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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`
`____________
`
`Case IPR2019-01614
`U.S. Patent 9,911,325
`
`____________
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ...................................................................................................... 1
`
`II.
`
`Background ...................................................................................................... 1
`
`A.
`
`Technology Background ....................................................................... 1
`
`B.
`
`U.S. Patent No. 9,911,325 ..................................................................... 3
`
`C.
`
`Person of Ordinary Skill in the Art ....................................................... 4
`
`III. Claim Construction .......................................................................................... 5
`
`A.
`
`“Key Code” ........................................................................................... 6
`
`B.
`
`“Keystroke Indicator Signal” ................................................................ 7
`
`C.
`
`“Key Code Signal” ................................................................................ 7
`
`IV. The Board Should Not Institute Inter Partes Review ..................................... 8
`
`A. Ground 1: Rye in Combination with Skerlos Does Not Render the
`
`Challenged Claims Obvious .................................................................. 9
`
`1.
`
`Petitioner has not shown that Rye or Skerlos discloses Element
`
`1.4.2: “format the key code for transmission to the second
`
`device”.......................................................................................10
`
`i
`
`
`
`a.
`
`Each of Rye and Skerlos does not disclose “format the
`
`key code for transmission to the second device” ...........10
`
`2.
`
`Petitioner has not shown that Rye or Skerlos discloses Element
`
`1.4.3: “transmit the formatted key code to the second device in
`
`a key code signal via use of the transmitter” ............................11
`
`a.
`
`Each of Rye and Skerlos does not disclose the “formatted
`
`key code” ........................................................................11
`
`3.
`
`Petitioner has failed to establish motivation to combine Rye and
`
`Skerlos .......................................................................................12
`
`4.
`
`A POSITA would not have combined Rye and Skerlos ...........17
`
`B.
`
`Ground 2: Caris in Combination with Dubil Does Not Render the
`
`Challenged Claims Obvious ................................................................19
`
`1.
`
`Petitioner has not shown that Caris or Dubil discloses Element
`
`1.4.2: “format the key code for transmission to the second
`
`device”.......................................................................................20
`
`a.
`
`Each of Caris and Dubil does not disclose “format the
`
`key code for transmission to the second device” ...........20
`
`ii
`
`
`
`2.
`
`Petitioner has not shown that Caris or Dubil discloses Element
`
`1.4.3: “transmit the formatted key code to the second device in
`
`a key code signal via use of the transmitter” ............................22
`
`a.
`
`Each of Caris and Dubil does not disclose the “formatted
`
`key code” ........................................................................22
`
`3.
`
`Petitioner has failed to establish motivation to combine Caris
`
`and Dubil ...................................................................................23
`
`4.
`
`A POSITA would not have combined Caris and Dubil ............27
`
`V.
`
`Conclusion .....................................................................................................28
`
`
`
`
`
`iii
`
`
`
`TABLE OF AUTHORITIES
`
`
`FEDERAL CASES
`
`Page(s)
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .............................................................. 24, 25, 33
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`No. 2018-2140, 2019 U.S. App. LEXIS 32613 (Fed. Cir. Oct. 31,
`2019) ................................................................................................................... 35
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .................................................................... 24, 33
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418 (2007) .................................................................................... 33
`
`Microsoft Corp. v. Enfish, LLC,
`662 Fed. Appx 981 (Fed. Cir. 2016) ............................................................. 23, 32
`
`Personal Web Techs. v. Apple Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ...................................................................... 24, 33
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 12
`
`Sanofi-Aventis Deutschland GMBH v. Mylan Pharms. Inc.,
`No. 2019-1368, 2019 U.S. App. LEXIS 34328 (Fed. Cir. Nov. 19,
`2019) ................................................................................................................... 36
`
`Securus Technologies, Inc. v. Global Tel*Link Corp.,
`701 Fed. Appx. 971 (Fed. Cir. 2017) ............................................................ 23, 32
`
`SpaceCo Business Solutions, Inc. v. Moscovitch,
`IPR2015-00127, Paper 16 (P.T.A.B. May 14, 2015) ....................... 19, 22, 30, 32
`
`REGULATIONS
`
`37 C.F.R. § 42.100(b) .............................................................................................. 12
`
`37 C.F.R. § 42.108(c) ........................................................................................... 8, 15
`
`iv
`
`
`
`LIST OF EXHIBITS
`
`
`
`Exhibit No.
