Trials@uspto.gov
`571-272-7822
`
`
`Paper 30
`
` Entered: January 26, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`______________
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`______________
`
`Record of Oral Hearing
`Held Virtually: Tuesday, December 22, 2020
`______________
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG and
`SHARON FENICK, Administrative Patent Judges.
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`
`
`
`
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`
`571-272-7822
`
`
`Paper 30
`
` Entered: January 26, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`______________
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`______________
`
`Record of Oral Hearing
`Held Virtually: Tuesday, December 22, 2020
`______________
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG and
`SHARON FENICK, Administrative Patent Judges.
`
`
`
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`
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`
`
`
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`
`
`
`A P P E A R A N C E S
`
`ON BEHALF OF THE PETITIONER:
`
`
`LESTIN KENTON, ESQUIRE
`TIMOTHY TANG, ESQUIRE
`STERNE KESSLER GOLDSTEIN & FOX
`1100 New York Ave, NW Suite 600
`Washington D.C., 20005
`(202) 371-2600
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`BENJAMIN PLEUNE, ESQUIRE
`NICHOLAS TSUI, ESQUIRE
`ALSTON & BIRD
`101 South Tyron Street, Suite 4000
`Charlotte, North Carolina 28280
`(704) 444-1111
`
`
`ALSO PRESENT:
`
`
`Alexander Tsehay, Host
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, December
`22, 2020, commencing at 11:07 a.m. MST, by video/by telephone.
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`
`
` P R O C E E D I N G S
`
` * * * *
`
` MR. TSEHAY: All parties are connected.
`
` JUDGE BOUCHER: Okay. Good afternoon.
`
`This is a consolidated trial hearing for three
`
`inter partes reviews. IPR2019-01612, which concerns
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`U.S. Patent No. 7,589,641. IPR2019-01613, which
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`concerns U.S. Patent No. 8,004,389. And
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`IPR2019-01614, which concerns U.S. Patent No.
`
`9,911,325.
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` In each of the three reviews the
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`Petitioner is Roku, Inc., and the Patent Owner is
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`Universal Electronics, Inc.
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` I am Patrick Boucher. Also joining me are
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`Judges Chung and Fenick. At this time, we would
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`like counsel to introduce yourselves as well as
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`anyone else you may have with you.
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` Petitioner, if you could introduce
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`yourself, please.
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` MR. KENTON: Yes. Good afternoon, Your
`
`Honors. I am Lestin Kenton from the firm Sterne
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`Kessler Goldstein & Fox for Roku, Inc., and here
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`with me are my colleagues John Wright, and Timothy
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`Tang also.
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` JUDGE BOUCHER: Okay. Thank you
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
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`Mr. Kenton.
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` And for the Patent Owner, if you could
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`introduce yourself, please.
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` MR. PLEUNE: Yes, Your Honor. Ben Pleune
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`on behalf of Patent Owner and Universal
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`Electronics, Inc., from Alston & Bird. And also
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`joining me on an audio line is Nick Tsui, also of
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`Alston & Bird.
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` JUDGE BOUCHER: Okay. Thank you, Mr.
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`Pleune.
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` Before we begin, I want to note that a
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`public audio line was requested and granted for
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`this hearing. I don't expect that we'll be
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`discussing any confidential information, but if
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`that is incorrect it's incumbent upon the parties
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`to notify the Panel in case action needs to be
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`taken.
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` A full transcript of the hearing will
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`become part of the record in the proceeding in due
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`course.
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` As you're aware, this is entirely
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`video-hearing. We ask generally that people keep
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`themselves on mute unless speaking to minimize
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`distractions. And to help the court reporter we
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`ask that you try to remember to identify yourself
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`before speaking.
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
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` Every member of the Panel has a copy of
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`the Demonstrative Exhibits that were filed by both
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`sides. In addition to copies of the
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`Demonstratives, each member of the Panel has
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`access to the entire record of the proceeding in
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`case you choose to refer to something that is in
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`the record but not on one of your slides.
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` When conducting your presentation, please
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`take care to refer to the slide number, exhibit,
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`or page number that you're discussing for the
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`record. Not only will this make it easier for us
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`to follow your presentation, it will help with
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`clarity in the transcript.
