UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`Petitioner
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner
`____________________
`IPR2019-01612
`U.S. Patent No. 7,589,642
`____________________
`
`PETITIONER ROKU, INC.’S REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`Case IPR2019-01612
`U.S. Pat. No. 7,589,642
`
`I.
`II.
`
`III.
`
`IV.
`
`B.
`
`C.
`
`TABLE OF CONTENTS
`Introduction ................................................................................................. 1
`Claim Construction ...................................................................................... 2
`A.
`“key code signal” ............................................................................... 3
`B.
`“key code generator device” .............................................................. 3
`C.
`“generating a key code within a key code generator device using the
`keystroke indicator signal” ................................................................. 5
`The Grounds Presented in the Petition Disclose All of the Elements of the
`Challenged Claims ....................................................................................... 7
`A.
`Ground 1: Mishra in view of Dubil .................................................... 7
`1.
`Mishra Discloses the Claimed “Receiving” and “Generating” . 7
`2.
`Mishra in view of Dubil Renders Obvious the Claimed
`“Modulating” ........................................................................... 9
`Mishra in view of Dubil Renders Obvious the Dependent
`Claims.....................................................................................11
`Ground 2: Rye in view of Dubil ........................................................15
`1.
`Rye Discloses the Claimed “Receiving” and “Generating” .....15
`2.
`Rye in view of Dubil Renders Obvious the Claimed
`“Modulating” ..........................................................................16
`Rye in view of Dubil Renders Obvious the Dependent Claims
`................................................................................................17
`Ground 3: Caris in view of Skerlos ...................................................18
`1.
`Caris as Applied to Claim 2 Differs From Caris as Applied to
`Claim 1 ...................................................................................18
`Caris in view of Skerlos Renders Obvious the Claimed
`“Modulating” ..........................................................................19
`Caris in view of Skerlos Renders Obvious Independent Claim 1
`and the Dependent Claims ......................................................20
`The Petition Has Demonstrated a Motivation to Combine the Asserted Prior
`Art References ............................................................................................21
`A.
`Ground 1 - A POSA Would Have Been Motivated to Combine Mishra
`and Dubil ..........................................................................................21
`
`3.
`
`3.
`
`2.
`
`3.
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`B.
`
`C.
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`Case IPR2019-01612
`U.S. Pat. No. 7,589,642
`Ground 2 - A POSA Would Have Been Motivated to Combine Rye
`and Dubil ..........................................................................................24
`Ground 3 - A POSA Would Have Been Motivated to Combine Caris
`and Skerlos .......................................................................................25
`The Testimony of UEI’s expert, Dr. Sprenger, is Entitled Little to No
`Weight. .......................................................................................................26
`VI. Conclusion ..................................................................................................27
`
`V.
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`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
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`Case IPR2019-01612
`U.S. Pat. No. 7,589,642
`PETITIONER’S UPDATED EXHIBIT LIST
`Exhibit No. Description
`U.S. Patent No. 7,589,642 to Mui (“’642 Patent”)
`1001
`Prosecution History of U.S. Patent No. 7,589,642 (“Prosecution
`1002
`History”)
`Declaration of Dr. Samuel Russ in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,589,642
`Curriculum Vitae of Dr. Samuel Russ
`U.S. Patent Publication No. 2001/0005197 to Mishra et al.
`(“Mishra”)
`U.S. Patent No. 8,132,105 to Dubil et al. (“Dubil”)
`U.S. Patent Publication No. 2004/0080428 to Rye et al. (“Rye”)
`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)
`“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 Control,” Vishay Semiconductors
`(Dated August 27, 2003) (“Vishay”)
`“User Interface – Infrared Learner (Remote Control) AN2092”
`Project Guide, Cypress Semiconductor Corporation (Dated
`November 11, 2002) (“Cypress”)
`“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. (“Yamamoto”)
`“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)
`“EXPLORER 2100 or 3100 Digital Home Communications
`Terminals User’s Installation Guide,” Scientific-Atlanta, Inc.