`
`Description
`
`EX2001
`
`EX2002
`
`Roku’s Proposed Constructions in the District Court
`Claim Construction Order, UEI, Inc. v. Peel Techs., Inc., Case No.
`8:13-cv-01484 (C.D. Cal. Sep. 17, 2017) (Dkt. 66).
`
`
`
`
`
`
`
`v
`
`
`
`I.
`
`Introduction
`
`Roku, Inc. (“Petitioner”) petitions for Inter Partes Review of Claims 1-5 and
`
`7 of U.S. Patent No. 9,911,325 (“the ’325 Patent”), which is owned by Universal
`
`Electronics Inc. (“Patent Owner” or “UEI”). Petitioner relies on a total of two
`
`grounds, each of which fails for several reasons.
`
`For each ground, Petitioner fails to show that the references, alone or in
`
`combination, disclose, teach, or suggest each and every element of the challenged
`
`claims. Petitioner also fails to demonstrate that a POSITA would have been
`
`motivated to combine the references to render the challenged claims obvious.
`
`Thus, Grounds 1 and 2 fail to present a reasonable likelihood that any of the
`
`challenged claims are unpatentable.
`
`Petitioner thus has not met its burden under 37 C.F.R. § 42.108(c) of
`
`establishing a reasonable likelihood of success that the challenged claims would be
`
`unpatentable in view of the cited references. Accordingly, Patent Owner requests
`
`that the Board deny institution of inter partes review with respect to any of the
`
`challenged claims.
`
`II. Background
`
`A. Technology Background
`
`The challenged ’325 Patent relates to Patent Owner UEI’s system for
`
`relaying key code signals through a remote control device to operate an electronic
`
`1
`
`
`
`consumer device. (EX1001 at 1:19-22.) This system addresses the problem where
`
`consumers have a remote control device for each of multiple types of electronic
`
`consumer devices, such as televisions, stereo radios, digital video disk players,
`
`video cassette recorders, set-top cable television boxes, and set-top satellite boxes.
`
`(Id. at 1:26-33.) These consumer devices may be from various brands and require
`
`different codes to operate. A remote control device that can be configured to
`
`operate different electronic consumer devices is sometimes referred to as a
`
`“universal remote control,” such as that of the ’325 Patent.
`
`In traditional remote control devices, a remote control device controls only
`
`one electronic consumer device. The remote control device is programmed with
`
`specific key codes from a code set associated with the specific electronic consumer
`
`device. (EX1001 at 1:34-42.) Each key code is associated with a button on the
`
`remote control device and corresponds to a function (e.g., power on, power off,
`
`play, stop, etc.) of the selected electronic consumer device. (Id.) Typically,
`
`manufacturers use distinct code sets for the communication between various
`
`electronic consumer devices and their associated remote control devices. (Id. at
`
`1:42-48.) The code sets can differ by bit patterns and timing information. (Id. at
`
`1:48-53.)
`
`Rather than having multiple remote control devices to operate their
`
`electronic consumer devices, consumers may prefer to operate multiple electronic
`
`2
`
`
`
`consumer devices using a single remote control device, i.e., a universal remote
`
`control. (Id. at 1:54-57.) To do so, a remote control device would need to either
`
`(1) store many code sets in the memory of a remote control device, or (2) use the
`
`system of the ’325 Patent as summarized below. (See id. at 1:57-2:3.)
`
`B. U.S. Patent No. 9,911,325
`
`On May 13, 2016, U.S. Patent Application No. 15/153,905 (the “’905
`
`Application”) was filed on behalf of Daniel SauFu Mui, the sole inventor of the
`
`’905 Application. (EX1002 at 2-47.) The ’905 Application issued as U.S. Patent
`
`No. 9,911,325 (the “’325 Patent”), entitled “Relaying Key Code Signals Through a
`
`Remote Control Device,” on March 6, 2018. (Id. at 107; EX1001 at Cover Page.)
