`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`ROKU, INC.
`Petitioner
`
`v.
`
`UNIVERSAL ELECTRONICS INC.
`Patent Owner
`
`_____________________
`
`Case IPR No. IPR2019-01615
`U.S. Patent 9,716,853
`_____________________
`
`
`DECLARATION OF DR. SAMUEL H. RUSS
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`Roku EX1003
`U.S. Patent No. 9,716,853
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
`TABLE OF CONTENTS
`
`V.
`
`INTRODUCTION ......................................................................................... 1
`I.
`II. QUALIFICATIONS ...................................................................................... 1
`III. MATERIALS CONSIDERED ..................................................................... 4
`IV. RELEVANT LEGAL STANDARDS .......................................................... 6
`A.
`Level of ordinary skill ........................................................................... 7
`B.
`Claim construction ................................................................................ 8
`1.
`“for use in controlling each of at least a first functional
`operation and a second functional operation of the intended
`target appliance” ......................................................................... 9
`Other terms ................................................................................ 11
`2.
`Obviousness ......................................................................................... 12
`C.
`BACKGROUND OF THE TECHNOLOGY ............................................ 12
`A.
`In-Home Entertainment System Topography Was Well-Known ....... 15
`B.
`Infrared Remote Controls and Commands Were Well-Known .......... 18
`C.
`Selecting Remote-Control Commands: Scanning, Receiving, and
`Dialog Boxes Were Well-Known ....................................................... 20
`Remote-Control Conversion ............................................................... 27
`1.
`IR Blasters ................................................................................. 27
`2.
`Firewire and CEA-931 .............................................................. 30
`3.
`HDMI CEC ............................................................................... 32
`4.
`Other Protocols ......................................................................... 42
`Devices with Multiple Communication Methods Were Well-
`Known ................................................................................................. 43
`Lists, Tables, and Data Structures Were Well-Known ....................... 44
`F.
`VI. THE CHALLENGED PATENT ................................................................ 51
`A.
`The Described Invention ..................................................................... 51
`B.
`The Asserted Claims: .......................................................................... 55
`1.
`Independent Claim 1 ................................................................. 55
`2.
`Dependent Claim 3.................................................................... 57
`
`D.
`
`E.
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`c)
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`d)
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`e)
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
`3.
`Dependent Claim 5.................................................................... 57
`Dependent Claim 7.................................................................... 57
`4.
`VII. THE ASSERTED PRIOR ART ................................................................. 58
`A. Overview of Chardon (EX1005) ......................................................... 58
`B.
`Overview of the HDMI Specification (EX1010) ................................ 64
`C.
`Overview of Stecyk (EX1006) ............................................................ 69
`VIII. CHALLENGED CLAIMS ARE UNPATENTABLE .............................. 72
`A. Ground 1: Claims 1, 3, 5, and 7 are Rendered Obvious by Chardon
`in view of HDMI and Stecyk .............................................................. 73
`1.
`Independent Claim 1 ................................................................. 75
`a)
`“[1.P] A universal control engine, comprising:” ............ 75
`b)
`“[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…” ........................................................................ 77
`“[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” ................................................................ 79
`“[1.3] by using an identity associated with the
`intended target appliance to create a listing” .................. 83
`“[1.4] 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” ...................................................... 92
`“[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” ........................................ 95
`“[1.6] by causing a one of the first and second
`communication methods in the listing of
`communication methods that has been associated with
`
`f)
`
`g)
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`2.
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`3.
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`4.
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
`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.” ............................................. 97
`Dependent Claim 3.................................................................... 99
`a)
`“[3.P] The universal control engine as recited in claim
`1, wherein the instructions cause the universal control
`engine to” ........................................................................ 99
`“[3.1] initiate a detection of the presence of the
`intended target appliance within the logical
`topography of controllable appliances.” ....................... 100
`Dependent Claim 5.................................................................. 101
`a)
`“[5.P] The universal control engine as recited in claim
`1, wherein the instruction [sic] cause the universal
`control engine to cause” ............................................... 101
`“[5.1] 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.” .................................................................... 101
`Dependent Claim 7.................................................................. 105
`a)
`“[7.P] The universal control engine as recited in claim
`1, wherein the instructions cause the universal control
`engine to” ...................................................................... 105
`“[7.1] 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.” ......................... 105
`IX. OTHER EVIDENCE RELEVANT TO OBVIOUSNESS ..................... 107
`
`b)
`
`b)
`
`b)
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`I, Samuel H. Russ, declare as follows:
`
`I.