`(Dated July 2000)
`
`1011
`
`1012
`
`1013
`
`1014
`1015
`1016
`
`1017
`
`1018
`
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`

`Exhibit No. Description
`U.S. Patent No. 6,909,471 to Bayley (“Bayley”)
`1019
`U.S. Patent No. 5,745,192 to Bialobrzewski (“Bialobrzewski”)
`1020
`U.S. Patent No. 5,365,282 to Levine (“Levine”)
`1021
`U.S. Patent No. 6,225,873 to Hill (“Hill”)
`1022
`U.S. Patent No. 7,149,474 to Mikhak (“Mikhak”)
`1023
`U.S. Patent No. 6,122,010 to Emelko (“Emelko”)
`1024
`U.S. Patent No. 7,151,575 to Landry et al. (“Landry”)
`1025
`U.S. Patent No. 6,930,730 to Maxon et al. (“Maxon”)
`1026
`U.S. Patent No. 6,993,134 to Epstein (“Epstein”)
`1027
` Infringement Contentions Exhibit B-1, Universal Electronics Inc.
`1028
`v. Roku, Inc., 8:18-cv-01580 (C.D. Cal.)
`Infringement Contentions Exhibit A-1, Universal Electronics Inc.
`v. Roku, Inc., 8:18-cv-01580 (C.D. Cal.)
`Supplemental Declaration of Dr. Samuel Russ in Response to
`Patent Owner’s Objections to Petitioner’s Evidence for Inter
`Partes Review of U.S. Patent No. 7,589,642 (served but not filed)
`Transcript of Telephone Conference, Roku, Inc. v. Universal
`Electronics, Inc., June 26, 2020
`Declaration of Dr. Samuel Russ in Support of Petitioner’s Reply to
`Patent Owner’s Response
`Transcript of the Deposition of Dr. Michael Sprenger, IPR2019-
`01612 (Dated September 15, 2020)
`Transcript of the Deposition of Dr. Michael Sprenger, IPR2019-
`01613 (Dated September 16, 2020)
`Transcript of the Deposition of Dr. Michael Sprenger, IPR2019-
`01614 (Dated September 16, 2020)
`Supplemental Declaration of Michael Sprenger, Ph.D. in Support
`of Plaintiff’s Supplemental Claim Construction Brief, TVnGO Ltd.
`v. LG Electronics, Inc., 1-18-10238 (D. N.J.) (Dated February 3,
`2020)
`Opinion, TVnGO Ltd. v. LG Electronics, Inc., 1-18-10238 (D. N.J.)
`(Dated April 16, 2020)
`
`1031
`
`1035
`
`1036
`
`1037
`
`1029
`
`1030
`
`1032
`
`1033
`
`1034
`
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`U.S. Pat. No. 7,589,642
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`
`
`I.
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`
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`
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`Case IPR2019-01612
`U.S. Pat. No. 7,589,642
`
`INTRODUCTION
`The Board should find all of the challenged claims of the ’642 patent
`
`unpatentable. In its POR, Patent Owner Universal Electronics, Inc. (“UEI”) often
`
`mischaracterizes the references and the Petition’s positions, therefore advancing an
`
`incomplete and incorrect analysis of the Grounds.
`
`First, UEI introduces an erroneous new claim construction—narrowly
`
`construing “generating a key code within a key code generator device using the
`
`keystroke indicator signal.” POR, 15-16. UEI improperly imports limitations into
`
`the claims—limitations that contradict its own expert’s testimony. Nonetheless,
`
`even under the new construction, the challenged claims are obvious.
`
`Second, UEI selectively ignores portions of the prior art references related to
`
`receiving a keystroke indicator signal and generating a corresponding key code.
`
`For example, UEI mischaracterizes Mishra and Rye and argues that their remote
`
`controls already store and transmit key codes—ignoring the embodiments that
`
`disclose the exact opposite and what is claimed by the ’642 patent. See id., 22-24,
`
`38-39.
