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`
`
`
`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
`_____________________
`
`
`
`
`
`PETITIONER ROKU INC.’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ..................................................................................................... 1
`I. PATENT OWNER’S FOUR PRINCIPAL ARGUMENTS LACK MERIT. .... 2
`A. Contra Patent Owner’s argument, Chardon creates “a listing”—namely, an
`EDID-linked database—in response to a detected presence of an intended target
`appliance. ................................................................................................................ 2
`B. Contra Patent Owner’s argument, Chardon uses an identity associated with
`the intended target appliance—for example, the appliance’s EDID—to create “a
`listing.” .................................................................................................................... 5
`C. Contra Patent Owner’s argument, Chardon’s EDID linked database
`comprises two different communication methods. ................................................ 9
`1. Chardon’s linked database discloses use of at least two different
`command transmission mediums – CEC over HDMI and IR. ......................... 10
`2.
`The Petition does not rely on Chardon’s “command codes” to meet three
`separate claim limitations, as Patent Owner argues. ......................................... 13
`D. Contra Patent Owner’s argument, Chardon’s EDID-linked database, which
`links IR and CEC databases to target appliances, is used to control the claimed
`first and second functional operations. ................................................................. 16
`II. PATENT OWNER’S REMAINING ARGUMENTS LACK MERIT. ............ 18
`A.
`Patent Owner Does Not Dispute That A POSA Would Have Had Full
`Knowledge of the Relied-Upon Portions of HDMI Version 1.3a. ....................... 19
`B. The Petition Establishes Why and How a POSA Would Have Relied on
`Stecyk, in Combination with Chardon and HDMI, to Render the Challenged
`Claims Obvious. ................................................................................................... 21
`CONCLUSION ........................................................................................................ 22
`
`
`
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`
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`- i -
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`

`

`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`PETITIONER’S UPDATED 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
`
`Exhibit No.
`1001
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`1013
`1014
`1015
`1016
`
`1017
`
`1018
`
`
`
`- 2 -
`
`

`

`Exhibit No.
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`Case IPR2019-01615
`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/)
`
`
`
`- 3 -
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`

`

`Case IPR2019-01615
`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)
`
`Exhibit No.
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`1035
`
`1036
`
`1037
`1038
`1039
`1040
`1041
`
`1042
`
`1043
`
`1044
`
`
`
`- 4 -
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`

`

`Case IPR2019-01615
`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
`U.S. Patent No. 7,379,778 to Hayes et al. (“Hayes”)
`
`U.S. Patent Publication No. 2007/0165555 to Deng et al. (“Deng”)
`
`Transcript of Telephone Conference, Roku, Inc. v. Universal
`Electronics, Inc., June 26, 2020
`Transcript of the September 30, 2020 deposition of Dr. Turnbull
`U.S. Provisional Application No. 61/680,876 to Barnett et al.
`
`Exhibit No.
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
`1051
`
`1052
`
`1053
`1054
`
`
`
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`

`

`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`
`INTRODUCTION
`The ’853 patent and Chardon describe remarkably similar linked lists to
`
`efficiently control the functionality of a target appliance. Both Chardon and the
`
`’853 patent obtain the identity of appliances within a logical topology. Compare
`
`EX1001, 8:53-9:7 with EX1005, ¶49. Next, both the ’853 patent and Chardon
`
`obtain command codesets for the identified appliances, where the codesets use
`
`different transmission mediums like CEC over HDMI and IR. Compare EX1001,
`
`9:27-46 with EX1005, ¶¶52-57. Finally, both the ’853 patent and Chardon create
`
`linked lists that associate the obtained codesets with target appliances using device
`
`identifications like HDMI’s EDID. Compare EX1001, 7:26-29, 37-42 with
`
`EX1005, ¶50.
`
`Both the ’853 patent and Chardon thus describe methods that obtain device
`
`identifications, obtain command code data sets for at least two different command
`
`transmission mediums (like CEC over HDMI and IR), and thereafter create a
`
`linked command code database (Chardon) or linked command matrix (’853 patent)
`
`that is used to control device functionality by retrieving appropriate commands
`
`from locally stored codesets. Patent Owner simply does not address these
`
`similarities.
`
`
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`- 1 -
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`

