IPR2019-01615
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`Patent Owner’s Response
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ROKU, INC.,
`Petitioner,
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`v.
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`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`
`Case IPR2019-01615
`Patent 9,716,853
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`PATENT OWNER’S RESPONSE
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`IPR2019-01615
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`Patent Owner’s Response
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`TABLE OF CONTENTS
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` I.
`
`II.
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`V.
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`2.
`
`3.
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`INTRODUCTION .......................................................................................... 1
`BACKGROUND ............................................................................................ 1
`A.
`Technology Background. ...................................................................... 1
`B.
`The ‘853 Patent And The Challenged Claims. ..................................... 2
`C.
`The Level Of Ordinary Skill In The Art. .............................................. 4
`D.
`Petitioner’s Asserted Prior Art References. .......................................... 6
`U.S. Patent Application Publication No. 2012/0249890 to
`1.
`Chardon (“Chardon”). ................................................................ 6
`U.S. Patent Application Publication No. 2009/0254500 to
`Stecyk (“Stecyk”). ...................................................................... 7
`High-Definition Multimedia Interface Specification
`Version 1.3a (“HDMI 1.3a”). .................................................... 8
`The Board’s Institution Decision. ......................................................... 8
`E.
`III. LEGAL STANDARDS .................................................................................. 9
`IV. CLAIM CONSTRUCTION ........................................................................... 9
`“for use in controlling each of at least a first functional
`A.
`operation and a second functional operation of the intended
`target appliance.” .................................................................................10
`PETITIONER HAS FAILED TO SHOW THAT THE
`CHALLENGED CLAIMS OF THE ‘853 PATENT ARE
`UNPATENTABLE AS OBVIOUS. ............................................................. 11
`Chardon Alone Does Not Render The Challenged Claims
`A.
`Obvious. ..............................................................................................11
`Chardon Alone Does Not Render Obvious Challenged
`1.
`Independent Claim 1. ............................................................... 13
`(a)
`Petitioner Has Failed To Meet Its Burden Of Proving
`That Chardon Discloses, Teaches, Or Suggests “causing
`the universal control engine to respond to a detected
`presence of an intended target appliance within a logical
`topography of controllable appliances which includes the
`universal control engine by … creat[ing] a listing”
`(“Response Limitation”). ................................................13
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`IPR2019-01615
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`Patent Owner’s Response
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`(b)
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`(c)
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`(d)
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`Petitioner Has Failed To Meet Its Burden Of Proving
`That Chardon Discloses, Teaches, Or Suggests “using an
`identity associated with the intended target appliance to
`create a listing” (“Identity Limitation”). ........................17
`Petitioner Has Failed To Meet Its Burden Of Proving
`That Chardon Discloses, Teaches, Or Suggests
`“creat[ing] a listing comprised of at least a first
`communication method and a second communication
`method different than the first communication method”
`(“Communication Methods Limitation”). ......................20
`Petitioner Has Failed To Meet Its Burden Of Proving
`That Chardon Discloses, Teaches, Or Suggests “[create a
`listing comprised of 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” (“Functional Operations Limitation”). .........28
`Chardon Alone Does Not Render Obvious Challenged
`Dependent Claims 3, 5, And 7. ................................................ 31
`Chardon In Combination With HDMI 1.3a And/Or Stecyk Does
`Not Render The Challenged Claims Obvious. ....................................32
`Chardon In Combination With HDMI 1.3a And/Or
`1.
`Stecyk Does Not Render Obvious Challenged
`Independent Claim 1. ............................................................... 32
`(a)
`Petitioner Has Failed To Meet Its Burden Of Proving
`That HDMI 1.3a Or Stecyk Discloses, Teaches, Or
`Suggests “causing the universal control engine to respond
`to a detected presence of an intended target appliance …
`by using an identity associated with the intended target
`appliance to create a listing comprised of 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” (“Listing Limitations”). .......32
`Petitioner Has Failed To Establish A Motivation To
`Combine Chardon With Stecyk. .....................................36
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`2.
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`B.
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`(b)
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`IPR2019-01615
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`Patent Owner’s Response
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`(c)
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`2.
