`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`Petitioner
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner
`____________________
`Case IPR2019-01614
`U.S. Patent No. 9,911,325
`____________________
`
`DECLARATION OF DR. SAMUEL H. RUSS IN SUPPORT OF
`PETITIONER ROKU, INC.’S REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Roku EX1030
`Roku v. Universal Electronics
`IPR2019-01614
`
`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION ....................................................................................... 1
`
`CLAIM CONSTRUCTION ......................................................................... 3
`
`A.
`
`B.
`
`“Key code signal” .............................................................................. 4
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`“Generate a key code using a keystroke indicator” ............................ 4
`
`THE GROUNDS PRESENTED IN MY PREVIOUS DECLARATION
`DISCLOSE ALL OF THE ELEMENTS OF THE CHALLENGED
`CLAIMS. ..................................................................................................... 8
`
`A.
`
`Ground 1: Rye in view of Skerlos ...................................................... 8
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Rye Discloses the Claimed “Processing Device” and “Memory”
`................................................................................................. 8
`
`Rye Discloses the Claimed “Generate a Key Code” ................12
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`Rye in View of Skerlos Renders Obvious the Claimed “Format
`the Key Code” ........................................................................17
`
`Rye Discloses the Claimed “Digital Ones and/or Digital Zeros”
`and a Codeset Comprising “Time Information” ......................21
`
`Rye Discloses Claim 2 ............................................................24
`
`B.
`
`Ground 2: Caris in view of Dubil ......................................................25
`
`1.
`
`2.
`
`3.
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`Caris Discloses the Claimed “Processing Device” and
`“Memory” ...............................................................................25
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`Caris Discloses the Claimed “Generate a Key Code” ..............27
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`Caris in View of Dubil Renders Obvious the Claimed “Format
`the Key Code” ........................................................................28
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
`Caris in View of Dubil Renders Obvious the Claimed “Digital
`Ones and/or Digital Zeros” and a Codeset Comprising “Time
`Information” ...........................................................................30
`
`Caris Discloses Claim 2 ..........................................................32
`
`4.
`
`5.
`
`IV.
`
`THE PETITION HAS DEMONSTRATED A MOTIVATION TO
`COMBINE THE ASSERTED PRIOR ART REFERENCES. .....................32
`
`A.
`
`B.
`
`Ground 1 - A POSA Would Have Been Motivated to Combine Rye
`and Skerlos .......................................................................................32
`
`Ground 2 - A POSA Would Have Been Motivated to Combine Caris
`and Dubil ..........................................................................................37
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`V.
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`CONCLUSION...........................................................................................39
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`I.
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
`
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`I, Dr. Samuel H. Russ, declare as follows:
`INTRODUCTION
`I am the same Dr. Samuel H. Russ who submitted a prior declaration
`1.
`
`(EX1003) in this matter, which I understand was filed on September 18, 2019. I
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`have been retained on behalf of Roku, Inc. for the above-captioned inter partes
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`review proceeding.
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`2.
`
`I understand that the Patent Owner has submitted a response in this
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`case. I also understand that the Patent Owner’s expert witness, Dr. Michael D.
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`Sprenger, has submitted a declaration in support of Patent Owner’s response. I
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`have been asked to provide my technical review, analysis, and insight regarding
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`both the Patent Owner’s response and Dr. Sprenger’s declaration in support
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`thereof.
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`3. My background and qualifications were provided in paragraphs 3-10
`
`of my previous declaration, and my CV was provided as EX1004. My statements
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`in paragraphs 11 and 26-36 of my prior declaration regarding my review of U.S.
`
`Patent No. 9,911,325 (“’325 patent”) and related materials remain unchanged, as
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`do my understandings of the relevant legal principles stated in paragraphs 12-25.
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`4.
`
`Since my prior declaration, I have reviewed and considered the
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`following additional materials:
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
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`Paper
`7
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`Description
`Decision Granting Institution
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`15
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`Patent Owner’s Response
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`Exhibit
`1031
`
`Description
`Deposition Transcript of Michael D. Sprenger, taken
`September 15, 2020 (IPR2019-01612).
`
`1032
`
`1033
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`1036
`
`2003
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`2007
`
`Deposition Transcript of Michael D. Sprenger, taken
`September 16, 2020 (IPR2019-01613).
`
`Deposition Transcript of Michael D. Sprenger, taken
`September 16, 2020 (IPR2019-01614).