`
`To solve the problem of having multiple remote control devices operating
`
`various electronic consumer devices, the ’325 Patent describes a system that uses a
`
`single remote control device to operate multiple electronic consumer devices. (See
`
`EX1001 at 2:7-53.) The system does so by using a key code generator device to
`
`generate key codes from numerous code sets and transmit those key codes on a
`
`carrier signal to a remote control device in a first embodiment or an electronic
`
`consumer device in a second embodiment. (See id. at 3:47-55, 5:59-62, 6:58-65.)
`
`In the first embodiment, a user selects a key on a remote control device,
`
`which creates a keystroke indicator signal. (EX1001 at 3:56-4:1.) The keystroke
`
`indicator signal is sent from the remote control device to a key code generator
`
`3
`
`
`
`device. (Id. at 4:1-3.) The key code generator device uses the received keystroke
`
`indicator signal to generate a key code. (Id. at 4:44-55.) The key code is modulated
`
`onto a carrier signal to generate a key code signal. (Id. at 4:56-5:58.) That key code
`
`signal is transmitted by the key code generator device to the remote control device.
`
`(Id. at 5:59-62.)
`
`The second embodiment works in much the same way as the first
`
`embodiment except that instead of transmitting the key code signal from the key
`
`code generator device to a remote control, it is transmitted directly to an electronic
`
`consumer device. (Id. at 6:31-61.)1
`
`C. Person of Ordinary Skill in the Art
`
`A person of ordinary skill in the art (“POSITA”) of the technology of the
`
`’325 Patent, at the time of filing, would have had a bachelor’s degree which
`
`involved computer programming coursework, for example, electrical engineering,
`
`computer engineering, computer science, cognitive science, mechanical
`
`engineering, industrial engineering, or a similar degree, and at least one year of
`
`work experience in software programming, user interfaces, or human factors.
`
`Additional education might substitute for some of the experience, and substantial
`
`experience might substitute for some of the educational background.
`
`
`1 The independent claims of the ’325 Patent are related to the first and second
`embodiments, but are not limited to these described embodiments.
`
`4
`
`
`
`Petitioner proposes that a POSITA would have had a bachelor’s degree in
`
`electrical engineering or an equivalent degree with two years of work experience
`
`relating to communications and consumer electronics. (Petition at 8.)
`
`Under either Petitioner’s proposed POSITA or Patent Owner’s proposed
`
`POSITA, Patent Owner’s response remains the same.
`
`III. Claim Construction
`
`The claims are interpreted using the standard articulated in Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005). See 37 C.F.R. § 42.100(b). Under the
`
`Phillips standard, claim terms are generally given their ordinary and customary
`
`meaning as understood by a person of ordinary skill in the art when read in the
`
`context of the specification and prosecution history. Phillips, 415 F.3d at 1313.
`
`However, a claim term will not receive its ordinary meaning if the patentee acted
`
`as his or her own lexicographer and clearly set forth a definition of the disputed
`
`claim term in either the specification or prosecution history. Id. at 1316.
`
`In the related district court action, the Parties agreed on constructions for the
`
`following terms:
`
`Term
`
`Agreed Upon Construction
`
`Key Code
`
`A code corresponding to the function
`
`of an electronic device, optionally
`
`5
`
`
`
`including timing information. (EX1010
`
`at 12.)
`
`Keystroke Indicator Signal
`
`A signal, distinct from a key code,
`
`corresponding to a pressed key [on a
`
`remote control]. (EX1010 at 12.)
`
`
`In addition, the district court construed one term for which Patent Owner
`
`proposes that the Board adopt the same construction. Petitioner did not provide its
`
`own constructions for this term.
`
`Term
`
`District Court’s Construction
`
`Key Code Signal
`
`A signal containing a modulated key
`
`code. (EX1010 at 13-23.)
`
`
`Patent Owner reserves the right to put forth additional terms for construction
`
`should the Petition be instituted.
`
`A. “Key Code”
`
`Petitioner proposes that the term “key code” should be construed as “a code
`
`corresponding to the function of an electronic device, optionally including timing
`
`information.” (Petition at 9.) This construction is supported by the specification of
`
`the ’325 Patent. (See, e.g., EX1001 at Abstract, 1:38-41, 2:14-22, 2:28-32, 3:56-
`
`6
`
`
`
`4:15, 4:48-49, 5:3-5, 8:3-7.) The construction is further supported by a claim
`
`construction order construing the same term in the same patent from a prior district
`
`court case. (EX2002 at 40-42.) This construction is consistent with the
`
`specification, the prior claim construction order, and the Parties’ agreement, which
`
`the district court adopted, and therefore Patent Owner likewise proposes this same
`
`construction.
