Roku, Inc. v. Universal Electronics Inc.
`
`IPR2019-01615 (USPN 9,716,853)
`
`Oral Hearing, January 25, 2021
`Judges Boucher, Chung, and Fenick
`
`Patent Owner’s Oral Hearing Demonstratives
`
`DEMONSTRATIVE EXHIBIT– NOT EVIDENCE
`
`Greenberg Traurig, LLP
`
`
`
`IPR2019-01615 (USPN 9,716,853)
`
`Oral Hearing, January 25, 2021
`Judges Boucher, Chung, and Fenick
`
`Patent Owner’s Oral Hearing Demonstratives
`
`DEMONSTRATIVE EXHIBIT– NOT EVIDENCE
`
`Greenberg Traurig, LLP
`
`
`
`Contents
`
`The Inventions Of The Challenged Claims Of The ‘853 Patent
`
`The Instituted Grounds
`
`Claim Construction
`
`The Claims Are Valid
`– Chardon Alone Does Not Render The Claims Obvious
`– Chardon In Combination With Stecyk and/or HDMI 1.3(a)
`Does Not Render The Claims Obvious
`
`Petitioner’s Improper Reply Arguments Should Be Disregarded
`
`2
`
`
`
`The Inventions Of The Challenged Claims
`
`The Challenged Claims of the ‘853 patent: Independent claim 1
`and dependent claims 3, 5, and 7 (“Claims”).
`
`The Claims generally recite “a modular hardware and software
`solution, [ ] referred to as a Universal Control Engine (UCE),
`which is adapted to provide device control access across a
`variety of available control methodologies and communication
`media.” (‘853 patent, EX1001, at 2:4-10.)
`
`The UCE is programmed to respond to the detected presence of
`a target appliance by using an identity associated with the target
`appliance to create a “listing” comprised of multiple
`communication methods for use in controlling multiple functions
`of the target appliance. (Id. at claim 1.)
`
`3
`
`
`
`The Inventions Of The Challenged Claims
`
`Independent Claim 1 expressly requires that:
`– the UCE creates a listing in response to the UCE
`detecting the presence of an intended target appliance
`(“Response Limitation”);
`– the UCE uses an identity associated with the intended
`target appliance detected by the UCE to create the listing
`(“Identity Limitation”);
`two different
`least
`– the created listing comprises at
`communication methods
`(“Communication Methods
`Limitation”); and
`– the at
`least
`two different communication methods in the
`listing control the at least two functional operations of the
`intended
`target
`appliance
`(“Functional Operations
`Limitation”).
`
`4
`
`
`
`The Inventions Of The Challenged Claims
`
`An example of the created “listing” is shown in Figure 7:
`
`(‘853 patent, EX1001, at FIG. 7.)
`
`5
`
`
`
`The Instituted Grounds
`
`Ground 1: Claims 1, 3, 5, and 7 obvious over Chardon alone
`
`Grounds 2-4: Claims 1, 3, 5, and 7 obvious over Chardon in
`view of HDMI 1.3a (Ground 2); Chardon in view of Stecyk
`(Ground 3); and Chardon in view of HDMI 1.3a and Stecyk
`(Ground 4)
`
`6
`
`
`
`Claim Construction
`
`Claim Term
`“for use in controlling each of at least a first
`functional operation and a second functional
`operation of the intended target appliance”
`
`The Board previously held that “no specific construction is required for the
`disputed term.” (Institution Decision (“ID”), Paper 12 at 17.)
`
`Patent Owner and its expert agree that no construction is necessary.
`(EX2002, 7/13/20 Turnbull Declaration, ¶ 49.)
`
`Petitioner asks the Board to construe this term as “for use in controlling the
`same at least a first functional operation and a second functional operation
`of the same intended target appliance.” (Petition (“Pet.”), Paper 2 at 15.)
`
`7
`
`
`
`The Challenged Claims Are Valid
`
`In an obviousness analysis, “the prior art must disclose, teach, or
`suggest the elements recited in order for the claim to be found
`unpatentable.” Presidio Components, Inc. v. AVX Corp., Case
`IPR2015-01332, Paper 21 at 4 (PTAB Feb. 18, 2016).