`
`INTRODUCTION
`
` Declaration for Inter Partes Review of
`
`U.S. Patent No. 9,716,853
`
`1.
`
`I have been asked by Roku, Inc. (“Roku”) to provide expert opinions
`
`in the above-captioned Inter Partes Review proceeding involving U.S. Patent No.
`
`9,716,853 (“the ’853 patent”), which is entitled “System And Method For
`
`Optimized Appliance Control.”
`
`2.
`
`I am being compensated by Roku on an hourly basis for the time I
`
`spend in connection with this proceeding. My compensation is not dependent in
`
`any way on the substance of my opinions or in the outcome of this proceeding.
`
`II. QUALIFICATIONS
`3. My qualifications for forming the opinions set forth in this declaration
`
`are summarized here and explained in more detail in my curriculum vitae, which is
`
`attached as Exhibit 1004. Exhibit 1004 also includes a list of my publications and
`
`the cases in which I have testified at deposition, hearing, or trial during the past
`
`four years.
`
`4.
`
`I received a Bachelor’s degree in Electrical Engineering from the
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`Georgia Institute of Technology (“Georgia Tech”) in 1986 and a Ph.D. in
`
`Electrical Engineering from Georgia Tech in 1991.
`
`5.
`
`From 2007 to the present, I have been a member of the faculty of the
`
`University of South Alabama as an Assistant and Associate Professor in the
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
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`Department of Electrical and Computer Engineering. During that time, I have won
`
`awards for excellent teaching and have been actively publishing research in home
`
`networking and digital video recording (DVR) technologies. I am active in the
`
`Institute of Electrical and Electronic Engineers (IEEE) and am a Distinguished
`
`Lecturer for the IEEE Consumer Electronics Society. As a consultant, I have
`
`conducted briefings for members of the financial community on technology trends
`
`in the cable, satellite, and IPTV sectors.
`
`6.
`
`From 2000 to 2007, I worked for Scientific-Atlanta (now Cisco’s
`
`Service Provider Video Tech. Group), where I managed a cable set-top box (STB)
`
`design group that designed four STB models, including the Explorer 4200 (non-
`
`DVR) and 8300 (DVR) models. Both models sold several million units. As design-
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`group manager, I was responsible for managing the design and prototyping
`
`activities of the group and for interfacing with other groups (especially integrated-
`
`circuit design, procurement, software developers, the factory where prototypes
`
`were built, and product managers) and for maintaining the hardware and
`
`mechanical development schedule. Since the products were produced in extremely
`
`high volumes, the projects had very high visibility in the company, and therefore
`
`carried a great deal of responsibility.
`
`7.
`
`Also while at Scientific-Atlanta, I became a staff expert in home
`
`networking, conducting demonstrations of wireless video technology and
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
`
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`managing a group that developed a new coaxial home networking system. The
`
`coaxial system won a Technology and Engineering Emmy® Award in 2013. I
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`became a staff expert in DVR reliability, and led a team that improved the
`
`software, hardware, repair, and manufacturing processes. I am a named inventor on
`
`fifty-one (51) patent applications that were filed while I was at Scientific-Atlanta,
`
`twenty-eight (28) of which have issued as U.S. patents as of the writing of this
`
`report.
`
`8.
`
`From 1999 to 2000, I was a Staff Electrical Engineer and then Matrix
`
`Manager at IVI Checkmate (now Ingenico), where I managed the hardware design
`
`team that completed the design of the eN-Touch 1000 payment terminal. This
`
`terminal was in widespread use, for example, at the self-checkout at Home Depot.
`
`9.
`
`I also served on the faculty of Mississippi State University from 1994
`
`to 1999 as an Assistant Professor in the Department of Electrical & Computer
`
`Engineering where I taught circuit board design and two-way interactive video
`
`classes, among other things.
`
`10.
`
`I have also authored 32 journal articles and conference papers. A
`
`recent conference paper on digital video recording won second place in a “best
`
`paper” competition at the 2011 International Conference on Consumer Electronics
`
`in Las Vegas, NV.
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` Declaration for Inter Partes Review of
`
`U.S. Patent No. 9,716,853
`11. My curriculum vitae, which includes a more detailed summary of my
`
`background and experience, as well as a complete list of my publications, is
`
`included as Exhibit 1004.
