`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR No. IPR2019-01612
`U.S. Patent 7,589,642
`
`_____________________
`
`
`DECLARATION OF DR. SAMUEL H. RUSS
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 7,589,642
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`III.
`IV.
`
`V.
`
`VI.
`
`Introduction .................................................................................................... 1
`Qualifications ................................................................................................. 1
`Materials considered ...................................................................................... 4
`Relevant legal standards ................................................................................ 5
`A.
`Level of ordinary skill ............................................................................. 6
`B.
`Claim construction .................................................................................. 7
` “Key code” .................................................................................................... 8 1.
`
`
` “Keystroke indicator signal” ......................................................................... 8 2.
`
` “Key code signal” .......................................................................................... 9 3.
`
` “Key code generator device” ........................................................................ 9 4.
`Obviousness ...........................................................................................11
`C.
`Overview of the ’642 patent ........................................................................ 11
`A.
`Embodiment 1 – Transmitting a Key Code from a Key Code
`Generator to a Remote Control Device .................................................13
`Embodiment 2 – Transmitting a Key Code from a Key Code
`Generator to an Electronic Consumer Device .......................................16
`Background of the Technology ................................................................... 17
`A.
`Infrared Remote Controls and Controlling Electronic Consumer
`Devices Were Well-Known ..................................................................18
`Controlling Electronic Devices Using Key Codes Was Well-
`Known ...................................................................................................25
`Transmitting Key Codes From Electronic Devices Other Than
`Remote Controls Was Well-Known ......................................................29
`Transmitting Key Codes Via Modulating Key Codes Onto
`Carrier Signals Was Well-Known .........................................................40
`“Blasters” Were Well-known Devices Used to Transmit Key
`Codes According to Modulation Parameters ........................................45
`Using a Remote Control as a Relay Device was Well-known ..............50
`
`B.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`
`
`- i -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`VII.
`
`3.
`
`
`4.
`
`
`5.
`
`
` “The method of claim 1, wherein said key code consists of a binary 1.
`
` “The method of claim 1, wherein said key code comprises a binary 1.
`
`GROUND 1: Claims 1, 3, 4, 6, 8, and 9 of the ’642 Patent are
`Unpatentable under 35 U.S.C. § 103 OVER Mishra In view of Dubil ....... 52
`A. Overview of Mishra...............................................................................53
`B. Mishra in view of Dubil discloses Embodiment 1 ................................56
`C.
`Independent Claim 1 .............................................................................60
`[1.P] “A method comprising:” .................................................................... 60
`1.
`
`2.
`[1.1] “receiving a keystroke indicator signal from a remote control device,
`
`wherein the keystroke indicator signal indicates a key on said remote
`control device that a user has selected;” ..................................................... 62
`[1.2] “generating a key code within a key code generator device using the
`keystroke indictor signal;” .......................................................................... 63
`[1.3] “modulating said key code onto a carrier signal, thereby generating a
`key code signal; and” .................................................................................. 66
`[1.4] “transmitting said key code signal from said key code generator
`device to said remote control device.” ........................................................ 68
`D.
`Claim 3 ..................................................................................................71
`
`number.”...................................................................................................... 71
`E.
`Claim 4 ..................................................................................................72
`
`number and timing information, and wherein said timing information
`defines how said binary number is modulated in (c) onto said carrier
`signal.” ........................................................................................................ 72
`F.
`Claim 6 ..................................................................................................76
`[6.P] “The method of claim 1, wherein said carrier signal is in a radio
`1.
`
`frequency band, wherein said key code signal is received by said remote
`control device, and wherein said method further comprises:” ................... 76
`[6.1] “modulating said key code onto a second carrier signal, thereby
`generating a second key code signal, said modulating being performed on
`said remote control device wherein said second carrier signal is in an
`infrared frequency band; and” .................................................................... 77
`[6.2] “transmitting said second key code signal from said remote control
`device to an electronic consumer device.” ................................................. 80
`G.
`Claim 8 ..................................................................................................82
`
`2.
`
`
`3.
`
`
`
`
`- ii -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

` “The method of claim 1, wherein said key code generated in (b) is part of 1.
