includes a more detailed summary of my 11.
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`
`
`background and experience, as well as a complete list of my publication, is
`
`included as Exhibit 1004.
`
`III. MATERIALS CONSIDERED
`12.
`In formulating my opinions, I have relied upon my training,
`
`
`knowledge, and experience that are relevant to the ’389 patent. Furthermore, I have
`
`considered specifically the following documents listed below in addition to any
`
`other documents cited in this declaration. I understand that the references are true
`
`and accurate copies of what they appear to be:
`
`Exhibit No.
`1001
`1004
`1005
`1006
`1008
`1009
`1010
`1011
`1012
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`Description
`U.S. Patent No. 8,004,389 to Mui (“’389 Patent”).
`Curriculum Vitae of Dr. Samuel Russ.
`U.S. Patent Publication No. 2001/0005197 to Mishra (“Mishra”).
`U.S. Patent No. 8,132,105 to Dubil et al. (“Dubil”).
`U.S. Patent No. 7,562,128 to Caris et al. (“Caris”).
`U.S. Patent No. 4,426,662 to Skerlos et al. (“Skerlos”).
`Markman Order SACV 18-01580 JVS (Dated August 8, 2019)
`U.S. Patent No. 6,909,378 to Lambrechts et al. (“Lambrechts”)
`U.S. Patent No. 5,329,370 to Yazolino (“Yazolino”)
`U.S. Patent No. 6,774,813 to van Ee et al. (“van Ee”)
`“VCR Commander Service User’s Guide,” Scientific-Atlanta, Inc.,
`(Dated September 2000) (“VCR Commander”)
`U.S. Patent No. 5,469,152 to Yamamoto et al.
`“Infrared Remote Control Transmitter RC5 Product Specification,”
`Philips Semiconductors (Dated June 15, 1999)
`“AT2400 AllTouch Remote Control User’s Guide,” Scientific-
`Atlanta, Inc. (Dated February 2002)
`
`
`
`- 4 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`Description
`“EXPLORER 2100 or 3100 Digital Home Communications
`Terminals User’s Installation Guide,” Scientific-Atlanta, Inc.
`(Dated July 2000)
`U.S. Patent No. 6,909,471 to Bayley (“Bayley”)
`U.S. Patent No. 5,745,192 to Bialobrzewski (“Bialobrzewski”)
`U.S. Patent No. 5,365,282 to Levine (“Levine”)
`U.S. Patent No. 6,225,873 to Hill (“Hill”)
`U.S. Patent No. 7,149,474 to Mikhak (“Mikhak”)
`U.S. Patent No. 6,122,010 to Emelko (“Emelko”)
`U.S. Patent No. 7,151,575 to Landry et al. (“Landry”)
`U.S. Patent No. 6,930,730 to Maxon et al. (“Maxon”)
`U.S. Patent No. 6,993,134 to Epstein (“Epstein”)
`“Device Specification for Infrared Detecting unit for Remote
`Control GP1UV70QS series,” Sharp Corporation Electronic
`Components Group, Opto-Electronic Devices Division (Dated
`December 27, 2002) (“GP1UV70”)
`“Data Formats for IR Remote Contol,” Vishay Semiconductors
`(Dated August 27, 2003) (“Vishay”)
`“User Interface – Infrared Learner (Remote Control) AN2092”
`Project Guide, Cypress Semiconductor Corporation (Dated
`November 11, 2002) (“Cypress”)
`U.S. Patent No. 5,383,044 to Borchardt et al. (“Borchardt”)
`Infringement Contentions Exhibit B-2, Universal Electronics Inc.
`v. Roku, Inc., 8:18-cv-01580 (C.D. Cal.)
`
`
`
`Exhibit No.
`
`1018
`
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`1027
`
`1030
`
`1031
`
`1034
`
`1035
`1036
`
`
`IV. RELEVANT LEGAL STANDARDS
`13.
`I have also relied upon various legal principles (as explained to me by
`
`
`Roku’s counsel) in formulating my opinions. My understanding of these principles
`
`are summarized below.
`
`
`
`- 5 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`14.
`
`
`I understand that a patent claim defines the metes and bounds of an
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`
`
`alleged invention. I further understand that a claimed invention must be new,
`
`useful, and non-obvious over the prior art for it to be patentable. I understand that
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`in this proceeding Roku has the burden of proving that the challenged claims are
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`unpatentable over the prior art by a preponderance of the evidence. I understand
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`that “a preponderance of the evidence” is evidence sufficient to show that a fact is
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`more likely true than it is not.