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` On Friday last week the Panel held a
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`pre-hearing conference with the parties. One
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`issue that remains outstanding is Patent Owner's
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`request to file a motion to submit supplemental
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`information in the form of a rebuttal expert
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`report of Stewart Lipoff in a related
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`ITC proceeding. The Panel has decided to defer
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`ruling on that request until after the oral
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`hearing.
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` As you know from our trial order, each
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`party has a total of 90 minutes to present its
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`argument. A request by Petitioner under the
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`Board's Legal Experience and Advancement Program
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
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`was granted with respect to Timothy Tang, which
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`allows Petitioner an additional 15 minutes. So
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`Petitioner will have a total of 105 minutes.
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` As a reminder, under the program, Mr. Tang
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`is expected to have a meaningful and substantive
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`opportunity to argue during the hearing.
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` Because Petitioner has the burden to show
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`unpatenability of the claims Petitioner will
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`proceed first followed by Patent Owner. Both
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`parties may reserve rebuttal time.
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` Because of the length of this hearing,
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`we'll take, at least, one short break. Depending
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`on how much time Petitioner reserves, I'm thinking
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`of a five- to ten-minute break after Petitioner's
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`presentation and perhaps after Patent Owner’s also.
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` Are their any questions from either party
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`at this time? Mr. Kenton?
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` MR. KENTON: No, Your Honor.
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` JUDGE BOUCHER: Mr. Pleune, any questions?
`
` MR. PLEUNE: No, Your Honor.
`
` JUDGE BOUCHER: Okay. In that case, we
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`will begin with Petitioner. Mr. Kenton?
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` MR. KENTON: Yeah. Thank you, Your Honor.
`
` JUDGE BOUCHER: Okay. Sorry, Mr. Kenton,
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`would you like to reserve any time? I'm just
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`going to keep track of the time here.
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
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` MR. KENTON: Yes. And, actually, I would
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`like to just discuss some of the logistics. We
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`would like to reserve 30 minutes for rebuttal.
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` And just so you know the order, I will be
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`discussing the issues related to the '642 Patent
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`and the '325 Patent, while Mr. Tang will be
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`discussing the issues specific for the '389
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`Patent.
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` JUDGE BOUCHER: Okay. Your audio is
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`breaking up a little bit for me. I think maybe
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`you're not quite close enough to the microphone or
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`something.
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` MR. KENTON: All right.
`
` JUDGE BOUCHER: All right. Okay. That's
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`actually much better. Just please be aware of
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`that.
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` MR. KENTON: Yeah. And if that changes
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`and if my audio changes just please let me know,
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`and I will try to correct it. I have some
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`headsets as a backup just in case. So we should
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`be good to go.
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` JUDGE BOUCHER: Okay. I will try to let
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`you know when you have about 15 minutes of your
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`one and a quarter hours with the 30 minutes
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`reserved. So you can go ahead and proceed
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`whenever you’re ready.
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
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`
` MR. KENTON: Thank you, Your Honor. And I
`
`will be starting at Petitioner's Demonstrative
`
`Slide 2. Once again, I'm Lestin Kenton for
`
`Petitioner, Roku, Inc.
`
` Your Honors, Petitioner Roku asked that
`
`the Board invalidate challenged claims in these
`
`proceedings, because there was nothing novel about
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`the patents here.
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` We have prior art, expert declarations,
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`admissions by the Patent Owner, and testimony from
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`both experts in these proceedings that establish
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`that the challenged claims are obvious.
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` Now, with respect to the '642 Patent,
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`Petitioner has raised three main arguments with
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`respect to the independent claims. Each of which
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`is flawed.
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` First, Patent Owner argues that the prior
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`art does not teach the generation of a key code.
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`But while Patent Owner focuses on terms like
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`translating or generating, Patent Owner fails to
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`appreciate that the prior art teaches a set-top box
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`receiving a generic keystroke indicator signal
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`and then looking up a corresponding and specific
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`key code that is used to control a specific
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`device.
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` Mishra, for example, shows that the
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
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`specific key code is then sent back to the remote
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`control, and Rye shows that specific key code is
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`sent to the consumer device. Patent Owner and
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`their expert have admitted that Mishra and Rye's
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`way of generating key codes is at least one
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`embodiment that falls within the scope of their
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`patents.
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` Second, Patent Owner argues that the prior
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`art does not teach the transmission of a key code
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`signal, because such transmission excludes the
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`transmission of an entire codeset. But both
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`Mishra and Rye do not teach the transmission of an
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`entire codeset in its key code signal.
