IPR2019-01615
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`Patent Owner’s Sur-Reply
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ROKU, INC.,
`Petitioner,
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`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`
`Case IPR2019-01615
`Patent 9,716,853
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`PATENT OWNER’S SUR-REPLY TO
`PETITIONER’S REPLY
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`IPR2019-01615
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`Patent Owner’s Sur-Reply
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`TABLE OF CONTENTS
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`
`
`I. 
`II. 
`
`2. 
`
`3. 
`
`4. 
`
`INTRODUCTION .......................................................................................... 1 
`ARGUMENT .................................................................................................. 1 
`A. 
`Chardon Alone Does Not Render The Challenged Claims
`Obvious. ................................................................................................ 1 
`1. 
`Petitioner Has Failed To Show That Chardon Discloses,
`Teaches, Or Suggests “causing the universal control
`engine to respond to a detected presence of an intended
`target appliance within a logical topography of
`controllable appliances which includes the universal
`control engine by … creat[ing] a listing” (“Response
`Limitation”). ............................................................................... 1 
`Petitioner Has Failed To Show That Chardon Discloses,
`Teaches, Or Suggests “using an identity associated with
`the intended target appliance to create a listing”
`(“Identity Limitation”). .............................................................. 6 
`Petitioner Has Failed To Show That Chardon Discloses,
`Teaches, Or Suggests “creat[ing] a listing comprised of at
`least a first communication method and a second
`communication method different than the first
`communication method” (“Communication Methods
`Limitation”). ............................................................................... 9 
`Petitioner Has Failed To Show That Chardon Discloses,
`Teaches, Or Suggests “[create a listing comprised of at
`least a first communication method and a second
`communication method different than the first
`communication method] for use in controlling each of at
`least a first functional operation and a second functional
`operation of the intended target appliance” (“Functional
`Operations Limitation”). .......................................................... 15 
`Chardon In Combination With HDMI 1.3a And/Or Stecyk Does
`Not Render The Challenged Claims Obvious. .................................... 17 
`1. 
`Petitioner Has Failed To Show That Chardon In
`Combination With HDMI 1.3a And/Or Stecyk Discloses,
`Teaches, Or Suggests Each And Every Limitation Of The
`Challenged Claims. .................................................................. 17 
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`B. 
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`IPR2019-01615
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`Patent Owner’s Sur-Reply
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`Petitioner Has Failed To Establish A Motivation To
`Combine Chardon With Stecyk. .............................................. 18 
`Petitioner Has Failed To Establish A Motivation To
`Combine Chardon With HDMI 1.3a. ....................................... 19 
`The Board Should Strike And Exclude Petitioner’s New Reply
`Arguments. .......................................................................................... 19 
`III.  CONCLUSION ............................................................................................. 22 
`
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`C. 
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`2. 
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`3. 
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`IPR2019-01615
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`Patent Owner’s Sur-Reply
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`Exhibit No.
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
`
`2100
`
`TABLE OF EXHIBITS
`
`
`Description
`Declaration of Dr. Don Turnbull (“1/17/20 Turnbull
`Declaration”)
`Declaration of Dr. Don Turnbull in Support of Patent Owner’s
`Response (“7/13/20 Turnbull Declaration”)
`Transcript of the June 24, 2020 Deposition of Dr. Samuel H.
`Russ (“Russ Deposition Transcript”)
`from Universal
`8/5/19 Markman Hearing Transcript
`Electronics, Inc. v. Roku, Inc., Case No. 18-cv-1580 (C.D. Cal.)
`(“Markman Transcript”)
`Roku’s Opening Claim Construction Brief in Universal
`Electronics, Inc. v. Roku, Inc., Case No. 18-cv-1580 (C.D. Cal.)
