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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 SUR-REPLY
`
`
`
`
`

`

`Case IPR2019-01614
`U.S. Patent 9,911,325
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page(s)
`
`UPDATED LIST OF EXHIBITS ............................................................................III
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 2
`
`A.
`
`B.
`
`“key code signal” ................................................................................... 2
`
`“generate a key code using the keystroke indicator signal”.................. 3
`
`III. THE CITED GROUNDS DO NOT RENDER ANY CLAIMS
`UNPATENTABLE .......................................................................................... 4
`
`A. Ground 1: Rye in View of Skerlos Does Not Render Obvious
`Claims 1-3, 5, or 7 ................................................................................. 4
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Rye Does Not Disclose the Claimed “Processing Device”
`and “Memory” ............................................................................. 4
`
`Rye Does Not Disclose the Claimed “Generate a Key
`Code Using a Keystroke Indicator” ............................................ 5
`
`Rye in View of Skerlos Does Not Render Obvious the
`Claimed “Format the Key Code” ................................................ 7
`
`Rye Does Not Disclose the Claimed “Digital Ones and/or
`Digital Zeros” or a Codeset Comprising “Time
`Information” ................................................................................ 9
`
`Rye in View of Skerlos Does Not Render Claim 2
`Obvious .....................................................................................10
`
`B.
`
`Ground 2: Caris in view of Dubil ........................................................11
`
`1.
`
`2.
`
`3.
`
`4.
`
`Caris Does Not Disclose the Claimed “Processing
`Device” and “Memory” ............................................................11
`
`Caris Does Not Disclose “Generate a Key Code” ....................12
`
`Caris in View of Dubil Does Not Render Obvious the
`Claimed “Format the Key Code” ..............................................14
`
`Caris in view of Dubil Does Not Render Obvious the
`Claimed “Digital Ones and/or Digital Zeros” and a
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`U.S. Patent 9,911,325
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`Codeset Comprising “Time Information” .................................15
`
`5.
`
`Caris in View of Dubil Does Not Render Claim 2
`Obvious .....................................................................................17
`
`IV. THE PETITIONER FAILED TO DEMONSTRATE A
`MOTIVATION TO COMBINE ....................................................................17
`
`A. Ground 1 – A POSITA Would Not Have Been Motivated to
`Combine Rye and Skerlos. ..................................................................19
`
`B.
`
`Ground 2 - A POSITA Would Not Have Combined Caris and
`Dubil ....................................................................................................21
`
`V.
`
`RESPONSE TO SECTION ON DR. SPRENGER’S TESTIMONY ...........22
`
`VI. CONCLUSION ..............................................................................................22
`
`CERTIFICATION UNDER 37 C.F.R. § 42.24 .......................................................24
`
`CERTIFICATE OF SERVICE ................................................................................25
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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`UPDATED LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`EX2001
`
`EX2002
`
`
`EX2003
`
`EX2004
`
`EX2005
`
`EX2006
`
`EX2007
`
`EX2008
`
`EX2009
`
`EX2010
`
`EX2011
`
`EX2012
`
`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”)
`August 19, 2020 Transcript, Certain Electronic Devices, Including
`Streaming Players, Televisions, Set Top Boxes, Remote Controllers,
`and Components Thereof, ITC Inv. 337-TA-1200
`
`
`
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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`I.
`
`Introduction
`
`To support its obviousness positions, Petitioner actively ignores the file
`
`history and claim language that showing that the plain and ordinary meaning of
`
`certain claim terms is narrower than Petitioner would like them to be. After
`
`expanding the meaning of these claim terms, Petitioner then uses the ’325 Patent as
`
`a roadmap to cobble together various references to attempt to show the limitations
`
`present in the ’325 Patent claims. Petitioner asserts, without support, that
`
`modulating onto a carrier signal is required, and then, using only hindsight,
`
`combines disparate references, some of which happen to mention modulation.
`
`However, Petitioner ignores that its expert, Dr. Russ, admitted that modulating
`
`information onto a carrier signal would not have been required to transmit
`
`information, that modulating onto a carrier signal was but one protocol that was
`
`available, and that a POSITA would have needed to consider whether modulation
`
`onto a carrier signal (or even modulating at all) was desirable given the increased
`
`cost and complexity of the resulting system—an analysis which he did not
`
`perform. Meanwhile, the primary references cited by Petitioner teach reducing cost
`
`and complexity, which Dr. Russ emphasized at this deposition and which
`
`Petitioner fails to address in its Reply.