`

`I.
`
`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`PATENT OWNER’S FOUR PRINCIPAL ARGUMENTS LACK
`MERIT.
`Patent Owner’s attempts to evade Chardon’s nearly identical methods are
`
`largely grounded in misrepresentations of the Petition combined with a parsing of
`
`the claim language in a way that is inconsistent with what the ’853 patent describes
`
`as the purported invention.
`
`A. Contra Patent Owner’s argument, Chardon creates “a listing”—
`for example, an EDID-linked database—in response to a detected
`presence of an intended target appliance.
`Patent Owner’s first argument with respect to what it calls the “Response
`
`Limitation” is meritless. It begins with the false premise that the Petition points to
`
`Chardon’s pre-linked command code database as the claimed “listing,” and then
`
`argues that that database is not created “in response to” a received device identity.
`
`POR, 13. That argument is meritless—it relies on a partial recitation of claim 1 and
`
`a mischaracterization of the Petition’s arguments.
`
`Claim 1 itself explains how the universal control engine will respond to the
`
`detected presence of a target appliance to create the claimed listing—i.e., what
`
`Patent Owner refers to as the “Response Limitation.” Specifically, it requires that
`
`the “listing” be created “by using an identity associated with the intended target
`
`appliance.” EX1001, 14:49-64 (emphasis added). Patent Owner omits this
`
`language from its “Response Limitation” argument. POR, 13. When that language
`
`is properly considered with the rest of the “Response Limitation,” and understood
`
`
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`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`in proper context in the Petition, the Patent Owner’s false premise becomes clear,
`
`and its argument fails.
`
`As the Petition unambiguously explains, “Chardon does two things to create
`
`the listing—it creates a database of IR and CEC command codes, and then, using
`
`obtained Extended Display Information Data (EDID), it links the devices in the
`
`logical network to their respective CEC and IR command codes.” Pet., 47
`
`(emphasis added). The Petition then proceeds to describe both steps. Pet., 47-52.
`
`The Petition concludes that “Chardon discloses using an identity associated with
`
`the detected target appliance … to create a listing (i.e., linked database of IR
`
`command codes and CEC command codes linked to the EDID, device make or
`
`model number, or vendor ID)….” Pet., 52 (emphasis added). The linked database
`
`is thus created in response to “a detected presence of an intended target appliance,”
`
`and it is that linked database that the Petition identifies as the claimed “listing” in
`
`what Patent Owner calls the “Response Limitation.”
`
`Patent Owner’s argument is too clever by half. It omits, via ellipses, the
`
`claim language explaining how the “listing” is actually created—namely, “by using
`
`an identity associated with the intended target appliance.” POR, 13. With this
`
`omission, Patent Owner then (wrongly) suggests that the Petition identifies only
`
`the pre-linked database as the claimed “listing.” POR, 16 (“Notably, Petitioner and
`
`its expert do not assert that Chardon’s ‘link’ is the claimed ‘listing,’ and instead
`
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`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`assert only that Chardon’s database of command codes is a ‘listing.’”) To round
`
`out its misleading argument, Patent Owner concludes that Chardon’s listing is thus
`
`created before Chardon’s system responds to the detected presence of a target
`
`appliance—e.g., before it receives the appliance’s EDID. POR, 13.
`
`That argument flatly mischaracterizes the Petition. As explained above, the
`
`Petition unambiguously identifies the linked database as corresponding to the
`
`claimed listing, not the pre-linked database. Pet., 47-52. Indeed, just before making
`
`that false argument in its POR, Patent Owner puzzlingly (and correctly) observes
`
`that “Petitioner and its expert also assert that the alleged ‘listing’ of Chardon is an
`
`‘EDID-linked database of CEC and IR command codes.’” POR, 14 (emphasis
`
`added). Patent Owner’s argument is thus not only false, it is also internally
`
`inconsistent. Patent Owner does not explain how Chardon can create an EDID-
`
`linked database—i.e., what the Petition equates to the claimed “listing”—before
`
`receiving the EDID of the intended target device.
`
`The Board should also reject Patent Owner’s attempt to selectively, and
`
`without context, pluck quotes from the Petition in an attempt to suggest that the
`
`Petition only identifies Chardon’s pre-linked command codeset as the claimed
`
`listing. See POR, 14-15 (string cite). The Board should also reject Patent Owner’s
`
`characterization of the selective quotes it pulled from the deposition of Dr. Russ as
`
`“admissions.” POR, 14, 16. Patent Owner never even questioned Petitioner’s
