`
`
`
`
`
`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. IPR2019-01614
`U.S. Patent 9,911,325
`
`_____________________
`
`
`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
`
`
`Roku EX1003
`U.S. Patent No. 9,911,325
`
`

`

`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`III.
`IV.
`
`V.
`
`VI.
`
`B.
`
`B.
`
`C.
`
`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.
`Obviousness ............................................................................................. 9
`C.
`Overview of the ’325 patent ........................................................................ 10
`A.
`Embodiment 1 – Transmitting a Key Code from a Key Code
`Generator to a Remote Control Device .................................................12
`Embodiment 2 – Transmitting a Key Code from a Key Code
`Generator to an Electronic Consumer Device .......................................15
`Background of the Technology ................................................................... 16
`A.
`Infrared Remote Controls and Controlling Electronic Consumer
`Devices Were Well-Known ..................................................................17
`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 .........................................................39
`“Blasters” Were Well-known Devices Used to Transmit Key
`Codes According to Modulation Parameters ........................................44
`Using a Remote Control as a Relay Device was Well-known ..............49
`F.
`GROUND 1: Claims 1, 2, 3, 5, and 7 of the ’325 Patent are
`Unpatentable under 35 U.S.C. § 103 OVER Rye In view of Skerlos ......... 51
`
`D.
`
`E.
`
`VII.
`
`
`
`- i -
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`2.
`
`3.
`
`4.
`
`5.
`
`
`6.
`
`
`7.
`
`8.
`
`
`9.
`
`
` [1.4.5] “wherein the codeset further comprises time information that 10.
`
`A. Overview of Rye ...................................................................................52
`B.
`Rye in view of Skerlos discloses Embodiment 2 ..................................54
`C.
`Independent Claim 1 .............................................................................58
`[1.P]: “A first device for transmitting a command to control a functional
`1.
`
`operation of a second device, the first device comprising:” ....................... 58
`[1.1]: “a receiver;” ....................................................................................... 60
`[1.2] “a transmitter;” ................................................................................... 61
`[1.3] “a processing device coupled to the receiver and the transmitter; and”62
`[1.4] “a memory storing instructions executable by the processing device,
`the instructions causing the processing device to:” .................................... 64
`[1.4.1] “generate a key code using a keystroke indicator received from a
`third device in communication with first device via use of the receiver, the
`keystroke indicator having data that indicates an input element of the third
`device that has been activated;” .................................................................. 68
`[1.4.2] “format the key code for transmission to the second device; and” . 72
`[1.4.3] “transmit the formatted key code to the second device in a key
`code signal via use of the transmitter;” ...................................................... 78
`[1.4.4] “wherein the generated key code comprises a one of a plurality of
`key code data stored in a codeset, wherein the one of the plurality of key
`code data is selected from the codeset as a function of the keystroke
`indicator received from the third device, wherein each of the plurality of
`key code data stored in the codeset comprises a series of digital ones
`and/or digital zeros, and” ............................................................................ 79
`
`describes how a digital one and/or a digital zero within the selected one of
`the plurality of key code data is to be represented in the key code signal to
`be transmitted to the second device.” ......................................................... 82
`D.
`Claim 2: “The first device as recited in claim 1, wherein the
`receiver comprises an RF receiver.” .....................................................86
`Claim 3: “The first device as recited in claim 1, wherein the
`transmitter comprises an IR transmitter.” .............................................86
`Claim 5: “The first device as recited in claim 1 , wherein the
`formatted key code is transmitted from the first device to the
`
`E.
`
`F.
`
`- ii -
`
`
`
`
`
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`
`
`G.
`
`2.
`
`3.
`
`4.
`
`5.
`
`
`6.
`
`
`7.
`
`8.
`
`
`9.
`
`
`second device via a wireless connection between the first
`device and the second device.” .............................................................87
`Claim 7: “The first device as recited in claim 1, wherein the
`generated key code controls at least one of a power on, power
`off, volume up, and volume down functional operation of the
`second device.” ......................................................................................88
`VIII. Ground 2: Claims 1, 2, 3, 4, and 5 of the ’325 Patent are
`Unpatentable under 35 U.S.C. § 103 over Caris In View of DubiL. .......... 89
`A. Overview of Caris .................................................................................89
`B.
`Caris in view of Dubil discloses Embodiment 2 ...................................91
`C.
`Independent Claim 1 .............................................................................94
`[1.P] “A first device for transmitting a command to control a functional
`1.
`
`operation of a second device, the first device comprising:” ....................... 94
`[1.1] “a receiver;” ........................................................................................ 95
`[1.2] “a transmitter;” ................................................................................... 95
`[1.3] “a processing device coupled to the receiver and the transmitter; and”96
`[1.4] “a memory storing instructions executable by the processing device,
`the instructions causing the processing device to:” .................................... 98
`[1.4.1] “generate a key code using a keystroke indicator received from a
`third device in communication with first device via use of the receiver, the
`keystroke indicator having data that indicates an input element of the third
`device that has been activated;” ................................................................ 101
`[1.4.2] “format the key code for transmission to the second device; and”103
`[1.4.3] “transmit the formatted key code to the second device in a key
`code signal via use of the transmitter;” .................................................... 106
`[1.4.4] “wherein the generated key code comprises a one of a plurality of
`key code data stored in a codeset, wherein the one of the plurality of key
`code data is selected from the codeset as a function of the keystroke
`indicator received from the third device, wherein each of the plurality of
`key code data stored in the codeset comprises a series of digital ones
`and/or digital zeros, and” .......................................................................... 107
`
`describes how a digital one and/or a digital zero within the selected one of
`
` [1.4.5] “wherein the codeset further comprises time information that 10.
`
`
`
`
`- iii -
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`E.
`
`F.
`
`the plurality of key code data is to be represented in the key code signal to
`be transmitted to the second device.” ....................................................... 110
`D.
`Claim 2: “The first device as recited in claim 1, wherein the
`receiver comprises an RF receiver.” ...................................................114
`Claim 3: “The first device as recited in claim 1, wherein the
`transmitter comprises an IR transmitter.” ...........................................114
`Claim 4: “The first device as recited in claim 1, wherein the
`formatted key code is transmitted from the first device to the
`second device via a wired connection between the first device
`and the second device.” .......................................................................115
`Claim 5: “The first device as recited in claim 1, wherein the
`formatted key code is transmitted from the first device to the
`second device via a wireless connection between the first
`device and the second device.” ...........................................................115
`Other evidence relevant to obviousness .................................................... 116
`
`G.
`
`
`
`IX.
`
`
`
`
`- iv -
`
`

