Patent Owner’s
`Oral Hearing Demonstratives
`
`Case IPR2019-01612
`Patent 7,589,642
`
`Roku, Inc. v. Universal Electronics, Inc.
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`
`Oral Hearing Demonstratives
`
`Case IPR2019-01612
`Patent 7,589,642
`
`Roku, Inc. v. Universal Electronics, Inc.
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`
`
`Agenda
`
`• Introduction to Mui Patents
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Mishra and Dubil
`• Ground 2: Rye and Dubil
`• Ground 3: Caris and Skerlos
`
`2
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Introduction
`
`IPR2019-01612
`U.S. Patent No. 7,589,642
`
`IPR2019-01613
`U.S. Patent No. 8,004,389
`
`IPR2019-01614
`U.S. Patent No. 9,911,325
`
`3
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Introduction
`
`Petitioner’s expert admitted UEI was a major
`manufacturer and that no other commercial devices
`performed all of the limitations (POR at 1)
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 11:11-15)
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 111:9-21 (’642 Patent);
`EX2009 (Russ Depo. Tr. June 18, 2020) at 49:16-50-5 (’389 Patent);
`EX2010 (Russ Depo. Tr. June 19, 2020) at 40:4-10 (‘325 Patent))
`
`4
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Introduction
`
`Petitioner’s expert admitted needing hindsight for
`the obviousness combinations (POR at 1)
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 116:10-14)
`
`5
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Introduction
`
`Petitioner’s expert admitted needing hindsight for
`the obviousness combinations (POR at 1)
`
`(EX2009 (Russ Depo. Tr. June 18, 2020) at 49:6-12)
`
`(EX2010 (Russ Depo. Tr. June 19, 2020) at 40:15-41:5)
`
`6
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`IPR2014-01082 – Petition Denied
`
`Claims 2, 22 and 23 have been unsuccessfully
`challenged before (POR at 9-10)
`
`(EX1002 (642 Patent File History) at 370)
`
`7
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Introduction
`
`IPR2019-01612
`U.S. Patent No. 7,589,642
`
`IPR2019-01613
`U.S. Patent No. 8,004,389
`
`IPR2019-01614
`U.S. Patent No. 9,911,325
`
`8
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`642 Patent
`
`IPR2019-01612
`U.S. Patent No. 7,589,642
`
`9
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`642 Patent
`
`(EX2003
`(Sprenger
`Decl.) at ¶ 68)
`
`1. A method comprising:
`
`(a) 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;
`
`(b) generating a key code within a key code generator device using the keystroke indictor signal;
`
`(c) modulating said key code onto a carrier signal, thereby generating a key code signal; and
`
`(d) transmitting said key code signal from said key code generator device to said remote control
`device.
`
`10
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`642 Patent
`
`(EX2003
`(Sprenger
`Decl.) at ¶ 70)
`
`2. A method comprising:
`
`(a) 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;
`
`(b) generating a key code within a key code generator device using the keystroke indictor signal;
`
`(c) modulating said key code onto a carrier signal, thereby generating a key code signal; and
`
`(d) transmitting said key code signal from said key code generator device to an electronic
`consumer device.
`
`11
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`642 Patent
`
`Remote → Key Code Generator Device
`→ Remote → Consumer Device
`
`Remote → Key Code Generator Device
`→ Consumer Device
`
`(EX2003 (Sprenger Decl.) at ¶ 68)
`
`(EX2003 (Sprenger Decl.) at ¶ 70)
`
`642 Patent, Claim 1 + dependents
`
`642 Patent, Claim 2 + dependents
`
`12
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`• Introduction to Mui Patents
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Mishra and Dubil
`• Ground 2: Rye and Dubil
`• Ground 3: Caris and Skerlos
`
`13
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Grounds
`
`Petitioner asserts 3 obviousness grounds (Pet. at 3)
`
`(Pet. at 3)
`
`14
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`• Introduction to Mui Patents
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Mishra and Dubil
`• Ground 2: Rye and Dubil
`• Ground 3: Caris and Skerlos
`
`15
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Claim constructions
`
`Parties do not dispute the preliminary claim
`constructions (Paper 7 (Decision) at 11-15)
`
`“key code”
`
`“keystroke indicator signal”
`
`“key code signal”
`“key code generator device”
`
`“code corresponding to the function of an electronic device,
`optionally including timing information”
`“a signal, distinct from a key code, corresponding to a pressed key
`[on a remote control].”
