UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2019-01615
`U.S. Patent 9,716,853
`_____________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,716,853
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`

`

`
`
`
`
`
`I.
`II.
`III.
`
`IV.
`V.
`
`VI.
`
`VII.
`
` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
`
`
`TABLE OF CONTENTS
`
`Introduction .................................................................................................... 1
`Identification of Grounds for Unpatentability ............................................... 3
`The Challenged Patent ................................................................................... 4
`A.
`The Purported Invention .......................................................................... 5
`B.
`Prosecution History ................................................................................. 8
`C.
`The Asserted Claims ............................................................................... 9
`Independent Claim 1 ..................................................................................... 9
`1.
`
`
` Dependent Claim 3 ...................................................................................... 11 2.
`
` Dependent Claim 5 ...................................................................................... 11 3.
`
` Dependent Claim 7 ...................................................................................... 12 4.
`Person of Ordinary Skill in the Art .............................................................. 12
`Claim Construction ...................................................................................... 14
`A.
`“for use in controlling each of at least a first functional
`operation and a second functional operation of the intended
`target appliance” ....................................................................................15
`Other terms ............................................................................................17
`B.
`The Asserted Prior Art ................................................................................. 17
`A. Overview of Chardon (EX1005) ...........................................................17
`B.
`Overview of the HDMI Specification (EX1010) ..................................24
`C.
`Overview of Stecyk (EX1006) ..............................................................32
`Challenged Claims are Unpatentable .......................................................... 36
`A. Ground 1: Claims 1, 3, 5, and 7 are Rendered Obvious Over
`Chardon, and in view of HDMI Specification and Stecyk. ..................36
`Independent Claim 1 ................................................................................... 38
`1.
`
`(a) “[1.P] A universal control engine, comprising:” ..................................... 38
`(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…” ................................................................................................ 40
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` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
`
`(c) “[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” .................................................................. 42
`(d) “[1.3] 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” ......................................................................... 47
`(i)
`Chardon creates a database of IR and CEC command codes ..........47
`(ii) Chardon links the database of command codes to detected target
`appliances using obtained EDID information. ...........................................51
`(e) “[1.4] for use in controlling each of at least a first functional operation
`and a second functional operation of the intended target appliance and”56
`(f) “[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” .................................................. 59
`(g) “[1.6] by causing a one of the first and second communication methods
`in the listing of communication methods that has been associated with
`the requested one of the first and second functional operations to be
`used to transmit to the intended target appliance a command for
`controlling the requested one of the first and second functional
`operations of the intended target appliance.” ......................................... 62
`
` Dependent Claim 3 ...................................................................................... 63 2.
`(a) “[3.P] The universal control engine as recited in claim 1, wherein the
`instructions cause the universal control engine to” ................................ 63
`(b) “[3.1] initiate a detection of the presence of the intended target
`appliance within the logical topography of controllable appliances.” ... 64
`
` Dependent Claim 5 ...................................................................................... 65 3.
`(a) “[5.P] The universal control engine as recited in claim 1, wherein the
`instruction [sic] cause the universal control engine to cause” ................ 65
`(b) “[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.” ...................................... 65
`
`
` Dependent Claim 7 ...................................................................................... 69 4.
`
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`