`
`Recognizing these weaknesses in its arguments, Petitioner offers a slew of
`
`new arguments in its Reply that were not presented in the Petition. Due to the
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`clear deficiencies in its alleged motivation to combine, Petitioner argues for the
`
`first time that the disclosures in the Rye and Caris references “suggest"
`
`modulation. Petitioner, also argues for the first time that Rye and Skerlos are
`
`analogous art. None of these arguments were presented in the Petition and should
`
`not be permitted now. In any event, Petitioner’s cited prior art is insufficient to
`
`render the claims unpatentable.
`
`II. Claim Construction
`A.
`“key code signal”
`
`In its Reply, Petitioner ignores the intrinsic evidence cited by UEI and
`
`claims UEI is importing a narrow limitation from the specification into the claim
`
`(Reply at 3). However, that is not how UEI supported its position. UEI supported
`
`its position with citations to the file history (POR at 13-14 citing EX2007 at 75-76,
`
`241-242, 121) and to the claim language itself (id. citing EX1001 at 10:61-62). On
`
`the other hand, Petitioner supports its position with a single citation to extrinsic
`
`evidence that consists of a conclusory paragraph of its expert, Dr. Russ, which
`
`largely parrots the Petition (Reply at 3 citing EX1030 at ¶ 9), and which is
`
`inconsistent with his deposition testimony (EX2008 at 57:2-17). 1 Thus, UEI has
`
`
`1 The fact that Petitioner is taking a position on this term at all is surprising,
`
`as Petitioner told the ITC at a Markman hearing that it “did not advocate to the
`
`2
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`U.S. Patent 9,911,325
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`shown that the claimed “key code signal” is singular and distinct from a codeset.
`
`B.
`
`“generate a key code using the keystroke indicator signal”
`
`UEI proposes that this term can be understood by its plain and ordinary
`
`meaning including the fact that it excludes receiving an appliance control code and
`
`merely translating or converting the code into another format, such as an infrared
`
`signal (POR at 14-15).
`
`Once again, Petitioner mischaracterizes UEI’s description of the plain and
`
`ordinary meaning of the term (Reply at 3). Specifically, Petitioner ignores UEI’s
`
`description of the file history (POR at 14) as well as the specification (id. citing
`
`EX1001 at 5:63-6:19). Instead of engaging the intrinsic evidence, Petitioner relies
`
`on extrinsic evidence to support its position (Reply at 4-5). Indeed, Petitioner turns
`
`to cherry-picked deposition quotes from UEI’s expert (id. citing EX1031), figures
`
`generated in expert reports (id. citing EX2003), as well as its own expert (id. citing
`
`EX1030). None of these extrinsic sources should expand the meaning of the claim
`
`language set forth in the intrinsic evidence, nor does UEI’s expert ever contradict
`
`this understanding. Indeed, he agreed with it (EX2003 at ¶¶ 123-126).
`
`
`PTAB a particular construction” of this claim term (EX2012 at 58:23-59:8).
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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`III. The Cited Grounds Do Not Render Any Claims Unpatentable
`
`A. Ground 1: Rye in View of Skerlos Does Not Render Obvious
`Claims 1-3, 5, or 7
`
`1.
`
`Rye Does Not Disclose the Claimed “Processing Device” and
`“Memory”
`
`First, Petitioner’s Reply does not remedy the deficiencies UEI identified in
`
`the original Petition. Petitioner and its expert still fail to allege that one of the
`
`processors in Rye performs the claimed “generate a key code,” “format the key
`
`code,” or “transmit the formatted key code” tasks (Reply at 5-6; EX1003 at ¶¶ 116-
`
`118; EX2003 at ¶¶ 147-152). Instead, Petitioner merely states that IR processor 42
`
`“identifies” a control code and then “outputs” that code from a processor to an
`
`emitter (Reply at 5-6). Therefore, Petitioner and its expert have failed to show that
`
`the prior art discloses the processor element.
`
`Second, Petitioner’s Reply identifies three different memories in Rye:
`
`“memory for address, “memory for code lookup table,” or “memory for IR code
`
`library” (Reply at 6-7). But Petitioner still fails to articulate how any of those three
`
`memories correspond to Claim 1, which requires “a memory storing instructions
`
`executable by the processing device, the instructions causing the processing device
`
`to: generate … format … and transmit” (EX1001 at cl. 1). Moreover, Petitioner’s
`
`reliance on UEI’s expert’s testimony does not cure this deficiency (Reply at 7).