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`Petitioner Has Failed To Establish A Motivation To
`Combine Chardon With HDMI 1.3a. .............................38
`Chardon In Combination With HDMI 1.3a And/Or
`Stecyk Does Not Render Obvious Challenged Dependent
`Claims 3, 5, And 7. .................................................................. 40
`VI. THIS PROCEEDING SHOULD BE DISMISSED AS
`UNCONSTITUTIONAL. ............................................................................. 41
`VII. CONCLUSION ............................................................................................. 41
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`IPR2019-01615
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`Patent Owner’s Response
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`Exhibit No.
`2001
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`2002
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`2003
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`2004
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`2005
`
`2006
`
`TABLE OF EXHIBITS
`
`
`Description
`Declaration of Dr. Don Turnbull (“1/17/20 Turnbull
`Declaration”)
`Declaration of Dr. Don Turnbull in Support of Patent Owner’s
`Response (“7/13/20 Turnbull Declaration”)
`Transcript of the June 24, 2020 Deposition of Dr. Samuel H.
`Russ (“Russ Deposition Transcript”)
`from Universal
`8/5/19 Markman Hearing Transcript
`Electronics, Inc. v. Roku, Inc., Case No. 18-cv-1580 (C.D. Cal.)
`(“Markman Transcript”)
`Roku’s Opening Claim Construction Brief in Universal
`Electronics, Inc. v. Roku, Inc., Case No. 18-cv-1580 (C.D. Cal.)
`(“Petitioner’s CC Brief”)
`Roku’s Response to Plaintiff’s Opening Claim Construction
`Brief in Universal Electronics, Inc. v. Roku, Inc., Case No. 18-
`cv-1580 (C.D. Cal.) (“Petitioner’s Reply CC Brief”)
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`Patent No. 8,938,817
`
`Petition Requesting Inter Partes Review
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`I.
`
`INTRODUCTION
`Petitioner Roku, Inc. (“Petitioner”) has petitioned for Inter Partes Review of
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`Claims 1, 3, 5, and 7 (the “Challenged Claims”) of U.S. Patent No. 9,716,853 (“the
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`‘853 patent”), which is owned by Patent Owner Universal Electronics Inc. (“Patent
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`Owner”). The Board instituted review of the Challenged Claims of the ‘853 patent
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`based on a single prior art reference alone or in combination with two other prior art
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`references.
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`Petitioner’s arguments, representations, and admissions in its Petition and in
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`its supporting expert declaration confirm that the prior art (either alone or in
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`combination) fails to disclose, teach, or suggest each and every limitation of the
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`Challenged Claims. Thus, on the face of the petition, Petitioner has failed to meet
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`its burden of proving that the Challenged Claims of the ‘853 patent are unpatentable.
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`Accordingly, Patent Owner requests that the Board confirm the patentability
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`of the Challenged Claims of the ‘853 patent.
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`II. BACKGROUND
`A. Technology Background.
`The ‘853 patent generally relates to devices that can optimize control of
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`multiple consumer electronic devices. At the time of the invention of the Challenged
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`Claims, a number of communication methods could be used between devices,
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`including Wi-Fi, Bluetooth, and HDMI. (EX1001, ‘853 patent, at 1:45-50.)
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`However, many manufacturers were slow to adopt new communications standards,
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`Patent No. 8,938,817
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`Petition Requesting Inter Partes Review
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`which resulted in situations where multiple devices in the same room or network
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`could be operated only via different communication methods. (Id. at 1:50-59.) The
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`invention of the ‘853 patent overcame these limitations by creating a device that
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`made it easier to control devices across multiple different communication methods.
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`The ‘853 Patent And The Challenged Claims.
`B.
`The ‘853 patent, entitled “System and Method for Optimized Appliance
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`Control,” was issued on July 25, 2017 from U.S. Patent Application No. 14/948,927
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`(filed on November 23, 2015). (EX1001, ‘853 patent, at [21], [22], [45], [54].)1
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`The ‘853 patent generally relates to “a modular hardware and software
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`solution, [ ] referred to as a Universal Control Engine (UCE), which is adapted to
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`provide device control access across a variety of available control methodologies
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`and communication media.” (Id. at 2:4-10.) The UCE “may be adapted to combine
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`various control methods in order to realize the best control option for each individual
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`1 The ‘853 patent claims priority to U.S. Provisional Application No. 61/552,857,
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`filed on October 28, 2011, and U.S. Provisional Application No. 61/680,876, filed
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`on August 8, 2012. (Id. at [60].) The ‘853 patent is a continuation of U.S. Patent
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`Application No. 13/933,877 (filed on July 7, 2013, now U.S. Patent No. 9,219,874),
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`which in turn is a continuation of U.S. Patent Application No. 13/657,176 (filed on
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`October 22, 2012, now U.S. Patent No. 9,215,394). (Id. at [63].)
