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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 RESPONSE
`
`
`
`
`

`

`Case IPR2019-01614
`U.S. Patent 9,911,325
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page(s)
`
`LIST OF EXHIBITS .............................................................................................. VII
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 3
`
`A.
`
`B.
`
`C.
`
`Technology Background ....................................................................... 3
`
`U.S. Patent No. 9,911,325 (“the ’325 Patent”) ..................................... 4
`
`Prosecution History ............................................................................... 5
`
`D. Denial of IPR2014-01082 ..................................................................... 9
`
`E.
`
`Person of Ordinary Skill in the Art (“POSITA”) ................................10
`
`III. CLAIM CONSTRUCTION ..........................................................................11
`
`A.
`
`B.
`
`C.
`
`D.
`
`“key code” ...........................................................................................11
`
`“keystroke indicator” ...........................................................................12
`
`“key code signal” .................................................................................13
`
`“generate a key code using the keystroke indicator signal”................14
`
`IV. THE CITED GROUNDS DO NOT RENDER ANY CLAIMS
`UNPATENTABLE ........................................................................................15
`
`A. Ground 1: Rye in View of Skerlos Does Not Render Obvious
`Claims 1-3, 5, or 7 ...............................................................................15
`
`1.
`
`2.
`
`3.
`
`4.
`
`Overview of Rye .......................................................................16
`
`Overview of Skerlos .................................................................17
`
`A POSITA Would Not Have Combined Rye and Skerlos .......17
`
`Rye in view of Skerlos does not render obvious Claim 1 ........22
`
`a.
`
`Neither Rye nor Skerlos, alone or in combination,
`discloses, teaches, or suggests [1.3]: “a processing
`device coupled to the receiver and the transmitter;
`and” .................................................................................22
`
`i
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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`Neither Rye nor Skerlos, alone or in combination,
`discloses, teaches, or suggests [1.4]: “a memory
`storing instructions executable by the processing
`device, the instructions causing the processing
`device to” ........................................................................22
`
`Neither Rye nor Skerlos, alone or in combination,
`discloses, teaches, or suggests [1.4.1]: “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” ..............................24
`
`Neither Rye nor Skerlos, alone or in combination,
`discloses, teaches, or suggests [1.4.2]: “format the
`key code for transmission to the second device” ...........28
`
`Neither Rye nor Skerlos, alone or in combination,
`discloses, teaches, or suggests [1.4.3]: “transmit
`the formatted key code to the second device in a
`key code signal via the use of a transmitter” ..................31
`
`Neither Rye nor Skerlos, alone or in combination,
`discloses, teaches, or suggests [1.4.4]: “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” .......................................31
`
`Neither Rye nor Skerlos, alone or in combination,
`discloses, teaches, or suggests [1.4.5]: “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” ..............................32
`
`5.
`
`6.
`
`7.
`
`Rye in view of Skerlos does not render obvious Claim 2:
`“The first device as recited in claim 1, wherein the
`receiver comprises an RF receiver” ..........................................34
`
`Rye in view of Skerlos does not render obvious Claim 3:
`“The first device as recited in claim 1, wherein the
`transmitter comprises an IR transmitter” ..................................35
`
`Rye in view of Skerlos does not render obvious Claim 5:
`“The first device as recited in claim 1, wherein the
`formatted key code is transmitted from the first device to
`the second device via a wireless connection between the
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`U.S. Patent 9,911,325
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`first device and the second device” ...........................................35
`
`8.
`
`Rye in view of Skerlos does not render obvious Claim 7:
`“The first device as recited in claim 1, wherein the
`generated key code controls at least one of a power on,
`power off, volume up, and volume down functional
`operation of the second device” ................................................36
`
`B.
`
`Ground 2: Caris in View of Dubil Does Not Render Obvious
`Claims 1-5 ...........................................................................................36
`
`1.
`
`2.
`
`3.
`
`4.