`
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`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`expert Dr. Russ on his opinion with respect to how Chardon discloses the so-called
`
`Response Limitation. See generally, EX2003, 17:4 - 62:22. In fact, Patent Owner
`
`did not question Dr. Russ at all with respect Chardon. Id. Dr. Russ’s analysis thus
`
`remains unrefuted. Far from “admissions,” what Patent Owner points to is
`
`evidence and well-supported expert testimony that Chardon discloses this disputed
`
`limitation (the Response Limitation) in the form of an EDID-linked database.
`
`B. Contra Patent Owner’s argument, Chardon uses an identity
`associated with the intended target appliance—for example, the
`appliance’s EDID—to create “a listing.”
`As a second (and related) argument, Patent Owner next points to the claim
`
`language that it selectively omitted in its first argument (detailed above) in an
`
`attempt to prove that the Petition does not explain how Chardon discloses the
`
`limitation of using “an identity associated with the intended target appliance to
`
`create a listing”—i.e., what Patent Owner refers to as the “Identity Limitation.”
`
`This second argument is just as wrong as its first argument, and for much the same
`
`reasons.
`
`To begin, Patent Owner again flatly mischaracterizes the Petition. It argues
`
`(wrongly) that “Petitioner and its expert do not assert that Chardon discloses,
`
`teaches, or suggests using an EDID, a device make or model number, or a vendor
`
`ID to create a database of CEC and IR command codes (i.e., the alleged ‘listing’).”
`
`POR, 18 (original emphasis). But that statement proceeds (again) from the
`
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`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`demonstrably false premise that the Petition identifies only the pre-linked database
`
`of CEC and IR command codes as corresponding to the claimed “listing.” It does
`
`not. The Petition unambiguously and repeatedly identifies Chardon’s EDID-linked
`
`database as the created “listing,” not an unlinked database of command codes,
`
`standing alone.
`
`The following Petition examples are illustrative and directly refute the
`
`underlying premise of the Patent Owner’s argument:
`
`• “Chardon’s universal control engine uses the created listing (i.e., the
`EDID-linked command code database) to facilitate communication
`between a remote-control device and an intended appliance.” Pet., 23.
`• “Chardon’s listing is a EDID-linked database of CEC and IR
`command codes.” Pet., 47
`• “Chardon does two things to create the listing—it creates a database
`of IR and CEC command codes, and then, using obtained Extended
`Display Information Data (EDID), it links the devices in the logical
`network to their respective CEC and IR command codes.” Pet., 47.
`• “Petitioner initially describes the process Chardon uses to create the
`command code database first and then describes Chardon’s linking
`process. … In this way, Chardon meets the [disputed “listing”
`limitation].” Pet., 47.
`• “Petitioner now describes the linking process where obtained EDID
`information for detected HDMI appliances is linked to the above-
`described database of command code sets, thereby disclosing the
`listing of claim 1 of the ’853 patent.” Pet., 51.
`
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`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`• “Accordingly, Chardon discloses using an identity associated with the
`detected target appliance (i.e., EDID, or device make or model
`number, or vendor ID) to create a listing (i.e., linked database of IR
`command codes and CEC command codes…).” Pet., 52.
`• “Chardon discloses creating a listing by using an identity associated
`with the intended target appliance to create a linked database linking
`IR and/or CEC command codes to an EDID of an appliance to be
`controlled.” Pet., 53.
`
`The Petition thus repeatedly refutes Patent Owner’s initial premise that the
`
`Petition points to the pre-linked command code database as the claimed “listing.”
`
`Having dispelled (again) that false premise, it is now easy to dispense with
`
`the Patent Owner’s second argument that “Petitioner and its expert do not assert
`
`that Chardon discloses teaches or suggests using an EDID, a device make or model
`
`number, or a vendor ID to create a database of CEC and IR command codes (i.e.,
`
`the alleged ‘listing’).” POR, 18 (original emphasis). Patent Owner is correct in one
`
`sense—Chardon does not use the EDID to create the pre-linked database of
`
`command codes corresponding to two different command transmission mediums
`
`(e.g., CEC and IR). But its observation is immaterial because Petitioner does not
`
`assert that that pre-linked database is “the alleged listing.” Rather, it is the EDID-
`
`linked command code database that is the alleged listing; and that listing is created
`
`in response to the detected presence of the intended target appliance by using the