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` Instead, both Mishra and Rye show a user
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`pressing, for example, a channel-up button on the
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`remote and the set-top box transmitting its key
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`code signal, which is a singular key code specific
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`to that channel-up button.
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` And, third, Patent Owner argues that it
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`would not have been obvious to wirelessly
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`translate key codes using modulation. There is no
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`dispute in this proceeding that the prior art
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`teaches the wireless transmission of key codes.
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` However, Patent Owner wants you to believe
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`that modulation is not an obvious way
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`to wirelessly transmit these key codes. But that
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
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`argument is borderline frivolous and does not
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`stand up against the weight of the record evidence
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`provided by Roku that remains undisputed.
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` Now, Your Honors, I'm going to address
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`each of those issues in time, but are there any
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`questions or issues up front that you would like
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`me to address at the outset?
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` JUDGE BOUCHER: This is Judge Boucher. I
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`have no questions at this time.
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` MR. KENTON: All right. Thank you, Your
`
`Honors. Now turning to slide -- Petitioner's
`
`Demonstrative Slide 7. Here are the specific
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`grounds for the '642 Patent.
`
` I'm going to focus on the first two
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`grounds. For the third ground we'll rest on the
`
`papers, but if you have any specific questions
`
`with respect to ground three, please do let me
`
`know.
`
` Turning back to Slide 3. Here you have
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`what Petitioner -- or rather, here you have what the
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`inventors noted as the novelty of their patents.
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`In the specification of the '642 Patent, the inventors
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`noted that the alleged unique aspect of their
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`invention was to allow a universal remote control
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`to control a device without requiring the codeset
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`on the device to be stored on the remote control.
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`
` I will also point out here that there is
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`no mention of any unique generation or
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`transmission of a key code or any unique
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`modulation scheme, and that's because those things
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`were not unique at all.
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` Turning to Slide 8. Now, the patents here
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`disclose two embodiments to achieve its goal of
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`not storing code sets on the remote control
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`device. Slide 8 shows the first embodiment that
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`is covered by Claim 1 on the left here, along with
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`a figure that describes the claim on the right.
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` This figure here was created by Patent
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`Owner and its expert, Sprenger, and represents
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`their understanding and admission as to how this
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`embodiment works. So I'll walk through this
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`figure.
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` What you see here is a remote control in
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`the bottom left-hand corner; a set-top box in the
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`middle, which is the claimed key code generating
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`device, and on the bottom right is a Blu-Ray
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`player. Here the user is trying to use the remote
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`control to control the Blu-Ray player.
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` So the system works as follows: First,
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`the set-top box receives what is claimed as a
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`keystroke indicator signal from the remote
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`control. This would happen in response to the
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
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`user, for example, pressing the volume-up button
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`on their universal remote control.
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` As you can see, the keystroke indicator
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`signal includes a simple binary number. Upon
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`receipt of this binary number, the set-top box
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`generates a corresponding key code by using a
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`lookup table of codesets, which you see depicted
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`on the table at the right here.
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` The set-top box looks up and finds the key
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`code that corresponds, for example, to the
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`volume-up key that was initially pressed by the
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`user. Here you can see, once again, the key code,
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`which is highlighted in red, is nothing more than
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`a corresponding binary number for the particular
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`function.
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` Once that key code is looked up, that
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`set-top box uses conventional modulation
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`techniques to transmit the key code back to the
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`remote control using what is called a key code
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`signal. And while not claimed in the independent
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`claims here the remote control then receives that
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`key code and transmits the key code to the Blu-Ray
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`player in order to operate the device.
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` So in simple terms, this first embodiment
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`really does three things. First, the user presses
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`a function key on the remote control which sends a
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
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`generic code to the set-top box. Second, the
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`second set-top box looks up a corresponding key
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`code for that specific function. And, third, the
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`set-top box sends that key code back to the remote
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`control. And keep in mind, Your Honors, this is
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`Patent Owner's own admission as to how it works.
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` So turning to Slide 11. Now, I'd like to
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`talk about the first ground, which is Mishra and
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`Dubil, which covers this first embodiment.
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` JUDGE BOUCHER: This is Judge Boucher.
