Ground 3: Mishra, Dubil, and Lambrechts (5)
`
`A POSITA would not have combined Mishra with
`Lambrechts (POR at 42)
`(1) Petitioner relies on “face to face” learning, which Lambrechts teaches away
`from (POR at 42; EX2003 (Sprenger Decl.) at ¶ 313):
`
`(Pet. at 42)
`
`(EX2003 (Sprenger Decl.) at ¶ 313)
`
`161
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`A POSITA would not have combined Mishra with
`Lambrechts (POR at 42)
`(1) Petitioner relies on “face to face” learning, which Lambrechts teaches away
`from (POR at 42; EX2003 (Sprenger Decl.) at ¶ 313):
`
`(Pet. at 42)
`
`(EX2003 (Sprenger Decl.) at ¶ 313)
`
`161
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Mishra, Dubil, and Lambrechts (5)
`
`A POSITA would not have combined Mishra with
`Lambrechts (POR at 42)
`(2) Lambrechts requires the same process Petitioner’s expert alleges a POSITA
`reading Mishra would want to avoid (POR at 42; EX2003 (Sprenger Decl.) at ¶ 314):
`
`(EX2003 (Sprenger Decl.) at ¶ 314)
`
`(EX1011 (Lambrechts) at 2:34-46)
`
`162
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Mishra, Dubil, and Lambrechts (5)
`
`A POSITA would not have combined Dubil with
`Lambrechts (POR at 42)
`It is unrebutted that a POSITA would not have combined Dubil and Lambrechts (PO
`Sur-reply at 19-20):
`
`(EX2003 (Sprenger Decl.) at ¶¶ 317-318)
`
`163
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Mishra, Dubil, and Lambrechts (5)
`
`Mishra with Dubil and Lambrechts does not disclose
`claim 5 (POR at 43)
`Petition relied only on Lambrechts’ “face to face” learning, which Lambrechts
`teaches not to use (EX2003 (Sprenger Decl.) at ¶¶ 319-321; Pet. at 42):
`
`(EX1040 (Russ Suppl. Decl.) at ¶ 65)
`
`(EX1003 (Russ Decl.) at ¶ 172)
`
`164
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`Introduction to Mui Patents
`•
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Mishra, Dubil, and Van Ee
`• Ground 2: Mishra and Dubil
`• Ground 3: Mishra, Dubil, and Lambrechts
`• Ground 4: Caris, Skerlos, and Van Ee
`• Ground 5: Caris and Skerlos
`• Ground 6: Caris, Skerlos, and Lambrechts
`• Ground 7: Caris, Skerlos, and Yazolino
`• Ground 8: Caris, Skerlos, Yazolino and Lambrechts
`
`165
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 4: Caris, Skerlos, and Van Ee (2-3)
`
`The Board correctly found that Caris does not teach
`“key code generator device” (POR at 48-52)
`
`(Pet. at 46-47)
`
`(Paper 12 (Decision) at 34-35)
`166
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 4: Caris, Skerlos, and Van Ee (2-3)
`
`A POSITA would not have combined Caris with
`Skerlos and Van Ee (POR at 44-48)
`
`• A POSITA would not have combined Caris with Skerlos
`
`• A POSITA would not have combined Caris with Van Ee
`
`• A POSITA would not have combined Skerlos with Van Ee
`
`167
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 4: Caris, Skerlos, and Van Ee (2-3)
`
`A POSITA would not have combined Caris with Van
`Ee (POR at 47)
`
`(1) Van Ee still requires the same step Petitioner’s expert said a POSITA reading
`Caris would want to avoid (POR at 47):
`
`(POR at 47)
`
`168
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 4: Caris, Skerlos, and Van Ee (2-3)
`
`(2) Both experts agree that Caris has no need for the teachings of Van Ee (POR at
`47):
`
`(EX2003 (Sprenger Decl.) at ¶ 337)
`
`(EX2009 (Russ Depo. Tr. June 18, 2020) at 139:3-20)
`169
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 4: Caris, Skerlos, and Van Ee (2-3)