`
` “The method of claim 8, wherein said codeset comprises timing 1.
`
`
`a codeset, and wherein said remote control device does not store said
`codeset.” ...................................................................................................... 82
`H.
`Claim 9 ..................................................................................................83
`
`information and a plurality of key codes, and wherein said timing
`information describes a digital one and a digital zero.” ............................. 83
`VIII. GROUND 2: Claims 2, 22-25 of the ’642 Patent are Unpatentable
`under 35 U.S.C. § 103 Over Rye In view of Dubil ..................................... 83
`A. Overview of Rye ...................................................................................84
`B.
`Rye in view of Dubil discloses Embodiment 2 .....................................86
`C.
`Independent Claim 2 .............................................................................89
`[2.P] “A method comprising:” .................................................................... 89
`1.
`
`2.
`[2.1] “receiving a keystroke indicator signal from a remote control device,
`
`wherein the keystroke indicator signal indicates a key on said remote
`control device that a user has selected;” ..................................................... 90
`[2.2] “generating a key code within a key code generator device using the
`keystroke indictor signal;” .......................................................................... 92
`[2.3] “modulating said key code onto a carrier signal, thereby generating a
`key code signal; and” .................................................................................. 96
`[2.4] “transmitting said key code signal from said key code generator
`device to an electronic consumer device.” ................................................. 98
`D.
`Claim 22 ..............................................................................................100
`
`number.”.................................................................................................... 100
`E.
`Claim 23 ..............................................................................................100
`
`number and timing information, and wherein said timing information
`defines how said binary number is modulated in (c) onto said carrier
`signal.” ...................................................................................................... 100
`F.
`Claim 24 ..............................................................................................105
`
`a codeset, and wherein said remote control device does not store said
`codeset.” .................................................................................................... 105
`
`3.
`
`
`4.
`
`
`5.
`
`
` “The method of claim 2, wherein said key code consists of a binary 1.
`
` “The method of claim 2, wherein said key code comprises a binary 1.
`
` “The method of claim 2, wherein said key code generated in (b) is part of 1.
`
`
`
`- iii -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

` “The method of claim 24, wherein said codeset comprises timing 1.
`
`IX.
`
`3.
`
`
`4.
`
`
`5.
`
`
`Claim 25 ..............................................................................................107
`G.
`
`information and a plurality of key codes, and wherein said timing
`information describes a digital one and a digital zero.” ........................... 107
`Ground 3: Claims 1, 2, 3, 4, 6, 8, 9, and 22-25 of the ’642 Patent are
`Unpatentable under 35 U.S.C. § 103 over Caris In View of Skerlos. ....... 112
`A.
`Caris in view of Skerlos discloses Embodiment 1 ..............................113
`B.
`Caris in view of Skerlos discloses Embodiment 2 ..............................119
`C.
`Independent claim 1 ............................................................................123
`[1.P] “A method comprising:” .................................................................. 123
`1.
`
`2.
`[1.1] “receiving a keystroke indicator signal from a remote control device,
`
`wherein the keystroke indicator signal indicates a key on said remote
`control device that a user has selected;” ................................................... 124
`[1.2] “generating a key code within a key code generator device using the
`keystroke indictor signal;” ........................................................................ 125
`[1.3] “modulating said key code onto a carrier signal, thereby generating a
`key code signal; and” ................................................................................ 126
`[1.4] “transmitting said key code signal from said key code generator
`device to said remote control device.” ...................................................... 129
`D.
`Claim 3 ................................................................................................129
`
`number.”.................................................................................................... 129
`E.
`Claim 4: “The method of claim 1, wherein said key code
`comprises a binary number and timing information, and
`wherein said timing information defines how said binary
`number is modulated in (c) onto said carrier signal.” .........................131
`Claim 6 ................................................................................................133
`F.
`[6.P] “The method of claim 1, wherein said carrier signal is in a radio
`1.
`
`frequency band, wherein said key code signal is received by said remote
`control device, and wherein said method further comprises:” ................. 133
`[6.1] “modulating said key code onto a second carrier signal, thereby
`generating a second key code signal, said modulating being performed on
`said remote control device wherein said second carrier signal is in an
`infrared frequency band; and” .................................................................. 134
`
` “The method of claim 1, wherein said key code consists of a binary 1.