`
`Decision Granting Institution of Inter Partes Review,
`Paper 12 (IPR2019-01613), April 1, 2020.
`
`Declaration of Michael D. Sprenger in Support of Patent
`Owner’s Response to Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
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`Prosecution History of U.S. Patent No. 7,589,642
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`5.
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`I have also considered all other materials cited herein. My work on
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`this case is being billed at my normal hourly rate, with reimbursement for actual
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`expenses. My compensation is not contingent upon the outcome of this inter partes
`
`review proceeding.
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`6.
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`In his declaration, Dr. Sprenger makes several statements regarding
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`the ’325 patent, the prior art references, and the relevant technology at issue in this
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
`proceeding which I believe to be inaccurate and misleading. My responses to these
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`statements are detailed below.
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`II.
`
`CLAIM CONSTRUCTION
`I first turn to the area of claim construction. In my opening
`7.
`
`declaration, submitted in support of the Petition for inter partes review directed to
`
`the ’325 patent, I set forth my understanding of claim construction—namely that,
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`during an inter partes review, claims are to be construed in light of the
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`specification as would be read by a person of ordinary skill in the relevant art at the
`
`time the application was filed, and that claim terms are given their ordinary and
`
`customary meaning as would be understood by a person of ordinary skill in the
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`relevant art in the context of the entire disclosure. I also acknowledged the claim
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`constructions set forth in the Markman order submitted as EX1010. See EX1003,
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`First Russ Decl., ¶¶19-23.
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`8.
`
`Upon reviewing UEI’s Patent Owner Response (POR) and Dr.
`
`Sprenger’s declaration, UEI and Dr. Sprenger appear to add additional limitations
`
`to several of the claim elements. I believe, however, that both UEI and Dr.
`
`Sprenger propose claim constructions that violate certain well-established claim
`
`construction principles by improperly interpreting the scope of several claim
`
`limitations of the ’325 patent. I address these claim terms below.
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
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`A.
`9.
`
`“Key code signal”
`Dr. Sprenger appears to agree with the Board’s construction of “a
`
`signal containing a modulated key code” but adds that “a signal containing a
`
`modulated key code” does not transmit an entire codeset. EX2003, ¶¶115-22. I
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`disagree with this additional limitation. A POSA reviewing this claim term would
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`have understood it to plainly mean “a signal containing a modulated key code” as
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`the District Court and as I discussed in my previous declaration. EX1003, ¶23.
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`Because Dr. Sprenger’s construction improperly adds additional limitations that
`
`extend beyond the plain meaning of the term, the Board should not adopt UEI’s
`
`construction.
`
`B.
`10.
`
`“Generate a key code using a keystroke indicator”
`I understand that UEI and Dr. Sprenger propose construing this term
`
`to mean “its plain and ordinary meaning, except that it excludes receiving an
`
`appliance control code and merely translating or converting the code into another
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`format, such as an infrared signal.” POR, 14-15; EX2003, ¶¶123-26. While UEI
`
`and Dr. Sprenger frame this claim construction as the “plain and ordinary
`
`meaning,” these additional limitations are not the plain and ordinary meaning. In
`
`particular, these exclusions improperly add more requirements beyond the plain
`
`and ordinary meaning of this term. The Board should therefore not adopt UEI’s
`
`overly narrow construction.
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
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`11. To illustrate why this construction is improperly narrow, it is helpful
`
`to examine UEI and Dr. Sprenger’s own analysis of how the ’325 patent operates.
`
`Based on the overview provided, both UEI and Dr. Sprenger demonstrate that
`
`excluding a translation or conversion of a received appliance control code would
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`exclude one of the primary embodiments of the ’325 patent. See, e.g., POR, 4-5;
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`EX2003, ¶¶67-70, 145, 162. For example, Dr. Sprenger relies on the figure below
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`to illustrate the operation of the ’325 patent and claim 1. See, e.g., EX2003, ¶¶67-
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`70, 145, 162; see also POR, 4-5.
`
`12.
`
`I understand that during his deposition, Dr. Sprenger provided an
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`analysis of a similar figure to explain the operation of the first and second
`
`embodiments of the ’325 patent. EX1031, 175:14-176:10, 177:16-178:18, 180:8-
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`17; EX2003, ¶¶68, 70. With reference to this figure, Dr. Sprenger explained that
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`Declaration of Dr. Samuel H. Russ
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`U.S. Patent No. 9,911,325
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`the ’325 patent’s STB receives a binary control code (i.e., “11111010”) and uses
`
`this binary control code to identify a key code from the depicted look-up table:
`
`[Q:] So for the remote control, when it transmits the keystroke
`indicator signal, that signal carries this binary code that you have
`depicted here; is that fair to say?