`
`8
`
`
`
`The Claims Are Valid
`
`Chardon Alone Does Not Render The Claims Obvious
`
`– Petitioner Has Not Met Its Burden Of Proving That Chardon
`Discloses, Teaches, Or Suggests:
`
`• the Response Limitation
`• the Identity Limitation
`• the Communication Methods Limitation
`• the Functional Operations Limitation
`
`9
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Response Limitation)
`
`Petitioner has failed to meet its burden of proving that Chardon
`discloses, teaches, or suggests the Response Limitation.
`
`The Response Limitation requires that:
`– the UCE creates a listing in response to the UCE detecting the
`presence of an intended target appliance
`• Petitioner does not dispute that, according to the Response
`Limitation, the UCE must create a “listing” in response to a
`detected presence of an intended target appliance.
`(Resp.,
`Paper 20 at 13; Reply, Paper 24 at 2- 5.)
`In other words, the
`listing must be created after the UCE detects an intended target
`appliance.
`In Chardon, the alleged “listing” is created before the UCE detects a
`target appliance—not after, and not in response to detecting a target
`appliance, as required by the Claims.
`
`10
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Response Limitation)
`
`Claim 1 with the Response Limitation highlighted
`
`(‘853 patent, EX1001, at claim 1.)
`
`11
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Response Limitation)
`
`Petitioner asserts that the alleged “respon[se] to a detected presence of an
`intended target appliance” of Chardon occurs when Chardon’s remote “queries”
`an appliance for an Extended Display Identification Data (“EDID”), receives the
`appliance’s EDID, and then “links” the EDID with a set of command codes. (Pet.,
`Paper 2 at 45-46, 51, 64; Reply, Paper 24 at 2-5.)
`
`Petitioner asserts that the alleged “listing” of Chardon is a “linked database” of
`CEC and IR command codes. (Pet., Paper 2 at 47; Reply, Paper 24 at 3.)
`
`Petitioner asserts that Chardon meets the Response Limitation because Chardon
`performs two steps to create the “linked database”:
`– First, Chardon creates a database of IR and CEC command codes
`(Reply, Paper 24 at 3); and
`– Second, after obtaining a target appliance’s EDID, Chardon “links” the EDID
`with the previously stored set of command codes by creating a “link” that is
`stored as an entry in the previously-created database of command
`codes (id.; see also id. at 8; EX1005, Chardon, at Abstract, [0007], [0034],
`[0044], claim 1, claim 9.)
`
`12
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Response Limitation)
`
`The Petition and Reply confirm that (i) creating a database of command
`codes and then later (ii) creating a “link” that is stored as an entry in the
`already-created database does not meet the Response Limitation.
`
`First, Petitioner admits that Chardon’s database of CEC and IR
`command codes is created before Chardon’s remote receives a target
`appliance’s EDID (i.e., before the alleged “response to a detected
`presence of an intended target appliance”)—and not after, in response
`to querying a target appliance and receiving its EDID. (Reply, Paper 24
`at 3, 7; Pet., Paper 2 at 47-48; EX2002, 7/13/20 Turnbull Declaration, ¶¶
`57-58.)
`
`13
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Response Limitation)
`
`Second, Petitioner does not assert that Chardon’s “link” is a “listing”
`(Reply, Paper 24 at 2-9; see generally Pet., Paper 2.)
`– Petitioner has asserted only that a database of command codes
`created before receiving a target appliance’s EDID is a “listing.”
`(See, e.g., Pet., Paper 2 at 2, 21, 37, 49, 50, 62.)
`– Chardon’s “link” is indisputably not a database—it is merely an
`entry in Chardon’s previously-created database of command
`codes.
`(See, e.g., Reply, Paper 24 at 8; EX1005, Chardon, at
`[0044]; EX2002, 7/13/20 Turnbull Declaration, ¶ 57.)
`is created in
`– Petitioner has failed to identify any database that
`response to Chardon’s remote receiving a target appliance’s EDID.
`(See generally Pet., Paper 2; Reply, Paper 24; EX1005, Chardon.)