`
`Third, UEI mischaracterizes how the Petition combines the references. For
`
`example, both Mishra and Rye already disclose the wireless transmission of key
`
`codes. See Pet., 24-26, 39-41. Dubil provides an example of the well-known
`
`modulation techniques and parameters that a person of ordinary skill in the art
`
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`Case IPR2019-01612
`U.S. Pat. No. 7,589,642
`(“POSA”) would have used for the wireless transmission of Mishra and Rye’s key
`
`codes. Id.; see EX2003, ¶¶49-54. Rather than addressing the positions taken in the
`
`Petition, UEI incorrectly focuses on a physical combination of Dubil’s components
`
`with Mishra and Rye—an argument that is technically inaccurate as well. Finally,
`
`the testimony of UEI’s expert, Dr. Sprenger, should be afforded little to no weight.
`
`Therefore, for these reasons, the Board should find claims 1–4, 6, 8, 9, and
`
`22–25 of the ’642 patent unpatentable.
`
`II. CLAIM CONSTRUCTION
`UEI proposes additional constructions for the claim terms “key code signal”
`
`and “generating a key code within a key code generator device using the keystroke
`
`indicator signal.” UEI also argues that the District Court’s construction of “key
`
`code generator device” is not inconsistent with the “autoscan” embodiment. POR,
`
`13-14.
`
`While Roku agrees there is no inconsistency with the “autoscan”
`
`embodiment and the construction of “key code generator device,” Roku disagrees
`
`with UEI’s positions for “key code signal” and the claimed “generating”
`
`Nevertheless, the asserted art discloses or renders obvious the claims even under
`
`UEI’s constructions.
`
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`U.S. Pat. No. 7,589,642
`
`“key code signal”
`A.
`UEI agrees with the Board’s construction but adds that “a signal containing
`
`a modulated key code” excludes a codeset from the same signal. Roku disagrees
`
`with this additional limitation because it improperly adds unsupported limitations.
`
`EX1032, ¶9. The Board should therefore reject PO’s overly narrow construction.
`
`Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)
`
`(“[I]t is important not to import into a claim limitations that are not a part of the
`
`claim. For example, a particular embodiment appearing in the written description
`
`may not be read into a claim when the claim language is broader than the
`
`embodiment.”); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
`
`2003).
`
`“key code generator device”
`B.
`UEI argues that there is no inconsistency between the District Court’s
`
`construction and the autoscan functionality claimed in the ’389 patent. POR, 13-
`
`14. Roku agrees. Under the District Court’s construction, the “key code generator
`
`device” (1) identifies a codeset and (2) identifies a key code corresponding to a
`
`pressed key for that codeset. EX1032, ¶¶10-12. As explained by Dr. Sprenger, the
`
`claimed “key code generator device,” as recited in claim 2 of the ’389 patent, may
`
`first identify a codeset using autoscan functionality and then, in response to a
`
`pressed key, subsequently identify that codeset and identify a corresponding key
`
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`U.S. Pat. No. 7,589,642
`code. EX1034, 32:19-33:6 (“So Step (e) would have to occur at some point prior to
`
`carrying out all the lookup information and things like that…”). In this case, the
`
`autoscan functionality may occur prior to the two “identifications” recited in the
`
`District Court’s construction. EX1032, ¶¶12-13.
`
`After performing the autoscan, the key code generator device performs both
`
`identifications “[e]ach time the user presses a key.” POR, 14. For example, the key
`
`code generator device initially uses autoscan to identify codesets for future use
`
`when controlling different consumer electronic devices (e.g., a VCR and a TV).
`
`EX1032, ¶¶14-15. Subsequently, after the autoscan configuration, a user actually
`
`presses a button on the remote, which causes the key code generator device to
`
`identify a specific codeset and key code associated with the pressed button (e.g. the
`
`codeset for “Sony 8000 VCR” and the key code for “VCR power-on”). EX1001,
`
`3:18-21, 3:40-50. When the key code generator device identifies a particular key
`
`code that corresponds to a target device, the key code generator device necessarily
`
`first identifies the codeset for the target device (provided that there are multiple
`
`codesets to choose from) because the codeset is the superset for the key code.