`[A:] Yeah, in a broad sense, we can see that it carries that, or it carries
`information that ultimately represents a binary code that helps the key
`code generator device identify which key has been pressed and also
`enables the key code generator device to identify the fact that a key
`just has been pressed.
`
`EX1031, 175:14-176:10.
`
`[Q:] To generate the key code, does [the STB] use this table that
`you’ve depicted here?
`[A:] . . . To your question, the key code generator device looks to this
`table or an equivalent one that it has stored and basically generates a
`new code that is destined for the target consumer electronics device.
`[Q:] And one way to implement this would be a lookup table; is that
`right?
`[A:] That’s one way to implement it. There may be others.
`
`EX1031, 177:16-178:18.
`
`[A:] So the key code generator device generates a new code. And one
`example is it performs a lookup operation.
`
`EX1031, 180:8-17.
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
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`In view of Dr. Sprenger’s characterizations of the ’325 patent, the
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`13.
`
`STB translates or converts the received binary control code into a key code for
`
`transmission by looking up the corresponding key code in a look-up table. Based
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`on this understanding, the claimed “generating” must be broad enough to
`
`encompass this embodiment. See EX1031, 175:14-176:10, 177:16-178:18, 180:8-
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`17. The construction proposed by Dr. Sprenger and UEI, however, contradicts this
`
`understanding. Specifically, the portion of the construction that “excludes
`
`receiving an appliance control code and merely translating or converting the code
`
`into another format” appears to exclude the binary control code depicted in Dr.
`
`Sprenger’s figure. Therefore, the Board should not apply UEI’s construction
`
`because it excludes a major embodiment of the ’325 patent.
`
`14. While a POSA would not have interpreted the “generating” claim
`
`term using Dr. Sprenger’s narrow construction, the instituted grounds still render
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`obvious the challenged claims even under this construction as I further explain
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`below in Sections III.A.2, III.B.2.
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`Declaration of Dr. Samuel H. Russ
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`U.S. Patent No. 9,911,325
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`III. THE GROUNDS PRESENTED IN MY PREVIOUS DECLARATION
`DISCLOSE ALL OF THE ELEMENTS OF THE CHALLENGED
`CLAIMS.
`A. Ground 1: Rye in view of Skerlos
`1. Rye Discloses the Claimed “Processing Device” and
`“Memory”
`15. UEI argues that Rye does not disclose the “generate a key code,”
`
`“format the key code,” or “transmit the formatted key code” limitations and
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`therefore does not disclose the claimed “processing device.” POR, 22. But UEI
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`mischaracterizes the combination presented in the Petition and in my previous
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`declaration. See Pet., 16-26; EX1003, ¶¶104-56. As will be discussed in the
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`following sections, Rye in view of Skerlos renders obvious all of the claimed
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`functional limitations, which are performed using the processors disclosed in Rye.
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`See Sections III.A.2-4; EX1003, ¶¶126-56. Rye, however, explicitly discloses the
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`“processing device” structure as explained in the Petition. See Pet., 16-19.
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`Specifically, IR processor 42 identifies a corresponding control code (i.e., a key
`
`code) corresponding to the device to be controlled (i.e., the second device) from a
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`code lookup table. EX1005, ¶24. The determined key code is then output from IR
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`processor 42 to IR emitter 48. Id., ¶25. Thus, Rye discloses the claimed
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`“processing device.” EX1003, ¶¶116-18.
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
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`EX1005, FIG. 3 (annotated).
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`16. UEI also argues that Rye does not disclose the claimed “memory.”
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`POR, 22-24. But as explained in the Petition and in my previous declaration, Rye
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`discloses memory that instructs Rye’s processors to perform the claimed algorithm.
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`Pet., 18-19; EX1003, ¶¶119-25. Figure 3 from Rye also depicts this memory.
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`EX1005, FIG. 3 (annotated).
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
`In view of this disclosure, a POSA would have found it obvious for
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`17.