`
`Indeed, UEI’s expert’s testimony was consistent with Petitioner’s expert’s
`
`testimony, which, at best, asserted that the instructions would “perform the
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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`operations described in Rye,” (EX1003 at ¶ 119), which Dr. Russ admits does not
`
`include at least “formatting of a key code” (EX1003 at ¶ 104).
`
`Third, Petitioner and its expert still fail to provide any explanation why it
`
`would have been obvious to use a memory on the device itself, as required by the
`
`claim. Again, Petitioner’s expert attempts to rely on the Bayley reference, which
`
`was not included in any instituted ground and which discloses a memory that is not
`
`on the device (EX1030 at ¶ 18).
`
`2.
`
`Rye Does Not Disclose the Claimed “Generate a Key Code
`Using a Keystroke Indicator”
`
`Petitioner’s Reply presents a new argument concerning Rye’s transmission
`
`of a keystroke indicator. Petitioner asserts, for the first time, that “Rye’s lack of
`
`specificity demonstrates that Rye’s binary control codes are not key codes” (Reply
`
`at 8). Petitioner cannot rely on a “lack of specificity” to prove that Rye discloses
`
`something it does not.
`
`Rye’s “binary control codes” are control codes, not keystroke indicators. A
`
`POSITA would recognize these binary control codes as key codes because Rye
`
`teaches combining them with the product code and converting them to infrared in
`
`order to operate an electronic device (EX2003 at ¶¶ 163-171). Indeed, the lookup
`
`table allows the RF “coded control signals [to be] converted to corresponding
`
`coded infrared control signals which are transmitted to the selected audiovisual
`
`component” (EX1005 at [0016]; see also id. [0008], [0023], [0027]). Thus, while
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`U.S. Patent 9,911,325
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`the binary control codes “are not specific for any particular brand or model of
`
`audiovisual product” before they are combined with the product code (EX1005 at
`
`[0022]), the District Court already rejected Petitioner’s arguments that a key code
`
`must be specific to a brand or model (see EX1009 at 18-20).
`
`In addition, Petitioner argues in its Reply that UEI has limited the disclosure
`
`of Rye to “solely converting an input signal into an IR signal” (Reply at 9).
`
`Petitioner also accuses UEI of misconstruing the “generating” requirement by
`
`ignoring “Rye’s teaching of looking up and selecting a specific control code in IR
`
`code library 44” (id.). Rather than ignore that teaching, however, UEI contends
`
`that “the received control signals are converted to corresponding infrared control
`
`signals” (EX2003 at ¶ 97). Importantly, the Board also noted that the received
`
`“signals are converted in transceiver 30 to corresponding binary coded infrared
`
`(IR) signals” (Paper 7 at 14 (emphasis added)). As explained in detail in the POR,
`
`the Applicant expressly disclaimed the mere translating or converting of a received
`
`control code (POR at 6). Petitioner continues to ignore the file history—indeed,
`
`Petitioner’s expert failed to even review the file history (EX1003 at ¶ 11; EX2010
`
`at 32:7-33:5, 73:7-12).
`
`Finally, Petitioner argues for the first time in the Reply that the limitation
`
`“the keystroke indicator having data that indicates an input element of the third
`
`device that has been activated” is met by the “binary control code” of Rye (Reply
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`U.S. Patent 9,911,325
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`at 10). However, Rye does not disclose data within that binary coded control signal
`
`that “indicat[es] a particular key that has been pressed” (POR at 27). This
`
`allegation falls short of an allegation that the claim element is met, as Petitioner’s
`
`expert admits the claim requires “data that indicates an input element” (EX2003 at
`
`¶¶ 176-178; EX2010 at 22:4-23:16).
`
`3.
`
`Rye in View of Skerlos Does Not Render Obvious the
`Claimed “Format the Key Code”
`
`Petitioner’s Reply still fails to identify a key code that is formatted for
`
`transmission (Reply at 10-12). In Rye, the code retrieved from the code library is
`
`never transmitted anywhere (POR at 28). Instead, the original binary control code
`
`from the remote control is converted to be compatible with the retrieved code, and
`
`then the original binary control code is transmitted (POR at 28). Thus, even if
`
`“Rye performs an active selection” (Reply at 10), that does not explain how a key
`
`code is formatted.