`
`III. MATERIALS CONSIDERED
`In formulating my opinions, I have relied upon my training,
`12.
`
`knowledge, and experience relevant to the ’853 patent. Furthermore, I have
`
`considered specifically the following documents listed below in addition to any
`
`other documents cited in this declaration. I understand that the references are true
`
`and accurate copies of what they appear to be:
`
`Exhibit No.
`1001
`1004
`
`1005
`
`1006
`1007
`
`1008
`
`1010
`
`1011
`
`1013
`
`Description
`U.S. Patent No. 9,716,853 to Arling et al. (“’853 patent”)
`Curriculum Vitae of Dr. Samuel Russ
` U.S. Patent Publication No. 2012/0249890 to Chardon et al.
`(“Chardon”)
`U.S. Publication No. 2009/0254500 to Stecyk (“Stecyk”)
`U.S. Patent Publication No. 2004/0148632 to Park et al. (“Park”)
`Tracy V. Wilson, “How HDMI Works,” archived March 26, 2010
`(https://web.archive.org/web/20100326090548/https://electronics.ho
`wstuffworks.com/hdmi2.htm)
`High-Definition Multimedia Interface – Specification Version 1.3a
`(November 10, 2006)
`User Manual Harmony 900 – Remote Control User Guide, Version
`1.0, Logitech
`U.S. Patent No. 7,944,370 to Harris et al. (“Harris”)
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`
`
`Exhibit No.
`1016
`
`1017
`
`1019
`
`1020
`
`1022
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
` Declaration for Inter Partes Review of
`
`U.S. Patent No. 9,716,853
`
`Description
`U.S. Patent No. 7,136,709 to Arling et al. (“Arling II”)
`Universal Electronics Inc. v. Roku, Claim Construction Order –
`8:18-cv-01580 (August 8, 2019)
`BDP-33FD – Pioneer Elite 1080p Streaming Blu-Ray DiscTM
`Player, Pioneer Electronics Inc., archived December 14, 2010
`(https://web.archive.org/web/20101214050550/http://www.pioneerel
`ectronics.com:80/ephox/StaticFiles/PUSA/Files/BDP-33FD.pdf)
`2010 Spring BD-Players, BDP IP & RS-232 Control Version 1. 00.
`00, (“Remote Code Commands List”)
`(http://files.remotecentral.com/library/22-1/pioneer/blu-
`ray_disc_player/index.html)
`2010 Spring BD-Players, BDP IP & RS-232 Control Version 1. 00.
`00, Edited 12/8/2010 (“Remote Code Commands List”)
`(https://www.pioneerelectronics.com/StaticFiles/PUSA/Files/Home
`%20Custom%20Install/2010%20Pioneer%20BDP_330_IP_&_RS-
`232_Commands.pdf)
`International CES 2000 Report – Universal Electronics Inc. (2000)
`(http://www.remotecentral.com/ces2000/uei.htm)
` “Data Formats for IR Remote Controls”, Vishay Semiconductors,
`Document No. 80071, Rev. A2, (August 27, 2003)
`AT2400 AllTouch Remote Control User’s Guide, Scientific Atlanta
`Inc., (2002)
`User Interface – Infrared Learner (Remote Control), Application
`Note AN2092, Cypress Semiconductor, Document No. 001-41063,
`(November 11, 2002)
`VCR CommanderTM Service User’s Guide, Scientific-Atlanta Inc.
`(2000)
`Michael Brown, Product Reviews - Logitech Harmony 900 Review,
`User Review 1 (September 14, 2009)
`(https://www.digitaltrends.com/gadget-reviews/logitech-harmony-
`900-review/)
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` Declaration for Inter Partes Review of
`
`U.S. Patent No. 9,716,853
`
`Description
`Dave Rees, Logitech Harmony 900 Universal Remote Review, The
`Gadgeteer, User Review 2
`(https://the-gadgeteer.com/2010/01/25/logitech-harmony-900-
`universal-remote-review/)
`Explorer 2100 or 3100 Digital Home Communications Terminals -
`User’s Installation Guide, Scientific Atlanta Inc. (July 2000)
`ANSI/CEA Standard, Remote Control Command Pass-through
`Standard for Home Networking, ANSI/CEA-931-C R2012
`(December, 2007)
`Mark Eyer, “Communication of Remote Control Key Codes in the
`Home Network,” 2003 IEEE International Conference on Consumer
`Electronics, 2003. ICCE., Los Angeles, CA, USA, pp. 94-95 (2003)
`Connecting the Explorer 8300HDTM Digital Video Recorder
`Manual, Scientific Atlantic Inc. (2005)
`
`
`
`
`
`Exhibit No.