`
` Actually, Mr. Kenton before we start
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`talking about the prior art, can we talk a little
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`bit about the claim construction issues?
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` Because the Patent Owner has -- although,
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`the Patent Owner appears to agree with
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`the constructions that were previously proposed,
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`the Patent Owner has some exclusions based on the
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`prosecution history and what I'm interested in is
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`your reaction to those exclusions.
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` MR. KENTON: Yes. Okay. So, first, we
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`can jump to Slide 27 of Petitioner's slides.
`
` Here Patent Owner has taken the position
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`that generation of a key code does not include
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`translating or converting the code into another
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`format, such as an infrared signal.
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` Now, as Petitioner, we don't think any
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
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`clarification of this term is needed for this
`
`proceeding because it is a moot point. Even if
`
`Patent Owner's statements during prosecution for
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`an effective disclaimer -- what they disclaimed is
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`different from what the prior art, like Mishra and
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`Rye, teaches.
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` What Patent Owner argued during
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`prosecution is that the generation of a key code
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`does not mean taking a keystroke indicator signal
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`that already includes a key code and then
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`reformatting the code. But that's not what Mishra
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`or Rye teaches.
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` Mishra and Rye teaches a set-top box
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`receiving a generic code, and that that generic
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`code cannot control any specific device. And then
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`what Mishra and Rye both teach is that the set-top
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`box then finds corresponding key code that is
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`specific to the device, and then the set-top box
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`transmits that specific key code either back to
`
`the remote or to the intended device.
`
` JUDGE BOUCHER: Okay. It seems like you’re
`
`arguing the prior art there more than addressing
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`the claim construction issue.
`
` If I understand you correctly, you're not
`
`really taking any position on Patent Owner's
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`prosecution history disclaimer argument, and that
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
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`
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`seemed to me to be the case in your papers as
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`well. I didn't see articulated there a clear
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`position on that disclaimer argument.
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` Is that a fair assessment of your
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`argument?
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` MR. KENTON: Well, Your Honor, no.
`
` Regarding the prosecution history
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`disclaimer we don't believe that the statements
`
`that Patent Owner made during prosecution rise to
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`the level of a proper disclaimer. Mainly because
`
`those statements during prosecution were rejected
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`by the offer -- by the office and by the examiner.
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` And I don't believe the Patent Owner has
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`presented any case law indicating that statements
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`that were rejected during prosecution are somehow
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`limited in terms. Instead, what prosecution
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`history disclaimer really stands for is that if
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`the applicant successfully distinguishes claims
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`and that ultimately led to an allowance, then that
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`would be given the proper disclaimer.
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` But what we're saying, ultimately, in our
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`papers is that point is moot, because the art
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`disclaimer -- allegedly disclaimed over in the
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`prosecution history is different from the art in
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`this proceeding.
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` JUDGE BOUCHER: Okay. I just want to
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
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`remind you a little bit to -- to keep your
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`microphone's position in mind, because you are
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`breaking up a small amount, not a lot. You're
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`still understandable, but it's not as clear as it
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`could be.
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` MR. KENTON: Okay.
`
` JUDGE CHUNG: Counsel. This is Judge
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`Chung. Hi.
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` So can you let us know where in
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`Petitioner's papers Petitioner addressed
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`Patent Owner's prosecution history disclaimer argument as
`
`to the issue of claim construction?
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` MR. KENTON: Yeah. So as I noted earlier,
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`we believe that no construction is needed. That
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`is a position that we took in our papers, and we
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`also believe that the construction is unpopularly
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`narrow. And we point that out at our Petitioner's
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`reply -- paper 20, pages 5 through 7.
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` JUDGE CHUNG: Okay. All right. Thank
`
`you.
`
` MR. KENTON: Your Honors, are there any
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`more questions regarding --
`
` JUDGE BOUCHER: This is Judge Boucher. I
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`do actually have, at least, one other question.
`
` If -- even if the Patent Owner's
`
`prosecution disclaimer argument is inadequate,
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
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`
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`does the Patent Owner actually need to establish
`
`that there was a prosecution history disclaimer?
`
` And I'm thinking of cases like the
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`Personalized Media case from the Federal circuit,
`
`which seemed to say that, at least for claim
`
`construction, that it is not necessary for the
`
`statements during prosecution to rise to the level
`
`of a disclaimer in order to inform the correct claim
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`construction.