`
`Petitioner stated in the Petition that “Rye does not explicitly describe the
`
`operational details behind the transmission of key codes,” including modulation
`
`onto a carrier signal (Petition at 23). Petitioner also stated in the Petition that “a
`
`POSA looking to understand these formatting or operational details would have
`
`known to look to references such as Skerlos” (id. at 23-24). This is textbook
`
`hindsight regarding what an expert would have allegedly assumed, and it is
`
`unsupported.
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`7
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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`Rye does not disclose a transceiver modulating onto a carrier signal
`
`(EX2003 at ¶¶ 182, 99; EX2011 at ¶ 236). As a result, Petitioner and its expert
`
`assume that modulation is required and, therefore, fail to provide any reasons why
`
`a POSITA would have been motivated to modulate the key code onto a carrier
`
`signal, among numerous other options (EX2003 at ¶¶ 181-189). Personal Web
`
`Techs., 848 F.3d at 993-994. Petitioner’s expert admits (1) that the claimed
`
`modulating onto a carrier signal is only “[o]ne well-known protocol” (EX2011 at
`
`¶ 236); and (2) that a POSITA would need to consider “whether or not to employ
`
`modulation and if so what modulation to use” (EX2010 at 69:17-70:7). But
`
`Petitioner’s Reply still does not set forth reasons why a POSITA would have been
`
`motivated to use the claimed modulation technique. Instead, through hindsight,
`
`Petitioner starts with modulation onto a carrier signal as a de facto requirement and
`
`then use Skerlos to fill in the supposed “operational details” of how to achieve that
`
`goal (Reply at 12). Petitioner also argues, for the first time, that there are a finite
`
`number of predictable choices for wireless transmission. But this is unsupported
`
`attorney argument that ignores the testimony of Petitioner’s own expert that a
`
`POSITA would need to consider whether or not to rely on modulation in the first
`
`place.
`
`Finally, Petitioner’s Reply fails to address the glaring hole in Skerlos.
`
`Skerlos does not disclose a transceiver or any transmissions from a transceiver.
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`(EX2003 at ¶¶ 190-191). Petitioner and its expert do not dispute this point and use
`
`a blanket conclusory statement that “a POSA would have understood that Rye’s
`
`transceiver would have just as easily implemented the same wireless transmission
`
`protocol” as the Skerlos remote control (Petition at 26; EX1003 at ¶ 141). Again,
`
`there is no reason provided.
`
`As explained in the POR, A POSITA would not have been motivated to
`
`perform all of the numerous modifications to Rye and Skerlos needed to modulate
`
`a key code onto a carrier signal at a transceiver because it would be unnecessary,
`
`costly, and contrary to the teachings of those references (EX2003 at ¶¶ 189-191).
`
`4.
`
`Rye Does Not Disclose the Claimed “Digital Ones and/or
`Digital Zeros” or a Codeset Comprising “Time
`Information”
`
`Petitioner’s Reply fails to address the conclusory statement in the Petition
`
`that a “POSA would have understood that the[] ‘binary’ signals [in Rye] would
`
`include a binary number representing a ‘digital one’ and ‘digital zero’” (Petition at
`
`28). Instead, Petitioner continues to incorrectly equate bit patterns with digital ones
`
`and zeros (Reply at 13; EX1003 at ¶ 146). Petitioner’s reasoning is incorrect
`
`because it would imply that all binary code is always a digital one and digital zero,
`
`which is not true and is inconsistent with the specification (EX2003 at ¶¶ 196-198;
`
`EX2008 at 75:16-76:3; EX1001 at 5:28-45).
`
`In addition, Petitioner’s Reply fails to address the fact that Petitioner’s
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`U.S. Patent 9,911,325
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`expert admitted during his deposition that neither Rye nor Skerlos discloses a key
`
`code or codeset comprising timing information (EX2008 at 183:19-184:9, 206:5-
`
`207:1). Instead, Petitioner asserts, without support, that “Skerlos discloses the
`
`format of the key codes that would have been used by Rye’s system” (Reply at 13).
`
`Indeed, Petitioner’s Reply provides no reasoning why a POSITA would have
`
`sought to incorporate such a concept into the proposed Rye/Skerlos combination
`
`and fails to address the many reasons why a POSITA would have chosen not to put
`
`timing information in a codeset (EX2003 at ¶¶ 205-208). The mere fact that a
`
`POSITA could have used the format of Skerlos is not adequate to support a
`
`motivation to combine. Personal Web Techs., 848 F.3d at 993-994.