`
`A POSITA would not have combined Skerlos with
`Van Ee (POR at 48)
`
`It is unrebutted that a POSITA would not have combined Skerlos and Van Ee (PO
`Sur-reply at 20):
`
`(EX2003 (Sprenger Decl.) at ¶¶ 340-341)
`
`170
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 4: Caris, Skerlos, and Van Ee (2-3)
`
`Caris, Skerlos, + Van Ee fail to disclose claim 2 (POR
`at 48-51)
`
`(EX1001 (389 Patent) at cl. 2)
`
`(Pet. at 51-53)
`
`171
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 4: Caris, Skerlos, and Van Ee (2-3)
`
`Caris, Skerlos, + Van Ee fail to disclose claim 3 (POR
`at 52)
`
`(EX1001 (389 Patent) at cl. 3)
`
`(EX2009 (Russ Depo. Tr. June 18, 2020) at 88:16-89:12)
`
`172
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`Introduction to Mui Patents
`•
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Mishra, Dubil, and Van Ee
`• Ground 2: Mishra and Dubil
`• Ground 3: Mishra, Dubil, and Lambrechts
`• Ground 4: Caris, Skerlos, and Van Ee
`• Ground 5: Caris and Skerlos
`• Ground 6: Caris, Skerlos, and Lambrechts
`• Ground 7: Caris, Skerlos, and Yazolino
`• Ground 8: Caris, Skerlos, Yazolino and Lambrechts
`
`173
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 5: Caris and Skerlos (4, 11)
`
`Caris and Skerlos fail to disclose claims 4, 11
`(POR at 52-54)
`
`(EX1001 (389 Patent) at Cl. 4)
`
`(642 Patent at Cl. 6)
`
`174
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 5: Caris and Skerlos (4, 11)
`
`Caris and Skerlos fail to disclose claims 4, 11
`(POR at 52-54)
`
`Petitioner’s expert admitted that Skerlos teaches to use IR and teaches away from
`RF (POR at 53-54):
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 204:7-17)
`
`175
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 5: Caris and Skerlos (4, 11)
`
`Caris and Skerlos fail to disclose claims 4, 11
`(POR at 52-54)
`
`Petitioner’s expert did not address “key code signal” requires one key code (POR at
`52; PO Sur-reply at 21):
`
`/
`
`(EX1007 (642 Patent File History) at 242; see also 75-76, 121)
`
`(EX1001 (389 Patent) at Cl. 4)
`
`(EX2003 (Sprenger Decl.) at ¶ 127)
`
`176
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`Introduction to Mui Patents
`•
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Mishra, Dubil, and Van Ee
`• Ground 2: Mishra and Dubil
`• Ground 3: Mishra, Dubil, and Lambrechts
`• Ground 4: Caris, Skerlos, and Van Ee
`• Ground 5: Caris and Skerlos
`• Ground 6: Caris, Skerlos, and Lambrechts
`• Ground 7: Caris, Skerlos, and Yazolino
`• Ground 8: Caris, Skerlos, Yazolino and Lambrechts
`
`177
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 6: Caris, Skerlos, and Lambrechts (5, 8)
`
`A POSITA would not have combined Caris with
`Skerlos and Lambrechts (POR at 54-55)
`
`• A POSITA would not have combined Caris with Skerlos
`
`• A POSITA would not have combined Caris with Lambrechts
`
`• A POSITA would not have combined Skerlos with Lambrechts
`
`178
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 6: Caris, Skerlos, and Lambrechts (5, 8)
`
`A POSITA would not have combined Caris with
`Skerlos and Lambrechts (POR at 54-55)
`
`It is unrebutted that a POSITA would not have combined Skerlos and Lambrechts
`(PO Sur-reply at 21-22):
`
`(EX2003 (Sprenger Decl.) at ¶ 403)
`
`179
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 6: Caris, Skerlos, and Lambrechts (5, 8)
`
`Caris, Skerlos, and Lambrechts fail to disclose claim
`5 (POR at 55-56)
`