`
`1030
`
`1031
`
`1032
`
`1033
`
`1036
`
`
`
`IV. RELEVANT LEGAL STANDARDS
`I have also relied upon various legal principles (as explained to me by
`13.
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`Roku’s counsel) in formulating my opinions. My understanding of these principles
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`are summarized below.
`
`14.
`
`I understand that a patent claim defines the metes and bounds of an
`
`alleged invention. I further understand that a claimed invention must be new,
`
`useful, and non-obvious over the prior art for it to be patentable. I understand that
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`in this proceeding Roku has the burden of proving that the challenged claims are
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`unpatentable over the prior art by a preponderance of the evidence. I understand
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
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`that “a preponderance of the evidence” is evidence sufficient to show that a fact is
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`more likely true than it is not.
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`15.
`
`In determining the patentability of a claim, I understand that the first
`
`step is to construe the claim from the perspective of a person of ordinary skill in
`
`the art (“POSA”) to determine its meaning and scope. Once construed, I
`
`understand that the claim is to be considered against the prior art from the
`
`perspective of a POSA as further summarized below.
`
`A. Level of ordinary skill
`I understand that a claim must be analyzed from the perspective of a
`16.
`
`POSA at the time the claimed invention was allegedly invented by the patentee.
`
`Roku’s counsel has asked me to consider the time period shortly before October
`
`28, 2011, which is the earliest priority date of the ’853 patent, as the potential date
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`of invention of the claims of the ’853 patent.
`
`17.
`
`In ascertaining the appropriate level of ordinary skill in the art of a
`
`patent, I understand that several factors should be considered including (1) the
`
`types of problems encountered in the art; (2) the prior art solutions to those
`
`problems; (3) the rapidity with which innovations are made; (4) the sophistication
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`of the technology; and (5) the educational level of active workers in the field of the
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`patent.
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`18.
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
`I further understand that a POSA is a person who is presumed to be
`
`aware of the pertinent art, thinks along conventional wisdom in the art, and is a
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`person of ordinary creativity. Accordingly, a POSA of the ’853 patent would have
`
`had general knowledge of remote control devices, consumer electronic devices,
`
`and various related technologies as of October 28, 2011.
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`19. Thus based on my experience and my understanding of the legal
`
`principles summarized here, I believe that a POSA in the context of the ’853 patent
`
`at the time of the patent’s earliest priority date of October 28, 2011, would have
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`had a bachelor’s degree in electrical engineering or equivalent degree with two
`
`years of work experience relating to communications and consumer electronics.
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`Well before October 28, 2011, my level of skill in the art was at least that of a
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`POSA, as discussed above.
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`B. Claim construction
`I have been informed by Roku’s counsel that in this proceeding, the
`20.
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`United States Patent and Trademark Office (“PTO”) interprets the claims of an
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`unexpired patent, such as the ’853 patent, under the same standards used in a
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`United States District Court. This includes interpreting the claims through the lens
`
`of POSA in view of the entire patent. Accordingly, in formulating my opinions, I
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`have reviewed the claims of the ’853 patent as I perceive a POSA would have
`
`understood them at the time of the earliest priority date (October 28, 2011) of the
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
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`’853 patent, after reading the entire ’853 patent specification. I have also reviewed
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`a Markman order provided by the district court in a pending proceeding also
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`directed to the ‘853 patent.
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`21. Finally, I have been informed that claim construction is ultimately a
`
`question of law. Accordingly, I understand that a tribunal may choose to construe
`
`certain terms to provide clarity to the proceeding should any dispute arise between
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`the parties over how a term should be construed. If the tribunal chooses to construe
`
`any term, then I reserve my right to review and potentially modify any opinions
`
`below in view of such constructions.
`
`1.
`
`“for use in controlling each of at least a first functional
`operation and a second functional operation of the intended
`target appliance”
`
`22.
`
`I understand from the Markman order set out in the corresponding
`
`district court proceeding (excerpts of which are provided herein below), Patent
`
`Owner previously proposed a construction for the above-noted term to be the plain
`
`and ordinary meaning of the term, and that no construction is necessary. EX1017,
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`31. I understand that the district court adopted a different interpretation, in line
`
`with Roku’s suggested construction. The following chart outlines the parties
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`proposed constructions and the district court’s construction, as set forth in its
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`Markman order, EX1017:
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`Patent Owner’s
`Construction
`Plain and ordinary
`meaning. No construction
`necessary.