`
`B. “Keystroke Indicator Signal”
`
`Petitioner proposes that the term “keystroke indicator signal” should be
`
`construed as “a signal, distinct from a key code, corresponding to a pressed key [on
`
`a remote control].” (Petition at 9.) This construction is supported by the
`
`specification of the ’325 Patent. (See, e.g., EX1001 at Abstract, 2:14-17, 3:66-4:23,
`
`4:64-5:1, 5:8-12, 9:37-43.) The construction is further supported by a claim
`
`construction order construing the same term from the same patent from a prior
`
`district court case. (EX2002 at 42-45.) This construction is consistent with the
`
`Specification, the prior claim construction order, and the Parties’ agreement, which
`
`the district court adopted, and therefore Patent Owner likewise proposes this same
`
`construction for this proceeding.
`
`C. “Key Code Signal”
`
`Petitioner identified Patent Owner’s proposed construction and the
`
`construction from the district court’s order in the district court action without
`
`7
`
`
`
`providing its own proposed construction. (Petition at 9.) The district court’s order
`
`provided a construction for “key code signal” as “a signal containing a modulated
`
`key code.” (EX1010 at 13-23.) This construction is supported by the specification
`
`of the ’325 Patent. (See, e.g., EX1001 at 1:48-53, 4:56-59, 4:63-5:58, 5:67-6:19.)
`
`Patent Owner therefore proposes this same construction for this proceeding.
`
`IV. The Board Should Not Institute Inter Partes Review
`
`When Petitioner’s alleged prior art references are considered in the proper
`
`timeframe and in an accurate context, it is clear that Petitioner has failed to carry
`
`its burden of proving a likelihood that any of the challenged claims are
`
`unpatentable. See 37 C.F.R. § 42.108(c).
`
`Petitioner argued that the challenged claims of the ’325 Patent are obvious
`
`over the following references: Rye, Skerlos, Caris, and Dubil. Each of these
`
`references is deficient. For example, Skerlos and Dubil fail to disclose, among
`
`other things, formatting a key code for transmission to another device.
`
`Further, Petitioner and its expert failed to show that a POSITA would have
`
`combined, or been motivated to combine, the references in each of the alleged
`
`grounds.
`
`Pursuant to 37 C.F.R. § 42.108(c), Petitioner must demonstrate that there is a
`
`reasonable likelihood that at least one challenged claim of the ’325 Patent is
`
`8
`
`
`
`unpatentable to warrant institution of an inter partes review. Petitioner has not
`
`done so here, and thus the Board should deny institution.
`
`A. Ground 1: Rye in Combination with Skerlos Does Not Render the
`Challenged Claims Obvious
`
`Petitioner asserts that Claims 1-3, 5, and 7 are obvious in view of the
`
`combination of Rye and Skerlos. However, Petitioner fails to show that the
`
`references, alone or in combination, disclose, teach, or suggest each and every
`
`element of the challenged claims. Further, Petitioner fails to demonstrate that a
`
`POSITA would have been motivated to combine Rye and Skerlos. Thus, Ground 1
`
`fails to present a reasonable likelihood that any of the challenged claims are
`
`unpatentable.
`
`In particular, institution should be denied because Petitioner failed to show
`
`that the cited references, alone or in any combination, disclose at least elements
`
`1.4.2 and 1.4.32 of the challenged independent claims. Because each of the
`
`dependent claims includes each of the elements of its underlying independent
`
`claims and Petitioner failed to show that at least the above elements were not
`
`disclosed in the references, Petitioner also failed to establish that there is a
`
`reasonable likelihood that any of the challenged dependent claims are
`
`unpatentable.
`
`
`2 Patent Owner has used Petitioner’s numbering of the elements of the ’325 Patent.