`
`Overview of Caris .....................................................................36
`
`Overview of Dubil ....................................................................37
`
`A POSITA Would Not Have Combined Caris and Dubil ........39
`
`Caris in view of Dubil does not render obvious Claim 1 .........42
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`Neither Caris nor Dubil, alone or in combination,
`discloses, teaches, or suggests [1.3]: “a processing
`device coupled to the receiver and the transmitter;
`and” .................................................................................42
`
`Neither Caris nor Dubil, alone or in combination,
`discloses, teaches, or suggests [1.4]: “a memory
`storing instructions executable by the processing
`device, the instructions causing the processing
`device to” ........................................................................43
`
`Neither Caris nor Dubil, alone or in combination,
`discloses, teaches, or suggests [1.4.1]: “generate a
`key code using the 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” ......44
`
`Neither Caris nor Dubil, alone or in combination,
`discloses, teaches, or suggests [1.4.2]: “format the
`key code for transmission to the second device” ...........47
`
`Neither Caris nor Dubil, alone or in combination,
`discloses, teaches, or suggests [1.4.3]: “transmit
`the formatted key code to the second device in a
`key code signal via the use of a transmitter” ..................50
`
`Neither Caris nor Dubil, alone or in combination,
`discloses, teaches, or suggests [1.4.4]: “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,
`
`iii
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`

`

`Case IPR2019-01614
`U.S. Patent 9,911,325
`
`g.
`
`wherein each of the plurality of key code data
`stored in the codeset comprises a series of digital
`ones and/or digital zeros, and” .......................................51
`
`Neither Caris nor Dubil, alone or in combination,
`discloses, teaches, or suggests [1.4.5]: “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” ..............................53
`
`Caris in view of Dubil does not render obvious Claim 2:
`“The first device as recited in claim 1, wherein the
`receiver comprises an RF receiver” ..........................................54
`
`Caris in view of Dubil does not render obvious Claim 3:
`“The first device as recited in claim 1, wherein the
`transmitter comprises an IR transmitter” ..................................55
`
`Caris in view of Dubil does not render obvious Claim 4:
`“The first device as recited in claim 1, wherein the
`formatted key code is transmitted from the first device to
`the second device via a wired connection between the
`first device and the second device” ...........................................55
`
`Caris in view of Dubil does not render obvious Claim 5:
`“The first device as recited in claim 1, wherein the
`formatted key code is transmitted from the first device to
`the second device via a wireless connection between the
`first device and the second device” ...........................................55
`
`5.
`
`6.
`
`7.
`
`8.
`
`V.
`
`CONCLUSION ..............................................................................................56
`
`CERTIFICATION UNDER 37 C.F.R. § 42.24 .......................................................57
`
`CERTIFICATE OF SERVICE ................................................................................58
`
`
`
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`Case IPR2019-01614
`U.S. Patent 9,911,325
`
`
`FEDERAL CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`No. 2018-2140, 2019 U.S. App. LEXIS 32613 (Fed. Cir. Oct. 31,
`2019) ................................................................................................................... 56
`
`Ex Parte Creed Taylor,
`No. 2017-009744, 2018 Pat. App. LEXIS 6083, at *7-9 (P.T.A.B.
