Roku, Inc.
`v.
`Universal Electronics, Inc.
`
`IPR2019-01615
`
`U.S. Patent No. 9,716,853
`
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`Petitioner’s Demonstratives
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`1
`
`Roku EX1055
`Roku v. UEI
`IPR2019-01615
`
`
`v.
`Universal Electronics, Inc.
`
`IPR2019-01615
`
`U.S. Patent No. 9,716,853
`
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`Petitioner’s Demonstratives
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`1
`
`Roku EX1055
`Roku v. UEI
`IPR2019-01615
`
`
`
`Instituted Grounds
`
`DI, 7.
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`2
`
`
`
`Undisputed Issues
` No dispute that Chardon discloses the physical elements that
`make up the claimed system – i.e. no dispute that Chardon
`discloses:
`– “a universal control engine”
`– “a processing device”
`– “a memory device having stored thereon instructions executable by the processing
`device”
`– “an intended target appliance within a logical topography of controllable appliances”
`– “a controlling device”
`
` No dispute that HDMI Spec Ver. 1.3a qualifies as prior art. Pet.
`Reply, 19.
`
` Patent Owner does not separately argue any dependent claim,
`so its arguments rise and fall with independent claim 1. POR,
`40.
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`3
`
`
`
`Disputed Issues
`
` The Listing Limitation (Pet. Reply, 2, 5, 9, 16)
`• The “Response Limitation”
`• The “Identity Limitation”
`• The “Communication Methods Limitation”
`• The “Functional Operations Limitation”
`
` Motivation to combine Chardon (Pet. Reply, 18-21)
`• with HDMI Ver. 1.3a
`• with Stecyk
`
`Pet., 36-38.
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`4
`
`
`
`The ’853 Patent’s System
`
`EX1001, ’853 Patent, FIG. 1 (annotated) (Pet., 6).
`
`EX1001, FIG. 5 (Universal Control Engine).
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`5
`
`
`
`Chardon’s System
`
`EX1005, Chardon, FIG. 1 (annotated) (Pet., 18).
`
`EX1005, FIG. 2 (annotated) (Pet., 20).
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`6
`
`
`
`The ’853 Patent’s Method of Creating a Listing
`Obtain Command Codes and Build Command Matrix
`Determine Connected Appliances
`
`EX1001, 9:27-34 (Pet., 7-8).
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`EX1001, FIG. 9 (Pet., 7-8).
`
`7
`
`
`
`The ’853 Patent’s Linked Command Matrix
`
`EX1001, 9:52-59 (Pet., 8).
`
`EX1001, FIG. 7 (Pet. Reply, 8).
`
`PO’s expert Dr. Turnbull confirmed that matrix 700 is an
`embodiment of the claimed listing. Pet. Reply, 13 (citing
`EX1053, 88:9-17).
`
`EX1001, 7:30-42 (Pet., 8; Pet. Reply, 8, 13).
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`8
`
`
`
`’853 Patent – Independent Claim 1
`
`’853 Patent – Claim 1
`1. A universal control engine, comprising:
`
`[1.1] a processing device; and a memory device having
`stored thereon instructions executable by the processing
`device, the instructions, when executed by the processing
`device, causing the universal control engine
`[1.2] to respond to a detected presence of an intended
`target appliance within a logical topography of controllable
`appliances which includes the universal control engine
`[1.3] by using an identity associated with the intended target
`appliance to create a listing comprised of
`[1.4] at least a first communication method and a second
`communication method different than the first communication
`method for use in controlling each of at least a first functional
`operation and a second functional operation of the intended
`target appliance and
`
`’853 Patent – Claim 1 (cont.)
`[1.5] to respond to a received request from a controlling
`device intended to cause the intended target appliance to
`perform a one of the first and second functional operations
`
`[1.6] by causing a one of the first and second communication
`methods in the listing of communication methods that has
`been associated with the requested one of the first and
`second functional operations to be used to transmit to the
`intended target appliance a command for controlling the
`requested one of the first and second functional operations
`of the intended target appliance.
`
`Pet., 9-10.
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`9
`
`
`
`Chardon’s Method of Creating a Listing
`
`Chardon’s Overview
`
`EX1005, ¶7 (Pet., 51).