`
`EX1032, ¶¶14-15. UEI appears to agree with this interpretation when stating that
`
`“[e]ventually, the key code generator device identifies the codeset that corresponds
`
`to the desired electronic consumer device and generates the key code for that
`
`codeset.” POR, 14 (emphasis added).
`
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`C.
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`U.S. Pat. No. 7,589,642
`“generating a key code within a key code generator device using
`the keystroke indicator signal”
`UEI proposes construing this term to mean “its plain and ordinary meaning,
`
`except that it excludes receiving an appliance control code and merely translating
`
`or converting the code into another format, such as an infrared signal.” POR, 15.
`
`UEI frames its proposal as the “plain and ordinary meaning” yet improperly
`
`imports requirements far beyond the plain and ordinary meaning of this term.
`
`EX1032, ¶¶16-17.
`
`At the very least, excluding the translation or conversion of a received
`
`appliance control code improperly narrows the claim based on UEI’s and Dr.
`
`Sprenger’s overview of the ’642 patent. See, e.g., POR, 5; EX2003, ¶¶67-68, 155,
`
`172. For example, both Dr. Sprenger and UEI rely on the figure below to illustrate
`
`the operation of the ’642 patent and claim 1. See, e.g., POR, 4-5; EX2003, ¶¶67-
`
`68, 155, 172.
`
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`U.S. Pat. No. 7,589,642
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`
`
`
`
`As Dr. Sprenger explained during his deposition, this figure depicts an STB
`
`receiving a binary control code (i.e., “11111010”) and using this binary control
`
`code to identify a key code from the depicted look-up table. EX1033, 175:14-
`
`176:10, 177:16-178:18, 180:8-17. In other words, the STB translates or converts
`
`the received binary control code into a key code for transmission. EX1032, ¶¶18-
`
`20. By Dr. Sprenger’s own admission, the claimed “generating” must be broad
`
`enough to encompass this embodiment. EX1033, 175:14-176:10, 177:16-178:18,
`
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`U.S. Pat. No. 7,589,642
`180:8-17.1 The Board should therefore reject UEI’s improper narrowing of the
`
`claims. Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
`
`2004)
`
`Nonetheless, as explained in the Petition, Mishra, Rye, and Caris disclose
`
`the claimed “generating” even under UEI’s narrow construction. See Pet., 22-23,
`
`37-39, 54-55, 68-69.
`
`III. THE GROUNDS PRESENTED IN THE PETITION DISCLOSE ALL
`OF THE ELEMENTS OF THE CHALLENGED CLAIMS
`A. Ground 1: Mishra in view of Dubil
`1. Mishra Discloses the Claimed “Receiving” and
`“Generating”
`UEI first argues Mishra’s remote control sends a command signal that
`
`“already includes the key code to control the appliance.” POR, 22. Thus, UEI
`
`contends that Mishra does not disclose receiving a keystroke indicator signal, and
`
`therefore cannot disclose the claimed generating of a key code, because Mishra is
`
`
`1 For clarity, Roku does not agree that the ’642 Patent is necessarily directed
`
`to a “look-up table,” which is not recited in the specification or claims. Rather,
`
`Petitioner merely notes that Dr. Sprenger and UEI’s arguments are self-
`
`contradictory.
`
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`U.S. Pat. No. 7,589,642
`allegedly limited to the “translating or converting of a received control code.”
`
`POR, 22-25. Here, UEI mischaracterizes Mishra. EX1032, ¶21.
`
`
`
`Mishra’s RCU does not transmit a keystroke indicator signal that already
`
`includes a key code, and Mishra explicitly discloses the identification of a key
`
`code that is returned to the RCU. EX1005, ¶¶37, 39. Mishra’s RCU generates a
`
`keystroke indicator signal (e.g., corresponding to the “channel up button”) so that
`
`its “master [set top box]” can identify the corresponding key code. EX1032, ¶¶22-
`
`23. Specifically, Mishra describes an embodiment where a user controls a TV.