`
`received device identity—e.g., EDID—to create the linked database.
`
`
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`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`Again, it is only by selectively plucking isolated quotes from the Petition
`
`and selectively parsing the claim language, without any larger context, that Patent
`
`Owner can even marginally support its first two arguments. See POR, 16-17 (string
`
`cite). Viewed properly, and in the full context of the Petition, Patent Owner’s
`
`arguments are meritless, and the Board should reject Patent Owner’s tactics.
`
`Patent Owner also complains that Chardon merely uses EDID or a vendor
`
`ID to “create a ‘link’ between the EDID / vendor ID and a previously stored set of
`
`command codes, and storing the ‘link’ as ‘an entry in a local memory’ in the
`
`database of command codes.” POR, 19 (original emphasis). But this complaint is
`
`puzzling given the fact that the ’853 patent also stores in its command matrix 700 a
`
`“pointer”—i.e., a link—to the “appropriate command data and formatting
`
`information within an IR code library stored elsewhere in UCE memory 502.”
`
`EX1001, 7:30-42; generally 7:19-52. Indeed, Patent Owner’s expert confirmed that
`
`matrix 700 includes a pointer. EX1053, Turnbull Depo Transcript, 90:9-93:7.
`
`Patent Owner conveniently omits the pointer when describing the content of the
`
`’853 patent’s command matrix 700 data cells, carefully using ellipses to omit “and
`
`pointer to the required data value and formatting information for the specific
`
`command.” POR, 23 citing EX1001, 7:26-28 (“The data content of such a cell or
`
`element may comprise identification of a form of command/transmission to be
`
`used…”). Patent Owner simply cannot escape the similarity between the ’853
`
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`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`patent and Chardon—both create linked lists pointing to the actual command data
`
`to be retrieved and sent.
`
`Finally, Patent Owner again characterizes as “admissions” what are, in fact,
`
`well-supported evidence that Chardon discloses the disputed “Identity Limitation.”
`
`POR, 19. Once again, when Patent Owner deposed Petitioner’s expert Dr. Russ, it
`
`never even questioned Dr. Russ about his interpretation of how Chardon reads on
`
`the so-called “Identity Limitation.” EX2003, 17:4 - 62:22. Indeed, it never
`
`questioned Dr. Russ about Chardon at all, id., and Dr. Russ’s opinions on Chardon
`
`thus remain unrefuted.
`
`C. Contra Patent Owner’s argument, Chardon’s EDID linked
`database comprises two different communication methods.
`Patent Owner next argues that “the ‘command codes’ in the alleged ‘listing’
`
`of Chardon are not ‘communication methods’….” POR, 20. This third argument,
`
`which Petitioner refers to as the “Communication Methods Limitation,” lacks merit
`
`for a number of reasons.
`
`At the outset, this argument again relies on the false premise that the Petition
`
`points only to the pre-linked command code database as the claimed “listing” of
`
`first and second “communication methods.” See e.g., POR, 16. As explained in
`
`detail in Sections I.A. and I.B. above, that is simply wrong. The Petition points to
`
`Chardon’s EDID-linked command code databases, overall, as the claimed listing.
`
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`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`Correctly understood, Chardon’s EDID-linked databases disclose at least
`
`two different transmission mediums that convey at least two different sets of
`
`command codes. The identified listing thus comprises at least two different
`
`communication methods. Patent Owner also incorrectly alleges that the Petition
`
`relies on Chardon’s “command codes” to meet three different claim limitations.
`
`POR, 16. We address each issue below.
`
`1.
`
`Chardon’s linked database discloses use of at least two
`different command transmission mediums – CEC over HDMI
`and IR.
`Chardon’s linked database discloses at least two different command
`
`transmission mediums—e.g., CEC over HDMI and IR. Chardon describes, in
`
`detail, a plurality of ways to build a database of CEC command codes—i.e.,
`
`command codes that rely on the Consumer Electronic Control protocol feature of
`
`HDMI. See Pet., 47-50, citing EX1003, Russ Decl., ¶¶186-188; EX1005, ¶¶52-57.
`
`Chardon explains that the same process can be used to build a database of
`
`command codes for IR command codes and RF command codes. Pet., 50, citing,
`
`EX1005, 20, 33, 39, 88; EX1003, ¶189.
`
`Accordingly, Chardon describes its linked database as being comprised of at
`
`least two “sets” of command codes: “at least one set of IR command codes” and
`
`“at least one set of Consumer Electronic Control (CEC) command codes.”
`
`EX1005, ¶39 (emphasis added). And Chardon likewise describes how these sets of
`
`
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`