`Aug. 1, 2018) ................................................................................................ 35, 46
`
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .......................................................................... 19
`
`Knauf Insulation, Inc. v. Rockwool Int'l A/S,
`788 F. App’x 728 (Fed. Cir. 2019) ..................................................................... 46
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 19, 40
`
`Lucent Techs., Inc. v. Gateway, Inc.,
`580 F.3d 1301 (Fed. Cir. 2009) .......................................................................... 15
`
`Metalcraft of Mayville, Inc. v Toro,
`848 F.3d 1358 (Fed. Cir. 2017) .................................................................... 35, 46
`
`Microsoft Corp. v. Enfish, LLC,
`662 Fed. Appx 981 (Fed. Cir. 2016) ................................................................... 41
`
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ................................................................ 5, 11, 12
`
`Personal Web Techs. v. Apple Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................. 18, 29, 34, 39, 48, 51
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 11
`
`Polaris Indus. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) .......................................................................... 46
`
`v
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`

`

`Case IPR2019-01614
`U.S. Patent 9,911,325
`
`Puma NA, Inc. v. Nike, Inc.,
`IPR2019-01042, Paper 10 (P.T.A.B. Oct. 31, 2019) .......................................... 20
`
`Sanofi-Aventis Deutschland GMBH v. Mylan Pharms. Inc.,
`No. 2019-1368, 2019 U.S. App. LEXIS 34328 (Fed. Cir. Nov. 19,
`2019) ................................................................................................................... 56
`
`SpaceCo Business Solutions, Inc. v. Moscovitch,
`IPR2015-00127, Paper 16 (P.T.A.B. May 14, 2015) ......................................... 41
`
`Tec Air, Inc. v. Denso Mfg. Mich. Inc.,
`192 F.3d 1353 (Fed. Cir. 1999) .................................................................... 20, 40
`
`REGULATIONS
`
`37 C.F.R. § 42.100(b) .............................................................................................. 11
`
`
`
`vi
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`Case IPR2019-01614
`U.S. Patent 9,911,325
`
`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`EX2001
`
`EX2002
`
`
`EX2003
`
`EX2004
`
`EX2005
`
`EX2006
`
`EX2007
`
`EX2008
`
`EX2009
`
`EX2010
`
`EX2011
`
`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).
`Declaration of Dr. Michael D. Sprenger in support of Patent
`Owner’s Response to Petition for Inter Partes Review of U.S.
`Patent No. 9,911,325 (“Sprenger Decl.”)
`U.S. Patent. No. 5,963,624 to Pope (“Pope”)
`
`U.S. Patent No. 8,004,389 (“the ’389 Patent”)
`
`Prosecution History of U.S. Patent Application No. 13/068,820
`IPR2019-01612, EX1002, Prosecution History of U.S. Patent No.
`7,589,642
`IPR2019-01612, Transcript of Deposition of Dr. Russ, dated June
`17, 2020 (“Russ Depo Tr. (June 17, 2020)”)
`IPR2019-01613, Transcript of Deposition of Dr. Russ, dated June
`18, 2020 (“Russ Depo Tr. (June 18, 2020)”)
`Transcript of Deposition of Dr. Russ, dated June 19, 2020 (“Russ
`Depo Tr. (June 19, 2020)”)
`IPR2019-01612, EX1003, Declaration of Dr. Samuel H. Russ
`(“Russ Decl. 642 Patent”)
`
`
`
`
`
`
`
`vii
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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`Patent Owner Universal Electronics Inc. (“UEI”) respectfully submits this
`
`Response to the Board’s decision to institute Roku, Inc.’s (“Petitioner”) Petition
`
`for Inter Partes Review of Claims 1-5 and 7 of U.S. Patent No. 9,911,325 (“the
`
`’325 Patent”).
`
`I.
`
`Introduction
`
`UEI is a leading manufacturer of universal remote controls for electronic
`
`appliances, and as conceded by Petitioner’s expert Dr. Russ during his deposition,
`
`UEI was a major manufacture of remote controls in the mid-2000s when it
`
`invented the technology described in the ’325 Patent (EX2008 at 11:11-12:8). As
`
`also conceded by Dr. Russ, at the time of the invention of the ’325 Patent there
`
`were no other commercial remote control devices that included all the
`
`advancements described in the claims (EX2010 at 38:19-40:10). As a result, and
`
`rather than provide multiple references that together describe the relevant
`
`invention, Petitioner improperly relies on the claims of the ’325 Patent as a
`
`roadmap to cobble together unrelated and inadequate prior art references. Dr. Russ
`
`admitted that was his strategy (EX2009 at 40:6-12). In so doing, Petitioner repeats
`
`inadequate arguments that were rejected in prior IPRs involving related patents,
`
`ignores the extensive prosecution history, and ultimately fails to even assert that
`
`certain limitations are met, relying either on conclusory statements or ignoring the
`
`limitation all together.