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`command for each individual device.” (Id. at 2:16-20.) In particular, the “UCE itself
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`may be adapted to receive command requests from [ ] a controlling device and apply
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`the optimum methodology to propagate the command function(s) to each intended
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`appliance,” thus “enabl[ing] a single controlling device to command the operation
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`of all appliances in a home theater system while coordinating available methods of
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`controlling each particular appliance in order to select the best and most reliable
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`method for issuing each command to each given device.” (Id. at 2:21-45.) For
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`example, “CEC [Consumer Electronic Control] commands may be used to power on
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`and select inputs on a TV appliance while IR [infrared] commands may be used to
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`control the volume of the same TV appliance.” (Id.)
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`The Challenged Claims of the ‘853 patent are reproduced below:
`
`1. A universal control engine, comprising:
`
`a processing device; and
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`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 to respond to a detected presence
`of an intended target appliance within a logical topography
`of controllable appliances which includes the universal
`control engine by using an identity associated with the
`intended target appliance to create a listing comprised of
`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 to respond
`to a received request from a controlling device intended to
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`Petition Requesting Inter Partes Review
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`cause the intended target appliance to perform a one of the
`first and second functional operations 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.
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`3. The universal control engine as recited in claim 1,
`wherein the instructions cause the universal control engine
`to initiate a detection of the presence of the intended target
`appliance within the logical topography of controllable
`appliances.
`
`5. The universal control engine as recited in claim 1,
`wherein the instruction cause the universal control engine
`to cause a prompt to be displayed in a display associated
`with the universal control engine in response to a detected
`presence of the intended target appliance within a logical
`topography of controllable appliances,
`the prompt
`requesting a user to provide data indicative of the identity
`associated with the intended target appliance.
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`7. The universal control engine as recited in claim 1,
`wherein the instructions cause the universal control engine
`to initiate an interrogation of the intended target appliance
`to determine which of a plurality of communication
`methods are supported by the appliance for use in
`receiving a command for controlling at least one of the
`first and second functional operations and using results
`obtained from the interrogation to create the listing.
`
`(Id. at claims 1, 3, 5, and 7.)
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`C. The Level Of Ordinary Skill In The Art.
`A person of ordinary skill in the art (“POSITA”) would have had a bachelor’s
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`degree which involved software design and development coursework, for example,
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`Petition Requesting Inter Partes Review
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`electrical engineering, computer engineering, computer science, cognitive science,
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`industrial engineering, information systems, information studies, or a similar degree,
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`and at least one year of work experience in software programming, development, or
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`design of consumer applications. (EX2002, 7/13/20 Turnbull Declaration, ¶¶ 29-
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`30.) Additional education might substitute for some of the experience, and
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`substantial experience might substitute for some of the educational background.
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`(Id.)
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`Petitioner proposes that a POSITA “would have had general knowledge of
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`home theater systems, control of devices within the home theater systems, and
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`remote control devices as of October 28, 2011.” (Paper 2 at 13.) Petitioner further
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`proposes that a POSITA would have had “at least a bachelor’s degree in an electrical
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`engineering, computer engineering, or equivalent coursework,” and “at least one
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`year of experience researching or developing structure and operating principles of
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`common digital content reproduction and related appliances, contemporary
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`television and home theater standards, and specifications of consumer digital
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`reproducing devices of the time.” (Id.)
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`Notably, Petitioner’s expert does not agree with Petitioner’s proposed
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`definition of a POSITA, and does not assert that he would qualify as a POSITA
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`under Petitioner’s proposed definition. (EX1003, Russ Declaration, ¶¶ 18-19.)