`

`
`
`I, Samuel H. Russ, declare as follows:
`
`I.
`
`INTRODUCTION
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`
`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.
`
`9,911,325 (“the ’325 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 -
`
`

`

`
`Department of Electrical and Computer Engineering. During that time, I have won
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`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 -
`
`

`

`
`managing a group that developed a new coaxial home networking system. The
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`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 -
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`
`III. MATERIALS CONSIDERED
`11.
`In formulating my opinions, I have relied upon my training,
`
`
`knowledge, and experience that are relevant to the ’325 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
`
`Description
`U.S. Patent No. 9,911,325 to Mui (“’325 Patent”)
`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)
`“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)
`
`
`
`- 4 -
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`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 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”)
`
`
`
`Exhibit No.
`
`1016
`
`1017
`
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`
`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
`
`that “a preponderance of the evidence” is evidence sufficient to show that a fact is
`
`more likely true than it is not.
`
`
`
`- 5 -
`
`

`

`14.
`
`
`In determining the patentability of a claim, I understand that the first
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`
`
`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 ’325 patent, as the potential date
`
`of invention of the claims of the ’325 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.
`
`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 ’325 patent would have
`
`
`
`- 6 -
`
`

`

`
`had general knowledge of remote control devices, consumer electronic devices,
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`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 ’325 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 ’325 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 ’325 patent as I perceive a POSA would have
`
`understood them at the time of the earliest priority date (December 16, 2003) of the
`
`’325 patent, after reading the entire ’325 patent specification. I have also reviewed
`
`a Markman order provided by the district court in a pending proceeding also
`
`directed to the ’325 patent.
`
`
`
`- 7 -
`
`

`

`
`
` Finally, I have been informed that claim construction is ultimately a 20.
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`
`
`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.” EX1009, 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 1-2 render
`
`obvious the claims of the ’325 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.
`
`
`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].” EX1009, 12-13. While a
`
`
`
`- 8 -
`
`