`
` So would you agree that it is not, in
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`fact, necessary for the Patent Owner to establish
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`that there was a proper prosecution history
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`disclaimer such that -- such that we would reject
`
`the exclusions that they're proposing?
`
` MR. KENTON: Yes, Your Honors. Our point
`
`is that you may find that the Patent Owner
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`effectively disclaimed a specific way of
`
`generating a key code in its prosecution history.
`
` However, our point is what they've
`
`disclaimed is different from what the prior art
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`teaches. So we win regardless of whether there
`
`was an effective disclaimer.
`
` JUDGE BOUCHER: Okay. Thank you.
`
` MR. KENTON: And to this point, Your
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`Honors, if I may -- I may jump to the generation
`
`of a key code limitation with respect to Mishra,
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
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`
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`and I can show you why with respect to this claim
`
`construction it doesn't matter.
`
` So if you turn to Petitioner's Slide 11.
`
` JUDGE BOUCHER: Actually, if I could
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`interrupt you. I'm sorry to go back to this, and
`
`I don't mean to belabor it too much.
`
` But when you were talking about the
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`prosecution history disclaimer you said that the
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`positions taken by the Patent Owner were expressly
`
`rejected by the examiner.
`
` Can you give me a specific example of that
`
`and point me to where that -- where the examiner
`
`rejected the position in the prosecution history?
`
` And I don't mean to put you on the spot
`
`exactly, but that's not something that I
`
`specifically recall. So it would be helpful for
`
`me to have an example of where that actually
`
`happened during prosecution.
`
` MR. KENTON: Yes. And if you take a look
`
`at the prosecution history, which is Exhibit 1002.
`
` For example, if you take a look at 310 of
`
`that document. You can see here, for example,
`
`that the Board rejected the translating arguments
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`made by Applicant and maintained that the
`
`reference that they were trying to disclaim over
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`both still met the claims. That's one example.
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`
` And we also have other slides, if you
`
`would like. At page 311 of that document stated
`
`that this interpretation that Patent Owner was
`
`taken was inconsistent with the specification.
`
` For example, at another slide, 315 of that
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`same prosecution history we show that the
`
`applicant amended claims after appeal and that
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`specific limitation was not the reason why the
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`changes were allowed, and that it was due to
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`claims two and three.
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` And on page 327, once again, the examiner
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`maintained his rejection over Pope and said that
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`Pope still taught the claimed keystroke indicator
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`signal and generation of a key code despite the
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`Applicant's translation argument.
`
` JUDGE BOUCHER: Okay. Thank you.
`
` MR. KENTON: You're welcome.
`
` So turning to Mishra, and that's on
`
`Petitioner's Slide 11. Mishra has a similar setup
`
`as the '642 Patent. You have a remote control --
`
`highlighted in blue -- a set-top box, which is the
`
`claimed key code generated device, highlighted in
`
`red, and the electronic consumer device,
`
`highlighted in green.
`
` Turning to Slide 12. Mishra describes
`
`here a remote control that transmits a keystroke
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
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`signal to a set-top box in exactly the same manner
`
`as the '642 Patent. What Mishra says at
`
`paragraph 37 is that once a user presses the TV
`
`button on the remote control; thereafter, when the
`
`user presses a function button, such as the
`
`channel-up button, the remote sends a keystroke
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`indicator signal to the set-top box.
`
` I would like to now focus on one of the
`
`disputed issues, which is related to this
`
`generation of a key code, and that's whether this
`
`keystroke indicator signal already includes a key
`
`code. And what -- you can see that it doesn't if
`
`you turn to Petitioner's Slide 30.
`
` So the Patent Owner argues that the
`
`information sent from the remote is the actual key
`
`code. This is wrong. With respect to Mishra's
`
`keystroke indicator signal, what is important to
`
`note is that at paragraph 20 -- and I've
`
`highlighted this on the Slide 30 here -- Mishra
`
`states that a keystroke indicator signal that is
`
`sent to the set-top box may not be particularly
`
`adapted to work any particular device. Meaning,
`
`that code itself cannot control any particular
`
`device. It is not the key code.
`
` Mishra's actual key codes, like the '642
`
`Patent, are stored at the set-top box. And Mishra
`
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`
`confirms this at both paragraphs 20 and
`
`paragraphs 37 by stating that once the command
`
`signal is received by the set-top box, it is then
`
`translated into a format for controlling a
`
`particular device, and the set-top box sends the
`
`necessary codes back to the remote.