`“a signal containing a modulated key code”
`Function: “to generate a key code”
`
`Structure: “a set-top box, television, stereo radio, digital video disk
`player, video cassette recorder, personal computer, set-top cable
`television box or satellite box . . . 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 . . . and equivalents thereof.”
`
`16
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Claim constructions
`
`• “key code generator device”
`• “generating a key code within a key code generator
`device using the keystroke indicator”
`
`• “key code signal”
`
`(POR at 11-16)
`
`17
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`“key code generator device”
`
`The Board requested the Parties address “autoscan
`functionality” from IPR2019-01613 (POR at 13-14)
`
`(Paper 7 (Decision) at 15)
`
`18
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`“key code generator device”
`
`The Parties agree that there is no inconsistency
`(POR at 13-14)
`
`(Pet. Reply at 3)
`
`19
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Claim constructions
`
`• “key code generator device”
`• “generating a key code within a key code generator
`device using the keystroke indicator”
`
`• “key code signal”
`
`(POR at 11-16)
`
`20
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`“generating a key code…”
`
`The Board suggested claim construction of “generating
`a key code . . .” was needed to explain why “translates”
`is insufficient (POR at 24)
`
`(Paper 7 (Decision) at 20-21)
`
`21
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`“generating a key code…”
`
`The file history and the Patent show that “generating a
`key code . . .” excludes “translating” or “converting”
`(POR at 15-16)
`
`(POR at 15)
`
`22
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`“generating a key code…”
`
`The Patent describes what is intended by “translating”
`or “converting” (POR at 15-16)
`
`(EX2003 (Sprenger Decl.) at ¶ 140)
`
`(EX1001 (642 Patent) at 5:41-63)
`
`23
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`“generating a key code…”
`
`The file history shows that “generating a key code . . .”
`excludes “translating” or “converting” (POR at 15-16)
`
`(EX1002 (642 Patent File History) at 72)
`
`(EX1002 (642 Patent File History) at 120)
`
`(EX2003 (Sprenger Decl.) at ¶ 139)
`
`24
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Claim constructions
`
`• “key code generator device”
`• “generating a key code within a key code generator
`device using the keystroke indicator”
`
`• “key code signal”
`
`(POR at 11-16)
`
`25
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`“key code signal”
`
`Petitioner clarifies that a “key code signal” excludes a
`codeset (POR at 12-13)
`
`“key code signal”
`
`“a signal containing a modulated key code”
`
`(Paper 7 (Decision) at 11-15)
`
`(POR at 12)
`
`(Paper 7 (Decision) at 2)
`
`26
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`“key code signal”
`
`File History demonstrates that “key code signal”
`excludes transmitting a codeset (POR at 12-13)
`
`“key code signal”
`
`“a signal containing a modulated key code”
`
`(Paper 7 (Decision) at 11-15)
`
`(EX1002 (642 Patent File History) at 242; see also 75-76, 121)
`
`27
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`“key code signal”
`
`Patent demonstrates that “key code signal” excludes
`transmitting a codeset (POR at 12-13)
`
`(EX2003 (Sprenger Decl.) at ¶¶ 129-130)
`
`28
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`“key code signal”
`
`Petitioner’s expert agreed that “key code signal”