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`Instead, Petitioner’s expert proposes that a POSITA “would have had general
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`knowledge of remote control devices, consumer electronic devices, and various
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`related technologies as of October 28, 2011” (id., ¶ 18), and “would have had a
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`bachelor’s degree in electrical engineering or equivalent degree with two years of
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`work experience relating to communications and consumer electronics” (id., ¶ 19).
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`Patent Owner’s expert met each of the above proposed definitions of a
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`POSITA as of the time of the invention of the Challenged Claims of the ‘853 patent,
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`analyzed the ‘853 patent and the asserted prior art from each of the proposed
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`POSITA’s points of view, and found that the differences between the proposed
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`definitions did not affect the outcome of his analysis. (EX2002, 7/13/20 Turnbull
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`Declaration, ¶¶ 37-38.)
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`D.
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`Petitioner’s Asserted Prior Art References.
`U.S. Patent Application Publication No. 2012/0249890 to
`1.
`Chardon (“Chardon”).
`Chardon “generally relates to remote-control systems” that utilize the “High
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`Definition Multi-Media Interface (HDMI) standard [which] specifies the Consumer
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`Electronic Control (CEC) standard, which provides for connected HDMI appliances
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`(e.g., connected via HDMI cables) to remotely control one another.” (EX1005,
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`Chardon, at [0001], [0003].) According to Chardon, “[o]ne complication that the
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`CEC standard introduces is the allowance of custom CEC command codes for HDMI
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`appliances.” (Id. at [0004].) Because “not all HDMI appliances that are
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`interconnected will be configured to understand the custom CEC command codes of
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`other HDMI appliances” (id.), Chardon suggests that “new remote-control systems
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`. . . are needed to provide solutions for known short comings in the CEC standard”
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`(id. at [0005]).
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`Chardon teaches a “remote-control engine [that] is configured to identify CEC
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`command codes, which are transferred over the bus and that are not in the sets of
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`known CEC command codes, which are stored in the local memory” (id. at [0052]),
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`“the unrecognized CEC command code may be transferred from the remote-control
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`engine . . . to the remote server,” and “the remote server may be configured to
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`transfer function information for the unrecognized CEC command code to the
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`remote-control engine so that the remote-control engine will thereafter recognize the
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`previously unrecognized CEC command codes” (id. at [0053]).
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`2.
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`U.S. Patent Application Publication No. 2009/0254500 to
`Stecyk (“Stecyk”).
`Stecyk discloses “apparatus, methods, and systems for centrally controlling
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`the operation of devices within a network of consumer electronics systems.”
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`(EX1006, Stecyk, at [0001].) According to Stecyk, the “United States and other
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`countries are quickly transitioning to digital television (DTV) to take advantage of
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`high definition TV broadcasts.” (Id. at [0002].) However, “[d]igital systems and
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`related standards, e.g., IEEE 1394, provide no way to control conventionally wired,
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`IR signal controlled, analog audio-video (AV) devices (IRC devices), such as analog
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`VCRs, DVD players, cable and satellite boxes, and AV receivers, and does nothing
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`to eliminate the myriad of cables, connectors and remotes necessary to connect and
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`control a mixed analog and digital home theater network system.” (Id. at [0003].)
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`Stecyk discloses “a primary display and control unit (PDCU), e.g., a
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`television” (id. at [0007]) which includes modules to “translate[] the commands from
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`the remote as appropriate and issue[] commands in the language appropriate for the
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`device being controlled” (id. at [0071]). In particular, the PDCU or television
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`“includes a library of device specific IR codes for supported [IR controlled]
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`devices.” (Id. at [0051].) Similarly, “[t]o communicate and control a wide variety
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`of 1394 devices, the 1394 control module 120 preferably maintains a device control
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`module (DCM) 122 for each 1394 device.” (Id. at [0088].) “As a result, the user
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`can use the same remote buttons to operate 1394 and IRC devices.” (Id. at [0071].)
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`3. High-Definition Multimedia Interface Specification Version
`1.3a (“HDMI 1.3a”).