`
`5.
`
`Rye in View of Skerlos Does Not Render Claim 2 Obvious
`
`Petitioner’s Reply confirms that Petitioner and its expert are cherry-picking
`
`select parts of Rye and Skerlos without regard to how they should be combined
`
`together. Claim 2 depends on Claim 1, and Petitioner admits it is replying on an
`
`obviousness combination for Claim 1. But Petitioner asserts in the Reply that “UEI
`
`admits” Rye teaches an RF receiver (Reply at 14; EX1006 at 3:39-45, Abst.;
`
`EX2003 at ¶¶ 210-212). But for the limitations in Claim 1, both Petitioner and its
`
`expert assert that the combination of Rye and Skerlos would use Skerlos’
`
`transmission protocols, i.e., infrared and not radio-frequency (Petition at 26;
`
`EX1003 at ¶ 141; EX2008 at 207:20-208:12). The fact that Petitioner is willing to
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`Case IPR2019-01614
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`cherry-pick between Rye and Skerlos when Skerlos inconveniently teaches away
`
`highlights the improper hindsight bias that led Petitioner to choose the combination
`
`of Skerlos and Rye in the first place. Ex Parte Creed Taylor, No. 2017-009744,
`
`2018 Pat. App. LEXIS 6083, at *7-9 (P.T.A.B. Aug. 1, 2018).
`
`B. Ground 2: Caris in view of Dubil
`
`1.
`
`Caris Does Not Disclose the Claimed “Processing Device”
`and “Memory”
`
`Like Rye, Caris does not contain a processor for performing the claimed
`
`functions. In its Reply, Petitioner claims that UEI “mischaracterizes Ground [2] as
`
`presented in the Petition” (Reply at 15). This is not true. Claim 1 requires that the
`
`processing device “generate a key code,” “format the key code,” and “transmit the
`
`formatted key code.” Petitioner admits “Caris does not explicitly describe the
`
`format of the key codes or the operational details for transmitting the key codes”
`
`(Petition at 52; EX1003 at ¶ 201). Thus, Petitioner cannot show that Caris discloses
`
`this element.
`
`Petitioner argues for the first time in its Reply that “Caris’s STB would
`
`include a processing device in order to perform the functions described in Caris
`
`and the functions in the Caris/Dubil combination” (Reply at 15). However, this
`
`argument is brand new, as UEI pointed out in the POR that “Petitioner does not
`
`rely on Dubil for this claim element” (POR at 43). It is improper for Petitioner to
`
`now attempt to rely on this combination for this element.
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`Moreover, Caris does not disclose a STB with a memory storing instructions
`
`to perform the claimed functions of “generate a key code,” “format the key code,”
`
`or “transmit the formatted key code.” In its Reply, Petitioner provides a conclusory
`
`statement about what “STBs typically included,” but still does not allege that the
`
`instructions to be executed would be included in the so-called “typical STB”
`
`(Reply at 15-16). Petitioner therefore doubles down on its use of Bayley (a
`
`reference not included in any of Petitioner’s grounds) to support its position (Reply
`
`at 16 citing EX1003 at ¶ 179). Petitioner and its expert have never established that
`
`a POSITA would have been motivated to combine Bayley with Caris and Dubil.
`
`And even if Bayley was included, the Reply still ignores that Bayley discloses that
`
`the instructions could be stored off the device in any number of places and
`
`provides no explanation why a POSITA would use the look-up table from Caris
`
`relied upon in the Petition (EX1003 at ¶ 179; EX2003 at ¶ 246).
`
`2.
`
`Caris Does Not Disclose “Generate a Key Code”
`
`As explained in the POR and again above in Section III.A, supra,
`
`Petitioner’s first theory fails because Caris teaches downloading the entire codeset
`
`rather than an individual key code (EX1007 at 2:27-39, 3:65-4:4, 9:15-39; EX2003
`
`at ¶¶ 251-254; EX2008 at 188:2-7, 194:12-16, 190:10-191:13). Petitioner’s Reply
`
`states that “downloading a codeset also includes downloading a key code because a
`
`codeset is a superset of a key code” (Reply at 16). But this argument contradicts
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`Case IPR2019-01614
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`the plain language of the claims (EX2008 at 57:2-17), the specification of the ’325
`
`Patent (e.g., EX1001 at 2:44-45, 4:45), and the prosecution history (which
`
`expressly disclaimed transmitting an entire codeset) (POR, at II.C, III.C; EX2003
`
`at ¶ 253).