`
`14
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Response Limitation)
`
`Petitioner mischaracterizes Chardon and takes inconsistent positions:
`
`to conflate
`– Petitioner uses the contrived term “linked database”
`Chardon’s steps of (i) storing a database of command codes and (ii)
`storing a “link” between the EDID and the pre-stored (and already-
`created) database of command codes.
`(See generally Reply, Paper
`24.)
`– Petitioner contrasts the term “linked database” with the equally-contrived
`terms “pre-linked database” and “unlinked database” to misleadingly
`assert that Chardon’s remote discloses two different databases—one
`before receiving a target appliance’s EDID and one after receiving a
`target appliance’s EDID. (Id.)
`– But Petitioner’s arguments acknowledge that Chardon’s remote
`discloses only a single command code database before receiving the
`target appliance’s EDID.
`(Id. at 3, 7; Pet., Paper 2 at 47-48; EX2002,
`7/13/20 Turnbull Declaration, ¶¶ 57-58.)
`
`15
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Identity Limitation)
`
`Petitioner has failed to meet its burden of proving that Chardon
`discloses, teaches, or suggests the Identity Limitation.
`
`The Identity Limitation requires that:
`– the UCE uses an identity associated with the intended target
`appliance detected by the UCE to create a listing
`• Petitioner does not dispute that, according to the Identity
`Limitation, the UCE must create a “listing” using an “identity”
`associated with an intended target appliance.
`(Resp., Paper 20
`at 18; Reply, Paper 24 at 5-9.)
`In Chardon, the “linked database” of CEC and IR command codes (i.e.,
`the alleged “listing”) is not created using an identity associated with
`an intended target appliance because there is no dispute that it is not
`created using an “EDID, or device make or model number, or vendor ID”
`(i.e., the alleged “identity associated with an intended target appliance”).
`
`16
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Identity Limitation)
`
`Claim 1 with the the Identity Limitation highlighted
`
`(‘853 patent, EX1001, at claim 1.)
`
`17
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Identity Limitation)
`
`the “an identity associated with the intended
`Petitioner asserts that
`target appliance” of Chardon is:
`– an “EDID, or device make or model number, or vendor ID.” (Pet.,
`Paper 2 at 52; EX1003, Russ Declaration, ¶ 194.)
`
`Petitioner also asserts that the alleged “listing” of Chardon is:
`– a so-called “linked database” of CEC and IR command codes.
`(Pet., Paper 2 at 47; Reply, Paper 24 at 3.)
`
`18
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Identity Limitation)
`
`The Petition and Reply confirm that (i) storing a database of command
`codes and then later (ii) storing a “link” between the EDID and the pre-
`stored (and already-created) database of command codes does not
`meet the Identity Limitation because:
`
`– (i) Petitioner admits that Chardon does not use an EDID, a device
`make or model number, or a vendor ID to form its database of
`command codes (Reply, Paper 24 at 3, 7; see also EX2002, 7/13/20
`Turnbull Declaration, ¶ 66); and
`
`– (ii) Petitioner does not assert that Chardon’s “link” is a “listing”
`(Reply, Paper 24 at 2-9; see generally Pet., Paper 2.)
`
`19
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Identity Limitation)
`
`Petitioner asserts in its Reply that Chardon discloses storing a “link” in a
`command code database and that the ‘853 patent also discloses storing
`a “pointer” in a command matrix. (Reply, Paper 24 at 8-9.)
`
`Petitioner’s untimely argument should be disregarded (see infra) and is
`also improper, irrelevant, and immaterial:
`
`– Prior art must be compared to the challenged claims, not to the
`challenged patent’s specification. Google,
`Inc. v. Whitserve LLC,
`IPR2013-00249, Paper 32 at 24 (PTAB Sept. 9, 2014).
`
`the ‘853 patent both
`– Whether Chardon and an embodiment of
`disclose a “link” stored as an entry in a “listing” has no bearing on
`how (and when) Chardon’s alleged “listing” is created and whether
`Chardon’s alleged “listing” is created using the claimed
`“identity” associated with an intended target appliance.