`excludes transmitting a codeset (POR at 12-13)
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 57:2-17)
`
`29
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`“key code signal”
`
`Petitioner offers no evidence to dispute “key code
`signal” excludes transmitting a codeset
`(PO Sur-reply at 2-3)
`
`(EX2011 (Markman transcript) at 58:23-59:8)
`
`30
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Grounds
`
`Each of the grounds fails to disclose limitations of
`claims 1-2 (POR at 22-27, 38-43, 50-53, 58-59)
`
`“generating a key
`code . . . using the
`keystroke indicator
`signal”
`“key code
`generator device”
`“key code signal”
`“modulating said
`key code onto a
`carrier signal”
`
`Ground 1:
`Mishra + Dubil
`FAIL
`
`Ground 2:
`Rye + Dubil
`FAIL
`
`Ground 3:
`Caris + Skerlos
`FAIL
`
`FAIL
`FAIL
`
`FAIL
`
`FAIL
`
`FAIL
`FAIL
`
`31
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`• Introduction to Mui Patents
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Mishra and Dubil
`• Ground 2: Rye and Dubil
`• Ground 3: Caris and Skerlos
`
`32
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra
`
`(EX1005 (Mishra) at Fig. 1)
`
`(EX1005 (Mishra) at [0022])
`
`(EX2003 (Sprenger Decl.) at ¶ 103)
`33
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra
`
`(EX1005 (Mishra) at Fig. 1)
`
`(EX1005 (Mishra) at [0020])
`
`(EX1003 (Russ Decl.) at ¶ 108)
`
`34
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Dubil
`
`(EX1006 (Dubil) at Fig. 1)
`
`(EX1006 (Dubil) at 2:61-67)
`
`(EX1006 (Dubil) at 5:6-20)
`
`35
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`A POSITA would not have combined Mishra with
`Dubil (POR at 18-22)
`
`The combination of Mishra and Dubil must apply the transmissions from Dubil’s
`remote control to Mishra’s set-top box to meet the claims (EX1003 (Russ Decl.) at ¶
`¶ 146, 128):
`
`(EX1003 (Russ Decl.) at ¶ 105)
`
`(EX1003 (Russ Decl.) at ¶ 109)
`
`36
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`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`A POSITA would not have combined Mishra with
`Dubil (POR at 18-22)
`
`Petitioner and its expert fail to offer any reasons why a POSITA reading Mishra
`would have been motivated to modify it to add “modulating onto a carrier signal”
`(POR at 18-19)
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 86:1-3)
`
`(EX2010 (Russ Depo. Tr. June 19, 2020) at 69:2-7)
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 70:16-20)
`
`37
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`A POSITA would not have combined Mishra with
`Dubil (POR at 18-22)
`
`Petitioner and its expert fail to offer any reasons why a POSITA reading Mishra would
`have been motivated to add “modulating onto a carrier signal” (POR at 18-19)
`
`(EX2009 (Russ Depo. Tr. June 18, 2020) at
`114:1-4)
`
`(EX2009 (Russ Depo. Tr. June 18, 2020) at
`123:3-17)
`
`38
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`A POSITA would not have combined Mishra with
`Dubil (POR at 18-22)
`
`Petitioner and its expert fail to offer any reasons why a POSITA reading Mishra
`would have been motivated to modify it to add “modulating onto a carrier signal”
`(POR at 18-19)
`
`“But that reasoning seems to say no more than that a skilled artisan,
`once presented with the two references, would have understood that
`they could be combined. And that is not enough: it does not imply a
`motivation to pick out those two references and combine them to
`arrive at the claimed invention.” Personal Web Techs. v. Apple Inc., 848
`F.3d 987, 993-994 (Fed. Cir. 2017).