`

`
`POSA reading the term “keystroke indicator signal” would understand the term as
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`having its plain and ordinary meaning, the combination of references described
`
`below in Grounds 1-2 render obvious the claims of the ’325 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 “a signal
`
`containing a key code.” EX1009, 13. I understand that the court considered this
`
`construction and provided its own construction of a “signal containing a modulated
`
`key code.” EX1009, 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 1-2 render obvious the
`
`claims of the ’325 patent under its plain and ordinary meaning or either the Patent
`
`Owner’s or the court’s constructions.
`
`C. Obviousness
`24.
`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
`
`
`
`- 9 -
`
`

`

`
`scope and content of the prior art; (2) the level of ordinary skill in the field of the
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`invention; (3) the differences between the claimed invention and the prior art; and
`
`(4) any objective evidence of non-obviousness.
`
`25.
`
`
`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
`
`according to known methods to yield predictable results; (b) applying a solution
`
`from a finite number of identified, predictable solutions, with a reasonable
`
`expectation of success; (c) substituting a known element for another to obtain
`
`predictable results; and/or (d) using a known technique to improve similar devices
`
`(methods, or products) in the same way, the claimed invention would likely have
`
`been obvious to a POSA.
`
`V. OVERVIEW OF THE ’325 PATENT
` The ’325 patent describes “remote control devices” and controlling a 26.
`
`
`“consumer device” using a “key code” corresponding to a “function of the selected
`
`consumer device.” See EX1001, Abstract, 1:19-22. The “key code causes the
`
`selected consumer device to perform the desired function.” EX1001, Abstract. The
`
`Background section further explains that key codes were well-known and can
`
`correspond to functions such as “power on, power off, volume up, volume down,
`
`play, stop, select, channel up, channel down, etc.” EX1001, 1:41-42. The
`
`Background section further explains that key codes may be grouped into “distinct
`
`
`
`- 10 -
`
`

`

`
`codesets” having different “bit patterns [and timing information] assigned to
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`various functions of [an] associated electronic consumer device.” See EX1001,
`
`1:31-38.
`
`
`
` One limitation of the widespread use of codesets is the existence of 27.
`
`“thousands of codesets in use in electronic consumer devices.” EX1001, 1:60-62.
`
`“Manufacturers of remote control devices, however, may wish to limit the memory
`
`on their remote control devices to a size that is insufficient to store the thousands
`
`of existing codesets.” Id., 1:62-65.
`
`
`
` To alleviate this issue, the ’325 patent states that a desired goal is to 28.
`
`provide a system for “enabling a remote control device to control a selected one of
`
`multiple different electronic consumer devices without requiring the codeset
`
`associated with the selected electronic consumer device to be stored on the remote
`
`control device.” Id., 1:56-2:4. The ’325 patent then describes and claims two
`
`conventional solutions using a “key code generator device” as depicted in Figure 1
`
`to generate a key code. This declaration will describe these solutions as
`
`Embodiment 1 and Embodiment 2. The claims are directed to Embodiment 2.
`
`
`
`- 11 -
`
`

`

`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`EX1001, FIG. 1 (annotated).
`
`
`
`A. Embodiment 1 – Transmitting a Key Code from a Key Code
`Generator to a Remote Control Device
`
`
`
` Embodiment 1 describes a key code generator device transmitting a 29.
`
`key code to a remote control device. The remote control device then re-transmits
`
`the key code to an electronic consumer device. See EX1001, 2:6-32.
`
` First, the “user presses a key on remote control device 11.” Id., 3:56-
`30.
`
`57. Pressing a key causes the remote control device to transmit a “keystroke
`
`
`
`- 12 -
`
`