`
`Rye to include the claimed “memory.” As I explained in my previous declaration,
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`it was well-known prior to the ’325 patent to use memory in devices such as
`
`transceivers or set-top boxes used to communicate with or transmit key codes to
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`audiovisual devices. EX1003, ¶¶119-25. For example, Figure 2 from the Bayley
`
`reference depicts a well-known memory device including a database as well as an
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`OS (operating system), volume control application, and driver for operating
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`volume controls. EX1018, 6:41-48; see also id., 1:56-58, FIG. 2.
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`EX1018, FIG. 2.
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
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`“The memory system 230 may include any one or combination of
`
`18.
`
`volatile memory elements (e.g., random access memory (RAM), dynamic RAM
`
`(DRAM), static RAM (SRAM), synchronous DRAM (SDRAM), magnetic RAM
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`(MRAM), etc.) and nonvolatile memory elements (e.g., read only memory (ROM),
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`hard drive, tape, compact disk ROM (CD-ROM), etc.).” EX1018, 3:40-46. Further,
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`Bayley explains that “OS 231 controls the execution of other software and
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`provides management and control services including, for example, scheduling,
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`input-output control, file and data management, memory management, and
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`communication control, among others.” Id., 3:64-4:1. “When the DHCT [STB] is
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`in operation, the processor 224 is configured to execute software stored within
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`the memory system 230, to communicate data to and from the memory system
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`230, and to generally control operations of the DHCT [STB] 200 pursuant to the
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`software.” Id., 3:31-39 (emphasis added).
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`19. As seen from this description, it was well known to use memory to
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`include instructions to facilitate the operations of a processing device. I understand
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`that Dr. Sprenger also acknowledged that a POSA would have found it obvious to
`
`interface memory with a processing device to actually program it to function:
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`[Q:] So microcontrollers having [Read-Only Memory] ROM []
`existed in the market before 2003, right?
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
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`[A:] Microcontrollers with existing ROM on chip were just some of
`the microcontrollers that existed at the time. But to your question, yes,
`such microcontrollers existed.”
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`EX1031, 215:22-216:5; see also EX1031, 214:6-7 (“You would, of course, also
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`have to write software that the microcontroller would run.”).
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`20. Thus, Dr. Sprenger confirms that it would have been obvious to
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`implement “memory storing instructions executable” with a processing device.
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`EX1003, ¶¶119-25.
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`2. Rye Discloses the Claimed “Generate a Key Code”
`21. UEI argues that Rye does not disclose this claim element because the
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`“binary control code” transmitted from Rye’s remote control does not correspond
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`to the “keystroke indicator.” POR, 25. UEI argues that Rye’s remote control sends
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`“binary control codes” which are already “key codes.” Id. But this mischaracterizes
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`Rye’s operation and does not address Rye’s teachings as indicated in the Petition
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`and my previous declaration. See Pet., 19-21; EX1003, ¶¶126-32. In particular,
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`UEI incorrectly analyzes Rye’s teachings and does not address Rye’s teaching that
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`its remote control generates a keystroke indicator signal that does not include the
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`claimed “key code.” See EX1005, ¶¶16, 22, 24; Pet., 19-21. As I explained in by
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`previous declaration, Rye’s transceiver generates a key code after receiving the
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`binary control code from the remote control. EX1003, ¶¶126-32.
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
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`22. Both UEI and by Dr. Sprenger acknowledge that Rye describes its
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`remote control transmitting a binary control code that is “not specific for any
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`particular brand or model of audiovisual product.” EX1005, ¶¶16, 22; POR, 16, 25;
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`EX1031, 232:16-233:3, 238:12-240:17. This characterization directly corresponds
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`to the ’325 patent’s use of “a standardized codeset or through proprietary
`
`identification codes.” EX1001, 4:35-37, 6:66-7:2. Based on this description, a
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`POSA would have understood that Rye’s binary control codes are not key codes
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`because they cannot directly control a target audiovisual product. As explained in
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`the ’325 patent:
`
`Multiple electronic consumer devices may have the same key data for
`a particular function, for example, the power-on function. A key code,
`however, also contains a system code (see FIG. 3) that corresponds
`to a particular type of electronic consumer device. For example, the
`system code used for a television set will typically be different than
`the system code used for a video cassette recorder. Thus, different
`device types that use the same key data for the power-on function will
`not respond to a key code containing an incorrect system code.
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`EX1001, 8:3-12.
