UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`
`Petitioner,
`
`V.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`Case IPR2019-Ol615
`
`US. Patent 9,716,853
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`
`RESPONSE
`
`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`US. Patent & Trademark Office
`
`PO. BOX 1450
`
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`
`Petitioner,
`
`V.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`Case IPR2019-Ol615
`
`US. Patent 9,716,853
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`
`RESPONSE
`
`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`US. Patent & Trademark Office
`
`PO. BOX 1450
`
`Alexandria, VA 22313-1450
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2019-Ol615
`
`US. Patent 9,716,853
`
`The Petition Includes Grounds Relying on Non-Cumulative Prior Art
`that Was Not Previously Presented to the Office. .............................. l
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`II.
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`The Examiner Materially Erred in Not Using Chardon to Reject the
`Claims Presented During Prosecution. .............................................. 2
`
`111.
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`CONCLUSION ................................................................................. 5
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`
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`Case IPR2019-01615
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`US. Patent 9,716,853
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`The Board should not exercise its discretion under § 325(d). Chardon
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`(EX1005) is the primary reference in this IPR. Despite being presented with
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`Chardon in an IDS, the Examiner overlooked the fact that Chardon discloses the
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`very feature that the patentee argued was missing from the applied references
`
`during prosecution. Moreover, the Petition presents grounds relying on secondary
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`references that were never considered by the Examiner.
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`The Board seeks supplemental briefing in view of its recent decision setting
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`forth a two-part test for applying its discretion under § 325(d): “(1) whether the
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`same or substantially the same art previously was presented to the Office”; and if
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`so “(2)
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`whether the petitioner has demonstrated that the Office erred in a
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`manner material to the patentability of challenged claims.” Advanced Bionics, LLC
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`v. Med-El Elektr. Gerate GmbH, IPR2019-01469, Paper 6 at 8 (P.T.A.B. Feb. 13,
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`2020) (precedential); Paper 7 at 2-3. As explained below, the Advanced Bionics
`
`test confirms that the Board should not exercise its discretion under 325 (d).
`
`I.
`
`The Petition Includes Grounds Relying on Non-Cumulative Prior Art
`that Was Not Previously Presented to the Office.
`
`As the Petition explains, “[t]he primary reference to Chardon (EX1005) was
`
`cited, but not applied, during prosecution.” Pet 9. Specifically, UEI included
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`Chardon in an IDS filed at the beginning of prosecution. EX1002, 79-82 (IDS filed
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`4/26/16). If Chardon were the only art asserted in this IPR, it may be sufficient to
`
`meet the first part of Advanced Bionics ’ framework. Id., at 7-8. However, the
`
`-1-
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`
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`Case IPR2019-01615
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`US. Patent 9,716,853
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`Petition includes grounds relying on additional non-cumulative prior art.
`
`In particular, the HDMI specification (EXlOlO), which was never presented
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`to the Examiner, discloses the details of the operation of the HDMI standard’s
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`CEC, EDID, and Hot Plug Detect Features. Pet 29-31, 44-45, 69-70 (describing
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`automatic detection and identification of devices via EDID). HDMI discloses the
`
`’853 patent’s claim 1 requirement that the UCE “respond[s] to a detected presence
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`of an intended target appliance within a logical topography of controllable
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`appliances,” as well as the limitations of claim 7. Pet 42-46, 69-70. HDMI is also
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`non-cumulative of the Deng and Hayes references which the examiner relied on
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`during prosecution, as neither of those references even mention HDMI. See supra.
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`Stecyk (EX1006) creates a “listing” (Pet 53-56), and was also never presented to
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`the Examiner. Accordingly, the present Petition does not present “the same or
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`substantially the same” art or arguments previously presented to the Office.
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`Advanced Bionics, IPR2019-01469, Paper 6 at 8. Becton Dickinson factors (a) and
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`(b) thus also weigh in favor of institution,
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`II.
`
`The Examiner Materially Erred in Not Using Chardon t0 Reject the
`Claims Presented During Prosecution.
`
`Under the second part of the Advanced Bionic framework, an Examiner errs
`
`where they “misapprehend[] or overlook[] specific teachings of the relevant prior
`
`art where those teachings impact patentability of the challenged claims.” Id., at 8-
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`9. That is exactly what happened during the prosecution of the ’ 853 Patent.
`
`-2-
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`
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`Case IPR2019-01615
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`US. Patent 9,716,853
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`1. In particular, the Examiner initialed the IDS listing, inter alia, the
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`Chardon reference on 10/26/16. EX1002, 182-185. Nine days later, the Examiner
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`issued a first Office Action on the merits, id., 167-79 (0A dated 11/4/16), rejecting
`
`independent claim 1 over Hayes in View of Deng, id., 170. As explained in the
`
`Petition, the patentee traversed the first rejection over Hayes in View of Deng by
`
`arguing that the cited art failed to describe at least the feature of “using an identity
`
`associated with an intended target appliance to create a listing ...” Pet 8-9, citing
`
`EX1002, 0207. Specifically, UEI argued that “[n]owhere does Hayes disclose,
`
`teach, or suggest that the identity of an appliance is used to create a listing wherein
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`a first communication method and a second communication method are identified
`
`for use in controlling each of a first functional operation and a second functional
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`operation of that identified appliance as claimed.” EX1002, 207-208 (original
`
`emphasis). The patentee further emphasized that “while Hayes may generally
`
`disclose” using two protocols, “Hayes does not disclose, teach, or suggest using an
`
`identify [sic] of an appliance to create a listing wherein at least two of such
`
`
`communication protocols” are identified for use in controlling each of first and
`
`second functional operations of the identified appliance as claimed.” Id. (original
`
`emphasis). The patentee thus focused heaVily on ascertaining the identity of the
`
`target appliance in distinguishing Hayes over independent claim 1.