`
`9
`
`
`
`1. Petitioner has not shown that Rye or Skerlos discloses Element
`1.4.2: “format the key code for transmission to the second device”
`
`a. Each of Rye and Skerlos does not disclose “format the key code
`for transmission to the second device”
`
`Petitioner argues that “a POSA would have understood that ‘formatting’ the
`
`key code would include using the well-known technique of modulating the key
`
`code onto a carrier signal to prepare the key code for transmission.” (Petition at
`
`23.) Petitioner concedes that “Rye does not explicitly describe the operational
`
`details behind the transmission of key codes.” (Id.) Petitioner, however, argues that
`
`“a POSA looking to understand these formatting or operational details would have
`
`known to look to references such as Skerlos.” (Id. at 23-24.) Petitioner alleges that
`
`Skerlos discloses pulse code modulation (PCM) to transmit control codes as well
`
`as uses PCM to modulate key codes onto a carrier signal, such as an IR signal.
`
`(Petition at 24.) Petitioner’s description, however, fundamentally misunderstands
`
`the teachings of Skerlos.
`
`Skerlos discloses a remote control system in which a first modulated signal
`
`at a certain frequency is translated into a second modulated signal at a higher
`
`frequency. (EX1006 at Abstract, 2:12-17, 3:9-13.) To translate the signal, the first
`
`signal is chopped by a 40 kHz clock signal and results in a second signal at a
`
`higher frequency to avoid the usual spectrum of IR noise which is more
`
`predominant at lower frequencies. (Id. at 3:9-13, 3:37-52.) This frequency
`
`10
`
`
`
`translation to a more noise-free portion of the IR spectrum gives the remote control
`
`system more reliability and simplification to achieve the stated objectives of the
`
`invention. (Id. at 2:26-35, 3:37-52.)
`
`The Petitioner has failed to show that Skerlos describes formatting a key
`
`code for transmission to another device. Rather, Skerlos describes translating one
`
`previously modulated signal – for which Skerlos provides no description of how it
`
`was modulated – to another modulated signal at a higher frequency. (EX1006 at
`
`3:9-13, 3:37-52.) Indeed, Skerlos’ primary objectives were to “provide an IR signal
`
`detector/decoder with improved noise immunity” and employ modulated signals
`
`with “frequencies in a relatively noise-free portion of the electromagnetic
`
`spectrum.” (Id. at 2:26-35.) It was never an objective of Skerlos to describe
`
`formatting a key code for transmission to another device. Nor has the Petitioner
`
`shown that it does so.
`
`2. Petitioner has not shown that Rye or Skerlos discloses Element
`1.4.3: “transmit the formatted key code to the second device in a
`key code signal via use of the transmitter”
`
`a. Each of Rye and Skerlos does not disclose the “formatted key
`code”
`
`Petitioner argues that “Rye explicitly discloses that the key code signal is
`
`transmitted from the IR emitter of its transceiver to an electronic consumer
`
`device.” (Petition at 27.) As discussed in Section IV.A.1.a above, Petitioner failed
`
`to show that Rye and Skerlos disclose formatting a key code for transmission to
`
`11
`
`
`
`another device. Because a formatted key code is not disclosed in the cited
`
`references, the references fail to disclose a formatted key code transmitted to the
`
`second device in a key code signal via use of the transmitter.
`
`3. Petitioner has failed to establish motivation to combine Rye and
`Skerlos
`
`Merely stating that a proposed combination would have been combined by a
`
`POSITA and/or implementing transmission techniques would result in merely
`
`combining known elements to yield predictable results is insufficient as a matter of
`
`law as none are a substitute for a fact-based analysis. SpaceCo Business Solutions,
`
`Inc. v. Moscovitch, IPR2015-00127, Paper 16 at 23-24 (P.T.A.B. May 14, 2015)
`
`(rejecting conclusory statements and denying institution). Yet, this is what
`
`Petitioner does. Petitioner provides conclusory statements that a POSITA would
`
`have combined Rye and Skerlos, without any fact-based analysis:
`
` “While Rye does not explicitly describe the operational details behind
`
`the transmission of key codes, a POSA looking to understand these
`
`formatting or operational details would have known to look to
`
`references such as Skerlos, which describes the modulation of a key
`
`code to format the key code for transmission.” (Petition at 23-24.)
`
` “A POSA implementing Rye’s process of transmitting control codes
`
`from the IR emitter to another audiovisual component would have
`
`12
`
`
`
`known that Rye accomplishes this through the well-known
`
`modulation techniques, as described in Skerlos.” (Petition at 25.)