`(Pet. at 62)
`
`180
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`Introduction to Mui Patents
`•
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Mishra, Dubil, and Van Ee
`• Ground 2: Mishra and Dubil
`• Ground 3: Mishra, Dubil, and Lambrechts
`• Ground 4: Caris, Skerlos, and Van Ee
`• Ground 5: Caris and Skerlos
`• Ground 6: Caris, Skerlos, and Lambrechts
`• Ground 7: Caris, Skerlos, and Yazolino
`• Ground 8: Caris, Skerlos, Yazolino and Lambrechts
`
`181
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 7: Caris, Skerlos, and Yazolino (10, 12, 15)
`
`Yazolino:
`
`(EX2003 (Sprenger Decl.) at ¶ 112)
`
`(EX1013 (Yazolino) at Fig. 10)
`
`182
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 7: Caris, Skerlos, and Yazolino (10, 12, 15)
`
`A POSITA would not have combined Caris with
`Skerlos and Yazolino (POR at 57-58)
`
`• A POSITA would not have combined Caris with Skerlos
`
`• A POSITA would not have combined Caris with Yazolino
`
`• A POSITA would not have combined Skerlos with Yazolino
`
`183
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 7: Caris, Skerlos, and Yazolino (10, 12, 15)
`
`A POSITA would not have combined Caris with
`Yazolino (POR at 57-58)
`
`(1) Petitioner’s and its expert’s rationale for looking to Yazolino is for the circuitry of
`the Caris remote control (POR at 58):
`
`(Pet. at 66-67)
`
`184
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 7: Caris, Skerlos, and Yazolino (10, 12, 15)
`
`A POSITA would not have combined Caris with
`Yazolino (POR at 57-58)
`
`Yazolino does not disclose any receiver circuitry required by Caris (POR at 58-59):
`
`(EX2009 (Russ Depo. Tr. June 18, 2020) at
`143:21-144:3)
`
`(EX2003 (Sprenger Decl.) at ¶ 419)
`
`185
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 7: Caris, Skerlos, and Yazolino (10, 12, 15)
`
`A POSITA would not have combined Caris with
`Yazolino (POR at 57-58)
`
`(2) Yazolino teaches away from Caris (POR at 57):
`
`(EX2003 (Sprenger Decl.) at ¶ 418)
`
`186
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 7: Caris, Skerlos, and Yazolino (10, 12, 15)
`
`A POSITA would not have combined Skerlos with
`Yazolino (POR at 57-58)
`
`It is unrebutted that a POSITA would not have combined Skerlos and Yazolino (PO
`Sur-reply at 22):
`
`(EX2003 (Sprenger Decl.) at ¶ 421)
`
`187
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 7: Caris, Skerlos, and Yazolino (10, 12, 15)
`
`Caris with Skerlos and Yazolino do not disclose
`claims 10, 12, 15 (POR at 58-60)
`
`Yazolino does not disclose a
`microcontroller that receives (POR at 60):
`
`(EX2009 (Russ Depo. Tr. June 18, 2020) at
`143:21-144:3)
`
`188
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 7: Caris, Skerlos, and Yazolino (10, 12, 15)
`
`Caris with Skerlos and Yazolino do not disclose
`claims 10, 12, 15 (POR at 58-60)
`
`Skerlos and Yazolino teach IR only (POR at 59-60; EX2003 (Sprenger Decl.) at ¶ 427):
`
`(EX1013 (Yazolino) at Fig. 10)
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 204:7-17)
`189
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 7: Caris, Skerlos, and Yazolino (10, 12, 15)
`
`Caris with Skerlos and Yazolino do not disclose
`claims 10, 12, 15 (POR at 58-60)
`
`(EX1001 (389 Patent) at Cl. 12)
`
`PO proposed structure
`
`Petitioner’s proposed structure
`
`“a microcontroller that performs
`the algorithms described in
`Step 105 of Fig. 2, as further
`explained in detail at 5:49-6:4,
`and equivalents thereof.”