`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`command codes may be linked to particular devices using, for example, the
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`device’s EDID. See Pet., 51-52, citing EX1005, ¶¶ 7, 44-45, 51; see also EX1005,
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`¶¶ 20, 33, 50. Moreover, consistent with claim 1 and the specification of the ’853
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`patent, Chardon’s linked databases, when accessed, are used to control the
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`functional operations of the intended target appliance to which they have been
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`linked. See e.g., EX1005, ¶58, FIG. 5. And they do so, in one embodiment that
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`Chardon describes, using either CEC over HDMI or IR to transmit the commands.
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`See e.g., EX1005, ¶58. For example, depending on the contents of the database for
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`a given appliance, the remote control engine may preferentially try CEC first for
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`that appliance and use IR as a secondary communication method. EX1005, ¶58.
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`Or, depending on the contents of the database for that appliance, the remote control
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`engine may instead “by default send IR command codes to the given HDMI
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`appliance.” EX1005, ¶60.
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`Thus, Chardon discloses the claimed listing of two different communication
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`methods for controlling at least two functional operations of the same device.
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`Contrary to the implication of Patent Owner’s argument, there is no requirement in
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`the ’853 patent or the text of claim 1 that the “listing” of “communication
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`method[s]” requires the literal names of different command transmission mediums
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`to appear in the text of the listing, as opposed to a linked listing of different sets of
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`command codes that cause those communication methods to be used.
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`U.S. Patent No. 9,716,853
`Finally, according to Patent Owner, Petitioner “concedes in the Petition and
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`its supporting expert declaration [that] the ‘command codes’ in the alleged ‘listing’
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`of Chardon are not ‘communication methods’ and Chardon’s alleged ‘listing’ does
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`not comprise ‘communication methods.’” POR, 24. In support, Patent Owner
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`proceeds to pluck isolated and out-of-context statements from the Petition to
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`support its theory that a “command code” is not a “communication method,” POR,
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`24 (citing Pet. 52, 53, 56), which it then attempts to leverage back into its
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`(misleading) argument that the Petition only identifies a command code database
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`as the claimed listing. But the Petition at pages 52, 53, and 56 does not use the
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`term “command code,” standing alone, as corresponding to a “communication
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`method.” Rather, the Petition consistently refers to CEC command codes and IR
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`command codes as a way to make clear that Chardon’s linked databases, just like
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`the ’853 patent’s command matrix 700, offers two different command transmission
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`mediums for a particular functional operation, and thus discloses at least two
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`different communication methods.
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`So even if the term “communication method” is narrowly understood to refer
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`only to the particular command transmission medium, Chardon’s EDID-linked
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`databases include at least two different options.
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`2.
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`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`The Petition does not rely on Chardon’s “command codes” to
`meet three separate claim limitations, as Patent Owner
`argues.
`Patent Owner argues that “the ’853 patent also expressly distinguishes
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`between command codes and the communication methods (e.g., CEC or IR) that
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`are used to communicate the command codes.” POR, 24, generally 24-26. It uses
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`that observation to argue that the Petition wrongly relies on Chardon’s “command
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`codes” to meet three separate claim elements—namely, “communication method,”
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`“a received request,” and “a command code.1” POR, 27. There are a number of
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`problems with this argument.
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`1. The claimed “communication method,” as set forth in the claims, is used
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`to control the “functional operation of the intended target appliance,” such as “TV
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`power on.” See e.g., EX1001, 12:28-42; see also 1:1-67; 3:51-58. In the described
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`embodiment, the data fields in the ’853 patent’s command matrix 700 (an
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`embodiment of the claimed listing) include both an indicator that a certain
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`transmission medium be used, and a pointer to the required data value and