`
`
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`Case lPR2019-01615
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`US. Patent 9,716,853
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`2. The patentee made the same argument with respect to Deng, arguing that
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`“Deng also fails to disclose, teach, or suggest using an identity of an appliance to
`
`create a listing as claimed.” Id., 208-209 (original emphasis). The patentee
`
`concluded that “it is respectfully submitted that nothing within Deng can be said to
`
`suggest modifying Hayes to arrive at the exact invention claimed.” Id., 209. The
`
`patentee thus asked for the rejections over Hayes and Deng to be withdrawn.
`
`3. The Examiner found those arguments to be persuasive. Specifically, the
`
`Examiner stated in the Notice of Allowance that the cited prior, “whether
`
`singularly or in combination, fails to disclose the feature limitation a memory
`
`device inter alia ‘using an identity associated with the intended target appliance to
`
`
`create a listing comprised’” of the two different communication methods “for use
`
`
`in controlling each of ’ the first and second functional operations of the intended
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`target appliance. Id., 227 (original emphasis). The Examiner thus allowed the
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`claims in view of the patentee’s arguments that Hayes and Deng fail to disclose
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`using an appliance identity to create the claimed listing. Id., 227-228.
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`4. The Examiner erred in failing to use Chardon to reject the claims in view
`
`of the patentee’ s arguments. If the Examiner had properly considered Chardon, he
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`would have appreciated that Chardon unambiguously cures the alleged defect in
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`Hayes and Deng. As explained in great detail in the Petition, Pet 47-52, Chardon
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`(in accordance with the HDMI specification EXlOlO) queries an intended
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`
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`Case IPR2019-01615
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`US. Patent 9,716,853
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`appliance to receive EDID, which refers to an “Extended Display Identification
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`Data,” and which is available for any HDMI compatible display. Id., 47. Chardon
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`then links the EDID to a list of command codes (e.g., IR and CEC). Id. ,' see also
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`51-52. Chardon thus unambiguously “discloses using an identity associated with
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`the detected target appliance (i.e., EDID, or device make and model number, or
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`vendor ID) to create a listing ....” Id., 52. Chardon thus teaches the very limitation
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`UEI argued was absent from Hayes and Deng. So Chardon’s disclosures are not
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`cumulative of Hayes and Deng because neither Hayes nor Deng mention HDMI,
`
`let alone its EDID appliance identification feature. EXlOSO, EXlOSl.
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`5. Accordingly, Becton Dickinson factors (c), (e) and (f) also favor the
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`Petitioner. As Advanced Bionic explains, “if the record of the Office’ s previous
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`consideration of the art is not well developed or silent”—as it is here—“then a
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`petitioner may show the Office erred by overlooking something persuasive under
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`factors (e) and (f).” Advanced Bionics, IPR2019-01469, Paper 6 at 10. Petitioner
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`has made this showing both in the Petition and above.
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`III. CONCLUSION
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`Although Chardon was nominally presented to the Office in an IDS, the
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`Examiner erred in not applying it to the presented claims. Additionally, this IPR
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`sets forth grounds relying on additional, non-cumulative prior art like HDMI and
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`Stecyk. Thus, the Board should not exercise its discretion under 325(d).
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`
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`Case IPR2019-01615
`
`US. Patent 9,716,853
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jon E . Wright/
`
`Date: March 31, 2020
`
`Jon E. Wright, Reg. No. 50,720
`Attorney for Petitioner Roku, Inc.
`
`1100 New York Avenue, NW.
`
`Washington, DC. 20005-3934
`(202) 371-2600
`
`
`
`Case lPR2019-01615
`
`US. Patent 9,716,853
`
`CERTIFICATION OF SERVICE 137 C.F.R. § 42.6w}!
`
`The undersigned hereby certifies that on March 31, 2020, true and correct
`
`copies of the foregoing PETITIONER’S REPLY TO PATENT OWNER’S
`
`PRELIMINARY RESPONSE, UPDATED EXHIBIT LIST, and associated
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`exhibits were served electronically Via e-mail in their entireties on the following
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`counsel for Patent Owner:
`
`Benjamin S. Pleune (Lead Counsel) ben.pleune@alston.com
`Ryan W. Koppleman (Back-up Counsel)ryran.koppelman@alston. com
`Thomas W Davison (Back--up Counsel) t.—omdaVison@alston. com
`James H. Abe (Back--up Counsel)
`james. abe@alston com
`Caleb J. Bean (Back--up Counsel) caleb.bean@alston. com
`Derek S. Neilson (Back-up Counsel) derek.neilson@alston.com
`Nicholas T. Tsui (Back-up Counsel) nick.tsui@alston.com
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jon E . Wright/
`
`Jon E. Wright, Reg. No. 50,720
`Attorney for Petitioner Roku, Inc.
`
`Date: March 31, 2020
`
`1100 New York Avenue, NW.
`
`Washington, DC. 20005-3934
`(202) 371-2600
`
`
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