`
`(POR at 16)
`
`“a microcontroller that performs
`the algorithm of receiving a key
`code from an RF receiver that
`has received a first key code
`signal and translating the key
`code so that the key code is
`modulated onto an infrared
`carrier signal resulting in a
`second key code signal.”
`
`(Pet. Reply at 8)
`
`190
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`Introduction to Mui Patents
`•
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Mishra, Dubil, and Van Ee
`• Ground 2: Mishra and Dubil
`• Ground 3: Mishra, Dubil, and Lambrechts
`• Ground 4: Caris, Skerlos, and Van Ee
`• Ground 5: Caris and Skerlos
`• Ground 6: Caris, Skerlos, and Lambrechts
`• Ground 7: Caris, Skerlos, and Yazolino
`• Ground 8: Caris, Skerlos, Yazolino and Lambrechts
`
`191
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 8: Caris, Skerlos, Yazolino, and
`Lambrechts (13-14)
`
`A POSITA would not have combined Caris with
`Skerlos, Yazolino, and Lambrechts (POR at 60-61)
`
`• A POSITA would not have combined Caris, Skerlos, and Lambrechts (Ground 6)
`
`• A POSITA would not have combined Caris, Skerlos, and Yazolino (Ground 7)
`
`• A POSITA would not have combined Yazolino with Lambrechts
`
`192
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 8: Caris, Skerlos, Yazolino, and
`Lambrechts (13-14)
`
`Caris with Skerlos, Yazolino, and Lambrechts do not
`disclose claims 13-14 (POR at 54-55)
`
`193
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Patent Owner’s
`Oral Hearing Demonstratives
`
`Case IPR2019-01614
`Patent 9,911,325
`
`Roku, Inc. v. Universal Electronics, Inc.
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`• Introduction to Mui Patents
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Rye and Skerlos
`• Ground 2: Caris and Dubil
`
`195
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Introduction
`
`IPR2019-01612
`U.S. Patent No. 7,589,642
`
`IPR2019-01613
`U.S. Patent No. 8,004,389
`
`IPR2019-01614
`U.S. Patent No. 9,911,325
`
`196
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Introduction
`
`1. A first device for transmitting a command to control a functional
`operation of a second device, the first device comprising:
`a receiver;
`a transmitter;
`a processing device coupled to the receiver and the transmitter;
`and
`a memory storing instructions executable by the processing device,
`the instructions causing the processing device to:
`generate a key code using a keystroke indicator received from a
`third device in communication with first device via use of the
`receiver, the keystroke indicator having data that indicates an input
`element of the third device that has been activated;
`format the key code for transmission to the second device; and
`transmit the formatted key code to the second device in a key
`code signal via use of the transmitter;
`wherein the generated key code comprises a one of a plurality of
`key code data stored in a codeset, wherein the one of the plurality
`of key code data is selected from the codeset as a function of the
`keystroke indicator received from the third device, wherein each of
`the plurality of key code data stored in the codeset comprises a
`series of digital ones and/or digital zeros, and wherein the codeset
`further comprises time information that describes how a digital
`one and/or a digital zero within the selected one of the plurality of
`key code data is to be represented in the key code signal to be
`transmitted to the second device.