`
`20
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Communication Methods Limitation)
`
`Petitioner has failed to meet its burden of proving that Chardon discloses,
`teaches, or suggests the Communication Methods Limitation.
`
`The Communication Methods Limitation requires that:
`– the created listing comprises at least two communication methods
`• Petitioner does not dispute that the UCE must create a “listing” comprised
`of at least two different “communication methods.” (Resp., Paper 2 at 20-21;
`Reply, Paper 24 at 9-16; EX1001, ‘853 patent, at claim 1.)
`• Petitioner does not dispute that one of skill
`in the art would have
`understood a “communication method” to be a medium or protocol
`for
`transmitting or receiving information.
`(Resp., Paper 20 at 21-22; Reply,
`Paper 24 at 9-16; EX2002, 7/13/20 Turnbull Declaration, ¶ 70.)
`In Chardon, the alleged “listing” is not comprised of at least two communication
`methods because the alleged “listing” (i.e., the “linked database”) is comprised of
`“command codes.” (Reply, Paper 24 at 10.) Petitioner concedes that one of skill in
`the art would not have understood “command codes”
`to be the claimed
`“communication methods.” (Resp., Paper 20 at 25-26; EX2002, 7/13/20 Turnbull
`Declaration, ¶ 70; Reply, Paper 24 at 9-16.)
`
`21
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Communication Methods Limitation)
`
`Claim 1 with the Communication Method Limitation highlighted
`
`(‘853 patent,
`EX1001, at
`claim 1.)
`
`22
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Communication Methods Limitation)
`
`Petitioner’s improper, inconsistent, and new arguments further support
`that Petitioner has failed to meet its burden of proving that Chardon
`discloses, teaches, or suggests the Communication Methods Limitation:
`– Petitioner improperly relies on the same component of Chardon as
`meeting the Communication Methods Limitation and multiple other
`claim elements;
`– Petitioner raises a new argument in its Reply that is contradicted by
`the position it took in its Petition and by the claim language;
`– Petitioner raises a new argument that improperly attempts to rewrite
`the claim language; and
`that Chardon meets the
`– Petitioner
`raises a new argument
`Communication Method Limitation because Chardon’s specification
`and the ‘853 patent’s specification discuss similar structures.
`
`23
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Communication Methods Limitation)
`
`It is unreasonable and improper for a petitioner to rely on the same
`component/structure/etc. in a prior art reference as meeting multiple
`claim elements:
`
`– See Oxford Nanopore Technologies, Inc. v. Pacific Biosciences of California,
`Inc., IPR2018-01792, Paper 10 at 18 (PTAB Mar. 26, 2019)
`– See also Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d
`1249, 1254 (Fed. Cir. 2010) (holding that where “a claim lists elements
`separately,
`‘the clear
`implication of
`the claim language’
`is that
`those
`elements are ‘distinct component[s]’ of the patented invention.”)
`
`Here, Petitioner does not dispute that the Petition improperly reads
`Chardon’s “command codes” on multiple, distinct claim elements of
`Claim 1 (i.e.,
`“a first
`communication method and a second
`communication method,”
`“a received request,” and “a command”).
`(Resp., Paper 20 at 26-28; Reply, Paper 24 at 14-15.)
`
`24
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Communication Methods Limitation)
`
`In the Petition, Petitioner asserts that the alleged “first communication
`method” and “second communication method” of Chardon are command
`codes. (Pet., Paper 2 at 52, 53, 56; EX1003, Russ Declaration, ¶¶ 194,
`203.)
`
`In the Reply, Petitioner rewrites the claim language to raise a brand-
`new, attorney-only argument that Chardon’s “linked database” meets
`the Communication Methods Limitation because Chardon purportedly
`uses the “linked database” to convey at
`least
`two different sets of
`command codes over at least two different communication methods.
`(Reply, Paper 24 at 1, 10-12, 14.)
`
`Petitioner’s new argument is without merit, is contradicted by the clear
`and unambiguous language of the Claims, and it should be disregarded
`(see infra).