`
`
`
`
`VIII.
`
`IX.
`X.
`XI.
`
` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
`
`(a) “[7.P] The universal control engine as recited in claim 1, wherein the
`instructions cause the universal control engine to” ................................ 69
`(b) “[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
`using results obtained from the interrogation to create the listing.” ....... 69
`Roku is unaware of any purported evidence of secondary
`considerations of non-obviousness .............................................................. 71
`Conclusion ................................................................................................... 71
`Standing ....................................................................................................... 71
`Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ............................................... 72
`A.
`Real Party In Interest (37 C.F.R. § 42.8(b)(1)) .....................................72
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ..............................................72
`C.
`Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3)) ............................72
`D.
`Service Information (37 C.F.R. § 42.8(b)(4)) .......................................73
`
`- iii -
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`
`
`
`Exhibit No.
`1001
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`1013
`1014
`1015
`1016
`
`1017
`
`1018
`
` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
`
`
`
`PETITIONER’S EXHIBIT LIST
`
`Description
`U.S. Patent No. 9,716,853 to Arling et al. (“’853 patent”)
`File History of U.S. Patent No. 9,716,853 (“Prosecution History”)
`Declaration of Dr. Samuel Russ in Support of Petition for Inter
`Partes Review of U.S. Patent No. 9,716,853
`Curriculum Vitae of Dr. Samuel Russ
` U.S. Patent Publication No. 2012/0249890 to Chardon et al.
`(“Chardon”)
`U.S. Patent 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)
`U.S. Patent Publication No. 2011/0289113 to Arling et al. (“Arling”)
`High-Definition Multimedia Interface – Specification Version 1.3a
`(November 10, 2006)
`User Manual Harmony 900 – Remote Control User Guide, Version
`1.0, Logitech
`Intentionally Left Blank
`U.S. Patent No. 7,944,370 to Harris et al. (“Harris”)
`Intentionally Left Blank
`Intentionally Left Blank
`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)
` Intentionally Left Blank
`
`- iv -
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`

`

`
`
`
`
`Exhibit No.
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
`
`
`
`Description
`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)
`Intentionally Left Blank
`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)
`Intentionally Left Blank
`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/)
`
`- v -
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`

`

`
`
`
`
`Exhibit No.
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`1035
`
`1036
`
`1037
`1038
`1039
`1040
`1041
`
`1042
`
`1043
`
`1044
`
` Petition 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)
`Intentionally Left Blank
`Intentionally Left Blank
`Connecting the Explorer 8300HDTM Digital Video Recorder
`Manual, Scientific Atlantic Inc. (2005)
`U.S. Patent No. 7,554,614 to Satou (“Satou”)
`U.S. Patent No. 7,940,809 to Lee (“Lee”)
`U.S. Patent No. 7,945,708 to Ohkita (“Ohkita”)
`U.S. Patent No. 7,948,290 to Kato (“Kato”)
`U.S. Patent No. 8,032,911 to Ohkita (“Ohkita II”)
`“HDMI Adopters,” HDMI.org, archived March 26, 2010
`(https://web.archive.org/web/20100326092325/http://www.hdmi.org
`/learningcenter/adopters_founders.aspx)
`Declaration of Steve Venuti
`“HDMI: About Us,” HDMI.org
`(https://www.hdmi.org/about/index.aspx)
`
`- vi -
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`
`
`
`Exhibit No.
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
`
`
`
`Description
`“Specification,” HDMI.org, archived June 21, 2009
` (https://web.archive.org/web/20090621022447/http://www.hdmi.org
`:80/manufacturer/specification.aspx)
`“Press – for Immediate Release,” HDMI.org, archived December 19,
`2009
`(https://web.archive.org/web/20091219230238/http:/www.hdmi.org/
`press/press_release.aspx?prid=102)
`Intentionally Left Blank
`First Affidavit of Chris Butler Certifying References from the
`Internet Archive’s Wayback Machine
`Second Affidavit of Chris Butler Certifying References from the
`Internet Archive’s Wayback Machine
`
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`
`
`
`
` Petition for Inter Partes Review of
`U.S. Patent No. 9,716, 853
`
`Petitioner Roku Inc. requests inter partes review of claims 1, 3, 5, and 7 of
`
`U.S. Patent No. 9,716,853, which is assigned to Patent Owner Universal
`
`Electronics, Inc. (“UEI”).
`
`I.
`
`INTRODUCTION
`
`The challenged ’853 patent is directed to a “system and method for
`
`optimized appliance control.” EX1001, Title. The purported invention is described
`
`in the context of a home theater environment where there exists a number of
`
`“appliances” like televisions, AV receivers, DVD players, set-top boxes (STBs)
`
`and the like. In-home entertainment topographies were well known at that time.
`
`See EX1003, ¶33. The ’853 patent describes using a controlling device, such as a
`
`remote control or a smart phone, to take advantage “of improved appliance control
`
`communication methods and/or command formats in a reliable manner which is
`
`largely transparent to a user and/or seamlessly integrated with legacy appliance
`
`control technology.” Id., 1:63-2:3. Remote control devices were also well-known
`
`by that time. See EX1003, ¶¶33-39, 52-53).
`
`As an alleged improvement, the ’853 patent describes what it calls a
`
`“universal control engine” or “UCE.” The UCE is configured to control a plurality
`
`of appliances within a logical topology of appliances where the appliances may
`
`rely on a variety of available communication and control protocols. Among others,
`
`exemplary protocols include infrared (“IR”) remote control protocols, as well as
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`