`
`39
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`A POSITA would not have combined Mishra with
`Dubil (POR at 18-22)
`
`A POSITA would not have combined Mishra with Dubil because they teach away
`from one another in multiple incompatible ways (POR at 20-22):
`
`(EX2003 (Sprenger Decl.) at ¶¶ 152-153)
`
`40
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`A POSITA would not have combined Mishra with
`Dubil (POR at 18-22)
`
`A POSITA would not have combined Mishra with Dubil because they teach away
`from one another in multiple incompatible ways (POR at 20-22):
`
`(EX2008 (Russ Depo. Tr. June 17, 2020)
`at 158:12-159:3)
`
`41
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`A POSITA would not have combined Mishra with
`Dubil (POR at 18-22)
`
`A POSITA would not have combined Mishra with Dubil because they teach away
`from one another in multiple incompatible ways (POR at 20-22):
`
`(EX2003 (Sprenger Decl.) at ¶ 154)
`
`42
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`A POSITA would not have combined Mishra with
`Dubil (POR at 18-22)
`
`Petitioner and its expert never address incompatibilities (POR at 21).
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 146:14-22)
`
`43
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`A POSITA would not have combined Mishra with
`Dubil (POR at 18-22)
`
`Petitioner’s expert’s approach is legally impermissible (Pet. at 23-25):
`“’‘When prior art references require selective combination by the court to render obvious a subsequent
`invention, there must be some reason for the combination other than the hindsight gleaned from the invention
`itself." Interconnect Planning Corp. v. Feil, 774 F. 2d 1132, 1143 (Fed. Cir. 1985). Otherwise, we "cannot use
`hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the
`claimed invention.’ In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988). Here, the Examiner's selection of just the
`removable plate feature of Finch to the exclusion of the accompanying and interrelated driving mechanism and
`follower smacks of hindsight reasoning.” Ex Parte Creed Taylor, No. 2017-009744, 2018 Pat. App. LEXIS 6083, at
`*7-9 (P.T.A.B. Aug. 1, 2018) (emphasis added).
`
`“We hold that the district court's finding that there would not have been a motivation to combine is not clearly
`erroneous. The district court correctly acknowledged that it is not enough for Toro to merely demonstrate that
`elements of the claimed invention were independently known in the prior art. Often, every element of a
`claimed invention can be found in the prior art. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). Moreover, Toro
`merely identifies a problem that Henriksson sought to solve. However, "knowledge of a problem and motivation
`to solve it are entirely different from motivation to combine particular references." Innogenetics, N.V. v. Abbott
`Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008).” Metalcraft of Mayville, Inc. v Toro, 848 F.3d 1358, 1367 (Fed. Cir.
`2017).
`
`44
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`A POSITA would not have combined Mishra with
`Dubil (POR at 18-22)
`
`Petitioner’s expert’s approach is legally impermissible (Pet. at 23-25):
`
`“As the ALJ recognized, prior art references before the tribunal must be read as a whole and
`consideration must be given where the references diverge and teach away from the claimed
`invention. W. L. Gore & Associates, Inc. v. Garlock, 721 F.2d 1540, 1550, 220 U.S.P.Q. (BNA) 303, 311
`(Fed. Cir. 1983), cert. denied, 469 U.S. 851, 83 L. Ed. 2d 107, 105 S. Ct. 172 (1984). Moreover,
`appellants cannot pick and choose among individual parts of assorted prior art references "as a
`mosaic to recreate a facsimile of the claimed invention." 721 F.2d at 1552, 220 U.S.P.Q. (BNA) at
`312. In this case, the ALJ found that Akzo's expert witnesses could not show how the prior art
`patents could be brought together to render the Blades '756 invention obvious without
`reconstructing the teachings of those patents assisted by hindsight.” Akzo N.V. v. United States ITC,
`808 F.2d 1471, 1481, (Fed. Cir. 1986).