`

`
`indicator signal 16” corresponding to the pressed key to the key code generator
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`device 12. See id., 3:66-4:3. The keystroke indicator signal uses a “proprietary
`
`identification code,” and “[r]emote device 11 uses any one of a number of
`
`commonly used modulation techniques to modulate the proprietary identification
`
`codes onto keystroke indicator signal 16.” Id., 4:17-20. While the code may
`
`correspond to a desired function of the electronic consumer device, “codes may be
`
`included that do not correspond to pressed keys or functions that are to be
`
`performed on electronic consumer devices. For example, in response to receiving
`
`any signal from remote control device 11, key code generator device 12 may return
`
`a code to remote control device 11…” Id., 4:35-43.
`
`31.
`
`
`In response to receiving the keystroke indicator signal, the key code
`
`generator device determines a key code. See id., 4:24-26. In some embodiments,
`
`“key code generator device 12 is a set-top box” that is capable of communicating
`
`with a “database of codesets 39” via “network 38,” which may “be or include the
`
`Internet.” See id., 8:56-9:3. The set-top box downloads new codesets and stores
`
`them on “a mass storage hard disk within the set-top box.” See id., 9:3-5. “In this
`
`way, the pre-existing and inexpensive remote control device 11 can be used to
`
`control a new electronic consumer device whose required codeset did not exist at
`
`the time remote control device 11 and key code generator device 12 were delivered
`
`to the user.” See id., 9:5-9.
`
`
`
`- 13 -
`
`

`

`
`
` The key code generator device then determines the key code and 32.
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`
`
`modulates the key code onto a carrier signal to generate a “first key code signal
`
`19.” See id., 4:56-59. Figure 5 illustrates a key code signal using the well-known
`
`pulse width modulation technique. See id., 4:42-47, 4:54-5:5.
`
`EX1001, FIG. 5.
`
`
`
`
`
` The key code generator device modulates the key code onto a carrier 33.
`
`signal to generate a first key code signal and then transmits the first key code
`
`signal to the remote control device. See id., 5:59-62. The remote control device
`
`then receives the first key code signal and “relays the key code communicated by
`
`first key code signal 19 to [the electronic consumer device] in the form of a second
`
`key code signal 22.” Id., 5:63-66. “The waveform diagram of key code signal 22
`
`appears the same as the waveform diagram shown in FIG. 5 for key code signal 19;
`
`only the frequency of the carrier signal that forms the bursts is different.” Id., 6:13-
`
`19. The electronic consumer device then receives the second key code signal 22,
`
`
`
`- 14 -
`
`

`

`
`recovers the key code, and performs the function desired by the user. See id., 6:20-
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`26.
`
`B.
`
`Embodiment 2 – Transmitting a Key Code from a Key Code
`Generator to an Electronic Consumer Device
`
`
`
` Embodiment 2 describes a key code generator device directly 34.
`
`controlling an electronic consumer device in response to receiving a command
`
`from the remote control device: “[i]n a second example, an electronic consumer
`
`device is controlled by an RF key code signal transmitted from key code generator
`
`device 12.” EX1001, 6:31-33.
`
` Embodiment 2 uses the same initial steps as Embodiment 1. See id.,
`35.
`
`6:40-54. In particular, a “user presses [a] key on remote control device 11, [and]
`
`an indication of the pressed key is transmitted in [a] keystroke indicator signal
`
`from remote control device 11 to key code generator device 12.” Id., 6:43-47.
`
`“Key code generator device 12 then determines which key code of the identified
`
`codeset corresponds to the pressed key. Key code generator device 12 modulates
`
`the key code for the… function onto [a] carrier signal, thereby generating a third
`
`key code signal 25. Key code generator device 12 uses the same modulation
`
`technique to generate both third key code signal 25 and first key code signal 19.”
`
`Id., 6:48-54.
`
`36.
`
`
`“[K]ey code generator device 12 [then] transmits third key code signal
`
`
`
`- 15 -
`
`

`

`
`25 directly to [the electronic consumer device].” id., 6:60-61. This direct
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`transmission from the key code generator device to the electronic consumer device
`
`distinguishes Embodiment 2 from Embodiment 1. As previously explained, in
`
`Embodiment 1, the key code generator device transmits the key code to the remote
`
`control while in Embodiment 2, the key code generator device transmits the key
`
`code to the electronic consumer device. Upon receiving third key code signal 25,
`
`the electronic consumer device “recovers the key code from third key code signal
`
`2” and performs the corresponding instruction. See id., 6:61-65.
`
`VI. BACKGROUND OF THE TECHNOLOGY
`37.
`I understand that analyzing the state of electronic consumer device
`
`
`control during the years prior to the earliest possible priority date of December 16,
`
`2003 can provide v