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`1
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`

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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`For example, claim 1 of the ’325 patent requires “a memory storing
`
`instructions executable by the processing device, the instructions causing the
`
`processing device to: generate … format … and transmit.” For each of these
`
`limitations (i.e., generate, format, and transmit), and for both of the asserted
`
`Grounds, Petitioner and its expert fail to even assert that instructions on any
`
`memory (let alone instructions on any of the three memories identified in the
`
`Petition) cause the processing device to generate/format/transmit.
`
`Claim 1 also requires that that the “codeset further comprises time
`
`information.” But once again in both asserted Grounds, Petitioner provides
`
`absolutely no allegation that the alleged “codeset” comprises time information, and
`
`neither the Petition nor Dr. Russ provide any reasoning why a POSITA would
`
`specifically choose to have the codeset comprise timing information. There are
`
`many additional examples in Patent Owner’s response, but this represents a
`
`complete failure of proof as to these two limitations that cannot be remedied with
`
`any disclosure of the prior art references of the asserted grounds.
`
`Although the Board instituted review on both grounds of the Petition, the
`
`Board emphasized in multiple places that it credited the testimony of Petitioner’s
`
`expert over UEI’s attorney argument (e.g., Paper 7 at 23, 32, 34).
`
`In this Response, UEI submits additional evidence, including the declaration
`
`of Dr. Michael D. Sprenger and deposition testimony of Dr. Russ, to show that
`
`2
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`U.S. Patent 9,911,325
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`each of the references in the instituted grounds fails to disclose, either alone or in
`
`combination, every element of the challenged claims.
`
`II. Background
`
`A. Technology Background
`
`The ’325 Patent relates to UEI’s system and methods for relaying key code
`
`signals through a remote control device to operate an electronic consumer device
`
`(EX1001 at 1:19-21). A traditional remote control device controls only one
`
`electronic consumer device because it is programmed with specific key codes from
`
`a codeset associated with that particular electronic consumer device (id. at 1:34-
`
`42). Each key code corresponds to a function (e.g., power on, volume up, etc.) of
`
`the selected electronic consumer device (id.). Manufacturers sometimes use
`
`distinct codesets for different electronic devices, so that one remote control device
`
`does not unintentionally operate multiple or other electronic consumer devices (id.
`
`at 1:42-53). For example, if a user presses “power on” to the TV, it may be
`
`inconvenient if the stereo radio or compact disc player also simultaneously turned
`
`on (EX2003 at ¶ 48).
`
`However, rather than having multiple remote control devices, consumers
`
`may prefer to have a single remote control device that can operate multiple,
`
`different electronic consumer devices when desired (id. at 1:54-57). The ’325
`
`Patent presents such a single remote control device but without needing to store
`
`3
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`Case IPR2019-01614
`U.S. Patent 9,911,325
`
`multiple codesets in its memory (see id. at 1:57-2:3).
`
`B. U.S. Patent No. 9,911,325 (“the ’325 Patent”)
`
`On December 16, 2003, U.S. Patent Application No. 10/737,029 (“the ’029
`
`Application”) was filed (EX1001 at Cover). The ’029 Application issued as U.S.
`
`Patent No. 7,589,642 (“the ’642 Patent”), which is the subject of related IPR2019-
`
`01612. On August 4, 2009, U.S. Patent Application No. 12/462,526 (“the ’526
`
`Application”) was filed as a continuation of the ’029 Application (id.). The ’526
`
`Application issued as U.S. Patent No. 8,004,389 (“the ’389 Patent”), which is the
`
`subject of related IPR2019-01613. On May 21, 2011, U.S. Patent Application No.
`
`13/068,820 (“the ’820 Application”) was filed as a continuation of the ’526
`
`Application (id.). And on May 13, 2016, U.S. Patent Application No. 15/153,905
`
`(“the ’905 Application”) was filed as a continuation of the ’820 Application (id.).