`HDMI 1.3a is a specification “for transmitting digital television audiovisual
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`signals from DVD players, set-top boxes and other audiovisual sources to television
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`sets, projectors and other video displays.” (EX1010, HDMI 1.3a, at 1.) According
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`to HDMI 1.3a, HDMI “can carry high quality multi-channel audio data and can carry
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`all standard and high definition consumer electronics video formats.” (Id.)
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`The Board’s Institution Decision.
`E.
`The Board instituted review of the Challenged Claims of the ‘853 patent on
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`four grounds: (1) alleged obviousness over Chardon alone; (2) alleged obviousness
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`over Chardon in combination with HDMI 1.3a; (3) alleged obviousness over
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`Chardon in combination with Stecyk; and (4) alleged obviousness over Chardon in
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`combination with HDMI 1.3a and Stecyk. (Paper 12 at 7.)
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`III. LEGAL STANDARDS
`In an Inter Partes Review, the Petitioner bears the burden of persuasion to
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`prove unpatentability by a preponderance of the evidence. See Dynamic Drinkware,
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`LLC v. Natl. Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). The Board “will
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`not consider arguments and information that are not presented and developed in the
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`Petition…” See DIRECTV, LLC v. Qurio Holdings, Inc., IPR2015-02007, Paper No.
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`6 at 14 (PTAB April 4, 2016); see also Valeo North America, Inc. v. Magna
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`Electronics, Inc., IPR2014-01206, Paper No. 13 at 17 (PTAB Dec. 23, 2014) (“we
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`will not consider an argument not made in the petition.”).
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`IV. CLAIM CONSTRUCTION
`Because the Petition was filed after November 13, 2018, the Challenged
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`Claims are to be construed using the same standard articulated in Phillips v. AWH
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`Corp., 415 F.3d 1303 (Fed. Cir. 2005). See 37 C.F.R. § 42.100(b). Under the
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`Phillips standard, claim terms are generally given their ordinary and customary
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`meaning as understood by a person of ordinary skill in the art when read in the
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`context of the specification and prosecution history. Phillips, 415 F.3d at 1313.
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`However, a claim term will not receive its ordinary meaning if the patentee acted as
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`his or her own lexicographer and clearly set forth a definition of the disputed claim
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`term in either the specification or prosecution history. Id. at 1316. Extrinsic
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`evidence (such as expert testimony) is also considered, but is given less weight than
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`intrinsic evidence (claims, specification, and prosecution history) and cannot be used
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`to contradict intrinsic evidence. Id. at 1317-19.
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`A.
`
`“for use in controlling each of at least a first functional operation
`and a second functional operation of the intended target
`appliance.”
`Challenged Claim 1 of the ‘853 patent recites “for use in controlling each of
`
`at least a first functional operation and a second functional operation of the intended
`
`target appliance.” (EX1001, ‘853 patent, at claim 1.) Petitioner asks the Board to
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`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.”
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`(Paper 2 at 15.)
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`The Board found in its Institution Decision that “no specific construction is
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`required for the disputed term.” (Paper 12 at 17.) Patent Owner and its expert agree.
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`(EX2002, 7/13/20 Turnbull Declaration, ¶ 49.) Moreover, the construction of this
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`term is immaterial to Patent Owner’s arguments herein or to the opinions in Patent
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`Owner’s expert’s declaration. (Id., ¶ 54.)
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`Patent No. 8,938,817
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`Petition Requesting Inter Partes Review
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`V.
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`PETITIONER HAS FAILED TO SHOW THAT THE CHALLENGED
`CLAIMS OF THE ‘853 PATENT ARE UNPATENTABLE AS
`OBVIOUS.
`A. Chardon Alone Does Not Render The Challenged Claims Obvious.
`Chardon alone does not render the Challenged Claims obvious.2 For single
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`reference obviousness, “there must be a showing of a suggestion or motivation to
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`modify the teachings of that reference to the claimed invention in order to support
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`2 Patent Owner disputes that the Chardon alone ground is properly before the Board.
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`Under 35 U.S.C. § 312(a)(3), the Petition must set forth “with particularity, each
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`claim challenged, the grounds on which the challenge to each claim is based, and the
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`evidence that supports the grounds for the challenge to each claim.” The Board is
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`not permitted to depart from the Petition. See SAS Institute, Inc. v. Iancu, 138 S. Ct.