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`23. As Dr. Sprenger acknowledges, a key code includes both a “system
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`code” that addresses a specific target device and “key data” representing the
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`command. EX1001, FIG. 3; EX1031, 59:2-6, 62:21-63:2.
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`Declaration of Dr. Samuel H. Russ
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`EX1001, FIG. 3
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`24. Based on this understanding, the ’325 patent explains that a key code
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`is specific to a particular electronic consumer device. Dr. Sprenger explained that a
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`key code would not be complete without the “system code” or “address bits” that
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`specify the target device to be controlled. EX1031, 56:13-57:2. Because Rye’s
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`binary control code does not address a specific “audiovisual product,” Rye’s binary
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`control code is not a key code. EX1005, ¶¶16, 22. Thus, the transmission of Rye’s
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`binary control code does not include a key code, and therefore discloses the
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`claimed “keystroke indicator signal.”
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`25. To further illustrate that the binary control code differs from a key
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`code, Rye further describes its transceiver separately identifying a specific “control
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`code” from the look-up table 46 and IR code library 44. EX1005, ¶¶23-24. The
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`“remote control codes stored in memory 46 [] are derived from code library
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`memory 44.” Id., ¶24. “Memory 44 contains the remote control codes for all
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`brands, e.g., Sony and Zenith, and models of commercially available audiovisual
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`Declaration of Dr. Samuel H. Russ
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`components.” Id. These “remote control codes” are the claimed “key code.” Pet.,
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`19-21; EX1003, ¶¶126-32. Similar to the ’325 patent, Rye’s binary control codes
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`are different and are instead used to identify the corresponding key code. I
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`understand that Dr. Sprenger also acknowledged that Rye describes its IR
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`processor 42 performing a lookup operation and selecting a particular remote
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`control code (e.g., “VCR-Play”) from IR code library 44 after receiving a binary
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`control code from the remote control. See EX1005, ¶27; EX1031, 232:16-233:3,
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`238:12-240:17.
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`[Q:] So that process that we’re looking at in [paragraph 27] is looking
`up the specific binary code for VCR play; is that correct?
`[A:] IR processor 42 looks up a code in the code library 44 for the
`user’s particular brand of VCR; that’s correct.
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`EX1031, 240:11-17.
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`26. This operation further confirms that the remote control does not
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`already transmit the key code because Rye looks up the key code in code library
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`44. See EX1005, ¶27. This process discloses “generating” the key code. Thus, the
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`signal containing the binary control code transmitted by Rye’s remote control
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`discloses the claimed “keystroke indicator signal,” which is received by Rye’s
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`transceiver.
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`27. UEI additionally argues that Rye does not disclose “generating a key
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`code” because UEI incorrectly assumes that Rye’s remote control transmits a key
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`Declaration of Dr. Samuel H. Russ
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`code. POR, 24-26. But as I previously explained, this is not Rye’s operation. See
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`EX1005, ¶27.
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`28. UEI further argues that Rye converts an input signal into an IR signal.
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`POR, 26-27. This characterization, however, ignores Rye’s teaching of looking up
`
`and selecting a specific control code in IR code library 44. See id. This is the same
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`embodiment contemplated by the ’325 patent, as admitted by Dr. Sprenger. POR,
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`25-27; EX1005, ¶27; EX1031, 232:16-233:3, 238:12-240:17; EX2003, ¶¶69-70.
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`The process of identifying a particular remote control code (e.g., “VCR-Play”)
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`from IR code library 44 discloses the claimed “generating” for the reasons I
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`previously discussed. EX1005, ¶¶27, 38. Dr. Sprenger even acknowledges that Rye
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`identifies a specific control code rather than performing a mere translation as UEI
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`alleges. See EX1031, 232:16-233:3, 238:12-240:17. Thus, Rye discloses
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`“generating a key code.”
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`29. UEI also argues that Rye’s “binary coded control signal” does not
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`include “data” indicating that a particular key has been pressed. POR, 27. But Rye
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`explains that its “binary control codes” (i.e., “data”) are transmitted on the “binary
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`coded signal generated by the microprocessor 20, in response to the user operation
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`of one of the pushbuttons 14.” EX1005, ¶22; Pet., 20-21. Thus, Rye’s binary
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`control codes included in its binary coded signal disclose the claimed “data.”
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`EX1003, ¶¶126-32.