`
`EX1005, ¶¶37, 39. The user can press, for example, the channel up button which
`
`“causes the appropriate command [keystroke indicator signal] to be sent to the
`
`master [set top box] telling it, for example, that the user wishes to go to the next
`
`highest channel.” Id., ¶37. “The master in turn sends the RCU the necessary codes
`
`to increment the channel on the TV. The RCU then takes these codes and sends
`
`them . . . to the TV. . .” Id. Here, “the master feeds the information to the RCU
`
`each time the RCU needs information.” Id., ¶39. UEI ignores Mishra’s operations
`
`in this regard.
`
`UEI also incorrectly argues that Mishra transmits “an entire codeset, not a
`
`single key code.” POR, 24. Here, UEI ignores Mishra’s two distinct embodiments.
`
`See EX1005, ¶¶37-39; see also EX1033, 227:21-229:9 (Dr. Sprenger admitting
`
`Mishra discloses alternative embodiments and his analysis is based on EX1005,
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`¶38). The difference between the two approaches is that in the first embodiment, a
`
`single key code is transmitted: the “master feeds the information to the RCU each
`
`time the RCU needs information.” EX1005, ¶39 (emphasis added). UEI ignores
`
`this teaching and instead mischaracterizes Mishra by limiting Mishra to other
`
`embodiments. POR, 24; EX1032, ¶¶24-26.
`
`As previously discussed UEI advanced an overly narrow construction for the
`
`claimed “generating”—a construction that is improper but still disclosed by
`
`Mishra. EX1032, ¶27. While UEI vaguely focuses on the terms “translating and
`
`converting,” Mishra teaches that its STB (1) stores a “variety of codes” and (2)
`
`identifies specific key codes in response to a user pressing a button on the RCU.
`
`EX1005, ¶¶20, 37, 39. Thus, Mishra discloses generating a key code based on a
`
`received keystroke indicator signal in the same manner as the ’642 patent.
`
`EX1032, ¶27; EX1005, ¶¶20, 37, 39. UEI’s focus on “translating” is irrelevant to
`
`this analysis. EX1032, ¶27.
`
`2. Mishra in view of Dubil Renders Obvious the Claimed
`“Modulating”
`First, UEI argues that Mishra and Dubil do not teach the claimed
`
`“modulating” because Mishra allegedly transmits an entire codeset. POR, 25. As
`
`explained in Section III.A.1, UEI’s assertion is incorrect here. EX1032, ¶28.
`
`Second, UEI incorrectly suggests that Roku relies on an inherency argument
`
`even though the Petition indisputably relies on an obviousness standard. POR, 26.
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`As explained previously, and as Dr. Sprenger actually admits, using modulation to
`
`wirelessly transmit a key code was a well-known, often used and obvious
`
`technique. See, e.g., Pet., 6-7, 24-25; EX2003, ¶¶49-54; EX1033, 54:10-55:3 (The
`
`“’642 patent did not invent the very concept of modulation. The modulation
`
`concept has been known prior to that in various forms of modulation. There are
`
`many ways to modulate signals.”). Dr. Sprenger even admits that a POSA would
`
`have been motivated to use a modulation technique to avoid interference—all of
`
`which further demonstrates that using modulation techniques would have been
`
`obvious. EX2003, ¶¶50-51, 146-50; EX1033, 54:10-55:3, 105:14-106:16;
`
`EX1032, ¶¶29-32.
`
`While Dr. Sprenger suggests that “unmodulated” techniques exist for
`
`transmitting RF or IR signals, Dr. Sprenger admits that his sole example of an
`
`“unmodulated” technique is sometimes characterized as a “modulation” technique
`
`as well. See EX2003, ¶¶49-54; EX1033, 135:12-21; EX1032, ¶33. Regardless, the
`
`finite number of predictable choices for wireless transmission (i.e., modulated vs.
`
`unmodulated) still demonstrates that using a modulation technique would have
`
`been obvious. See Geo. M. Martin Co. v. Alliance Machine Sys’s Intern. LLC, 618
`
`F.3d 1294, 1302 (Fed. Circ. 2010) (A “‘finite number of identified, predictable
`
`solutions’ [] justifies a legal conclusion that the result [] is ‘the product not of
`
`innovation but of ordinary skill and common sense.’”)