`
`2.
`
`
`
`
`- iv -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`3.
`
`
`H.
`
`I.
`1.
`
`2.
`
`
`3.
`
`
`4.
`
`
`5.
`
`
`[6.2] “transmitting said second key code signal from said remote control
`device to an electronic consumer device.” ............................................... 137
`G.
`Claim 8: “The method of claim 1, wherein said key code
`generated in (b) is part of a codeset, and wherein said remote
`control device does not store said codeset.”........................................138
`Claim 9: “The method of claim 8, wherein said codeset
`comprises timing information and a plurality of key codes, and
`wherein said timing information describes a digital one and a
`digital zero.” ........................................................................................139
`Independent Claim 2 ...........................................................................140
`[2.P] “A method comprising:” .................................................................. 140
`[2.1] “receiving a keystroke indicator signal from a remote control device,
`wherein the keystroke indicator signal indicates a ke[y] on said remote
`control device that a user has selected;” ................................................... 141
`[2.2] “generating a key code within a key code generator device using the
`keystroke indictor signal;” ........................................................................ 143
`[2.3] “modulating said key code onto a carrier signal, thereby generating a
`key code signal; and” ................................................................................ 144
`[2.4] “transmitting said key code signal from said key code generator
`device to an electronic consumer device.” ............................................... 146
`Claim 22 ..............................................................................................147
`J.
`
`number.”.................................................................................................... 147
`K.
`Claim 23 ..............................................................................................148
`
`number and timing information, and wherein said timing information
`defines how said binary number is modulated in (c) onto said carrier
`signal.” ...................................................................................................... 148
`L.
`Claim 24 ..............................................................................................148
`
`a codeset, and wherein said remote control device does not store said
`codeset.” .................................................................................................... 148
`M. Claim 25 ..............................................................................................148
`
` “The method of claim 2, wherein said key code consists of a binary 1.
`
` “The method of claim 2, wherein said key code comprises a binary 1.
`
` “The method of claim 2, wherein said key code generated in (b) is part of 1.
`
`
`
`- v -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

` “The method of claim 24, wherein said codeset comprises timing 1.
`
`
`information and a plurality of key codes, and wherein said timing
`information describes a digital one and a digital zero.” ........................... 148
`Other evidence relevant to obviousness .................................................... 148
`
`X.
`
`
`
`- vi -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`
`
`I, Samuel H. Russ, declare as follows:
`
`I.
`
`INTRODUCTION
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 7,589,642
`
`
`1.
`
`
`I have been asked by Roku, Inc. (“Roku”) to provide expert opinions
`
`in the above-captioned Inter Partes Review proceeding involving U.S. Patent No.
`
`7,589,642 (“the ’642 patent”), which is entitled “Relaying Key Code Signals
`
`Through A Remote Control Device.”
`
`2.
`
`
`I am being compensated by Roku on an hourly basis for the time I
`
`spend in connection with this proceeding. My compensation is not dependent in
`
`any way on the substance of my opinions or in the outcome of this proceeding.
`
`II. QUALIFICATIONS
` My qualifications for forming the opinions set forth in this declaration 3.
`
`
`are summarized here and explained in more detail in my curriculum vitae, which is
`
`attached as Exhibit 1004. Exhibit 1004 also includes a list of my publications and
`
`the cases in which I have testified at deposition, hearing, or trial during the past
`
`four years.
`
`4.
`
`
`I received a Bachelor’s degree in Electrical Engineering from the
`
`Georgia Institute of Technology (“Georgia Tech”) in 1986 and a Ph.D. in
`
`Electrical Engineering from Georgia Tech in 1991.
`
`5.