`
`25
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Communication Methods Limitation)
`
`Petitioner improperly attempts to rewrite the Communication Methods
`Limitation to remove the express requirement that the claimed listing is
`“comprised of” at least two different communications methods.
`(Reply,
`Paper 24 at 10; EX1001, ‘853 patent, at claim 1.)
`
`(‘853 patent, EX1001, at claim 1.)
`Using a database comprised of command codes is not the same thing
`as creating a database comprised of communication methods.
`– Petitioner also provides no analysis or expert testimony to support its new
`argument (Reply, Paper 24 at 10-16), and thus Petitioner’s new argument is
`conclusory, factually unsupported, and insufficient to establish obviousness.
`See ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d
`1312, 1327 (Fed. Cir. 2012).
`
`26
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Communication Methods Limitation)
`
`Petitioner also asserts for the first time in its Reply that Chardon
`meets the Communication Methods Limitation because Chardon’s
`specification and the ‘853 patent’s specification discuss similar
`structures. (Reply, Paper 24 at 13-14, 16.)
`
`Again, prior art must be compared to the claims, not to the patent’s
`specification. See Google, IPR2013-00249, Paper 32 at 24.
`
`Petitioner’s belated argument actually confirms that Chardon’s “linked
`database” of command codes is not the claimed listing comprised of
`at least two different communication methods:
`
`– The ‘853 patent distinguishes between a listing comprised of
`communication methods (e.g., command matrix 700) on the one hand, and a
`library or database of command codes (e.g., Chardon’s “linked database”)
`on the other. (EX1001, ‘853 patent, at FIG. 7, 7:19-42; Resp., Paper 20 at
`22-24; Reply, Paper 24 at 13; EX2002, 7/13/20 Turnbull Declaration, ¶¶ 71-
`72.)
`
`27
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Functional Operations Limitation)
`
`Petitioner has failed to meet its burden of proving that Chardon
`discloses, teaches, or suggests the Functional Operations Limitation.
`
`The Functional Operations Limitation requires that:
`– the at least two different communication methods control the at
`least two functional operations of the intended target appliance
`• Petitioner does not dispute that
`the at
`least
`two different
`communication methods in the “listing” control the first and second
`functional operations. (Resp., Paper 20 at 29; EX1001, ‘853 patent,
`at claim 1, 2 and 7, 6:62-7:18; EX2002, 7/13/20 Turnbull
`Declaration, ¶ 74; EX2005, Petitioner’s CC Brief, at 14; EX2006,
`Petitioner’s Reply CC Brief, at 11.)
`Petitioner has failed to show that Chardon meets the Functional Operations
`Limitation because Petitioner has misread the Functional Operations
`Limitation and has failed to show that Chardon meets this limitation under
`its correct reading.
`
`28
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Functional Operations Limitation)
`
`Claim 1 with the Functional Operations Limitation highlighted
`
`(‘853 patent,
`EX1001, at
`claim 1.)
`
`29
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Functional Operations Limitation)
`
`Petitioner admits that according to the Functional Operations Limitation
`“each of the listed communication methods must .
`.
`. able to
`control the same two or more functional operations of the same,
`single target appliance.”
`
`(Petitioner’s CC Brief, EX2005 at 14.)
`
`30
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Functional Operations Limitation)
`
`Despite Petitioner’s prior admissions, Petitioner misreads Claim 1 and
`asserts that the claimed “listing” is for use in controlling the claimed first
`and second functional operations of the intended target appliance:
`
`(Reply, Paper 24 at 17.)
`
`31
`
`
`
`Chardon Alone Does Not Render The Claims Obvious
`(No Functional Operations Limitation)
`
`Additionally, Petitioner cannot prove that Chardon discloses, teaches, or
`suggests the Functional Operations Limitation because:
`
`– (1) Petitioner has failed to show that Chardon discloses, teaches, or
`suggests the claimed “listing”;
`
`– (2) Petitioner has failed to show that Chardon’s “linked database” is
`used to control the first and second functional operations; and
`
`– (3) Petitioner does not assert in the Petition that Chardon discloses,
`teaches, or suggests using two different communication methods to
`control first and second functional operations and instead asserts
`only that Chardon discloses using two different types of command
`codes to control a single functional operation. (Pet., Paper 2 at 57-
`58.)