`
`45
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`A POSITA would not have combined Mishra with
`Dubil (POR at 18-22)
`
`Petitioner’s argument of “finite number of predictable choices” should be
`disregarded as new, and it ignores the cost considerations that Petitioner’s expert
`stressed (PO Sur-reply at 6-7):
`
`(Pet. Reply at 10)
`
`46
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra + Dubil fail to disclose limitations of claim 1
`(POR at 22-27)
`
`Ground 1:
`Mishra + Dubil
`FAIL
`
`FAIL
`FAIL
`
`“generating a key
`code . . . using the
`keystroke indicator
`signal”
`“key code signal”
`“modulating said
`key code onto a
`carrier signal”
`
`(EX1001 (642 Patent) at Cl. 1)
`
`47
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`1
`
`Mishra + Dubil fail to disclose “generating a key code
`. . . using the keystroke indicator signal” (POR at 24)
`
`Petitioner relies on “translating” a received command code (POR at 24; Pet. at 23):
`
`(EX1005 (Mishra) at [0020])
`
`(Paper 7 (Decision) at 20-21)
`
`48
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`1
`
`Mishra + Dubil fail to disclose “generating a key code
`. . . using the keystroke indicator signal” (POR at 24)
`
`Petitioner only relies on Mishra’s “translating” the format (POR Sur-reply ay 4):
`
`(EX1005 (Mishra) at [0020])
`
`(Pet. Reply at 8)
`
`49
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`2
`
`Mishra + Dubil fail to disclose “a key code signal”
`(POR at 25)
`
`Mishra discloses transmitting a codeset (EX2003 (Sprenger Decl.) at 176-178, 187):
`
`(EX1005 (Mishra) at [0033]-[0034])
`
`50
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`2
`
`Mishra + Dubil fail to disclose “a key code signal”
`(POR at 25)
`
`Petitioner misreads the difference between the embodiments: it is how often the
`codeset is transmitted, not that a single key code is ever transmitted the
`embodiments of Mishra (POR sur-reply at 4-5):
`
`(EX1005 (Mishra) at [0039])
`
`51
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`3
`
`Mishra + Dubil fail to disclose “modulating said key
`code onto a carrier signal” (POR at 25-27)
`
`Dubil does not describe modulating onto a carrier signal from the set-top box as
`required by claim 1 (POR at 25-27):
`
`(EX1001 (642 Patent) at Cl. 1)
`
`(EX2003 (Sprenger Decl.) at ¶ 196)
`
`(EX1003 (Russ Decl.) at ¶ 146)
`
`52
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`3
`
`Mishra + Dubil fail to disclose “modulating said key
`code onto a carrier signal” (POR at 25-27)
`
`Dr. Sprenger explained how Dubil’s set-top box cannot modulate onto a carrier
`signal as required by claim 1 (POR at 26-27):
`
`(EX2003 (Sprenger Decl.) at ¶ 199)
`
`53
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra + Dubil fail to disclose limitations of claim 4
`
`(EX1001 (642 Patent) at Cl. 4)
`Petition relies only on Dubil, and Petitioner’s expert admits Mishra does not
`disclose a “key code comprises . . . timing information” (Pet. at 27-29):
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 137:3-12)
`
`54
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra + Dubil fail to disclose limitations of claim 4
`
`(EX1001 (642 Patent) at Cl. 4)
`Petitioner’s expert relies on Dubil “that timing parameters would be used to
`transmit” and “an XML-based system for organizing and storing this information”
`(POR at 28-29):
`
`(EX1003 (Russ Decl.) at ¶ 139)
`
`55
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra + Dubil fail to disclose limitations of claim 4
`
`Petitioner’s expert admitted that Dubil disclosed the “bit pattern of the command
`code” is stored separately from the “duty cycle, repetition time, and on/off