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`Third, UEI mischaracterizes how the Petition combined Mishra and Dubil.
`
`See POR, 26-27. Specifically, UEI points to the XML tags described in Dubil—
`
`structure that is not relied upon, nor needed to support the Petition’s obviousness
`
`positions. See POR, 26-27; Pet., 24-25. As explained in the Petition, Mishra
`
`already describes the wireless transmission of key codes to its RCU using an IR or
`
`RF link. Pet., 24; EX1005, ¶¶18, 20, 26, 37. Dubil provides the implementation
`
`details for how this wireless transmission would occur. Pet., 24-25; EX1032, ¶¶34.
`
`Specifically, Dubil describes parameters used to modulate the key code onto a
`
`carrier signal. Pet., 24-25. UEI does not refute this teaching. See EX2003, ¶¶49-
`
`54, 146-50; EX1033, 54:10-55:3. Even Dr. Sprenger admits that a POSA would
`
`have used the modulation techniques and parameters described in Dubil to
`
`wirelessly transmit key codes. See EX2003, ¶¶49-54; EX1033, 117:21-118:7,
`
`119:9-18, 121:3-18, 123:8-19. Despite UEI’s mischaracterization of how the
`
`Petition combines Mishra and Dubil, the combination of Mishra and Dubil still
`
`renders obvious “modulating said key code onto a carrier signal, thereby
`
`generating a key code signal.”
`
`3. Mishra in view of Dubil Renders Obvious the Dependent
`Claims
`Claim 4 – UEI argues that Dubil does not teach a “key code [that] comprises
`
`a binary number and timing information.” POR, 28-29. As seen in Dubil, however,
`
`a POSA would have found it obvious to package a binary number with timing
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`information to represent a key code. See Pet., 27-29. Specifically, Dubil describes
`
`parameters including “carrier frequency, duty cycle, protocol type (FSK, biphase,
`
`PWM, etc.), repetition time, on/off times of the signal, [and] bit pattern of the
`
`command code...” EX1006, 2:61-3:8 (emphasis added), 4:33-47, 4:60-5:5. Dubil
`
`explains that these parameters may be “data fields” of a data structure. Id. In this
`
`way, Dubil describes packaging a “binary number” with “timing information” in
`
`the same manner as the ’642 patent. EX1032, ¶¶35-36.
`
`Claim 6 – UEI argues Mishra describes only using radio-frequency (RF)
`
`communications for telephone communications. POR, 30. First, Mishra does not
`
`restrict its RF communications to a telephone. In Mishra, any wireless
`
`communication between RCU 18 and system 12 may be performed using a “radio-
`
`frequency link.” EX1005, ¶18. Second, Mishra describes RCU 18 communicating
`
`with “system 12 and a radio-frequency telephone base station 20 using radio-
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`frequency technology.” Id., ¶16. This indicates that Mishra’s RCU 18 is capable of
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`RF communications with system 12 separate from communications with telephone
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`base station 20. EX1032, ¶¶37-38. Third, UEI points to an embodiment where RF
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`is “powered down” but ignores Mishra’s explicit designation that this only occurs
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`“in some embodiments.” EX1005, ¶23. Mishra is not limited solely to this
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`embodiment. EX1032, ¶¶37-38. EX1005, ¶¶16, 18.
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`U.S. Pat. No. 7,589,642
`UEI also argues that Mishra is limited to an infrared “repeater.” POR, 31.
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`But Mishra’s RCU receives a key code and then sends the key code, “for example
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`using a unidirectional infrared signal, to the TV…” EX1005, ¶¶37, 22; Pet., 31.
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`Thus, Mishra is not limited to repeating a received infrared signal but instead
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`discloses transmitting a received key code using an infrared signal. Pet., 30-32;
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`EX1032, ¶¶37-38.
