Case IPR2019-01615
`Patent No. 9,716,853
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`ROKU, INC.,
`Petitioner,
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`v.
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`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
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`____________
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`Case IPR2019-01615
`U.S. Patent 9,716,853
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`____________
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`PATENT OWNER’S AUTHORIZED SUR-REPLY TO
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
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`RESPONSE
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`Patent No. 9,716,853
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`
`____________
`
`Case IPR2019-01615
`U.S. Patent 9,716,853
`
`____________
`
`PATENT OWNER’S AUTHORIZED SUR-REPLY TO
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
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`RESPONSE
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`Case IPR2019-01615
`Patent No. 9,716,853
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`The Board should deny institution because the facts in this case are analogous
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`to those in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH,
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`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020). In Advanced Bionics, the Board
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`denied institution under § 325(d) of grounds that included art considered by the
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`Examiner in combination with non-considered art because the petitioner used the
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`non-considered art in substantially the same manner as the art considered by the
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`Examiner. Here, it is undisputed that Petitioner’s primary reference Chardon was
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`before the Examiner during prosecution (Reply at 1, 3). Because Petitioner’s two
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`additional references not before the Examiner are used in substantially the same
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`manner as Chardon, the Board likewise should deny institution under § 325(d).
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`I.
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`Petitioner Fails the Two-Part Framework of § 325(d)
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`In Advanced Bionics, the Board sets forth a two-part framework under
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`§ 325(d), in which if the first part of the framework is met, the Petitioner bears the
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`burden of satisfying the second part in order to avoid denial of institution:
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`(1) whether the same or substantially the same art previously was presented
`to the Office or whether the same or substantially the same arguments
`previously were presented to the Office; and (2) if either condition of the first
`part of the framework is satisfied, whether the petitioner has demonstrated
`that the Office erred in a manner material to the patentability of challenged
`claims.
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`IPR2019-01469, Paper 6 at 8 (emphasis added). Critically, “[i]f reasonable minds
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`can disagree regarding the purported treatment of the art or arguments, it cannot be
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`said that the Office erred in a manner material to patentability.” Id. at 9 (emphasis
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`1
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`Case IPR2019-01615
`Patent No. 9,716,853
`added). In this case, Petitioner fails both parts of the Advanced Bionics framework.
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`A.
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`Petitioner Fails Part One of the Framework
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`Previously presented art includes “art made of record by the Examiner, and
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`art provided to the Office by an applicant, such as on an Information Disclosure
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`Statement (IDS), in the prosecution history of the challenged patent.” Id. at 7–8.
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`Petitioner admits that “UEI included Chardon in an IDS filed at the beginning of
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`prosecution” and that “[i]f Chardon were the only art asserted in this IPR, it may be
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`sufficient to meet the first part of Advanced Bionics’ framework” (Reply at 1). But
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`then, Petitioner makes the same mistake as in Advanced Bionics and does not dispute
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`that it uses the references not before the Examiner in substantially the same manner
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`as Chardon such as to disclose the same information. The facts here are analogous
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`to Advanced Bionics, and thus Petitioner fails part one of the framework.
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`In Advanced Bionics, the grounds involved one reference that was considered
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`during prosecution in combination with additional references that were not. Id. at
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`14. The Board rejected petitioner’s argument that because the additional references
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`“were not of record during prosecution [ ], there are ‘significant and material
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`differences between the prior art asserted in this Petition and the prior art evaluated
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`during prosecution.’” Id. at 15, 19. Rather, the Board evaluated “whether Petitioner
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`relies on [additional references] in substantially the same manner as the Examiner
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`cited [considered reference] during prosecution such that [additional references]
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`2
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`Case IPR2019-01615
`Patent No. 9,716,853
`discloses substantially the same information as [the considered reference].” Id. at
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`15. The Board found that because the petitioner relied on the additional references
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`to disclose the same information already evaluated in the considered reference, the
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`additional references were substantially the same as the prior art already considered.
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`See, e.g., id. at 15-18. Here, Petitioner makes the same mistake as in Advanced
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`Bionics and uses the HDMI reference and Stecyk (not before the Examiner) in
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`substantially the same manner as Chardon such as to disclose the same information.
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`In particular, Petitioner relies on the HDMI reference for “describing
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`automatic detection and identification of devices via EDID” (Reply at 2). But
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`Petitioner relies on the same information in Chardon (id. at 4-5) (“Chardon . . .
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`queries an intended appliance to receive EDID . . . which is available for any HDMI
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`compatible display”). Likewise, Petitioner argues that “Stecyk (EX1006) creates a
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`‘listing’ (Pet 53-56)” (id. at 2) but again relies on the same information in Chardon
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`(Pet. at 53) (“the command code database built/propagated by Chardon constitutes a
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`‘listing’ of different command codes”). Because Petitioner uses the additional
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`references in substantially the same manner as Chardon, and offers no argument to
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`the contrary, Petitioner fails part one of the Advanced Bionics framework.