`
`The ’905 Application issued as the ’325 Patent, entitled “Relaying Key Code
`
`Signals Through a Remote Control Device,” on March 6, 2018.
`
`The ’325 Patent solves the problem of having a single remote control device
`
`operate multiple electronic consumer devices without requiring the remote control
`
`device to store multiple codesets (see id. at 2:7-2:57). In particular, the invention
`
`of the ’325 Patent describes using a key code generator device to generate a key
`
`code from a codeset and then transmitting that key code on a carrier signal to a
`
`remote control device in a first embodiment or an electronic consumer device in a
`
`4
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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`second embodiment (see, e.g., id. at 2:7-38, 3:47-55, 5:59-62, 6:58-65). The
`
`challenged claims in this proceeding relate to the second embodiment.
`
`In the second embodiment, a user selects a key on a remote control device,
`
`which creates a keystroke indicator (EX1001 at 3:56-4:1). The keystroke indicator
`
`is sent from the remote control device to a key code generator device (id. at 4:1-3).
`
`The key code generator device uses the received keystroke indicator 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 then
`
`transmitted by the key code generator device to an electronic consumer device to
`
`control that consumer device (id. at 6:7-38).1
`
`C.
`
`Prosecution History
`
`The prosecution history of the ’325 Patent involved argument similar to that
`
`which occurred during the ’642 Patent prosecution history, which was extensive,
`
`and involved multiple office actions, responses, and an appeal (EX1002 at 85-86;
`
`see generally EX2007). Petitioner’s cursory review of the prosecution history fails
`
`to recognize that the Applicant made numerous statements, particularly during the
`
`prosecution of the ’642 Patent, describing the scope of particular terms that also
`
`
`1 The challenged claims of the ’325 Patent are related to the second embodiment
`
`but are not limited to the description of this embodiment.
`
`5
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`appear in the claims of the ’325 Patent (Petition at 6-7). Omega Eng’g, Inc. v.
`
`Raytek Corp., 334 F.3d 1314, 1327 (Fed. Cir. 2003).
`
`First, in distinguishing prior art, the Applicant differentiated the claimed
`
`invention from references that merely disclose translating or converting a signal
`
`that already includes the control code into another format, such as infrared. In
`
`particular, in response to rejection in view of U.S Patent No. 5,963,624 (“Pope”),
`
`the Applicant argued that in Pope, “the handset transmits a complete appliance
`
`control code (as opposed to a keystroke indicator) to the base station, and the base
`
`station then functions to simply transfer the received appliance control code to an
`
`appliance via use of an infrared signal” (EX1002 at 85 (emphasis in original)).
`
`The Applicant further explained that such disclosure “does not disclose, teach, or
`
`suggest the method for generating a key code as now claimed” (id. at 86). In
`
`response, the Patent Office issued a Notice of Allowance (id. at 92).
`
`This is consistent with the extensive prosecution of the ’642 Patent, where
`
`the Applicant repeatedly argued that “Pope does not receive a keystroke indicator
`
`and then generate a key code” because the “appliance control codes are not
`
`generated within the base unit 12 of Pope. Instead, the appliance control codes are
`
`transmitted from the handset 10/50 to the base unit 12, where they are translated
`
`into control signals” (EX2007 at 72 (emphasis added); EX2004 at 3:36-38 (“Base
`
`unit 12 also translates the appliance control code to control the appliance. For
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`Case IPR2019-01614
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`example, an appliance control code can be converted into an infrared control
`
`code”) (emphasis added)).
`
`Therefore, the Applicant made clear that a device that “receives the
`
`appliance control codes and then translates them into infrared control signals”
`
`cannot satisfy the claim limitation “generating a key code within a key code
`
`generator” because the key code is actually received rather than generated
`
`(EX2007 at 74). And because the key code is received by the device, there is also
`
`no “receiving a keystroke indicator signal,” which must be distinct from the key
`
`code signal (id. at 72-73). The Applicant repeated these distinctions throughout
`
`the prosecution history (id. at 117-118, 120, 237-238).