`Obtain Identification of Connected HDMI Appliances (e.g., EDID
`of HDMI Display 105a) and Link to Command Code Database
`
`EX1005, ¶45 (Pet., 51-52).
`
`EX1005, ¶44 (Pet., 51-52).
`
`EX1005, ¶51 (Pet., 52).
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`10
`
`
`
`Chardon’s Method for Controlling an Appliance
`
`• Remote control engine sends a CEC
`command code to an HDMI appliance
`to be executed. DI, 19 (citing EX1005,
`¶58, FIG. 5, element 500).
`
`•
`
`If a response is not received indicating
`that the command code has been
`received and executed, an IR
`command code is sent to the HDMI
`appliance. DI, 19 (citing EX1005, ¶58,
`FIG. 5, elements 510, 530, 540; see
`also EX1005, ¶62, FIG. 6).
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`11
`
`
`
`Patent Owner’s Arguments
`
` The arguments center on the “creat[ing] a listing” feature.
`POR, 13, 17, 20, 28, 32.
`• Response Limitation
`• Identity Limitation
`• Communications Methods Limitation
`• Functional Operations Limitation
`
` The other arguments center on motivation to combine.
`POR, 36, 38.
`• Motivation to use HDMI Ver. 1.3a
`• Motivation to combine Chardon and Stecyk
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`12
`
`
`
`The “Response” and “Identity” Limitations
`
`•
`
`PO’s allegation re “Response Limitation”
`•
`“[T]he alleged ‘listing’ of Chardon is not created in response to a detected
`presence of an intended target appliance but is instead created before
`Chardon’s remote responds to a detected presence of an intended target
`appliance.” POR, 13.
`“Chardon discloses that the database of CEC and IR command codes (i.e., the
`alleged ‘listing’) is created before the remote creates a ‘link’ between a received
`EDID and the previously stored set of command codes, and not in response to
`querying a target appliance and receiving its EDID (i.e., the alleged ‘response to
`a detected presence of an intended target appliance’).” POR, 14.
`PO’s allegation re “Identity Limitation”
`•
`“[T]he alleged ‘listing’ of Chardon is not created using an alleged ‘identity’
`associated with an intended target appliance but is instead created before
`Chardon’s remote even receives the alleged ‘identity’ associated with the
`intended target appliance.” POR, 17.
`“Notably, Petitioner and its expert do not assert that a ‘link’ is the claimed ‘listing,’
`and instead assert only that a database of command codes is a ‘listing.’” POR,
`19.
`
`•
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`13
`
`
`
`The “Response” and “Identity” Limitations
`
`However, the Petition alleges that:
`
`Pet. Reply, 6-7 (citing Pet. et. seq.).
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`14
`
`
`
`Chardon Uses Target Appliance EDID to Creating a Listing
`
`[1.2] to respond to a detected presence of an intended target
`appliance within a logical topography of controllable appliances
`which includes the universal control engine
`
`[1.3] by using an identity associated with the intended target
`appliance to create a listing comprised of
`[1.4] at least a first communication method and a second
`communication method different than the first communication
`method for use in controlling each of at least a first functional
`operation and a second functional operation of the intended
`target appliance and
`
`EX1005, ¶45 (Pet., 51-52).
`
`EX1005, ¶44 (Pet., 51-52).
`
`EX1005, ¶51 (Pet., 52).
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`15
`
`
`
`The “Communication Methods Limitation”
`
`PO’s allegation re “Communications Methods Limitation”
`•
`“[T]he ‘command codes’ in the alleged ‘listing’ of Chardon are not
`‘communication methods’ and Chardon’s alleged ‘listing’ does not
`comprise ‘communication methods.’” POR, 20.
`“The ‘853 patent expressly teaches that a ‘communication method’ is a
`medium or protocol (e.g., CEC, IR, RF, etc.) for transmitting or receiving
`information.” POR, 21.
`
`•
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`16
`
`
`
`The “Communication Methods Limitation”
`
`Chardon’s linked database includes two different “mediums
`or protocols” – CEC over HDMI and IR. Pet. Reply, 10.
`
`EX1005, ¶51 (Pet., 52).
`
`EX1005, ¶39 (Pet. Reply, 10).
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`17
`
`
`
`The “Communication Methods Limitation”
`
`Patent Owner also alleges that:
`•
`“Petitioner reads Chardon’s ‘command codes’ on multiple, distinct limitations of
`challenged independent claim 1, thereby rendering certain limitations superfluous.”