`
`Remote → Key Code Generator Device
`→ Consumer Device
`
`(EX2003 (Sprenger Decl.) at ¶ 70)
`
`325 Patent, Claim 1 + dependents
`
`197
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`• Introduction to Mui Patents
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Rye and Skerlos
`• Ground 2: Caris and Dubil
`
`198
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Petition
`
`Petitioner asserts 2 obviousness grounds (Pet. at 3)
`
`(Pet. at 3)
`
`199
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`• Introduction to Mui Patents
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Rye and Skerlos
`• Ground 2: Caris and Dubil
`
`200
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Claim constructions
`
`Parties do not dispute the preliminary claim
`constructions (Paper 7 (Decision) at 10-11)
`
`“key code”
`
`“keystroke indicator [signal]”
`
`“key code signal”
`
`“code corresponding to the function of an electronic device,
`optionally including timing information”
`“a signal, distinct from a key code, corresponding to a pressed key
`[on a remote control].”
`“a signal containing a modulated key code”
`
`201
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`• Introduction to Mui Patents
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Rye and Skerlos
`• Ground 2: Caris and Dubil
`
`202
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`The asserted combination must apply the transmissions from Skerlos’ remote
`control to Rye’s transceiver (POR 20, 30; EX1003 (Russ Decl.) at ¶¶ 109-110):
`
`(EX1003 (Russ Decl.) at ¶ 102)
`
`(EX1006 (Skerlos) at 1:5-10)
`
`203
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`(1) Petitioner and its expert fail to offer any reasons why a POSITA reading Rye
`would have been motivated to modify it to add “modulating onto a carrier signal”
`(POR at 17-19)
`
`(EX1003 (Russ Decl.) at ¶ 104)
`
`204
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`(1) Petitioner and its expert fail to offer any reasons why a POSITA reading Rye
`would have been motivated to modify it to add “modulating onto a carrier signal”
`(POR at 17-19)
`
`(EX2011 (Russ Decl.) at ¶ 236)
`
`205
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`(1) Petitioner and its expert fail to offer any reasons why a POSITA reading Rye
`would have been motivated to modify it to add “modulating onto a carrier signal”
`(POR at 17-19)
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 86:1-3)
`
`(EX2010 (Russ Depo. Tr. June 19, 2020) at 69:2-7)
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 70:16-20)
`
`206
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`(1) Petitioner and its expert fail to offer any reasons why a POSITA reading Rye
`would have been motivated to modify it to add “modulating onto a carrier signal”
`(POR at 17-19)
`
`(EX1030 (Russ Suppl. Decl.) at ¶ 32)
`
`207
`
`(EX2003 (Sprenger Decl.) at ¶ 51)
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`(1) Petitioner and its expert fail to offer any reasons why a POSITA reading Rye would
`have been motivated to add “modulating onto a carrier signal” (POR at 17-19)
`
`(EX2009 (Russ Depo. Tr. June 18, 2020) at
`114:1-4)
`
`(EX2009 (Russ Depo. Tr. June 18, 2020) at
`123:3-17)
`
`208
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`(2) Rye teaches away from making modifications that “add[] to the cost and
`complexity of the system” (e.g., adding a modulator to the transceiver) (POR at 20-
`21; PO Sur-reply at 21)
`
`(EX2003 (Sprenger Decl.) at ¶ 140)
`
`(EX1005 (Rye) at [0009])
`
`209
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`(3) Both experts agree that a POSITA would not have wanted to add additional
`detector circuitry (POR at 21)
`
`(EX1006 (Skerlos) at 1:5-10)
`
`(EX2003 (Sprenger Decl.) at ¶ 141)
`210
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`(3) Both experts agree that a POSITA would not have wanted to add additional
`detector circuitry (POR at 21)
`
`(EX2009 (Russ Depo. Tr. June 18, 2020) at 160:10-161:12)
`
`211