`
`Nevertheless, the Appeal Board maintained that Pope disclosed the claimed
`
`keystroke indicator signal under the broadest reasonable interpretation, which is
`
`not the current claim construction standard for IPRs (EX2007 at 311). In response,
`
`the Applicant amended the claim at issue to add “wherein the keystroke indicator
`
`signal indicates a key on said remote control device that a user has selected” and
`
`“using the keystroke indicator signal,” stating that the purpose was “explicitly to
`
`limit the scope of the term ‘keystroke indicator signal’” to exclude the broader
`
`interpretation used by the Appeal Board and Examiner and to narrow “the term
`
`‘keystroke indicator signal’ to mean an indication of a selected key while
`
`precluding a control code” (id. at 323).
`
`7
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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`Thus, during prosecution, the Applicant expressly disclaimed from the scope
`
`of “keystroke indicator (signal)” and “generate(s) a key code using the keystroke
`
`indicator (signal)” a device that receives a control code and merely translates or
`
`converts the code into another format, such as an infrared signal.
`
`Second, in distinguishing other prior art, the Applicant repeatedly
`
`differentiated the claimed invention from references that teach transmitting an
`
`entire codeset rather than a key code, as required by the claims. In particular, in
`
`response to rejection in view of U.S Patent No. 5,410,326 (“Goldstein”), the
`
`Applicant repeatedly argued that Goldstein did not teach “a key code generator
`
`because the cable television converter box of Goldstein receives complete codesets
`
`from a remote database and is loaded with complete codesets” (EX2007 at 121,
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`75). Additionally, the Applicant explained that “Claim 2 recites transmitting a key
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`code signal to the remote control device and does not recite transmitting a codeset
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`to the remote control device” (id. at 75-76 (emphasis added), 241-242). Although
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`the Appeal Board ultimately reversed the Examiner’s rejection on other grounds
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`(id. at 308), the Applicant expressly disclaimed that a key code signal can be an
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`entire codeset.
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`Third, during Appeal, the Examiner argued that it would have been obvious
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`to modulate the key code onto a carrier signal in view of a reference describing
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`modulation because it “represents a conventional practice of providing means for
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`wireless transmission from a remote control” (EX1002 at 263). However, the
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`Board rejected that merely describing modulation was enough to describe
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`modulating a key code onto a carrier signal (id. at 308).
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`Petitioner’s analysis fails to properly address any of these material
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`statements made by the Applicant during prosecution, and instead relies on the
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`very disclosures in its asserted prior art in each of the Grounds of its Petition that
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`the Applicant made clear are not within the scope of the claims. Petitioner’s
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`expert, Dr. Russ, also fails to properly consider these statements. Indeed, Dr. Russ
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`did not review or analyze the file history at all (EX1003 at 4-5; EX2010 at 32:7-
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`33:5, 73:7-12).
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`D. Denial of IPR2014-01082
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`Claims 2, 5, 22, and 23 of the related ’642 Patent were challenged in a
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`previous IPR, which was denied institution.
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`In that petition, “Petitioner argue[d] that [prior art] inherently discloses
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`modulating the key code onto a carrier signal because it discloses transmission of
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`the key code via an infrared link” (EX2007 at 374). In other words, that petitioner
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`and its expert asserted that “an IR signal necessarily requires modulation of the
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`code data on a carrier signal” (id.). But, the Board found that there was “no
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`support for [the expert’s] broad statements that transmission of codes requires
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`modulation onto a carrier signal” (id. at 376). Rather, the expert provided only
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`“conclusory statements” that were insufficient to satisfy petitioner’s burden (id.).