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`1348, 1356 (2018); see also Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330,
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`1337 (Fed. Cir. 2020). Here, Petitioner’s Petition identifies only one ground of
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`unpatentability, Chardon in combination with two other references: “Chardon
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`(EX1005), HDMI 1.3a (EX1010), and Stecyk (EX1006).” (Paper 2 at 3; id. at 36
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`(“Claims 1, 3, 5, and 7 are Rendered Obvious Over Chardon, and in view of HDMI
`
`Specification and Stecyk.”) (emphases added).) Accordingly, the only ground
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`properly before the Board is Chardon in combination with HDMI 1.3a and Stecyk.
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`Patent No. 8,938,817
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`the obviousness conclusion.” See SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp.,
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`225 F.3d 1349, 1356 (Fed. Cir. 2000).
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`Here, Petitioner does not propose modifying Chardon alone. (See generally
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`Paper 2.) 3 Thus, to show that Chardon alone renders the Challenged Claims
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`obvious, Petitioner must prove that Chardon discloses, teaches, or suggests each and
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`every limitation of the Challenged Claims. See SEKO S.p.A. v. CM2W JSC,
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`PGR2020-00006, Paper 16 at 16 (PTAB May 4, 2020) (declining to institute review
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`on a single reference obviousness ground where the asserted prior art reference failed
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`to disclose all the claimed limitations, and petitioner failed to provide any discussion
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`as to why a POSITA would have modified the reference to include the missing
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`limitations).
`
`As discussed below, Chardon alone does not render the Challenged Claims
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`obvious because Petitioner has failed to prove that Chardon discloses, teaches, or
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`suggests each and every limitation of the Challenged Claims.
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`3 To the extent Petitioner proposes any modifications to Chardon, Petitioner does so
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`only in combination with Stecyk and/or HDMI 1.3a. (Id.) Patent Owner addresses
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`the Chardon with Stecyk and/or HDMI 1.3a combination further below.
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`Petition Requesting Inter Partes Review
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`1.
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`Chardon Alone Does Not Render Obvious Challenged
`Independent Claim 1.
`(a) Petitioner Has Failed To Meet Its Burden Of Proving
`That Chardon Discloses, Teaches, Or Suggests
`“causing the universal control engine to respond to a
`detected presence of an intended target appliance
`within a logical topography of controllable appliances
`which includes the universal control engine by …
`creat[ing] a listing” (“Response Limitation”).
`Petitioner has failed to meet its burden of proving that Chardon discloses,
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`teaches, or suggests the Response Limitation because, as Petitioner concedes in the
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`Petition and its supporting expert declaration, the alleged “listing” of Chardon is not
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`created in response to a detected presence of an intended target appliance but is
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`instead created before Chardon’s remote responds to a detected presence of an
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`intended target appliance.
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`According to the Response Limitation, the “universal control engine”
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`(“UCE”) creates a “listing” with certain content (e.g., a matrix) in response to a
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`detected presence of an intended target appliance (e.g., a television). (See, e.g.,
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`EX1001, ‘853 patent, at claim 1; see also id. at 9:54-59; Paper 2 at 42, 44, 46-47;
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`EX2004, Markman Transcript, at 50:23-24 (Petitioner stating, “What is [claim 1 of
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`the ‘853 patent] doing to respond to a detected presence? It’s creating a particular
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`kind of listing.”).)
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`Patent No. 8,938,817
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`Petition Requesting Inter Partes Review
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`Petitioner and its expert assert that the alleged “respon[se] to a detected
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`presence of an intended target appliance” of Chardon occurs when Chardon’s remote
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`“queries” a target appliance for an EDID, receives the appliance’s EDID, and then
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`“links” the EDID with a set of command codes. (Paper 2 at 45-46, 51, 64; EX1003,
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`Russ Declaration, ¶¶ 178-179, 191, 217; Paper 9 at 4-5; Paper 12 at 24 (“Petitioner
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`argues that Chardon’s remote control system responds to the detected presence of an
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`appliance by linking a received EDID from an HDMI display with command codes
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`used to control the display.”).)