`
` Now, Patent Owner has argued that this
`
`translation is not the same as the claimed
`
`generation of a key code, but that's not true.
`
`Here, Patent Owner is, essentially, playing a
`
`word game and ignores what Mishra actually means
`
`by its translation operation, and that can be
`
`seen at Slide 13.
`
` So here is what Mishra means when it uses
`
`the term translator. Specifically, paragraph 20
`
`of Mishra says that its set-top box stores a
`
`variety of codes, and these codes are the actual
`
`key codes. These codes are the specific codes
`
`that are used to control and operate a particular
`
`device, which Mishra says, in the highlighted
`
`portion, at the end of paragraph 20.
`
` Indeed, if you take a look at paragraph 37
`
`and paragraph 39 of Mishra, Mishra says that "when
`
`the user presses the channel-up button the set-top
`
`box sends the remote the necessary codes that
`
`increment the channel, and then the remote takes
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`
`these codes and sends them back to the TV so that
`
`the TV can be incremented".
`
` Now, Your Honors, before I move onto the
`
`next issue and the next notation, do you have any
`
`questions regarding Mishra and the generation of a
`
`key code?
`
` JUDGE BOUCHER: This is Judge Boucher.
`
`With respect to the generating limitation and
`
`whether or not a simple translation is sufficient
`
`to meet that limitation, the Patent Owner argues
`
`that that is one of the things that was expressly
`
`disclaimed during prosecution.
`
` Is that something that you think the
`
`examiner expressly rejected as you were suggesting
`
`before, or is that something where you think the
`
`prosecution history does not support the Patent
`
`Owner's argument that was there was a express
`
`disclaimer?
`
` MR. KENTON: It's the latter. We don't
`
`believe that prosecution history supports Patent
`
`Owner's argument that it explained this specific
`
`way generating a key code, and I would like to
`
`remind you that while Mishra uses the word
`
`translate -- what translates means matters within
`
`the context of the specification.
`
` And I think, you know, to clear up this
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`
`prosecution history argument, perhaps we can talk
`
`about what was said during prosecution and look at
`
`the specific reference that was allegedly
`
`disclaimed over. And if you take a look at
`
`Slide 92 here of Petitioner's Demonstratives.
`
` Here you see what -- that Patent Owner was
`
`arguing over a reference named Pope, which is
`
`fundamentally different than the prior argument in
`
`these proceedings. For example, Pope talks about
`
`a telephone handset that already stores the
`
`specific appliance codes. In Pope, those variety
`
`of appliance control codes are the actual codes
`
`that are used to control the appliances.
`
` But this is different from the prior art,
`
`like Mishra, which I just discussed, and like Rye,
`
`which I'm going to discuss a little bit later,
`
`which both disclose remote controls that do not
`
`store the specific key codes that control any
`
`device.
`
` Additionally here, you see that Pope
`
`discloses what you call a base unit, not a set-top
`
`box. And the base unit does not appear to store
`
`any type of specific key codes since Pope's
`
`telephone handset already has these codes. And
`
`this is also different from Mishra and Rye where
`
`the respective key code generator device --
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`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`
`devices do store the specific key codes that are
`
`used to control appliances.
`
` And, finally, Pope's system here talks
`
`about translating. And while it may appear that
`
`Pope is referring to translating a signal from one
`
`communication format, such as RF, to another
`
`format, such as IR, Pope is not entirely clear as
`
`to what it means when it uses the word translate.
`
`But this matters, because we all know that in
`
`patents the usage of terms and their meaning have
`
`to be looked at in conjunction with the operations
`
`that are being performed.
`
` If a reference uses the word translate or
`
`convert, like Rye uses, you cannot merely stop
`
`there and assume you know what it means. Instead,
`
`you need to continue reading and look at the
`
`remainder of the reference which will inform you
`
`of the actual meaning.
`
` And that -- that was Patent Owner's
`
`fundamental error when it analyzed the prior art
`
`like Mishra and Rye. They saw that, for example,
`
`Mishra used the word translate and they ignored
`
`the remainder of Mishra, which provided the
`
`meaning of what the term meant in the context of
`
`Mishra's system.
`
` Simply
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