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`(4) Rye teaches that the “dumb” RF remote control does not transmit to the
`electronic consumer device, which is the opposite of Skerlos’ IR remote (POR at 19-
`20)
`
`(EX2003 (Sprenger Decl.) at ¶ 136)
`
`(EX1003 (Russ Decl.) at ¶ 102)
`
`212
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`(5) Both experts agree that Skerlos teaches away from RF (POR at 20-21)
`
`(EX2003 (Sprenger Decl.) at ¶ 143)
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 204:7-17)
`
`213
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`Petitioner’s expert’s approach is legally impermissible (POR 18, 29, 34):
`
`“As the ALJ recognized, prior art references before the tribunal must be read as a whole and
`consideration must be given where the references diverge and teach away from the claimed
`invention. W. L. Gore & Associates, Inc. v. Garlock, 721 F.2d 1540, 1550, 220 U.S.P.Q. (BNA) 303, 311
`(Fed. Cir. 1983), cert. denied, 469 U.S. 851, 83 L. Ed. 2d 107, 105 S. Ct. 172 (1984). Moreover,
`appellants cannot pick and choose among individual parts of assorted prior art references "as a
`mosaic to recreate a facsimile of the claimed invention." 721 F.2d at 1552, 220 U.S.P.Q. (BNA) at
`312. In this case, the ALJ found that Akzo's expert witnesses could not show how the prior art
`patents could be brought together to render the Blades '756 invention obvious without
`reconstructing the teachings of those patents assisted by hindsight.” Akzo N.V. v. United States ITC,
`808 F.2d 1471, 1481, (Fed. Cir. 1986).
`
`214
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`A POSITA would not have combined Rye with
`Skerlos (POR at 17-22)
`
`Petitioner’s expert’s approach is legally impermissible (POR 18, 29, 34):
`
`“But that reasoning seems to say no more than that a skilled artisan,
`once presented with the two references, would have understood that
`they could be combined. And that is not enough: it does not imply a
`motivation to pick out those two references and combine them to
`arrive at the claimed invention.” Personal Web Techs. v. Apple Inc., 848
`F.3d 987, 993-994 (Fed. Cir. 2017)
`
`215
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose limitations of claim 1
`
`(EX1001 (325 Patent) at Cl. 1)
`
`216
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Petition fails to assert how Rye + Skerlos disclose “a
`processing device . . .” (POR at 22)
`
`Petition relies only on Rye and offers no explanation how either of the processors
`performs the claim limitations (POR at 22)
`
`(Pet. at 16-17)
`
`217
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose limitations of claim 1
`
`(EX1001 (325 Patent) at Cl. 1)
`
`218
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Petition fails to assert how Rye + Skerlos disclose “a
`memory storing instructions . . . ” (POR at 22-24)
`
`Petition relies only on Rye and never even alleges how any of the memories
`performs “format the key code for transmission” (POR at 22-23):
`
`(Pet. at 18-19)
`
`219
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Petition fails to assert how Rye + Skerlos disclose “a
`memory storing instructions . . . ” (POR at 22-24)
`
`Petitioner’s expert relies on Bayley but still never alleges which of the memories
`performs “format the key code for transmission” (POR at 23-24):
`
`(EX1003 (Russ Decl.) at ¶¶ 121-122)
`
`220
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Petition fails to assert how Rye + Skerlos disclose “a
`memory storing instructions . . . ” (POR at 22-24)
`
`Bayley equally suggests memories that are not on the “first device” as required
`(POR at 23-24; PO Sur-reply at 5):
`
`(EX2010 (Russ Depo. Tr. June 19, 2020) at 52:17-20)
`
`(EX2003 (Sprenger Decl.) at ¶ 157)
`
`221
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose limitations of claim 1
`
`(EX1001 (325 Patent) at Cl. 1)
`
`222
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose “keystroke indicator
`having data that indicates an input element of the