`
`
`From 2007 to the present, I have been a member of the faculty of the
`
`University of South Alabama as an Assistant and Associate Professor in the
`
`
`
`- 1 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`Department of Electrical and Computer Engineering. During that time, I have won
`
`awards for excellent teaching and have been actively publishing research in home
`
`networking and digital video recording (DVR) technologies. I am active in the
`
`Institute of Electrical and Electronic Engineers (IEEE) and am a Distinguished
`
`Lecturer for the IEEE Consumer Electronics Society. As a consultant, I have
`
`conducted briefings for members of the financial community on technology trends
`
`in the cable, satellite, and IPTV sectors.
`
`6.
`
`
`From 2000 to 2007, I worked for Scientific-Atlanta (now Cisco’s
`
`Service Provider Video Tech. Group), where I managed a cable set-top box (STB)
`
`design group that designed four STB models, including the Explorer 4200
`
`(nonDVR) and 8300 (DVR) models. Both models sold several million units. As
`
`design-group manager, I was responsible for managing the design and prototyping
`
`activities of the group and for interfacing with other groups (especially integrated-
`
`circuit design, procurement, software developers, the factory where prototypes
`
`were built, and product managers) and for maintaining the hardware and
`
`mechanical development schedule. Since the products were produced in extremely
`
`high volumes, the projects had very high visibility in the company, and therefore
`
`carried a great deal of responsibility.
`
`7.
`
`
`Also while at Scientific-Atlanta, I became a staff expert in home
`
`networking, conducting demonstrations of wireless video
`
`technology and
`
`
`
`- 2 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`managing a group that developed a new coaxial home networking system. The
`
`coaxial system won a Technology and Engineering Emmy® Award in 2013. I
`
`became a staff expert in DVR reliability, and led a team that improved the
`
`software, hardware, repair, and manufacturing processes. I am a named inventor on
`
`fifty-one (51) patent applications that were filed while I was at Scientific-Atlanta,
`
`twenty eight (28) of which have issued as U.S. patents as of the writing of this
`
`report.
`
`8.
`
`
`From 1999 to 2000, I was a Staff Electrical Engineer and then Matrix
`
`Manager at IVI Checkmate (now Ingenico), where I managed the hardware design
`
`team that completed the design of the eN-Touch 1000 payment terminal. This
`
`terminal was in widespread use, for example, at the self-checkout at Home Depot.
`
`9.
`
`
`I also served on the faculty of Mississippi State University from 1994
`
`to 1999 as an Assistant Professor in the Department of Electrical & Computer
`
`Engineering where I taught circuit board design and two-way interactive video
`
`classes, among other things.
`
`10.
`
`
`I have also authored 32 journal articles and conference papers. A
`
`recent conference paper on digital video recording won second place in a “best
`
`paper” competition at the 2011 International Conference on Consumer Electronics
`
`in Las Vegas, NV.
`
`
`
`- 3 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`III. MATERIALS CONSIDERED
`11.
`In formulating my opinions, I have relied upon my training,
`
`
`knowledge, and experience that are relevant to the ’642 patent. Furthermore, I have
`
`considered specifically the following documents listed below in addition to any
`
`other documents cited in this declaration. I understand that the references are true
`
`and accurate copies of what they appear to be:
`
`Exhibit No.
`1001
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`Description
`U.S. Patent No. 7,589,642 to Mui (“’642 Patent”).
`Curriculum Vitae of Dr. Samuel Russ.
`U.S. Patent Publication No. 2001/0005197 to Mishra (“Mishra”).
`U.S. Patent No. 8,132,105 to Dubil et al. (“Dubil”).
`U.S. Patent Publication No. 2004/0080428 to Rye et al. (“Rye”).
`U.S. Patent No. 7,562,128 to Caris et al. (“Caris”).
`U.S. Patent No. 4,426,662 to Skerlos et al. (“Skerlos”).
`Markman Order SACV 18-01580 JVS (Dated August 8, 2019)
`“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 Contol,” 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.
`“Infrared Remote Control Transmitter RC5 Product Specification,”
`Philips Semiconductors (Dated June 15, 1999)
`
`
`
`- 4 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`Exhibit No.
`
`1017
`
`1018
`
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`1027
`
`
`Description
`“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 B2 to Bayley (“Bayley”)
`U.S. Patent No. 5,745,192 to Bialobrzewski (“Bialobrzewski”)
`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”)
`
`IV. RELEVANT LEGAL STANDARDS
`12.