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
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`Roku’s Construction
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`Court’s Construction
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`“for use in controlling
`[each of]2 at least a first
`functional operation and a
`second functional
`operation of the intended
`target appliance”
`construed as “for use in
`controlling the same as at
`least a first functional
`operation and a second
`functional operation of
`the same intended target
`appliance”
`
`“create a listing by using
`an identity associated
`with the intended target
`appliance. The listing
`must contain at least two
`different communication
`methods, each of which
`can control and is
`associated with the same
`two or more functional
`operations of the same,
`single target appliance.
`Does not include selecting
`a communication protocol
`and thereafter using the
`selected communication
`protocol for any and all
`commands sent to the
`target appliance.”1
`
`EX1017, 31.
`
`23. The district court appears to have effectively adopted Roku’s position,
`
`which in my view is the most natural reading of the claim. Namely, in the created
`
`list, the two claimed communication methods must be associated with the same
`
`
`1 Roku had proposed construing the entirety of limitations 1.2 and 1.4 above
`
`of claim 1, but the Court only construed a subset of limitation 1.4. EX1017, 34.
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`2 In a typographical mistake, the court omitted “each of” from its recitation
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`of the claim language.
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
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`two or more functional operations. Looking at claim 2 for example, the claim
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`recites:
`
`The universal control engine as recited in claim 1, wherein the
`instructions cause the universal control engine to respond to the
`request by causing a highest prioritized 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.
`
`24.
`
`In essence, the above-noted claim language is directed to having a
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`first communication method or a second communication method carry out a same
`
`function in case the appliance to be controlled does not support one of the two
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`communication methods. This enables the universal control engine to still direct
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`the appliance to perform the function requested by the user, using one or the other
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`communication method based on their priority.
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`2. Other terms
`I understand that Roku is advocating that the remaining terms and
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`25.
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`phrases in the ’853 patent be given their plain and ordinary meaning, in view of the
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`’853 patent specification. I will therefore conduct my analysis in accordance with
`
`that understanding. I reserve the right to change my opinions should I presented
`
`with other constructions I have not considered.
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
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`C. Obviousness
`I have been informed by Roku’s counsel that a patent claim is
`26.
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`unpatentable if the differences between the claimed invention and the prior art are
`
`such that the claimed invention as a whole would have been obvious to a POSA at
`
`the time the claimed invention was allegedly invented by the patentee. Thus in
`
`assessing whether a claim is obvious, I understand that I am to consider (1) the
`
`scope and content of the prior art; (2) the level of ordinary skill in the field of the
`
`invention; (3) the differences between the claimed invention and the prior art; and
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`(4) any objective evidence of non-obviousness.
`
`27.
`
`I understand that if a POSA would have arrived at a claimed invention
`
`when it was allegedly invented by the patentee by (a) combining prior art elements
`
`according to known methods to yield predictable results; (b) applying a solution
`
`from a finite number of identified, predictable solutions, with a reasonable
`
`expectation of success; (c) substituting a known element for another to obtain
`
`predictable results; and/or (d) using a known technique to improve similar devices
`
`(methods, or products) in the same way, the claimed invention would likely have
`
`been obvious to a POSA.
`
`V. BACKGROUND OF THE TECHNOLOGY
`28. The challenged ’853 patent is directed to a “system and method for
`
`optimized appliance control.” EX1001, Title. The purported invention is described
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
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`in the context of a home theater environment where there exists a number of
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`“appliances” like televisions, AV receivers, DVD players, set-top boxes (STBs)
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`and the like. The ’853 patent describes using a controlling device, such as a remote
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`control or a smart phone, to take advantage “of improved appliance control
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`communication methods and/or command formats in a reliable manner which is
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`largely transparent to a user and/or seamlessly integrated with legacy appliance
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`control technology.” Id., 1:65-2:4.
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`29. To that end, the ’853 patent describes what it calls a “universal control
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`engine” or “UCE.” The UCE is configured to control a plurality of appliances
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`within a logical topology of appliances where the appliances may rely on a variety
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`of available communication and control protocols. Among others, exemplary
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`protocols include well-known infrared (“IR”) remote control protocols, as well as
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`Consumer Electronic Control (“CEC”) protocols, which have long been available
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`in High Definition Multi-Media Interface (“HDMI”)-compliant devices. Id., 2:4-
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`20.