`
`Next, Petitioner re-hashes its argument concerning its second theory (Reply
`
`at 16). Petitioner’s second theory fails because Caris does not disclose that the
`
`“input received from remote 202” (the alleged “keystroke indicator”) is distinct
`
`from a key code, as argued in the POR. Petitioner’s Reply fails to remedy this
`
`deficiency other than to call UEI’s argument a “mischaracterization” (Reply at 16).
`
`Moreover, Petitioner’s Reply fails to address the fact that Dubil teaches not
`
`to use a keystroke indicator (Petitioner’s first theory) or to use the set-top box to
`
`communicate directly to an appliance (Petitioner’s second theory) (EX2003 at
`
`¶¶ 256-259). Thus, any combination of Caris and Dubil would not include a
`
`keystroke indicator because Dubil teaches a different, more direct process
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`(EX2003 at ¶¶ 256-258).
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`Finally, Petitioner’s Reply fails to present any argument or evidence
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`regarding the limitation “the keystroke indicator having data that indicates an input
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`element of the third device that has been activated,” which Petitioner’s expert
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`admits is required (EX2010 at 22:4-23:16). UEI addressed this failure in its POR
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`and explained how this fundamental failure of proof is fatal to the Ground (POR at
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`46-47).
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`3.
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`Caris in View of Dubil Does Not Render Obvious the
`Claimed “Format the Key Code”
`
`The Petition asserts that the “wireless transmission [of Caris] would have
`
`been accomplished via the modulation of the key code onto an infrared carrier
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`signal” because that was “a well-known technique” (Petition at 46). The Board has
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`already rejected this argument (see EX2007 at 308, 376). As with Rye and Skerlos,
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`Petitioner’s expert admits that the claimed modulating onto a carrier signal is only
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`“[o]ne well-known protocol” among many possible options (EX2011 at ¶ 236).
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`And Petitioner’s expert later testified that a POSITA would need to consider
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`“whether or not to employ modulation and if so what modulation to use,” none of
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`which Petitioner or its expert actually considered (EX2010 at 69:2-7).
`
`Although UEI addresses Petitioner’s failure to provide motivations to
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`combine in more detail below, as explained previously, both Petitioner and its
`
`expert state that a POSITA would look to Dubil assuming that modulating onto a
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`carrier signal was required (Petition at 47-48; EX1003 at ¶ 193). This assumption
`
`is unsupported, incorrect, and textbook hindsight (EX2003 at ¶¶ 265-271). Indeed,
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`Petitioner’s expert admits that modulating onto a carrier signal (or modulating at
`
`all) is not required to transmit information (EX2008 at 64:1-9). Dubil’s remote
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`control (purportedly receiving the Caris signal) does not even disclose a way to
`
`demodulate the signal (EX2003 at ¶ 277). Therefore, a POSITA would have had
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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`no reason to look to Dubil (EX2003 at ¶¶ 265-271). In the face of this undeniable
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`failing, Petitioner offers a new argument that “Caris’s wireless transmission of a
`
`key code using an ‘IR or RF transmitter’ or an ‘IR or RF blaster’ already suggests
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`the usage of a modulation technique” (Reply at 24). This new argument only
`
`serves to highlight the deficiencies in the Petition.
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`Furthermore, Petitioner continues to ignore that Dubil does not describe
`
`modulating onto a carrier signal for any transmission from the set-top box, and that
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`Petitioner has not provided any reason why a POSITA would modify the
`
`combination of Caris and Dubil to do so (EX2003 at ¶¶ 272-279). As explained in
`
`the POR, a POSITA would not have been motivated to perform all of the numerous
`
`modifications to Caris and Dubil needed to modulate a key code onto a carrier
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`signal at a transceiver because it would be unnecessary, costly, and contrary to the
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`teachings of those references (EX2003 at ¶¶ 231).
`
`4.