`third device that has been activated” (POR at 27)
`
`(Pet. at 20-21)
`
`EX1003 (Russ Decl.) at ¶ 127)
`
`223
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose “keystroke indicator
`having data that indicates an input element of the
`third device that has been activated” (POR at 27)
`
`Petitioner’s new argument in Reply still fails to explain how any data “indicates an
`input element of the third device that has been activated” (PO Sur-reply at 6-7):
`
`(Pet. Reply at 10)
`
`EX1030 (Russ Suppl. Decl.) at ¶ 29)
`
`224
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose “generate a key code
`using a keystroke indicator” (POR at 24-27)
`
`(EX1001 (325 Patent) at Cl. 1)
`
`225
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose “generate a key code
`using a keystroke indicator” (POR at 24-27)
`
`Petitioner relies on Rye’s converting received codes into IR format (POR at 24-27):
`
`(Paper 7 (Decision) at 14; see also Pet. at 10)
`
`(EX1005 (Rye) at [0016])
`
`226
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose “generate a key code
`using a keystroke indicator” (POR at 24-27)
`
`Rye’s “lookup table” values are never transmitted, but are only used to convert the
`received key code into the IR format (POR at 26-27):
`
`(EX2003 (Sprenger Decl.) at ¶ 172)
`
`(EX1005 (Rye) at [0027])
`
`227
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose limitations of claim 1
`
`(EX1001 (325 Patent) at Cl. 1)
`
`228
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose “format the key code for
`transmission” (POR at 28-31)
`
`Skerlos does not describe modulating onto a carrier signal from the transceiver
`(Rye’s first device) as required by claim 1 (POR at 30):
`
`(EX1001 (325 Patent) at Cl. 1)
`
`(EX2010 (Russ Depo. Tr. June 19, 2020) at 55:12-20)
`
`229
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose limitations of claim 1
`
`(EX1001 (325 Patent) at Cl. 1)
`
`230
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose “key code data stored . .
`. digital ones and/or digital zeros” (POR at 31-32)
`
`Petitioner and its expert rely on simple “binary” and not “digital ones and/or
`zeros” (PO sur-reply at 9; POR at 31-32):
`
`(EX1030 (Russ Suppl. Decl.) at ¶ 37)
`
`(EX1001 (325 Patent) at 5:21-36;
`see also EX2003 (Sprenger Decl.) at ¶ 198)
`
`231
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose limitations of claim 1
`
`(EX1001 (325 Patent) at Cl. 1)
`
`232
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose “codeset further
`comprises time information” (POR at 32-34)
`
`Petitioner’s expert admitted neither Rye nor
`Skerlos disclosed key codes or codesets comprising
`timing information (POR at 33):
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 183:19-184:12, 206:5-22)
`
`233
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose “codeset further
`comprises time information” (POR at 32-34)
`
`Petitioner’s expert relies on “timing information used for modulating a key
`code onto a carrier signal” (POR at 33; PO Sur-reply at 10):
`
`(EX1030 (Russ Suppl. Decl.) at ¶ 40)
`
`234
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose “codeset further
`comprises time information” (POR at 32-34)
`
`USPTO already rejected for a related patent that merely using timing information
`to transmit a signal discloses “a codeset comprising timing information” (POR at
`29):
`
`(EX2006 (553 Patent File History) at ¶ 256)
`
`235
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose the dependent claims
`(POR at 34-36)
`
`236
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose claim 2 (POR at 34-35)
`
`Petitioner and its expert assert that the Rye/Skerlos combination would use Skerlos’
`IR protocol, not RF (POR at 34-35):
`
`(Pet. at 26)
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 208:5-12)
`
`237
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Rye + Skerlos (1-3, 5, 7)
`
`Rye + Skerlos fail to disclose claim 2 (POR at 34-35)
`
`Skerlos teaches away from RF in a Rye/Skerlos combination (POR at 33-34):
`