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`30.
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`Independent claim 1 essentially describes using an “identity”
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`associated with an intended target appliance to “create a listing” comprised at least
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`of a first and second communication method (e.g., IR and CEC). The listing is used
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`“in controlling each of at least a first functional operation and a second functional
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`operation of the intended target appliance,” Id., 14:57-64, (e.g., TV power on or
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
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`volume operations). The method then responds to a received request from a
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`controlling device and uses the listing to cause the target appliance to perform the
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`requested functional operation.
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`31. That method, however, is well-described and rendered obvious by the
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`prior art. The primary reference to Chardon (EX1005) describes a multi-media
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`gateway having a remote-control system configured to run a remote-control
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`engine— i.e., a universal control engine as implemented in the ’853 patent.
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`Chardon’s universal control engine creates a database (i.e., a listing) where a set of
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`command codes (e.g., IR and CEC command codes) are linked to various
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`appliances in a home theater environment by their respective Extended Display
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`Identification Data (“EDID”), which is easily obtained from HDMI-compliant
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`appliances. See e.g., EX1005, Abstract. Chardon then relies on its EDID-linked
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`command-code database to cause a target appliance to, for example, set the volume
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`of a television. Id., ¶67.
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`32. Petitioner also relies on a version of the HDMI specification that was
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`publicly available well before the time of filing of the ’853 patent to fill in any
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`perceived gaps in Chardon with respect to the operation of HDMI-compliant
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`appliances. Finally, Petitioner relies on Steyck for explicit disclosure of command
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`code “lists” in the event the Board does not agree that Chardon’s EDID-linked
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
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`command-code database is a “list.” Independently, Steyck and the HDMI
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`specification also show a number of features in the challenged claims.
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`In-Home Entertainment System Topography Was Well-Known
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`A.
`33. To set the stage for my opinions below, I provide some additional
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`background knowledge of the state of the art existing before and around the time of
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`invention of the ’853 patent. By 2011, home theater network systems were widely
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`used to seamlessly integrate or bundle a combination of interconnected devices like
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`televisions, digital video recorders, streaming media devices, and the like. In such
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`systems, a centralized control device is typically deployed for ease of use and may
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`be configured to receive user instructions from one or more remote controlling
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`devices and relay such instructions to one or more devices to be controlled (e.g.
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`DVRs, TVs, etc.) The following are examples of home theater network systems
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`that included interconnected appliances to be controlled, one or more centralized
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`control device, and one or more remote control devices.
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
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`EX1006, FIG. 1, (illustrating a device interconnect configuration for a home
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`theater network).
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
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`EX1007, FIG. 1, (illustrating schematic of home network system).
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`EX1005, FIG. 1, (illustrating a schematic of a home entertainment system).
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
`Infrared Remote Controls and Commands Were Well-Known
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`B.
`34. The handheld remote control is one of the most ubiquitous devices in
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`the world. Original remote controls were flashlight-like devices aimed at the
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`corners of a television screen. Later, ultrasonic remote controls were
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`developed.They worked by striking an ultrasonic crystal, and created an audible
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`clicking sound when pressed. (My grandmother had one.) This is why, even today,
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`remote controls are sometimes called “clickers.”
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`35. Eventually infrared remote controls were developed. Drawing on the
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`facts that near-infrared light behaves like normal light, is invisible to humans, and
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`is easily and efficiently generated by diodes, they soon became the dominant
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`technology for handheld remote controls. The diodes used to create infrared light
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`are called infrared emitting diodes, or IREDs, and are quite similar to the more
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`familiar light emitting diodes, or LEDs. An IRED is an LED that emits near-
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`infrared light instead of visible light.
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`36.
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`In the industry, there were (and are) two very commonly used infrared
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`protocols, NEC and Philips RC-5. EX1025, 2-5. These protocols differ in terms of
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`bit timing, but both work off of modulated infrared. For example, NEC code
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`transmits a logic 0 as a 562.5 microsecond burst of 38 kHz infrared followed by a
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`562.5 microsecond pause. Id. The RC-5 code transmits a logic 0 as an 889
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`microsecond burst of 38 kHz infrared followed by an 889 microsecond pause. Id.
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` Declaration for Inter Partes Review of
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`U.S. Patent No. 9,716,853
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`(Some manufacturers use a slightly different frequency than 38 kHz, such as 36
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