`
`Caris in view of Dubil Does Not Render Obvious the
`Claimed “Digital Ones and/or Digital Zeros” and a Codeset
`Comprising “Time Information”
`
`Petitioner’s Reply argues that “UEI continues by arguing, without support,
`
`that “‘a digital one and digital zero means that there is a more complex pattern than
`
`simply a one is on and a zero is off’” (Reply at 18). But UEI cited ample support
`
`for that position. UEI cited the claim language (POR at 52, citing EX1001 at 11:1-
`
`2), its expert who relied on the specification (id. citing EX2003 at ¶¶ 284-288;
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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`EX1001 at 5:28-45) as well as the deposition of Petitioner’s expert (id. citing
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`EX2008 at 73:8-74:3, 75:16-76:22). Petitioner’s Reply does not dispute that the
`
`terms “digital one” and “digital zero” (or any similar terms) never appear in either
`
`reference. Instead, Petitioner reiterates its argument that the mere use of binary
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`numbers and “on/off times” as disclosed in Dubil would disclose digital ones and
`
`zeros (Reply at 18-19). But as explained above, equating on/off times to a digital
`
`one and digital zero is incorrect because that would imply that all binary code is
`
`always a digital one and digital zero, which is not true and inconsistent with the
`
`specification (EX2003 at ¶¶ 284-288; EX1001 at 5:28-45).
`
`Finally, Petitioner’s Reply again states that UEI is mischaracterizing the
`
`combination of Caris and Dubil despite the fact that Petitioner does not dispute that
`
`XML parameters in Dubil, including the “on/off times” and “bit pattern of the
`
`command code,” are stored at the set-top box as separate XML tags and teach
`
`away from a codeset comprising timing information (Reply at 19; EX1008 at 4:33-
`
`42; EX2010 at 65:13-20, 68:3-6). Instead of addressing this failure, Petitioner’s
`
`Reply claims that UEI misunderstands the Petition because “the Petition does not
`
`rely on a bodily incorporation of Dubil’s XML tags” (Reply at 19). Thus, again,
`
`because Caris and Dubil completely fail to disclose the claim limitation, Petitioner
`
`assumes the claim limitation would be necessary and then cobbles together various
`
`ideas to invent the “prior art” STB the Caris and Dubil references never describe.
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`Case IPR2019-01614
`U.S. Patent 9,911,325
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`This is the epitome of hindsight bias taken to an absurd extreme.
`
`5.
`
`Caris in View of Dubil Does Not Render Claim 2 Obvious
`
`Petitioner’s Reply again shows that Petitioner and its expert are cherry
`
`picking select parts of Caris and Dubil without regard to how they should be
`
`combined together (Reply at 20). Claim 2 depends on Claim 1, and Petitioner
`
`admits it is relying on an obviousness combination for Claim 1. But Petitioner
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`asserts in its Reply that “UEI incorrectly focuses on Dubil rather than addressing
`
`Caris’ actual teaching” (Reply at 20). Again, Petitioner has failed to explain why
`
`Dubil’s transmission meets claim limitations from Claim 1 and focuses only on
`
`Caris’s transmission for Claim 2. This is the precise improper hindsight bias that
`
`led Petitioner to choose the combination of Caris and Dubil in the first place. Ex
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`Parte Creed Taylor, No. 2017-009744, 2018 Pat. App. LEXIS 6083, at *7-9
`
`(P.T.A.B. Aug. 1, 2018).
`
`IV. The Petitioner Failed to Demonstrate a Motivation to Combine
`
`As if repetition will somehow lend legitimacy to its argument, Petitioner
`
`repeatedly emphasizes that its analysis begins with the disclosure of the ’325
`
`Patent, stating again and again that the specification “admits . . . that modulating
`
`key codes on to carrier signals to generate key code signals was well known”
`
`(Petition at 18; see also id. at 4, 24, 39, 41, 42, 50, 55, 57, 58, 701 and 71). This is
`
`of course improper and textbook hindsight. Additionally, this argument has been
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`specifically rejected by the PTAB, which found (for the parent patent) that this
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`“section of the patent . . . merely describes an embodiment in which a key code
`
`generator device modulates a key code on to a carrier signal” (EX2007 at 374). As
`
`acknowledged by the PTAB, this is an embodiment of the invention of the ’325
`
`Patent, not a statement as to what was or was not well-known in the art.
`
`Undeterred, Petitioner proceeds to use the invention of the ’325 Patent as a
`
`roadmap, identifying the Dubil and Skerlos references that recite modulation
`
`schemes. But that approach has also been rejected by the PTO. During prosecution,
`
`and in the face of another reference disclosing modulation of signals, the BP