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`Claim 8 – UEI argues Mishra teaches that “the remote control may fetch the
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`necessary codes from local memory.” POR, 32 (citing EX1005, ¶38). UEI again
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`improperly attempts to limit Mishra to this embodiment. EX1032, ¶39; see also
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`EX1033, 228:20-229:9 (Dr. Sprenger admitting his analysis is based on EX1005,
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`¶38). Rather, Mishra describes its STB storing a “variety of codes” and
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`transmitting a necessary key code to the RCU “each time the RCU needs
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`information.” Id., ¶¶20, 37, 39. Thus, Mishra also discloses its RCU does not store
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`the codeset. EX1032, ¶39; Pet., 32-33.
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`Claim 9 – UEI argues that Mishra and Dubil do not render obvious a
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`codeset comprising timing information. POR, 32-34. To support this assertion,
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`UEI selectively quotes the prosecution history of a different patent analyzing
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`different art— Pope, Graham, and Teskey. See POR, 33 (citing EX2007, 256); See
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`EX2007, 256. There, the PTO found Teskey was insufficient because “the signal
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`timing information of Teskey does not necessarily describe digital ones and
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`zeroes.” See EX2007, 256; EX1032, ¶40.
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`In contrast, Dubil explicitly describes timing information for its multiple “IR
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`or RF codes” (i.e., a codeset). EX1006, 4:33-35. The parameters, which include
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`the timing information, include “carrier frequency, duty cycle, protocol type (FSK,
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`biphase, PWM, etc.), repetition time, on/off times of the signal, [and] bit pattern
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`of the command code...” EX1006, 2:61-3:8 (emphasis added), 4:33-47, 4:60-5:5.
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`Thus, Mishra in view of Dubil discloses a codeset that comprises timing
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`information along with command codes. EX1032, ¶¶41-42; Pet., 27-29, 33.
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`UEI also argues that the combination does not render obvious timing
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`information describing a digital one and digital zero. POR, 33-34. But Dubil
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`describes its parameters including a “bit pattern of the command code,” which
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`discloses a digital one and a digital zero. EX1032, ¶¶43-44. A POSA would have
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`understood that timing information—such as “repetition time” or “on/off times of
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`the signals”— meets the claimed “digital one and digital zero.” Id. As explained in
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`the Petition, a simple example of this would be to represent a digital one with an
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`“on” time and a digital zero with an “off” time. Pet., 28. While UEI argues “a
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`digital one and digital zero means that there is a more complex pattern than simply
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`a one is on and a zero is off,” nothing in the specification or prosecution history
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`imposes such a narrow interpretation of the term. EX1032, ¶¶43-44. Indeed,
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`Dubil discloses the same pulse-width modulation (PWM) technique recited in the
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`’642 patent and using this technique with timing information to transmit binary
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`data. EX1006, 2:61-3:8; EX1001, FIG. 5, 4:42-47, 4:66-5:5.
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`B. Ground 2: Rye in view of Dubil
`Rye Discloses the Claimed “Receiving” and “Generating”
`1.
`Similar to Mishra, UEI mischaracterizes Rye. See POR, 38-40. UEI argues
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`that Rye’s remote control sends “binary control codes” which are already “key
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`codes.” Id., 38. But Rye discloses that its remote control transmits a keystroke
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`indicator signal that does not include the claimed “key code” and thereafter
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`generates the key code. See Pet., 36-39; EX1007, ¶¶16, 22, 24.
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`As acknowledged by UEI and by Dr. Sprenger, Rye describes the binary
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`control code transmitted from its remote control as “not specific for any particular
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`brand or model of audiovisual product.” EX1007, ¶22; POR, 34, 38; EX1033,
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`232:16-233:3, 238:12-240:17. At a minimum, this demonstrates Rye’s binary
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`control codes are not key codes because they cannot directly control a target
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`audiovisual product. EX1032, ¶¶45-47.
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`Rye further demonstrates its binary control code differs from a key code.
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`Rye describes its transceiver separately identifying a specific “control code” from
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`the look-up table 46 and IR code library 44. EX1007, ¶¶23-24. The “remote
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`control codes stored in memory 46 [] are derived from code library memory 44.”