`times” relied on for timing information (POR at 29; EX2003 (Sprenger Decl.) at ¶
`214):
`
`(EX1006 (Dubil) at 4:34-41)
`
`(EX2010 (Russ Depo. Tr. June 19, 2020) at 65:13-20)
`
`56
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra + Dubil fail to disclose limitations of claim 6
`
`57
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra + Dubil fail to disclose limitations of claim 6
`
`Petition relies on Mishra’s “radiofrequency links” for receiving a key code on the
`radio frequency band (Pet. at 29-30; POR at 30):
`
`(Pet. at 29)
`Mishra’s “radiofrequency links” are for the telephone application, not for
`controlling other electronic devices (POR at 30):
`
`(EX1005 (Mishra) at [0022]-[0023])
`
`58
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra + Dubil fail to disclose limitations of claim 6
`
`Mishra does not describe using RF signals for the non-telephone electronic
`devices (POR at 30-31):
`
`(EX2003 (Sprenger Decl.) at ¶ 224)
`
`(EX2008 (Russ Depo. Tr. June 17, 2020) at 124:20-125:1)
`
`59
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra + Dubil fail to disclose limitations of claim 6
`
`Dubil also only describes using IR between the set-top box and remote control
`(POR at 30):
`
`(EX2003 (Sprenger Decl.) at ¶ 231)
`
`60
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra + Dubil fail to disclose limitations of claim 6
`
`Neither Mishra nor Dubil discloses receiving a key code via RF and then
`transmitting that key code via IR (POR at 30-31):
`
`(EX2003 (Sprenger Decl.) at ¶ 231)
`
`61
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra + Dubil fail to disclose the limitations of
`claims 8-9
`
`62
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra + Dubil fail to disclose claim 9
`
`Neither Mishra nor Dubil discloses a digital one or digital zero (POR at 32-34):
`
`(EX1032 (Russ Suppl. Decl.) at ¶ 43;
`See also Pet. at 33 (“Mishra does not explicitly
`describe the format of key codes as including
`timing information”)
`
`(642 Patent at 5:6-23;
`see also EX2003 (Sprenger Decl.) at ¶ 255)
`63
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`Mishra + Dubil fail to disclose claim 9
`
`USPTO already found that “signal timing information” does not teach or suggest a
`digital one and a digital zero (POR at 33):
`
`(EX2007 (553 Patent File History) at 256)
`
`64
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`• Introduction to Mui Patents
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Mishra and Dubil
`• Ground 2: Rye and Dubil
`• Ground 3: Caris and Skerlos
`
`65
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`Rye
`
`(EX1007 (Rye) at Fig. 3)
`
`(EX1007 (Rye) at [0023])
`
`66
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`Rye
`
`(EX1007 (Rye) at Fig. 3)
`
`(EX2003 (Sprenger Decl.) at ¶ 112)
`
`67
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`Dubil
`
`(EX1006 (Dubil) at Fig. 1)
`
`(EX1006 (Dubil) at 2:61-67)
`
`(EX1006 (Dubil) at 5:6-20)
`
`68
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`A POSITA would not have combined Rye with Dubil
`(POR at 35-38)
`
`The combination of Rye and Dubil must apply the transmissions from Dubil’s
`remote control to Rye’s transceiver to meet the claims (EX1003 (Russ Decl.) at ¶¶
`173-176):
`
`(EX1003 (Russ Decl.) at ¶ 153)
`
`(EX1003 (Russ Decl.) at ¶ 109)
`
`69
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`A POSITA would not have combined Rye with Dubil
`(POR at 35-38)
`
`Petitioner and its expert fail to offer any reasons why a POSITA reading Rye would
`have been motivated to modify it to add “modulating onto a carrier signal” (POR at