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
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`3. Rye in View of Skerlos Renders Obvious the Claimed
`“Format the Key Code”
`30. UEI argues that Rye is limited to converting an input signal into a
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`format compatible with an IR code. POR, 28. But UEI selectively quotes Rye and
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`again does not address Rye’s description that the “control code for ‘VCR-Play’ is
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`selected in IR processor 42 and is then applied to IR emitter 48 to, in turn, cause
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`LED 50 to transmit [the control signal] to the addressed or selected VCR . . . .”
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`EX1005, ¶27. As seen from this explanation, Rye does not simply convert the
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`format of a signal. Rather, as I previously explained, Rye performs an active
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`selection of a key code and wirelessly transmits this selected key code using IR
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`emitter 48. EX1005, ¶¶27, 38. I note that Dr. Sprenger also confirmed that this is
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`how Rye operates. See EX1031, 232:16-233:3, 238:12-240:17. Therefore, UEI’s
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`discussion about converting signals does not address the analysis of the “format”
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`claim element in view of the combination of Rye and Skerlos.
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`31. UEI then suggests an inherency argument even though the Petition
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`and my previous declaration analyzes Rye and Skerlos under the obviousness
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`standard. POR, 28-29; EX1003, ¶¶133-42. As I explained in my previous
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`declaration and as Dr. Sprenger admits in his declaration, using modulation to
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`wirelessly transmit a key code was a well-known and often used technique: See,
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`e.g., EX1003, ¶¶133-42; EX2003, ¶¶49-54. Dr. Sprenger also confirmed this
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`understanding during his deposition, stating that the “’642 patent did not invent the
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`Declaration of Dr. Samuel H. Russ
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`U.S. Patent No. 9,911,325
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`very concept of modulation. The modulation concept has been known prior to that
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`in various forms of modulation. There are many ways to modulate signals.”
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`EX1031, 54:10-55:3.
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`32. Further, Dr. Sprenger also acknowledges in the Background section of
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`his declaration that a POSA would have been motivated to use a modulation
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`technique to avoid interference. EX2003, ¶¶50-51, 132. For example, Dr. Sprenger
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`explains that:
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`When deciding whether to modulate data for transmission, and if so
`what type of modulation to use, engineers must consider the cost and
`complexity of each approach as compared to the requirements of the
`desired application. . . . Modulation increases the cost and complexity,
`but may end up ultimately being more effective due to the increased
`interference. And modulation using an
`resiliency
`to signal
`intermediate carrier frequency may increase the cost and complexity
`further, but may provide more signal reliability suitable for a
`particular application.
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`EX2003, ¶51.
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`33. As seen from the explanation, Dr. Sprenger acknowledges that the
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`benefits of modulation were well known. A POSA would have understood and
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`recognized the benefits of modulation and would have found it obvious to
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`implement modulation to transmit a key code. Dr. Sprenger further confirms that
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 9,911,325
`this was well-known before 2003 and the filing date of the ’642 patent (from which
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`the ’325 patent claims priority):
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`[Q:] But the benefits of modulation were well known before 2003 as
`well, right?
`[A:] I think that’s a fair statement
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`EX1031, 106:14-16; see also EX1031, 105:14-106:12.
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`34.
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`In both his declaration and deposition, Dr. Sprenger acknowledges
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`that transmission of a key code via modulation onto a carrier signal was well-
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`known in the art and was an obvious design choice for an engineer. See EX2003,
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`¶¶49-54; EX1031, 54:10-55:3. Dr. Sprenger acknowledges that “[e]ngineering is
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`often about dealing with tradeoffs and there is usually no right or wrong when it
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`comes to the selection of certain technologies.” EX2003, ¶50. As Dr. Sprenger
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`admits here, engineers would also have found it obvious to consider modulation as
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`a design choice. EX2003, ¶¶50-51.
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`35. While Dr. Sprenger suggests that “unmodulated” techniques exist for
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`transmitting RF or IR signals, Dr. Sprenger admits that his sole example of an
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`“unmodulated” technique is sometimes characterized as a “modulation” technique
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`as well. See EX2003, ¶¶49-54; EX1031, 135:12-21. In view of Dr. Sprenger’s
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`inconsistency, Dr. Sprenger contradicts himself. Even if “unmodulated” techniques
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`existed, Dr. Sprenger’s statements do not refute the understanding that using a
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`modulation technique was well known and obvious. What Dr. Sprenger has already
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`Declaration of Dr. Samuel H. Russ
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`U.S. Patent No. 9,911,325
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`admitted is that modulation techniques were well known and commonly used by
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`POSAs. EX2003, ¶¶50-51. An alleged distinction between modulated or
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`unmodulated techniques still does not refute the Dr. Sprenger’s admission that
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`modulation techniques were obvious to use. Id. This is the same standard for
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`obviousness that I applied to analyzing the combination of Rye and Skerlos in my
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`previous declaration. EX1003, ¶¶104-11, 133-42. Rather than addressing the
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`obviousness positions presented in my previous declaration, the Petition, and Dr.