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`Id., ¶24. “Memory 44 contains the remote control codes for all brands, e.g., Sony
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`and Zenith, and models of commercially available audiovisual components.” Id.,
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`¶24. These “remote control codes” are the claimed “key code.” Pet., 37-39;
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`EX1032, ¶¶48-49. As Dr. Sprenger admits, Rye explains that IR processor 42
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`looks up and selects a particular remote control code (e.g., “VCR-Play”) from IR
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`code library 44 after receiving a binary control code from the remote control. See
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`EX1007, ¶27; EX1033, 232:16-233:3, 238:12-240:17; EX1032, ¶¶48-49. This
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`confirms (1) Rye’s remote control does not already transmit the key code with its
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`keystroke indicator signal, and (2) Rye thereafter generates a key code. See
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`EX1007, ¶27; EX1032, ¶¶48-49; POR, 38-40.
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`UEI further argues that Rye merely converts an input signal into an IR
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`signal. POR, 39-40. But UEI’s ignores Rye’s looking up and selecting of a
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`specific remote control code (e.g., “VCR-Play”) from IR code library 44—meeting
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`the claimed “generating.” See EX1007, ¶¶27, 38. Pet., 37-39; EX1032, ¶50. Dr.
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`Sprenger even acknowledges that Rye identifies a specific control code rather than
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`performing a mere translation. See EX1033, 232:16-233:3, 238:12-240:17.
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`2.
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`Rye in view of Dubil Renders Obvious the Claimed
`“Modulating”
`UEI first selectively quotes Rye and argues that Rye is limited to converting
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`an input signal into a format compatible with an IR code. POR, 41. But Rye
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`explains that the “control code for ‘VCR-Play’ is selected in IR processor 42 and
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`is then applied to IR emitter 48 to, in turn, cause LED 50 to transmit [the control
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`signal] to the addressed or selected VCR…” EX1007, ¶27 (emphasis added).
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`Thus, Rye does not simply convert the format of a signal. EX1032, ¶¶51-52.
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`Rather, as admitted by Dr. Sprenger, Rye performs an active selection of a key
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`code and wirelessly transmits this key code using IR emitter 48. See EX1033,
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`232:16-233:3, 238:12-240:17.
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`UEI also provides the same arguments regarding Dubil as it did for claim
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`1—mischaracterizing the combination of Rye and Dubil. POR, 41-43. As
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`explained in the Petition, Rye already describes the wireless transmission of key
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`codes from its IR emitter 48 to an electronic consumer device. EX1007, ¶¶25, 27.
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`And as discussed above and admitted by Dr. Sprenger, Dubil provides the
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`implementation details for how this wireless transmission would occur via well-
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`known modulation techniques. Pet., 39-41; EX1032, ¶¶51-52; see EX2003, ¶¶49-
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`54; EX1033, 117:21-118:7, 119:9-18, 121:3-18, 123:8-19. Thus, despite UEI’s
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`mischaracterization of how the Petition combines Rye and Dubil, the combination
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`renders obvious “modulating said key code onto a carrier signal, thereby
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`generating a key code signal.”
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`3.
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`Rye in view of Dubil Renders Obvious the Dependent
`Claims
`UEI argues that the combination of Rye and Dubil does not render obvious
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`claims 22-25 for similar reasons as those presented for claims 2, 4, and 9. POR, 43-
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`46. UEI’s analysis of claims 22-25 is incorrect for the reasons previously
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`described in Sections III.A.3, III.B.1, and III.B.2. EX1032, ¶¶53.
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`C. Ground 3: Caris in view of Skerlos
`Caris as Applied to Claim 2 Differs From Caris as Applied
`1.
`to Claim 1
`In its Institution Decision, the Board did not address the application of the
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`embodiment depicted in Figure 2 of Caris to its analysis of claim 2. See DI, 30-31,
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`33-34. As explained in the Petition, however, the Figure 2 embodiment discloses
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`the claimed “key code generator device” even under the District Court’s claim
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`construction. Pet., 66-72; EX1032, ¶54.
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`EX1008, FIG. 2 (annotated).
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