`
`32
`
`
`
`The Challenged Claims Are Valid
`
`Chardon In Combination With Stecyk and/or HDMI 1.3(a) Does
`Not Render The Claims Obvious
`
`– Petitioner Has Not Met Its Burden Of Proving That The
`Combination Of Chardon, Stecyk, and HDMI 1.3(a) Discloses,
`Teaches, Or Suggests The Response, Identity, Communication
`Methods, And Functional Operations Limitations.
`
`– Petitioner Has Not Met Its Burden Of Proving That One Of Skill
`In The Art Would Have Been Motivated To Combine Chardon
`With Stecyk and/or HDMI 1.3(a) To Arrive At The Inventions Of
`The Claims.
`
`33
`
`
`
`The Challenged Claims Are Valid
`
`In an obviousness analysis, “the prior art must disclose, teach, or
`suggest the elements recited in order for the claim to be found
`unpatentable.” Presidio Components, Inc. v. AVX Corp., Case
`IPR2015-01332, Paper 21 at 4 (PTAB Feb. 18, 2016).
`
`“A party seeking to invalidate a patent as obvious must
`demonstrate … that a skilled artisan would have had reason to
`combine the teaching of the prior art references to achieve the
`claimed invention, and that the skilled artisan would have had a
`reasonable expectation of success from doing so.” In re
`Cyclobenzaprine Hydrochloride Extended-Release Capsule Pat.
`Litig., 676 F.3d 1063, 1068-69 (Fed. Cir. 2012)
`
`34
`
`
`
`Chardon In Combination With HDMI 1.3(a) And/Or
`Stecyk Does Not Render The Claims Obvious
`
`Petitioner has not met its burden of proving that Chardon in
`combination with HDMI 1.3(a) and/or Stecyk discloses, teaches, or
`suggests each and every limitation of the Claims.
`– Petitioner has failed to show that Chardon discloses, teaches, or suggests
`each of the Response, Identity, Communication Methods, and Functional
`Operations Limitations (collectively, the “Listing Limitations,” supra).
`– Petitioner does not assert that HDMI 1.3(a) discloses, teaches, or suggests
`any of the Listing Limitations.
`(Resp., Paper 20 at 32; Reply, Paper 24 at
`18-21; ID, Paper 12 at 22.)
`– Petitioner does not assert that Stecyk discloses, teaches, or suggests any
`of the Listing Limitations.
`
`(Pet., Paper 2 at 3; see also Reply, Paper 24 at 21; ID, Paper 12 at 11.)
`
`35
`
`
`
`Chardon In Combination With HDMI 1.3(a) And/Or
`Stecyk Does Not Render The Claims Obvious
`
`Petitioner has failed to establish a motivation to combine Chardon
`with Stecyk.
`– Petitioner does not propose combining Chardon with Stecyk, and
`instead is simply using Stecyk to attempt to confirm that Chardon’s
`database of command codes should be considered a “listing.” (See
`Reply, Paper 24 at 21; see also Pet., Paper 2 at 3; EX1003, Russ
`Declaration, ¶ 32; ID, Paper 12 at 11.)
`
`– Based on this admission alone, Petitioner has failed to show that one
`of skill
`in the art would have been motivated to combine Chardon
`with Stecyk.
`• See, e.g., Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332
`(Fed. Cir. 2019) (affirming finding of no motivation to add a cooking oil
`quality sensor to a prior art system where the prior art system already
`taught a cooking oil quality sensor).
`
`36
`
`
`
`Chardon In Combination With HDMI 1.3(a) And/Or
`Stecyk Does Not Render The Claims Obvious
`
`Petitioner has failed to establish a motivation to combine Chardon
`with HDMI 1.3(a).
`
`– Petitioner does not dispute that, at the time of the invention of the
`Claims (i.e., October 28, 2011), HDMI 1.3(a) was not the current
`version of the HDMI standard.
`(Resp., Paper 20 at 38-39; Reply,
`Paper 24 at 19-21.)