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`Instead of explaining how the HDMI reference or Stecyk are non-cumulative
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`of Chardon, Petitioner argues that they are non-cumulative of Hayes and Deng
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`(Reply at 2). These arguments are irrelevant to the cumulativeness with Chardon,
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`3
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`Case IPR2019-01615
`Patent No. 9,716,853
`which was the basis of the analysis in the Patent Owner’s Preliminary Response
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`(POPR at 15-19). Thus, Petitioner fails the first part of the Advanced Bionics
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`framework, and bears the burden to satisfy the second part, which it also fails to do.
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`B.
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`Petitioner Fails Part Two of the Framework
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`Under the second part of the framework, “[P]etitioner [must have] pointed out
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`sufficiently how the examiner erred in its evaluation of the asserted prior art.”
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`Advanced Bionics, IPR2019-01469, Paper 6 at 8. It is not enough that the additional
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`prior art was not in front of the Examiner during prosecution. Id. at 20. Petitioner
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`must “overcome persuasively [a] specific finding of record” or demonstrate some
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`“misapprehending or overlooking specific teachings of the relevant prior art where
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`those teachings impact patentability of the challenged claims.” Id. at 10-11, 8–9 n.9.
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`When “the petitioner fails to make a showing of material error, the Director generally
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`will exercise discretion not to institute.” Id. at 9. Critically, “[i]f reasonable minds
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`can disagree regarding the purported treatment of the art or arguments, it cannot be
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`said that the Office erred in a manner material to patentability.” Id. at 9.
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`Here, Petitioner alleges that the Examiner erred in failing to find that Chardon
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`“discloses using an identity associated with the detected target appliance . . . to create
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`a listing” (Reply at 5), but admits that this claim element was specifically discussed
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`during prosecution a mere nine days after the Examiner considered Chardon (id. at
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`3-4). Chardon would have been fresh in the Examiner’s mind when the Notice of
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`4
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`Case IPR2019-01615
`Patent No. 9,716,853
`Allowance was issued less than 5 months later (EX1002 at 221). Moreover, the
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`claims here were never amended, so the Examiner was procedurally required to (and
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`indeed signed that he did) evaluate Chardon against the very claim element
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`Petitioner now identifies as error (EX1002 at 43; POPR at 17). M.P.E.P. §602.
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`As explained for part one of the framework, Petitioner merely combines
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`Chardon with additional references that are used in substantially the same manner to
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`disclose the same information, which under Advanced Bionics does not show
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`material error by the Examiner. IPR2019-01469, Paper 6 at 22. And again,
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`Petitioner’s arguments that Chardon is not cumulative of Hayes or Deng are
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`irrelevant, as Chardon itself was properly considered by the Examiner (Reply at 5).1
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`At the very least, “reasonable minds can disagree regarding the purported
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`treatment of the art or arguments,” and therefore under Advanced Bionics, Petitioner
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`must fail this part of the framework.
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`II. Conclusion
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`The Advanced Bionics framework reaches the same conclusion as the Benton,
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`Dickson factors and confirms that the Petition should be denied (POPR at 15-19).2
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`1 It is also irrelevant that “neither Hayes nor Deng mentioned HDMI, let alone its
`EDID,” as Chardon does, because neither HDMI nor EDID are elements of any
`claim (Reply at 5). Therefore, it cannot be material error that the Examiner did not
`reject claims on the basis of the HDMI or EDID disclosures of Chardon.
`2 Petitioner does not argue that its expert testimony presents any additional
`arguments that warrant consideration under § 325(d).
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`5
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`Case IPR2019-01615
`Patent No. 9,716,853
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`Dated: April 7, 2020
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`Respectfully submitted,
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`/S. Benjamin Pleune/
`S. Benjamin Pleune
`Reg. No. 52,421
`Counsel for Patent Owner
`Universal Electronics Inc.
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`6
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`Case IPR2019-01615
`Patent No. 9,716,853
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`Certificate of Service
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`Pursuant to 37 C.F.R. §§ 42.6 and 42.107, the undersigned hereby certifies
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`that the foregoing was served electronically in its entirety on the following:
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`Jon E. Wright
`Lestin L. Kenton
`Daniel S. Block
`Ali H. Allawi
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`Jwright-ptab@sternekessler.com
`Lkenton-ptab@sternekessler.com
`Dblock-ptab@sternekessler.com
`aallawi-PTAB@sternekessler.com
`PTAB@sternehessler.com
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`
`/S. Benjamin Pleune/
`S. Benjamin Pleune
`Reg. No. 52,421
`ALSTON & BIRD LLP
`Bank of America Plaza, Suite 4000
`101 South Tryon Street
`Charlotte, NC 28280-4000
`Telephone: (704) 444-1000
`Facsimile: (704) 444-1111
`Email: ben.pleune@alston.com
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`Counsel for Patent Owner
`Universal Electronics Inc.
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`Dated: April 7, 2020
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