`
`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
`_____________________
`
`
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
` Case IPR2019-01614
`U.S. Patent 9,911,325
`Petitioner serves this Updated Exhibit List to accompany filing of Exhibit
`
`
`
`1037, Petitioner’s Oral Hearing Demonstratives as served December 11, 2020.
`
`PETITIONER’S UPDATED EXHIBIT LIST
`Description
`U.S. Patent No. 9,911,325 to Mui (“’325 Patent”)
`
`Prosecution History of U.S. Patent No. 9,911,325 (“Prosecution
`History”)
`
`Declaration of Dr. Samuel Russ in Support of Petition for Inter
`Partes Review of U.S. Patent No. 9,911,325
`
`Curriculum Vitae of Dr. Samuel Russ
`
`U.S. Patent Publication No. 2004/0080428 to Rye et al. (“Rye”)
`
`U.S. Patent No. 4,426,662 to Skerlos et al. (“Skerlos”)
`
`U.S. Patent No. 7,562,128 to Caris et al. (“Caris”)
`
`U.S. Patent No. 8,132,105 to Dubil et al. (“Dubil”)
`
`Markman Order SACV 18-01580 JVS (Dated August 8, 2019)
`
`Exhibit No.
`1001
`(Previously
`Filed)
`1002
`(Previously
`Filed)
`1003
`(Previously
`Filed)
`1004
`(Previously
`Filed)
`1005
`(Previously
`Filed)
`1006
`(Previously
`Filed)
`1007
`(Previously
`Filed)
`1008
`(Previously
`Filed)
`1009
`(Previously
`Filed)
`
`
`
`- 2 -
`
`
`
`Case IPR2019-01614
`U.S. Patent 9,911,325
`
`Description
`“Device Specification for Infrared Detecting unit for Remote
`Control GP1UV70QS series,” Sharp Corporation Electronic
`Components Group, Opto-Electronic Devices Division (Dated
`December 27, 2002) (“GP1UV70”)
`“Data Formats for IR Remote Control,” Vishay Semiconductors
`(Dated August 27, 2003) (“Vishay”)
`
`“User Interface – Infrared Learner (Remote Control) AN2092”
`Project Guide, Cypress Semiconductor Corporation (Dated
`November 11, 2002) (“Cypress”)
`“VCR Commander Service User’s Guide,” Scientific-Atlanta, Inc.,
`(Dated September 2000) (“VCR Commander”)
`
`U.S. Patent No. 5,469,152 to Yamamoto et al. (“Yamamoto”).
`
`“Infrared Remote Control Transmitter RC5 Product Specification,”
`Philips Semiconductors (Dated June 15, 1999)
`
`“AT2400 AllTouch Remote Control User’s Guide,” Scientific-
`Atlanta, Inc. (Dated February 2002)
`
`“EXPLORER 2100 or 3100 Digital Home Communications
`Terminals User’s Installation Guide,” Scientific Atlanta, Inc. (Dated
`July 2000)
`U.S. Patent No. 6,909,471 to Bayley (“Bayley”).
`
`U.S. Patent No. 5,745,192 to Bialobrzewski (“Bialobrzewski”)
`
`Exhibit No.
`
`1010
`(Previously
`Filed)
`
`1011
`(Previously
`Filed)
`1012
`(Previously
`Filed)
`1013
`(Previously
`Filed)
`1014
`(Previously
`Filed)
`1015
`(Previously
`Filed)
`1016
`(Previously
`Filed)
`1017
`(Previously
`Filed)
`1018
`(Previously
`Filed)
`1019
`(Previously
`Filed)
`
`
`
`- 3 -
`
`
`
`Case IPR2019-01614
`U.S. Patent 9,911,325
`
`Description
`U.S. Patent No. 5,365,282 to Levine (“Levine”)
`
`U.S. Patent No. 6,225,873 to Hill (“Hill”)
`
`U.S. Patent No. 7,149,474 to Mikhak (“Mikhak”)
`
`U.S. Patent No. 6,122,010 to Emelko (“Emelko”)
`
`U.S. Patent No. 7,151,575 to Landry et al. (“Landry”)
`
`U.S. Patent No. 6,930,730 to Maxon et al. (“Maxon”)
`
`U.S. Patent No. 6,993,134 to Epstein (“Epstein”)
`
`Patent Owner’s Infringement Contentions, Ex. C-1, Universal
`Electronics Inc. v. Roku, Inc., 8:18-cv-01580 (C.D. Cal.)
