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