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`Sprenger’s declaration, UEI instead mischaracterizes these positions and argues
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`against inherency. POR, 28-29. Inherency, however, is not the correct standard as
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`the Board has instituted all grounds based on obviousness. DI, 8, 35.
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`36. UEI then repeats its motivation to combine arguments related to Rye
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`and Skerlos. POR, 29-31. I more thoroughly address these arguments in Section
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`IV.A, but UEI essentially mischaracterizes the combination of Rye and Skerlos.
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`See id. As explained in the Petition and in my previous declaration, Rye already
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`describes the wireless transmission of key codes from its IR emitter 48 to an
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`electronic consumer device. EX1005, ¶¶25, 27. Skerlos provides the operational
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`details for how this wireless transmission would occur. Pet., 22-26; EX1003,
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`¶¶104-11, 133-42. Specifically, Skerlos describes using “pulse code modulation
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`(PCM)” to modulate the key code onto a carrier signal. Pet., 24-26; EX1003,
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`¶¶104-11, 133-42. Like the ’325 patent, Skerlos teaches the same formatting of a
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`Declaration of Dr. Samuel H. Russ
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`U.S. Patent No. 9,911,325
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`key code by modulating the key code onto a carrier signal. Pet., 25-26. Again, Dr.
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`Sprenger admits that this modulation was well known in the art and often used to
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`wirelessly transmit key code. See EX2003, ¶¶49-54; EX1031, 117:21-118:7,
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`119:9-18, 121:3-18, 123:8-19. Even through UEI mischaracterizes how the Petition
`
`and my previous declaration combine Rye and Skerlos, the combination of Rye
`
`and Skerlos still renders obvious the claimed “format the key code for transmission
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`to the second device.”
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`4. Rye Discloses the Claimed “Digital Ones and/or
`Digital Zeros” and a Codeset Comprising “Time
`Information”
`37. UEI argues that Rye does not disclose “digital ones and/or digital
`
`zeros” because Rye’s disclosure of a binary number is insufficient. POR, 31-32.
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`UEI continues by arguing that “a digital one and digital zero means that there is a
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`more complex pattern than simply a one is on and a zero is off.” POR, 32. But UEI
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`ignores the plain language of the claim as well as the ’325 patent’s specification.
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`First, as written in claim 1, digital ones and/or digital zeros refers to “key code
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`data.” That is, the claim recites “key code data stored in the codeset comprises a
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`series of digital ones and/or digital zeros.” As seen from FIG. 3 of the ’325 patent,
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`this means that a binary number is sufficient.
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`38. The specification further underscores this understanding with
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`reference to FIG. 4 and FIG. 5. For example, the ’325 patent describes FIG. 4 and
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`Declaration of Dr. Samuel H. Russ
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`U.S. Patent No. 9,911,325
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`FIG. 5 as transmitting a “stream of digital values 010100011100.” EX1001, 4:63-
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`5:1. For Figure 4, “[a]n intermediary signal is transmitted over the first carrier
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`signal at an intermediary frequency (for example, 100 kHz) to communicate a
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`digital one. The absence of the intermediary signal indicates a digital zero.”
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`EX1001, 5:15-18. In this manner, the ’325 patent also includes turning a signal on
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`or off to represent a digital one or digital zero. Therefore, the term does not have
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`additional complexity as UEI proposes.
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`39. Further, Dr. Sprenger even contradicts UEI’s argument and
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`acknowledges that the ’325 patent refers to a binary number when describing
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`digital one and zeros. EX1033, 32:3-19. As I explained in my previous declaration,
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`Rye explains that the key codes stored in code library 44 are used to generate
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`“binary coded infrared (IR) signals.” EX1005, ¶¶23, 25, 27; EX1003, ¶¶144-48. A
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`POSA would have understood that these “binary” signals would include a binary
`