`
` Supplemental Declaration of Dr. Samuel Russ for Inter Partes
`Review of U.S. Patent No. 9,911,325 (served but not filed)
`
`Transcript of Telephone Conference, Roku, Inc. v. Universal
`Electronics, Inc. (Dated June 26, 2020)
`
`Declaration of Dr. Samuel Russ in Support of Petitioner’s Reply to
`Patent Owner’s Response
`
`Exhibit No.
`1020
`(Previously
`Filed)
`1021
`(Previously
`Filed)
`1022
`(Previously
`Filed)
`1023
`(Previously
`Filed)
`1024
`(Previously
`Filed)
`1025
`(Previously
`Filed)
`1026
`(Previously
`Filed)
`1027
`(Previously
`Filed)
`1028
`(Previously
`Served)
`1029
`(Previously
`Filed)
`1030
`(Previously
`Filed)
`
`
`
`- 4 -
`
`
`
`Case IPR2019-01614
`U.S. Patent 9,911,325
`
`Description
`Transcript of the Deposition of Dr. Michael Sprenger, IPR2019-
`01612 (Dated September 15, 2020)
`
`Transcript of the Deposition of Dr. Michael Sprenger, IPR2019-
`01613 (Dated September 16, 2020)
`
`Transcript of the Deposition of Dr. Michael Sprenger, IPR2019-
`01614 (Dated September 16, 2020)
`Supplemental Declaration of Michael Sprenger, Ph.D. in Support of
`Plaintiff’s Supplemental Claim Construction Brief, TVnGO Ltd. v.
`LG Electronics, Inc., 1-18-10238 (D. N.J.) (Dated February 3, 2020)
`Opinion, TVnGO Ltd. v. LG Electronics, Inc., 1-18-10238 (D. N.J.)
`(Dated April 16, 2020)
`
`Decision Granting Institution of Inter Partes Review, Paper 12
`(IPR2019-01613) (Dated April 1, 2020)
`
`Petitioner’s Oral Hearing Demonstratives, IPR2019-01612,
`IPR2019-01613, and IPR2019-01614 (Served December 11, 2020)
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Lestin Kenton/
`
`Lestin L. Kenton, Reg. No. 72,314
`Attorney for Petitioner Roku, Inc.
`
`
`Exhibit No.
`1031
`(Previously
`Filed)
`1032
`(Previously
`Filed)
`1033
`(Previously
`Filed)
`1034
`(Previously
`Filed)
`1035
`(Previously
`Filed)
`1036
`(Previously
`Filed)
`1037
`(Newly
`Filed)
`
`
`
`
`
`
`
`Date: December 15, 2020
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`- 5 -
`
`
`
` Case IPR2019-01614
`U.S. Patent 9,911,325
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`The undersigned hereby certifies that on December 15, 2020, true and
`
`
`
`correct copies of the foregoing PETITIONER’S UPDATED EXHIBIT LIST
`
`and Exhibit 1037 were served electronically via e-mail in their entireties on the
`
`following counsel for Patent Owner:
`
`
`Benjamin S. Pleune (Lead Counsel)
`Ryan W. Koppleman (Back-up Counsel)
`Thomas W. Davison (Back-up Counsel)
`James H. Abe (Back-up Counsel)
`Caleb J. Bean (Back-up Counsel)
`Derek S. Neilson (Back-up Counsel)
`Nicholas T. Tsui (Back-up Counsel)
`
`
`
`
`ben.pleune@alston.com
`ryan.koppelman@alston.com
`tom.davison@alston.com
`james.abe@alston.com
`caleb.bean@alston.com
`derek.neilson@alston.com
`nick.tsui@alston.com
`
`
`
`
`
`
`
`
`
`Date: December 15, 2020
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`15993044.1
`
`
`
`
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Lestin Kenton/
`
`Lestin L. Kenton, Reg. No. 72,314
`Attorney for Petitioner Roku, Inc.
`
`
`
`
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