`(EX1030 (Russ Suppl. Decl.) at ¶ 43;
`see also Pet. Reply at 14)
`
`238
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`• Introduction to Mui Patents
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Rye and Skerlos
`• Ground 2: Caris and Dubil
`
`239
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Caris + Dubil (1-5)
`
`Petitioner relies on the second embodiment of Caris (Pet. at 36-38):
`
`(Pet. at 36)
`
`(EX1007 (Caris) at 6:53-7:5)
`
`240
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Caris + Dubil (1-5)
`
`A POSITA would not have combined Caris with Dubil
`(POR at 39-42)
`
`The asserted combination of Caris and Dubil applies the transmissions from Dubil’s
`remote control to Caris’ set-top box (EX1003 (Russ Decl.) at ¶¶ 168-169):
`
`(EX1003 (Russ Decl.) at ¶ 164)
`
`(EX2011 (Russ Decl.) at ¶ 109)
`
`241
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Caris + Dubil (1-5)
`
`A POSITA would not have combined Caris with Dubil
`(POR at 39-42)
`
`A POSITA would not have combined Caris Fig. 2 with Dubil Fig. 1 (POR at 40-42)
`
`(EX2003 (Sprenger Decl.) at ¶ 226)
`
`(EX2011 (Russ Decl.) at ¶ 109)
`
`242
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Caris + Dubil (1-5)
`
`A POSITA would not have combined Caris with Dubil
`(POR at 39-42)
`
`A POSITA would not have combined Caris Fig. 2 with Dubil Fig. 1 (EX2003 (Sprenger
`Decl.) at ¶ 227)
`
`(EX2011 (Russ Decl.) at ¶ 201)
`
`(EX2011 (Russ Decl.) at ¶ 109)
`
`(EX1003 (Russ Decl.) at ¶ 164)
`
`243
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Caris + Dubil (1-5)
`
`A POSITA would not have combined Caris with Dubil
`(POR at 39-42)
`
`A POSITA would not have combined Caris Fig. 2 with Dubil Fig. 1 (POR at 39-40);
`EX2003 (Sprenger Decl.) at ¶ 227)
`
`(EX2003 (Sprenger Decl.) at ¶ 228)
`
`244
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Caris + Dubil (1-5)
`
`Caris + Dubil fail to disclose limitations of claim 1
`
`(EX1001 (325 Patent) at Cl. 1)
`
`245
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Caris + Dubil (1-5)
`
`Petition fails to assert how Caris + Dubil disclose “a
`processing device . . .” (POR at 42-43)
`
`Petitioner admits that Caris does not disclose a processing device but asserts it
`would have been obvious to use a processing device “to perform the functions
`described in Caris” (Pet. at 42-43; POR at 42-43):
`
`(Pet. at 42-43)
`
`246
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Caris + Dubil (1-5)
`
`Petition fails to assert how Caris + Dubil disclose “a
`processing device . . .” (POR at 42-43)
`
`Petitioner admits that Caris does not disclose “format the key code” as required by
`claim 1 (Pet. at 52; POR at 42-43):
`
`(Pet. at 52)
`
`247
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Caris + Dubil (1-5)
`
`Petition fails to assert how Caris + Dubil disclose “a
`processing device . . .” (POR at 42-43)
`
`(Pet. Reply at 15)
`
`248
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Caris + Dubil (1-5)
`
`Caris + Dubil fail to disclose limitations of claim 1
`
`(EX1001 (325 Patent) at Cl. 1)
`
`249
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Caris + Dubil (1-5)
`
`Petition fails to assert how Caris + Dubil disclose “a
`memory storing instructions . . .” (POR at 43-44)
`
`Petitioner admits that Caris does not disclose a memory storing instructions but
`asserts only that it would have been obvious “to perform the functions of
`identifying and transmitting a key code” (Pet at 43; POR at 43-44):
`
`(Pet. at 43)
`
`250
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Caris + Dubil (1-5)
`
`Petition fails to assert how Caris + Dubil disclose “a
`memory storing instructions . . .” (POR at 43-44)
`
`Petition fails to explain how any of the memories on the first device perform
`“format the key code for transmission” (POR at 43-44):
`
`(Pet. at 52)
`
`251
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Caris + Dubil (1-5)
`
`Petition fails to assert how Caris + Dubil di
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