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`The current Petition does not address this previous decision or the Board’s
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`rationale, and instead makes the same mistake in assuming that modulating onto a
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`carrier signal is inherently required. That is, the current Petition misses that the
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`deficiency in the previous IPR was that it was missing why a POSITA would
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`modulate onto a carrier signal as opposed to missing the details of how to modulate
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`onto a carrier signal. As explained further below, the current Petition fails to
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`remedy this deficiency because it only provides the latter and not the former.
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`E.
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`Person of Ordinary Skill in the Art (“POSITA”)
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`A POSITA of the technology of the ’325 Patent, at the time of filing, would
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`have had a bachelor’s degree which involved computer programming coursework,
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`for example, electrical engineering, computer engineering, computer science,
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`cognitive science, mechanical engineering, industrial engineering, or a similar
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`degree, and at least one year of work experience in software programming, user
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`interfaces, or human factors. Additional education might substitute for some of the
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`experience, and substantial experience might substitute for some of the educational
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`background (POPR at 4).
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`Petitioner proposes that a POSITA would have had a bachelor’s degree in
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`electrical engineering or an equivalent degree with two years of work experience
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`relating to communications and consumer electronics (Petition at 8).
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`As explained by UEI’s expert witness, Dr. Sprenger, he analyzed the prior
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`art from the point of view of both definitions of POSITA, and the differences in
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`definitions did not affect the outcome of his analysis (EX2003 at ¶¶ 74-77).
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`III. Claim Construction
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`The claims are interpreted using the standard articulated in Phillips v. AWH
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`Corp., 415 F.3d 1303 (Fed. Cir. 2005). See 37 C.F.R. § 42.100(b). Under the
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`Phillips standard, claim terms are generally given their ordinary and customary
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`meaning as understood by a POSITA when read in the context of the specification
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`and prosecution history. Phillips, 415 F.3d at 1313. However, a claim term will
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`not receive its ordinary meaning if the patentee acted as his or her own
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`lexicographer and clearly set forth a definition of the disputed claim term in either
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`the specification or prosecution history. Id. at 1316. Similarly, if the intrinsic
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`evidence reveals an intentional disclaimer, or disavowal, of claim scope by the
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`inventor, the inventor has dictated the correct claim scope, and the inventor's
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`intention is regarded as dispositive. See id.; Omega Eng’g, Inc., 334 F.3d at 1327.
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`A.
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`“key code”
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`The parties agree that “key code” means “a code corresponding to the
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`function of an electronic device, optionally including timing information” (Paper 7
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`at 10). UEI agrees with the Board’s preliminary finding that this construction is
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`supported by the specification (id.). Petitioner does not argue otherwise (Petition
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`at 9). UEI proposes this construction for the remainder of this proceeding.
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`B.
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`“keystroke indicator”
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`The parties agree that “keystroke indicator” means “a signal, distinct from a
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`key code, corresponding to a pressed key [on a remote control]” (Paper 7 at 10-11).
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`UEI agrees with the Board’s preliminary finding that this construction is supported
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`by the specification (Paper 7 at 10-11). Petitioner does not argue otherwise
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`(Petition at 9). UEI proposes this construction for the remainder of this
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`proceeding.
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`Additionally, in view of the prosecution history described previously, UEI
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`clarifies that “distinct from a key code” means that the keystroke indicator cannot
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`contain the claimed key code, as defined in the patent and construed above. That
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`is, during prosecution, the Applicant repeatedly distinguished the keystroke
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`indicator signal from a signal that contains a key code (supra at II.C; EX2007 at
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`323 (“the term ‘keystroke indicator signal’ to mean an indication of a selected key
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`while precluding a control code . . . amending claim 1 explicitly to limit the scope
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`of the term”). This constitutes express disclaimer by the Applicant. Omega Eng’g,
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`Inc., 334 F.3d at 1327. This is also consistent with the plain and ordinary meaning
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`of “distinct from a key code,” as well as how the term is used in the specification
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`(e.g., EX1001 at 8:26-31 (“keystroke indicator signal 16 communicates this to key
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`code generator device 12. Key code