`POR, 26.
`
`RE: “communication method”
`– The Petition points to Chardon’s EDID-linked database that enables communication between
`Chardon’s multi-media gateway (a UCE) and a target appliance via at least two different
`transmission mediums like CEC over HDMI and IR. Pet. Reply, 14; Pet., 47-52.
`
`RE: “received request”
`– The Petition points to functional operations like “Power Off” or “Volume Up” as corresponding to
`the generation of a “received request from a controlling device. Pet. Reply, 14; Pet., 59-60.
`
`RE: “a command”
`– The Petition points to Chardon’s multi-media gateway instantiating a command to control the
`function of a target appliance, which is satisfied if only one communication method is used to
`control a functional operation of the intended target appliance. Pet., 62-63.
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`18
`
`
`
`The “Functional Operations Limitation”
`
`“a listing . . . of at least a first [and second] communication method . . . for use in controlling each
`of at least a first [and second] functional operation . . . of the intended target appliance.”
` PO alleges that: “Petitioner and its expert misread the claim and incorrectly assert that the claimed
`‘listing’ of independent claim 1—not the claimed ‘communication methods’—is for use in controlling the
`first and second functional operations.” POR, 28.
`
`PO’s expert conceded that to actually control
`the function of an intended target appliance
`requires both a command transmission
`medium and an actual command. Pet. Reply,
`16-17 (citing EX1053, 98:16-21).
`
`Both Chardon and the ’853 patent expressly
`describe correction and compensation for
`failed CEC command codes by providing an
`alternate means for achieving the same
`requested function using IR command codes.
`Pet. Reply, 17; DI, 19.
`
`EX1001, FIG. 7 (Pet. Reply, 16-17).
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`19
`
`
`
`The Listing Limitations Generally
`
` Patent Owner did not question Petitioner’s expert Dr. Russ at all
`with respect to Chardon, let alone on any “listing limitation.” Dr.
`Russ’s analysis thus remains unrefuted. Pet. Reply, 4-5, 9.
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`20
`
`
`
`Motivation to Combine with HDMI
`
` PO does not dispute that HDMI Ver. 1.3a is prior art. Pet. Reply,
`19.
`
` PO does not dispute that a POSA would have had knowledge of
`HDMI Ver. 1.3a. Pet. Reply, 19.
`
` PO’s observation that later versions existed at the time of
`invention is legally irrelevant. Pet. Reply, 19-20.
`• See, e.g., Celeritas Tech’s. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361
`(Fed. Cir. 1998) (holding that just because the relied-upon disclosure was
`“shown to be less than optimal does not vitiate the fact that it is disclosed”).
`• “[T]he person of ordinary skill in the art is a hypothetical person who is
`presumed to have known the relevant art at the time of the invention.” See,
`e.g., MPEP § 2141.03.
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`21
`
`
`
`Motivation to Combine with HDMI
`
` PO’s observation that later versions existed at the time of
`invention is factually irrelevant. Pet. Reply, 20-21.
`• A manufacturer relying on the capabilities of the HDMI interface would
`need to comply with the requirements of the HDMI specification in order
`to be interoperable with other HDMI devices. Pet. Reply, 20 (citing
`EX1010, 17; EX1053, 118:8-20 (Turnbull admission)).
`• PO’s expert conceded that the HDMI specification is generally drafted so
`as to provide backwards compatibility. Pet. Reply, 20 (citing EX1053,
`120:4-124:1).
`• PO’s expert identified no meaningful substantive differences between
`HDMI Ver. 1.3a and later versions. Pet. Reply, 20.
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`22
`
`
`
`Motivation to Combine with Stecyk
`
` The Petition relies on Stecyk “optionally . . . to the extent that
`the Board does not find creation of a ‘listing’ obvious over
`Chardon alone . . . .” Pet., 32, 56; DI, 21-22.
`
` PO does not argue that Chardon’s EDID-linked database does
`not qualify as a “listing,” nor could it in view of the ’853 patent’s
`“command matrix,” which is also a linked list. Pet. Reply, 21.
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`23
`
`
`
`’853 Patent Appendix Slides
`
`Petitioner’s Demonstrative Exhibit
`Not Evidence
`
`24
`
`
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