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`Petitioner and its expert also assert that the alleged “listing” of Chardon is an
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`“EDID-linked database of CEC and IR command codes.” (Paper 2 at 47
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`(“Chardon’s listing is a EDID-linked database of CEC and IR command codes.”);
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`id. at 52; EX1003, Russ Declaration, ¶¶ 180, 182, 188, 194; Paper 12 at 27.)
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`However, as Petitioner and its expert admit, Chardon discloses that the
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`database of CEC and IR command codes (i.e., the alleged “listing”) is created before
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`the remote creates a “link” between a received EDID and the previously stored set
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`of command codes, and not in response to querying a target appliance and receiving
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`its EDID (i.e., the alleged “response to a detected presence of an intended target
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`appliance”). (Paper 2 at 47 (“[Chardon] creates a database of IR and CEC command
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`codes, and then, using obtained [EDID], it links the devices in the logical network
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`to their respective CEC and IR command codes.”) (emphases added); id. at 48 (“A
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`Patent No. 8,938,817
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`Petition Requesting Inter Partes Review
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`POSA would have understood that in this step, the system requires no further action,
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`because the required CEC command codes are already saved in the local data base
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`during, for example, the setup process.”) (emphasis added); EX1003, Russ
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`Declaration, ¶¶ 182, 185; EX1005, Chardon, at [0044] (disclosing that the sets of
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`command codes are already locally stored on the remote when the remote receives
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`the target appliance’s EDID), [0050] (same); id. at [0046] (disclosing that the
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`command codes are installed when the remote is “configured” or “setup”), [0048]
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`(same); id. at [0049] (disclosing that an appliance may be identified by transmitting
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`one or more command codes that have already been stored on the remote to the
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`appliance); EX2002, 7/13/20 Turnbull Declaration, ¶¶ 57-58.)4
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`4 Petitioner and its expert discuss two “scenarios” where Chardon’s remote can
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`receive updated “function information” for unrecognized CEC command codes
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`stored in the remote’s local memory. (Paper 2 at 48-50; EX1003, Russ Declaration,
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`¶¶ 186-187.) Both “scenarios” are consistent with Chardon’s teaching that the
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`database of CEC and IR command codes is created before the remote receives an
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`EDID and “links” the EDID with the set of command codes. (EX2002, 7/13/20
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`Turnbull Declaration, ¶ 59.) Petitioner and its expert do not assert that the updated
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`“function information” is a “listing,” and do not assert that the updated “function
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`information” is requested or received in response to the remote querying a target
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`Patent No. 8,938,817
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`Petition Requesting Inter Partes Review
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`Moreover, as Petitioner and its expert admit, Chardon at best discloses that its
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`remote responds to querying a target appliance and receiving its EDID by creating a
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`“link” between the EDID and a previously stored set of command codes, and storing
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`the “link” as “an entry in a local memory” in the database of command codes.
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`(EX1005, Chardon, at [0044]; see also id. at Abstract, claim 1, claim 9, [0007],
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`[0034]; Paper 2 at 46-47, 51; EX1003, Russ Declaration, ¶¶ 180, 182, 192; Paper 12
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`at 18-19, 27 (Board confirming that Chardon’s remote responds to querying a target
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`appliance and receiving its EDID by creating a “link”); EX2002, 7/13/20 Turnbull
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`Declaration, ¶ 57.)
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`Notably, Petitioner and its expert do not assert that Chardon’s “link” is the
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`claimed “listing,” and instead assert only that Chardon’s database of command codes
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`is a “listing.” (Paper 2 at 2, 21-23, 37, 49-53, 56, 58, 62, 70; id. at 2 (“Chardon’s
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`universal control engine creates a database (i.e., a listing)…”); id. at 21 (“Chardon
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`discloses building a database (i.e., a listing) of IR and CEC command codes.”); id.
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`at 37 (“Chardon solves this problem by creating a database (i.e., a list) ‘configured
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`to store sets of command codes’”); id. at 49 (“Chardon thus creates a database (i.e.,
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`a list)…”); id. at 50 (“Chardon discloses a plurality of ways to create a database (i.e.
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`appliance and receiving its EDID (i.e., the alleged “response to a detected presence
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`of an intended target appliance”). (Id.)
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`Patent No. 8,938,817
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`Petition Requesting Inter Partes Review
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`a list)…”); id. at 53 (“a POSA would