`I have also relied upon various legal principles (as explained to me by
`
`
`Roku’s counsel) in formulating my opinions. My understanding of these principles
`
`are summarized below.
`
`13.
`
`
`I understand that a patent claim defines the metes and bounds of an
`
`alleged invention. I further understand that a claimed invention must be new,
`
`useful, and non-obvious over the prior art for it to be patentable. I understand that
`
`in this proceeding Roku has the burden of proving that the challenged claims are
`
`unpatentable over the prior art by a preponderance of the evidence. I understand
`
`
`
`- 5 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`that “a preponderance of the evidence” is evidence sufficient to show that a fact is
`
`more likely true than it is not.
`
`14.
`
`
`In determining the patentability of a claim, I understand that the first
`
`step is to construe the claim from the perspective of a person of ordinary skill in
`
`the art (“POSA”) to determine its meaning and scope. Once construed, I
`
`understand that the claim is to be considered against the prior art from the
`
`perspective of a POSA as further summarized below.
`
`A. Level of ordinary skill
`15.
`I understand that a claim must be analyzed from the perspective of a
`
`
`POSA at the time the claimed invention was allegedly invented by the patentee.
`
`Roku’s counsel has asked me to consider the time period shortly before December
`
`16, 2003, which is the earliest priority date of the ’642 patent, as the potential date
`
`of invention of the claims of the ’642 patent.
`
`16.
`
`
`In ascertaining the appropriate level of ordinary skill in the art of a
`
`patent, I understand that several factors should be considered including (1) the
`
`types of problems encountered in the art; (2) the prior art solutions to those
`
`problems; (3) the rapidity with which innovations are made; (4) the sophistication
`
`of the technology; and (5) the educational level of active workers in the field of the
`
`patent.
`
`
`
`- 6 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`17.
`
`
`I further understand that a POSA is a person who is presumed to be
`
`aware of the pertinent art, thinks along conventional wisdom in the art, and is a
`
`person of ordinary creativity. Accordingly, a POSA of the ’642 patent would have
`
`had general knowledge of remote control devices, consumer electronic devices,
`
`and various related technologies as of December 16, 2003.
`
`
`
` Thus based on my experience and my understanding of the legal 18.
`
`principles summarized here, I believe that a POSA in the context of the ’642 patent
`
`at the time of the patent’s earliest priority date of December 16, 2003, would have
`
`had a bachelor’s degree in electrical engineering or equivalent degree with two
`
`years of work experience relating to communications and consumer electronics.
`
`Well before December 16, 2003, my level of skill in the art was at least that of a
`
`POSA, as discussed above.
`
`B. Claim construction
`19.
`I have been informed by Roku’s counsel that in this proceeding, the
`
`
`United States Patent and Trademark Office (“PTO”) interprets the claims of an
`
`unexpired patent, such as the ’642 patent, under the same standards used in a
`
`United States District Court. This includes interpreting the claims through the lens
`
`of POSA in view of the entire patent. Accordingly, in formulating my opinions, I
`
`have reviewed the claims of the ’642 patent as I perceive a POSA would have
`
`understood them at the time of the earliest priority date (December 16, 2003) of the
`
`
`
`- 7 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`’642 patent, after reading the entire ’642 patent specification. I have also reviewed
`
`a Markman order provided by the district court in a pending proceeding also
`
`directed to the ’642 patent.
`
`
`
` Finally, I have been informed that claim construction is ultimately a 20.
`
`question of law. Accordingly, I understand that a tribunal may choose to construe
`
`certain terms to provide clarity to the proceeding should any dispute arise between
`
`the parties over how a term should be construed. If the tribunal chooses to construe
`
`any term, then I reserve my right to review and potentially modify any opinions
`
`below in view of such constructions.
`
`“Key code”
`
`1.
`
`I understand that in the related district court proceeding, Patent Owner
`
`21.
`
`
`and Petitioner have previously agreed to a construction for “key code” as being a
`
`“a code corresponding to the function of an electronic device, optionally including
`
`timing information.” EX1010, Markman order, 12. While a POSA reading the
`
`term “key code” would understand the term as having its plain and ordinary
`
`meaning, the combination of references described below in Grounds 1-3 render
`
`obvious the claims of the ’642 patent under its plain and ordinary meaning or the
`
`agreed-upon construction.