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`15.
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`In determining the patentability of a claim, I understand that the first
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`step is to construe the claim from the perspective of a person of ordinary skill in
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`the art (“POSA”) to determine its meaning and scope. Once construed, I
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`understand that the claim is to be considered against the prior art from the
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`perspective of a POSA as further summarized below.
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`A. Level of ordinary skill
`16.
`I understand that a claim must be analyzed from the perspective of a
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`
`POSA at the time the claimed invention was allegedly invented by the patentee.
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`Roku’s counsel has asked me to consider the time period shortly before December
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`16, 2003, which is the earliest priority date of the ’389 patent, as the potential date
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`of invention of the claims of the ’389 patent.
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`17.
`
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`In ascertaining the appropriate level of ordinary skill in the art of a
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`patent, I understand that several factors should be considered including (1) the
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`
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`- 6 -
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`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`
`types of problems encountered in the art; (2) the prior art solutions to those
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`problems; (3) the rapidity with which innovations are made; (4) the sophistication
`
`of the technology; and (5) the educational level of active workers in the field of the
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`patent.
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`18.
`
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`I further understand that a POSA is a person who is presumed to be
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`aware of the pertinent art, thinks along conventional wisdom in the art, and is a
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`person of ordinary creativity. Accordingly, a POSA of the ’389 patent would have
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`had general knowledge of remote control devices, consumer electronic devices,
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`and various related technologies as of December 16, 2003.
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`
`
` Thus based on my experience and my understanding of the legal 19.
`
`principles summarized here, I believe that a POSA in the context of the ’389 patent
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`at the time of the patent’s earliest priority date of December 16, 2003, would have
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`had a bachelor’s degree in electrical engineering or equivalent degree with two
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`years of work experience relating to communications and consumer electronics.
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`Well before December 16, 2003, my level of skill in the art was at least that of a
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`POSA, as discussed above.
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`B. Claim construction
`20.
`I have been informed by Roku’s counsel that in this proceeding, the
`
`
`United States Patent and Trademark Office (“PTO”) interprets the claims of an
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`unexpired patent, such as the ’389 patent, under the same standards used in a
`
`
`
`- 7 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`
`United States District Court. This includes interpreting the claims through the lens
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`of POSA in view of the entire patent. Accordingly, in formulating my opinions, I
`
`have reviewed the claims of the ’389 patent as I perceive a POSA would have
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`understood them at the time of the earliest priority date (December 16, 2003) of the
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`’389 patent, after reading the entire ’389 patent specification. I have also reviewed
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`a Markman order provided by the district court in a pending proceeding also
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`directed to the ’389 patent.
`
`
`
` Finally, I have been informed that claim construction is ultimately a 21.
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`question of law. Accordingly, I understand that a tribunal may choose to construe
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`certain terms to provide clarity to the proceeding should any dispute arise between
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`the parties over how a term should be construed. If the tribunal chooses to construe
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`any term, then I reserve my right to review and potentially modify any opinions
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`below in view of such constructions.
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`“Key code”
`
`1.
`
`I understand that in the related district court proceeding, Patent Owner
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`22.
`
`
`and Petitioner have previously agreed to a construction for “key code” as being a
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`“a code corresponding to the function of an electronic device, optionally including
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`timing information.” EX1010, Markman order, 12. While a POSA reading the term
`
`“key code” would understand the term as having its plain and ordinary meaning,
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`the combination of references described below in Grounds 1-8 render obvious the
`
`
`
`- 8 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01612
`
`
`
`
`claims of the ’389 patent under its plain and ordinary meaning or the agreed-upon
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 8,004,389
`
`construction.
`
`“Keystroke indicator signal”
`
`2.
`
`I understand that in the related district court proceeding, Patent Owner
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`23.
`
`
`and Petitioner have previously agreed to a construction for “keystroke indicator
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`signal” and “keystroke indicator” as being a “a signal, distinct from a key code,
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`corresponding to a pressed key [on a remote control].” EX1010, 12-13. While a
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`POSA reading the term “keystroke indicator signal” would understand the term as
`
`having its plain and ordinary meaning, the combination of references described
`
`below in Grounds 1-8