`
` “Further, implementing the transmission techniques described in
`
`Skerlos with the transceiver described in Rye would have merely been
`
`combining known elements to yield predictable results.” (Petition at
`
`25-26.)
`
` “Both Rye and Skerlos describe the transmission of control codes
`
`using a wireless IR transmitter.” (Petition at 26.)
`
` “While Skerlos describes the transmission of control codes from a
`
`remote control, a POSA would have understood that Rye’s transceiver
`
`would have just as easily implemented the same wireless transmission
`
`protocol using the same IR emitter technology to transmit control
`
`codes in the same manner described in Skerlos. . . . Both devices
`
`transmit control codes modulated onto a carrier signal, such as an
`
`infrared signal.” (Petition at 26.)
`
` “As Skerlos explains, modulating a signal to a higher frequency such
`
`as the IR spectrum would remove the signal from a noisy portion of
`
`the IR spectrum caused by incandescent lamps and sunlight and
`
`provide better reliability. . . . In this manner, a POSA using the
`
`transceiver described in Rye would have been motivated by these
`
`13
`
`
`
`benefits and would have easily utilized the same modulation
`
`techniques described in Skerlos to modulate a control code onto an IR
`
`carrier frequency and transmit the corresponding signal to the claimed
`
`‘second device.’ . . . Thus, there would have been a reasonable
`
`expectation of success and it would have been predictable to
`
`implement the well-known modulation techniques described in
`
`Skerlos—and admitted as prior art in the ’325 patent—in Rye’s
`
`system to format the control code for transmission.” (Petition at 26.)
`
` “While Rye explains that the key codes include binary numbers that
`
`are used to generate “binary coded infrared (IR) signals,” Rye does
`
`not explicitly describe the operational details explaining how the
`
`binary numbers are modulated onto an IR carrier signal to produce
`
`these signals. . . . Skerlos, however, provides this explanation and
`
`describes timing factors related to key code transmission and how
`
`binary key codes are modulated onto carrier signals.” (Petition at 30.)
`
` “As previously explained, a POSA would have been motivated to look
`
`to Skerlos’ teachings when seeking to use Rye’s system to wirelessly
`
`transfer key codes to a second device.” (Petition at 32.)
`
`14
`
`
`
` “To implement Rye’s transceiver to wirelessly transmit the key code,
`
`a POSA would have sought to understand the format of the key codes,
`
`which is explicitly described by Skerlos.” (Petition at 32.)
`
` “A POSA would have easily used the techniques of Skerlos within the
`
`system described in Rye because both describe the transmission of the
`
`same type of key codes used to control a second device.” (Petition at
`
`32.)
`
` “Skerlos provides the operational details of using an IR emitter to
`
`transmit a binary coded infrared (IR) signal as described in Rye. Thus,
`
`the combination of Rye and Skerlos teaches the claimed timing
`
`information.” (Petition at 32.)
`
`Without providing any fact-based analysis, Petitioner concludes that a
`
`POSITA would have combined Rye and Skerlos. Devoid of any factual analysis,
`
`the Petition argues that the references overlap with respect to describing
`
`transmission of control codes using a wireless IR transmitter as evidence that a
`
`POSITA would have combined the references. But more is needed. Petitioner
`
`cannot merely rely on the fact that references have a small amount of alleged
`
`overlap to argue that a POSITA would have combined the references without
`
`providing any fact-based analysis. See SpaceCo Business Solutions, Inc. v.
`
`15
`
`
`
`Moscovitch, IPR2015-00127, Paper 16 at 23-24 (P.T.A.B. May 14, 2015)
`
`(rejecting conclusory statements and denying institution).
`
`Petitioner also cannot rely on an identification of similarities as a reason for
`
`combining references. Microsoft Corp. v. Enfish, LLC, 662 Fed. Appx 981, 990
`
`(Fed. Cir. 2016) (affirming Board decision that Petitioner did not articulate a
`
`sufficient motivation to combine; merely stating references directed same art or
`
`technique insufficient). Indeed, the Federal Circuit has warned against relying on
`
`such “short-cut logic,” stating that such an approach “would lead to the conclusion
`
`that any and all combinations of elements known in this broad field would
`
`automatically be obvious, without the need for any further analysis.” Securus
`
`Technologies, Inc. v. Global Tel*Link Corp., 701 Fed. Appx. 971, 977 (Fed. Cir.