`35-36):
`
`(EX1003 (Russ Decl.) at ¶ 174)
`
`70
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`A POSITA would not have combined Rye with Dubil
`(POR at 35-38)
`
`Petitioner and its expert fail to offer any reasons why a POSITA reading Rye would
`have been motivated to modify it to add “modulating onto a carrier signal” (POR at
`35-36):
`
`(EX2003 (Sprenger Decl.) at ¶ 310)
`
`(EX2009 (Russ Depo. Tr. June 18, 2020) at
`123:3-17)
`
`71
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`A POSITA would not have combined Rye with Dubil
`(POR at 35-38)
`
`Rye teaches away from making modifications that “add[] to the cost and complexity of
`the system” (e.g., adding a modulator to the transceiver) (POR at 36-37):
`
`(EX2003 (Sprenger Decl.) at ¶ 275)
`
`(EX1007 (Rye) at [0009])
`
`72
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`A POSITA would not have combined Rye with Dubil
`(POR at 35-38)
`
`Rye teaches that the “dumb” remote control does not transmit to the electronic
`consumer device, which is the opposite of Dubil (POR at 36):
`
`(EX2003 (Sprenger Decl.) at ¶ 273)
`
`(EX1003 (Russ Decl.) at ¶ 153
`(Rye Figs. 2-3))
`
`(EX1003 (Russ Decl.) at ¶ 109
`(Dubil Fig. 1)
`
`73
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`A POSITA would not have combined Rye with Dubil
`(POR at 35-38)
`
`Rye teaches that the “dumb” remote control does not transmit to the electronic
`consumer device, which is the opposite of Dubil (POR at 36):
`
`(EX2003 (Sprenger Decl.) at ¶ 271)
`
`(EX1003 (Russ Decl.) at ¶ 153
`(Rye Figs. 2-3))
`
`(EX1003 (Russ Decl.) at ¶ 109
`(Dubil Fig. 1)
`
`74
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`Rye + Dubil fail to disclose limitations of claim 2
`(POR at 38-43)
`
`Ground 2:
`Rye + Dubil
`FAIL
`
`FAIL
`
`“generating a key
`code . . . using the
`keystroke indicator
`signal”
`“modulating said
`key code onto a
`carrier signal”
`
`(EX1001 (642 Patent) at Cl. 2)
`
`75
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`1
`
`Rye + Dubil fail to disclose “generating a key code . . .
`using the keystroke indicator signal” (POR at 40)
`
`Petitioner relies on Rye’s converting received codes into IR format (Paper 7 (Decision) at
`25; Pet. at 35):
`
`(EX1007 (Rye) at [0016])
`
`(EX1007 (Rye) at [27])
`
`The “lookup table” values are never transmitted, but are only used to convert the
`received key code into the IR format (POR at 41; EX2003 at ¶ 297)
`
`76
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`1
`
`Rye + Dubil fail to disclose “generating a key code . . .
`using the keystroke indicator signal” (POR at 40)
`
`(EX1002 (642 Patent File History) at 72)
`
`(EX1002 (642 Patent File History) at 120)
`
`(EX2003 (Sprenger Decl.) at ¶ 139)
`
`77
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`1
`
`Rye + Dubil fail to disclose “generating a key code . . .
`using the keystroke indicator signal” (POR at 40)
`
`(EX2003 (Sprenger Decl.) at ¶ 140)
`
`(EX1001 (642 Patent) at 5:41-63)
`
`78
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`2
`
`Rye + Dubil fail to disclose “modulating said key
`code onto a carrier signal” (POR at 40-43)
`
`Dubil does not describe modulating onto a carrier signal from the set-top box as
`required by claim 1 (POR at 41-43):
`
`(EX1001 (642 Patent) at Cl. 1)
`
`(EX2003 (Sprenger Decl.) at ¶¶ 313-314)
`
`(EX1003 (Russ Decl.) at ¶ 146)
`
`79
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 1: Mishra + Dubil (1, 3-4, 6, 8-9)
`
`2
`
`Rye + Dubil fail to disclose “modulating said key
`code onto a carrier signal” (POR at 40-43)
`Dr. Sprenger explained how Dubil’s set-top box cannot modulate onto a carrier