`– Petitioner does not dispute that, between the release of the HDMI
`1.3(a) standard in November 2006 and the invention of the Claims in
`October 2011, three new versions of the HDMI standard had been
`released. (Id.)
`– Petitioner fails to provide any reason why one of skill in the art at the
`time of the invention of the Claims would have looked to a version of
`the HDMI standard that was already six years out-of-date. (See
`generally Reply, Paper 24 at 19-21.)
`
`37
`
`
`
`Petitioner’s Improper Reply Arguments
`Should Be Disregarded
`
`The Board Should Disregard Petitioner’s New Reply Arguments
`– A reply that raises a new issue or belatedly presents evidence may
`not be considered. Consolidated Trial Practice Guide (Nov. 2019) at
`74; Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765,
`775 (Fed. Cir. 2018).
`
`– A “[p]etitioner may not submit new evidence or argument in a reply
`that it could have presented earlier, e.g. to make out a prima facie
`case of unpatentability.” Consolidated Trial Practice Guide (Nov.
`2019) at 73; see also id. at 74.
`
`38
`
`
`
`Petitioner’s Improper Reply Arguments
`Should Be Disregarded
`
`Petitioner’s Reply improperly presents three new arguments that
`Petitioner could have presented (but failed to present) in its Petition:
`
`– (i) Petitioner asserts that Chardon’s “linked database” meets the
`Communication Methods Limitation because Chardon purportedly
`“uses” the “linked database” to convey at least two different sets of
`command codes over at least two different communication methods;
`
`limitations of
`– (ii) Petitioner asserts that Chardon discloses several
`Claim 1 because Chardon’s specification and the ‘853 patent’s
`specification discuss similar structures; and
`
`– (iii) Petitioner misleadingly and inconsistently asserts that Chardon’s
`remote forms two different databases, instead of just a single pre-
`stored (and already-created) database.
`
`39
`
`
`
`Petitioner’s Improper Reply Arguments
`Should Be Disregarded
`
`First, Petitioner rewrites the claim language to assert in its Reply that
`Chardon’s “linked database” meets the Communication Methods
`Limitation because Chardon purportedly “uses” the “linked database” to
`convey at least two different sets of command codes over at least two
`different communication methods. (Reply, Paper 24 at 10-14.)
`
`– In the Petition, however, Petitioner asserted that Chardon discloses
`creating a listing “of at least a first communication method (e.g., CEC
`command codes) and a second communication method different
`from the first communication method (e.g., IR command codes)” with
`no explanation or analysis. (Pet., Paper 2 at 52 (citing EX1003, Russ
`Declaration, ¶ 194); see also id. at 56.)
`
`40
`
`
`
`Petitioner’s Improper Reply Arguments
`Should Be Disregarded
`
`Second, Petitioner asserts that Chardon discloses several limitations of
`the Challenged Claims because Chardon’s specification and the ‘853
`patent’s specification discuss similar structures.
`(Reply, Paper 24 at 1,
`8-9, 12-18; see generally Pet., Paper 2 at 42- 59 (Petitioner failing to
`assert in the Petition that Chardon meets the relevant claim limitations
`because Chardon’s
`specification is purportedly
`similar
`to the
`specification of the ‘853 patent).)
`
`41
`
`
`
`Petitioner’s Improper Reply Arguments
`Should Be Disregarded
`
`Third, Petitioner’s Reply contrasts the contrived term “linked database”
`with the equally-contrived terms “pre-linked database” and “unlinked
`database” to misleadingly assert
`that Chardon’s remote creates two
`different databases (see, e.g., Reply, Paper 24 at 3-4), but in the Petition
`Petitioner does not use the terms “prelinked database” or “unlinked
`database,” and does not assert
`that Chardon’s remote creates two
`different databases (see generally Pet., Paper 2).
`
`42
`
`
`
`Roku, Inc. v. Universal Electronics Inc.
`
`IPR2019-01615 (USPN 9,716,853)
`
`Oral Hearing, January 25, 2021
`Judges Boucher, Chung, and Fenick
`
`Patent Owner’s Oral Hearing Demonstratives
`
`Greenberg Traurig, LLP
`
`
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