`
`2017). But this is what Petitioner attempts to do. Arguing that Rye and Skerlos
`
`both describe transmission of control codes using a wireless IR transmitter is
`
`insufficient as a matter of law. Similarities in the references cannot be the sole
`
`basis for a POSITA to combine the references. Microsoft Corp. v. Enfish, LLC, 662
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`Fed. Appx at 990.
`
`Further, pointing out the mere combinability of references is also insufficient
`
`to establish motivation to combine because when “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 . . . is not enough: it does not imply a
`
`16
`
`
`
`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
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`(Fed. Cir. 2017) (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed.
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`Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have
`
`made but would have been motivated to make the combinations or modifications
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`of prior art to arrive at the claimed invention.”)). Indeed, there are numerous
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`obstacles to modifying the references Rye and Skerlos, as discussed in the
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`following section. The Petition fails to address these obstacles.
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`Accordingly, Petitioner’s arguments do not provide the requisite motivation
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`to combine. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“there must
`
`be some articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness”). ActiveVideo Networks, Inc. v. Verizon Commc’ns,
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`Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (upholding JMOL of no invalidity
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`based on generic testimony that fails to explain why POSITA would have
`
`combined elements from specific references in the way the claimed invention
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`does).
`
`4. A POSITA would not have combined Rye and Skerlos
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`Rye describes a remote control system to control audiovisual components.
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`(EX1005 at Abstract, [0002].) A remote control unit of the system includes an
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`array of pushbuttons, which, when pressed down by a user, generates binary coded
`
`17
`
`
`
`commands or control signals. (Id. at [0021].) Those commands or signals are
`
`transmitted from the remote control unit to the selected audiovisual component.
`
`(Id.) Rye, however, does not describe the operational details behind the
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`transmission of key codes as conceded by Petitioner. (Petition at 23.)
`
`Skerlos describes improving noise immunity by increasing the frequency of
`
`a signal using pulse code modulation and “chopping” the signal. (EX1006 at
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`Abstract, 3:9-13.) Skerlos does not describe a dedicated button for connecting a
`
`STB to an Internet server, identifying code sets, storing them on a remote, or how a
`
`POSITA would “chop” a signal with a 40kHz clock. Nor does Petitioner or its
`
`expert attempt to explain these deficiencies and why a POSITA would have
`
`combined the references in view of the deficiencies.
`
`As another example, a POSITA would not have combined Rye and Skerlos
`
`at least because the objectives of Rye and Skerlos are different. Rye is directed to a
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`remote control system to control audiovisual components whereas Skerlos is
`
`directed to providing an IR signal detector/decoder with improved noise immunity
`
`and employing modulated signals with frequencies in a relatively noise-free
`
`portion of the electromagnetic spectrum. A small amount of overlap between the
`
`references is insufficient evidence to show that a POSITA would have combined
`
`the references. With different objectives for each invention, a POSITA would not
`
`have combined the references.
`
`18
`
`
`
`Accordingly, the examples described above show that a POSITA would not
`
`have combined Rye and Skerlos.
`
`B. Ground 2: Caris in Combination with Dubil Does Not Render the
`Challenged Claims Obvious
`
`Petitioner asserts that Claims 1-5 are obvious in view of the combination of
`
`Caris and Dubil. However, Petitioner fails to show that the references, alone or in
`
`combination, disclose, teach, or suggest each and every element of the challenged
`
`claims. Further, Petitioner fails to demonstrate that a POSITA would have been
`
`motivated to combine Caris and Dubil. Thus, Ground 2 fails to present a
`
`reasonable likelihood that any of the challenged claims are unpatentable.
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`In particular, institution should be denied because Petitioner failed to show
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`that the cited references, alone or in any combination, disclose at least elements
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`1.4.2 and 1.4.3 of the challenged independent claims. Because each of the
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`dependent claims includes each of the elements of its underlying independent
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`claims and Petitioner failed to show that at least the above elements were not
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`disclosed in the references, Petitioner also failed to establish that there is a
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`reasonable likelihood that any of the challenged dependent claims are
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`unpatentable.
`
`19
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`
`
`1. Petitioner has not shown th
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