`signal as required by claim 1 (POR at 41-43):
`
`(EX2003 (Sprenger Decl.) at ¶¶ 199, 315)
`
`80
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`2
`
`Rye + Dubil fail to disclose “modulating said key
`code onto a carrier signal” (POR at 40-43)
`
`Rye’s transceiver does not have a modulator (POR at 42-43; EX2003 (Sprenger
`Decl.) at ¶ 316):
`
`(EX1007 (Rye) at Figs. 3)
`
`81
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 2: Rye + Dubil (2, 22-25)
`
`Rye + Dubil fail to disclose limitations of dependent
`claims 22-25
`
`82
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Agenda
`
`• Introduction to Mui Patents
`• Background: Petition and Institution
`• Claim constructions
`• Ground 1: Mishra and Dubil
`• Ground 2: Rye and Dubil
`• Ground 3: Caris and Skerlos
`
`83
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Caris + Skerlos (1-4, 6, 8-9, 22-25)
`
`Caris:
`
`(EX1008 (Caris) at Fig. 1, 2:12-39)
`
`84
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Caris + Skerlos (1-4, 6, 8-9, 22-25)
`
`Caris:
`
`Petitioner alleges for
`claims 1, 3, 4, 6, 8, 9
`(Pet. at 48-49)
`
`Petitioner alleges for
`claims 2, 22-25
`(Pet. at 49-50)
`
`85
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Caris + Skerlos (1-4, 6, 8-9, 22-25)
`
`Skerlos:
`
`(EX1009 (Skerlos) at 1:5-10)
`
`(Pet. at 50)
`
`86
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Caris + Skerlos (1-4, 6, 8-9, 22-25)
`
`A POSITA would not have combined Caris with
`Skerlos (POR at 47-50)
`
`The combination of Caris and Skerlos must apply the transmissions from Skerlos’
`remote control to Caris’s STB to meet the claims (EX1003 (Russ Decl.) at ¶¶ 206-207):
`
`(EX1003 (Russ Decl.) at ¶ 201)
`
`(EX1009 (Skerlos) at 1:5-10)
`
`87
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Caris + Skerlos (1-4, 6, 8-9, 22-25)
`
`A POSITA would not have combined Caris with
`Skerlos (POR at 47-50)
`
`Both experts agree that a POSITA reading Caris would not have wanted to modify
`the television set, which is the entire subject of Skerlos (POR at 49-50):
`
`(EX1009 (Skerlos) at 1:5-10)
`
`(EX2003 (Sprenger Decl.) at ¶ 363)
`
`88
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Caris + Skerlos (1-4, 6, 8-9, 22-25)
`
`A POSITA would not have combined Caris with
`Skerlos (POR at 47-50)
`
`(2) Both experts agree that a POSITA reading Caris would not have wanted to
`modify the television set, which is the entire subject of Skerlos (POR at 49-50):
`
`(EX2009 (Russ Depo. Tr. June 18, 2020) at 160:10-161:12)
`
`89
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Caris + Skerlos (1-4, 6, 8-9, 22-25)
`
`A POSITA would not have combined Caris with
`Skerlos (POR at 47-50)
`
`Caris and Skerlos are directed to entirely different problems and solutions (POR at
`48-49):
`
`(EX2003 (Sprenger Decl.) at ¶ 361)
`
`90
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Caris + Skerlos (1-4, 6, 8-9, 22-25)
`
`Caris + Skerlos fail to disclose limitations of claim 1
`(POR at 50-54)
`
`Ground 3:
`Caris + Skerlos
`FAIL
`
`FAIL
`FAIL
`
`“key code
`generator device”
`“key code signal”
`“modulating said
`key code onto a
`carrier signal”
`
`(EX1001 (642 Patent) at Cl. 1)
`
`91
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Caris + Skerlos (1-4, 6, 8-9, 22-25)
`
`1
`
`Caris + Skerlos fail to disclose “a key code generator
`device” for claim 1 (POR at 50-51)
`
`(Pet. at 55)
`
`(EX1003 (Russ Decl.) at ¶ 201)
`
`92
`
`(Paper 7 (Decision) at 33)
`
`Patent Owner's Demonstrative Exhibit
` Not Evidence
`
`
`
`Ground 3: Caris + Skerlos (1-4, 6, 8-9, 22-25)
`
`1
`
`Caris + Skerlos fa
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