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`formatting information for the specific command, which is stored elsewhere. See
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`e.g., EX1001, 7:30-42. Indeed, Patent Owner’s expert confirmed that command
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`matrix 700 is an embodiment of the claimed listing, EX1053, 88:9-17, and that for
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`1 The claims do not use the term “command code,” they simply refer to “a
`command.”
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`any communication between devices to actually occur, it requires more than just a
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`command transmission medium. EX1053, 90:9 - 92:20.
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`This is consistent with what the Petition points to in Chardon as the created
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`“listing”—namely, Chardon’s EDID-linked database that enables communication
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`between Chardon’s multi-media gateway (a UCE) and a target appliance via at
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`least two different transmission methods like CEC over HDMI or IR. So Patent
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`Owner’s complaint that the Petition relies on Chardon’s “command codes,” alone,
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`for the claimed “communication method” rings hollow.2
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`2. With respect to the claimed “received request,” the Petition points to
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`Chardon’s exemplary “controlling device,” which is a Logitech HarmonyTM
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`Remote Control, as generating the “received request from a controlling device” in
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`the form of common functional operations like “Power Off,” “Volume Up,” etc.
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`See Pet., 59. Similarly, the claimed “request” in the ’853 patent is a request to
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`“cause the intended target appliance to perform one of the first and second
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`functional operations.” EX1001, 14:64-67. Exemplary embodiments in the ’853
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`patent include requests like “a ‘TV power on’ request from remote control 102.”
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`EX1001, 11:49-51. So in both Chardon and the ’853 patent, those requests
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`2 The Petition does use parentheticals to illustrate that the two
`communication methods are different because they rely on two different command
`transmission mediums – CEC commands and IR commands. See e.g., Pet., 47, 51-
`53. Patent Owner attempts to isolate that phrase and take it out of the full context
`of the Petition to support its arguments. See e.g., POR, 24-26.
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`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`ultimately take the form of a “command code” like a CEC command. Compare
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`Pet., 61 (citing EX1005, ¶43 explaining operation of Chardon’s remote control
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`device 115) with EX1001, 9:27-59 (obtaining command codesets), 11:49-55
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`(generating a “TV power on” CEC command from remote control 102). So, Patent
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`Owner’s perceived complaint regarding the Petition referring to a Power On (for
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`example) request from Chardon’s remote control, which ultimately takes the form
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`of a command code, is puzzling given that the ’853 patent operates precisely the
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`same way to control a functional operation like “power on” for an intended target
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`appliance.
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`3. Finally, Patent Owner complains that the Petition relies on Chardon’s
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`“command codes” to correspond to the claimed “command code.” POR, 27. The
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`claims, however, do not recite a “command code,” rather, they just refer to a
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`“command.” Nonetheless, Patent Owner’s complaint is again puzzling given the
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`near identical methods described by the ’853 patent and Chardon.
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`*
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`*
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`*
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`Petitioner’s “Communication Methods Limitation” argument lacks merit. It
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`parses the claim language in a nonsensical way, misrepresents the Petition
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`arguments, and then leverages those unsupportable positions to generate issues
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`where none exist. Chardon’s linked CEC command code and IR command code
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`databases (i.e., the created “listing”) disclose at least two different “communication
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`Case IPR2019-01615
`U.S. Patent No. 9,716,853
`methods” as that term is understood and used in the ’853 patent—indeed, the two
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`methods of Chardon and ’853 patent are nearly indistinguishable.
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`D. Contra Patent Owner’s argument, Chardon’s EDID-linked
`database, which links IR and CEC databases to target appliances,
`is used to control the claimed first and second functional
`operations.
`Patent Owner’s fourth argument has no merit. The claim recites the step of
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`creating “a listing … of at least a first [and second] communication method … for
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`use in controlling each of at least a first [and second] functional operation … of the
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`intended target appliance.” Patent Owner alleges that the Petition “misreads” the
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`claim to assert that the claimed “listing” rath