`
`“Keystroke indicator signal”
`
`2.
`
`I understand that in the related district court proceeding, Patent Owner
`
`22.
`
`
`
`
`- 8 -
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`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`and Petitioner have previously agreed to a construction for “keystroke indicator
`
`signal” and “keystroke indicator” as being a “a signal, distinct from a key code,
`
`corresponding to a pressed key [on a remote control].” EX1010, 12-13. While a
`
`POSA reading the term “keystroke indicator signal” would understand the term as
`
`having its plain and ordinary meaning, the combination of references described
`
`below in Grounds 1-3 render obvious the claims of the ’642 patent under its plain
`
`and ordinary meaning or the agreed-upon construction.
`
`“Key code signal”
`
`3.
`
`I understand that in the related district court proceeding, Patent Owner
`
`23.
`
`
`has previously provided a construction for “key code signal” as being “a signal
`
`containing a key code.” EX1010, 13. I understand that the court considered this
`
`construction and provided its own construction of a “signal containing a modulated
`
`key code.” EX1010, 13-23. While a POSA reading the term “key code signal”
`
`would understand the term as having its plain and ordinary meaning, the
`
`combination of references described below in Grounds 1-3 render obvious the
`
`claims of the ’642 patent under its plain and ordinary meaning or either the Patent
`
`Owner’s or the court’s constructions.
`
`“Key code generator device”
`4.
`
`I understand that from the Markman order set out in the corresponding
`
`24.
`
`
`district court proceeding, Patent Owner previously proposed a construction for
`
`
`
`- 9 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`“key code generator device” as being “an electronic consumer device, other than a
`
`remote control, that identifies a codeset and generates a key code from the
`
`identified codeset.” EX1010, 23. Patent Owner further stated that “key code
`
`generator device” was not governed by 35 U.S.C. § 112(6), but to the extent 35
`
`U.S.C. § 112(6) applied, the corresponding structure would be a “set-top box,
`
`television, a stereo radio, a digital video disk player, a video cassette recorder, a
`
`personal computer, a set-top cable television box or a set-top satellite box and
`
`equivalents thereof.” EX1010, 23.
`
`
`
` The court construed the claim as being subject to 35 U.S.C. § 112(6) 25.
`
`and construed the corresponding function as “generate a key code” and the
`
`corresponding structure as Patent Owner’s proposed structure. The court also
`
`construed the “key code generator device” as performing the steps of “(1)
`
`identifying a codeset usable to communicate with an electronic consumer device”
`
`and “(2) identifying the key code corresponding to a pressed key for that codeset.”
`
`EX1010, 23-30 (citing ’642 patent, 9:60–66, 3:9–12, 7:4–43, 7:60–8:18, 8:28–
`
`9:14, 4:24–26, 6:24–25). While a POSA reading the term “key code generator
`
`device” would understand the term as having its plain and ordinary meaning, the
`
`combination of references described below in Grounds 1-3 render obvious the
`
`claims of the ’642 patent under its plain and ordinary meaning or either the Patent
`
`Owner’s or the court’s constructions.
`
`
`
`- 10 -
`
`Universal Electronics Inc., Exhibit 2011
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`

`

`C. Obviousness
`26.
`I have been informed by Roku’s counsel that a patent claim is
`
`
`unpatentable if the differences between the claimed invention and the prior art are
`
`such that the claimed invention as a whole would have been obvious to a POSA at
`
`the time the claimed invention was allegedly invented by the patentee. Thus in
`
`assessing whether a claim is obvious, I understand that I am to consider (1) the
`
`scope and content of the prior art; (2) the level of ordinary skill in the field of the
`
`invention; (3) the differences between the claimed invention and the prior art; and
`
`(4) any objective evidence of non-obviousness.
`
`27.
`
`
`I understand that if a POSA would have arrived at a claimed invention
`
`when it was allegedly invented by the patentee by (a) combining prior art elements