`

` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
`
`
`
`Consumer Electronic Control (“CEC”) protocols, which have long been available
`
`in High Definition Multi-Media Interface (“HDMI”)-compliant devices. Id., 2:4-
`
`20. These protocols, and others, were also well known by that time. See EX1003,
`
`¶¶54-58, 67-72.
`
`Independent claim 1 is difficult to parse. But in essence, the ’853 patent
`
`describes using an “identity” associated with an intended target appliance to
`
`“create a listing” comprised at least of a first and second communication method
`
`(e.g., IR and CEC). The listing is used “in controlling each of at least a first
`
`functional operation and a second functional operation of the intended target
`
`appliance,” Id., 14:57-64, (e.g., TV power on or volume operations). The method
`
`then responds to a received request from a controlling device and uses the listing to
`
`cause the target appliance to perform the requested functional operation.
`
`Unfortunately for the patent owner UEI, that method is well-described and
`
`rendered obvious by the prior art. The primary reference to Chardon (EX1005)
`
`describes a multi-media gateway having a remote-control system configured to run
`
`a remote-control engine—i.e., a universal control engine as implemented in the
`
`’853 patent. Chardon’s universal control engine creates a database (i.e., a listing)
`
`where a set of command codes (e.g., IR and CEC command codes) are linked to
`
`various appliances in a home theater environment by their respective Extended
`
`Display Identification Data (“EDID”), which is easily obtained from HDMI-
`
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` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
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`
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`compliant appliances. See e.g., EX1005, Abstract. Chardon then relies on its
`
`EDID-linked command-code database to cause a target appliance to, for example,
`
`set the volume of a television. Id., ¶67. Once again, use of command code listings
`
`was well-known, by the time of the alleged invention. See EX1003, ¶¶96-110.
`
`Petitioner relies on a version of the HDMI specification (EX1010) that was
`
`publicly available well before the time of filing of the ’853 patent to fill in any
`
`perceived gaps in Chardon with respect to the operation of HDMI-compliant
`
`appliances. Finally, Petitioner relies on Steyck (EX1006) for explicit disclosure of
`
`command code “lists” in the event the Board does not agree that Chardon’s EDID-
`
`linked command-code database is a “list.” Independently of Chardon, Steyck and
`
`the HDMI specification also show a number of other features in the challenged
`
`claims.
`
`II.
`
`IDENTIFICATION OF GROUNDS FOR UNPATENTABILITY
`
`Roku requests inter partes review of the challenged claims based on the
`
`following ground:
`
`Ground
`
`Prior Art
`
`1
`
`Chardon (EX1005), HDMI 1.3a (EX1010),
`and Stecyk (EX1006).
`
`Basis
`
`§ 103
`
`Claims
`Challenged
`1, 3, 5, 7
`
`
`
`The earliest possible filing date for the ’853 patent is October 28, 2011,
`
`based on the filing date of the earliest provisional application to which the ’853
`
`
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`

` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
`
`
`
`patent claims priority. Without conceding that the ’853 patent is entitled to that
`
`priority date, the prior art references cited for each ground above qualify as prior
`
`art to the ’853 patent for the following reasons:
`
`• Chardon (EX1005), U.S. Patent Publication No. 2012/0249890, qualifies
`as a prior art patent under 35 U.S.C. § 102(a) and (e) (pre-AIA) because
`the reference was filed as an application in the United States on March
`31, 2011.
`• Stecyk (EX1006), U.S. Patent Publication No. 2009/0254500, published
`on October 1, 2009, more than a year before the earliest possible priority
`date for the ’853 patent.
`• HDMI 1.3a Specification (EX1010) qualifies as a prior art non-patent
`literature (NPL) under 35 U.S.C. § 102(b) because the reference was
`publically available at least one year prior to the earliest priority date of
`October 28, 2011.
`
`III. THE CHALLENGED PATENT
`
`The ’853 patent is directed to a system and method for universal control of
`
`multiple devices, such as in a home entertainment center, using single remote
`
`control. Specifically, it is directed to a universal control engine (“UCE”) that is
`
`connected to and controls multiple appliances (e.g. TV, AVR, DVD players, etc.)
`
`EX1001, Abstract. In the ’853 patent, the UCE may be a standalone device or be
`
`embedded in a device, such as a set-top box. EX1001, 4:59-5:5, FIGs. 1, 3 (100,
`
`
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` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
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`
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`100’, and 310). The UCE interfaces with a remote control. Id., 1:40-59, FIG 1
`
`(102); EX1003, ¶112.
`
`A. The Purported Invention
`The Background of the ’853 patent identifies two alleged deficiencies in the
`
`prior art that it purportedly addresses: (i) the recent proliferation of wireless and
`
`wired communication and/or digital interconnection methods such as WiFi,
`
`Bluetooth, HDMI, etc., amongst and between appliances has resulted in a
`
`corresponding proliferation of many communication protocols and command
`
`formats; and (ii) there exists a large installed base of prior generation appliances
`
`that may not seamlessly connect to and communicate with devices deploying the
`
`new protocols and formats. EX1001, 1:40-59; EX1003, ¶113.
`
`To address both, the ’853 patent describes a UCE that is adapted to provide
`
`device control across a variety of available control methodologies and
`
`communication media. Examples include “various infrared (IR) remote control
`
`protocols; Consumer Electronic Control (CEC) as may be implemented over a
`
`wired HDMI connection;” among others. EX1001, 1:45-58, 2:4-16. The UCE may
`
`be adapted to combine various control methods to realize the best control option
`
`for each individual command for each individual device. Id., 2:15-20; EX1003,
`
`¶113.
`
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` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
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`Annotated Figure 1 discloses an embodiment that provides device control
`
`across a variety of available control methodologies and communications media.
`
`EX1001, 2:4-16, 3:39-44.
`
`EX1001, FIG. 1 (annotated).
`
`
`
`In Figure 1, UCE device 100 may be used to issue commands to control
`
`various controllable appliances, such as “a television 106, a cable set top box
`
`combined with a digital video recorder (‘STB/DVR’) 110, a DVD player 108, and
`
`an AV receiver 120.” Id., 3:39-44. According to the ’853 patent, appliance
`
`commands “may be issued by UCE 100 in response to infrared (‘IR’) request
`
`signals 116 received from a remote control device 102, [or] radio frequency (‘RF’)
`
`
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` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
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`
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`request signals 118 received from an app 124 resident on a smart device 104.” Id.,
`
`3:51-58; EX1003, ¶115-116.
`
`Once UCE 100 receives the commands, “transmission of the requested
`
`appliance commands from the UCE to appliances 106, 108, 112, 120 may take the
`
`form of wireless IR signals 114 or CEC commands issued over a wired HDMI
`
`interface 112, as appropriate to the capabilities of the particular appliance to which
`
`each command may be directed.” EX1001, 3:58-63. For example, UCE 100 may
`
`transmit commands destined to AV receiver 120 as IR signals, while commands
`
`destined to TV 106 as CEC commands. Id., 3:67-4:11; EX1003, ¶117.
`
`To communicate with and control the appliances within a home
`
`entertainment setting (referred to as “logical topology”), an initial detection and
`
`setup must occur. EX1001, 8:49-9:2. During the initial detection and setup, the
`
`UCE (1) queries CEC-enabled appliances for identifying information (e.g.,
`
`appliance type, brand, and model number), (2) queries non-CEC enabled
`
`appliances connected via HDMI for the identifying information, or (3) requests
`
`that the user provide the identifying information via a prompt on a display
`
`associated with the UCE. Id., 8:49-9:2, 9:8-26, FIG. 9, steps 902-914; EX1003,
`
`¶118.
`
`Once the identifying information has been acquired, the setup application
`
`communicates that information to a database server for identification and retrieval
`
`
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`

` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
`
`
`
`of command codeset data corresponding to the identified appliances and
`
`transmission to the UCE. Id., 9:27-34.
`
`The identifying information is then used to build a listing (e.g., a list or a
`
`table) of communication methods (e.g., IR, CEC, etc.) that each device supports
`
`(e.g., Power On, Power Off, etc.). Id., 9:52-10:19. In the context of claim 1, the
`
`listing includes at least two different communication methods for controlling at
`
`least two different functional operations of a target device. Id. Once the list is
`
`created, the UCE will then respond to a request to perform one of the functional
`
`operations (e.g. Power On) in the listing using one of the communication methods
`
`(e.g. CEC). Id.; EX1003, ¶¶119-120.
`
`In this manner, the UCE of the ’853 patent may enable “a single controlling
`
`device to command the operation of all appliances in a home theater system while
`
`coordinating available methods of controlling each particular appliance in order to
`
`select the best and most reliable method for issuing each command to each given
`
`device.” Id., 2:33-38; EX1003, ¶121.
`
`Prosecution History
`
`B.
`Claims 1 and 3-5 were initially rejected as being unpatentable over Hayes
`
`(U.S. 7,379,778) in view of Deng (U.S. 2007/0165555); and claims 2 and 6-8 were
`
`rejected as being unpatentable over Hayes in view of Deng and Noda (U.S.
`
`
`
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`

` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
`
`
`
`6,968,399) in a first Office Action dated November 4, 2016. The primary reference
`
`to Chardon (EX1005) was cited, but not applied, during prosecution.
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`In response, Applicant traversed the rejection and alleged that the cited art
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`failed to describe at least the feature of “using an identity associated with an
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`intended target appliance to create a listing comprised of at least a first
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`communication method and a second communication method different than the
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`first communication method for use in controlling each of at least a first functional
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`operation and a second functional operation of the controllable appliance.”
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`EX1002, 0207.
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`Following a terminal disclaimer over co-pending Application No. U.S.
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`14/936,977, EX1002, 0215, the Office allowed the case and the ’853 patent
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`proceeded to issuance on July 25, 2017. Id., 0260.
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`C. The Asserted Claims
`1.
`Independent Claim 1
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`Independent Claim 1 is a system claim directed to a “universal control
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`engine.” It is reproduced below with section annotations and tabs added for clarity:
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`[1.P] A universal control engine, comprising:
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`[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
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`[1.2] to respond to a detected presence of an intended target appliance
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`within a logical topography of controllable appliances which includes the
`universal control engine
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`[1.3] by using an identity associated with the intended target
`appliance to create a listing comprised of
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`[1.4] at least a first communication method and a second
`communication method different than the first communication method for
`use in controlling each of at least a first functional operation and a second
`functional operation of the intended target appliance and
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`[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
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`[1.6] by causing a one of the first and second communication
`methods in the listing of communication methods that has been associated
`with the requested one of the first and second functional operations to be
`used to transmit to the intended target appliance a command for controlling
`the requested one of the first and second functional operations of the
`intended target appliance.
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`EX1001, 14:49-15:7 (emphasis, numbering, and spacing added). The italicized
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`term is the one term that was construed by the district court in the parallel civil
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`action involving the ’853 patent.
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`Distilled to plain language, the claim recites a process whereby a central
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`control device (i.e., the universal control engine) creates a listing of methods (e.g.,
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`command code sets) for communicating with detected appliances. The device
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`thereafter receives a command from a remote control device, and relays the
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`command to an intended appliance within an entertainment system using one of
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`those communication methods. EX1003, ¶123. The issue during claim construction
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`in the parallel civil action was whether the two communication methods would
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`carry out the same command, or a different command. EX1017, 34. The district
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`court agreed with Petitioner Roku’s construction that the command transmitted
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`using the first communication method is the same as the command transmitted
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`using the second communication method. Id.
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`The other challenged claims are reproduced below for convenience, with
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`numbering and spacing added for clarity.
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`Dependent Claim 3
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`2.
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`[3.P] The universal control engine as recited in claim 1, wherein the
`instructions cause the universal control engine to
`[3.1] initiate a detection of the presence of the intended target
`appliance within the logical topography of controllable appliances.
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`Dependent Claim 5
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`3.
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`[5.P] The universal control engine as recited in claim 1, wherein the
`instruction [sic] cause the universal control engine to cause
`[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
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`prompt requesting a user to provide data indicative of the identity associated
`with the intended target appliance.
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`4.
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`[7.P] The universal control engine as recited in claim 1, wherein the
`instructions cause the universal control engine to
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`Dependent Claim 7
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`[7.1] initiate an interrogation of the intended target appliance to
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`determine which of a plurality of communication methods are supported by
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`the appliance for use in receiving a command for controlling at least one of
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`the first and second functional operations and using results obtained from the
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`interrogation to create the listing.
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`*
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`*
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`*
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`Dependent claim 3 thus describes a system that performs the initial detection
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`and set up procedure described above. Dependent claim 5 is directed to a “prompt”
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`function whereby the UCE can ask a user to identity information for a target
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`appliance. Dependent claim 7 is directed to interrogation between UCE and an
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`appliance and building a list based on the interrogation. EX1003, ¶128.
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`Patent claims must be analyzed from the perspective of a person of ordinary
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`skill in the art (a “POSA”) at the time the application leading to the claimed
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`invention was filed. For the ’853 patent, this is the time period shortly before
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`October 28, 2011.
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`Further, in ascertaining the appropriate level of ordinary skill in the art of a
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`patent, several factors should be considered including: (1) the types of problems
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`encountered in the art; (2) the prior art solutions to those problems; (3) the rapidity
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`with which innovations are made; (4) the sophistication of the technology; and (5)
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`the educational level of active workers in the field of the patent. Moreover, a
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`POSA is presumed to be aware of the pertinent art, thinks along the line of
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`conventional wisdom in the art, and has ordinary creativity. Id.
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`In view of these factors, a POSA, with respect to the ’853 patent disclosure,
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`would have had general knowledge of home theater systems, control of devices
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`within the home theater systems, and remote control devices as of October 28,
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`2011. Further, a POSA would have had: (1) at least a bachelor’s degree in an
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`electrical engineering, computer engineering, or equivalent coursework, and (2) at
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`least one year of experience researching or developing structure and operating
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`principles of common digital content reproduction and related appliances,
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`contemporary television and home theater standards, and specifications of
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`consumer digital reproducing devices of the time.
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`V. CLAIM CONSTRUCTION
`The claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d
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` Petition for Inter Partes Review of
`U.S. Patent No. 9,716,853
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`1303 (Fed. Cir. 2005) applies to this proceeding. 83 Fed. Reg. No. 197, 51341
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`(Oct. 11, 2018); 37 C.F.R. 42.100. Under this standard, words in a claim are given
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`their plain meaning, which is the meaning understood by a person of ordinary skill
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`in the art (“POSA”) at the time of the alleged invention after reading the entire
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`patent. Phillips, 415 F.3d 1303, 1312-13. Thus, for the purposes of this proceeding,
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`unless noted herein, all terms have their plain meaning read in light of the ’853
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`Patent, as would have been understood by a POSA at the time of alleged invention.
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`The parties are currently involved in a parallel civil action involving the
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`’853 patent. See Section XI infra. The ’853 patent to Arling is one of nine patents
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`in that action. For the Markman process, the district court directed the parties to
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`focus on no more than ten claim terms across the patents. For the ’853 p