`(“Petitioner’s CC Brief”)
`Roku’s Response to Plaintiff’s Opening Claim Construction
`Brief in Universal Electronics, Inc. v. Roku, Inc., Case No. 18-
`cv-1580 (C.D. Cal.) (“Petitioner’s Reply CC Brief”)
`Curriculum Vitae of Dr. Don Turnbull
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`IPR2019-01615
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`Patent Owner’s Sur-Reply
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`I.
`
`INTRODUCTION
`Petitioner spends most of its Reply rewriting the claim language and
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`unconvincingly arguing that it did not take certain positions in its Petition. Like the
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`Petition and its supporting expert declaration, Petitioner’s Reply confirms that the
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`asserted prior art (either alone or in combination) fails to disclose, teach, or suggest
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`each and every limitation of the Challenged Claims of the ‘853 patent.
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`Petitioner fails to dispute the points raised in Patent Owner’s Response, and
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`instead raises brand new, conclusory, and legally irrelevant arguments that
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`noticeably ignore or change the plain and unambiguous language of the Challenged
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`Claims and are unsupported by the testimony of a person of skill in the art.
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`In the end, Petitioner cannot salvage its meritless obviousness positions.
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`Accordingly, Patent Owner requests that the Board confirm the patentability of the
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`Challenged Claims of the ‘853 patent.
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`II. ARGUMENT
`A. Chardon Alone Does Not Render The Challenged Claims Obvious.
`1.
`Petitioner Has Failed To Show That Chardon Discloses,
`Teaches, Or Suggests “causing the universal control engine
`to respond to a detected presence of an intended target
`appliance within a logical topography of controllable
`appliances which includes the universal control engine by …
`creat[ing] a listing” (“Response Limitation”).
`Petitioner has failed to show that Chardon discloses, teaches, or suggests the
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`Response Limitation because Petitioner’s Reply again confirms that the alleged
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`1
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`“listing” of Chardon is not created in response to a detected presence of an intended
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`target appliance but is instead created before Chardon’s remote responds to a
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`detected presence of an intended target appliance.
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`Petitioner does not dispute that, according to the Response Limitation, the
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`claimed “universal control engine” (“UCE”) must create a “listing” in response to a
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`detected presence of an intended target appliance (i.e., the listing must be created
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`after the UCE detects an intended target appliance). (Paper 20 at 13; Paper 24 at 2-
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`5.)
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`Petitioner argues that the alleged “respon[se] to a detected presence of an
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`intended target appliance” of Chardon occurs when Chardon’s remote “queries” a
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`target appliance for an EDID, receives the appliance’s EDID, and then “links” the
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`EDID with a set of command codes. (Paper 20 at 14; Paper 24 at 2-5.)
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`Petitioner then argues that the alleged “listing” of Chardon is a so-called
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`“linked database” of CEC and IR command codes (Paper 24 at 3)—a term that does
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`not appear anywhere in Chardon (see generally EX1005, Chardon).
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`Petitioner contends that Chardon meets the Response Limitation because it
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`performs two steps to create the “linked database”: first Chardon creates a database
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`of IR and CEC command codes (Paper 24 at 3); and second, after obtaining a target
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`appliance’s EDID, Chardon “links” the EDID with the previously stored set of
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`command codes by creating a “link” that is stored as an entry in the previously-
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`created database of command codes (id.; see also id. at 8 (Petitioner failing to dispute
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`that Chardon “links” the EDID with the previously stored set of command codes by
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`creating a “link” that is stored as an entry in the previously-created database of
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`command codes); EX1005, Chardon, at Abstract, [0007], [0034], [0044], claim 1,
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`claim 9; EX2002, 7/13/20 Turnbull Declaration, ¶ 57).
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`However, as explained in Patent Owner’s Response and as Petitioner cannot
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`dispute, Petitioner cannot show that either of the above steps (i.e., creating a database
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`of command codes and then later creating a “link” that is stored as an entry in the
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`already-created database) meets the Response Limitation—and thus cannot show
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`that Chardon discloses, teaches, or suggests the Response Limitation—because:
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`(i)
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`Petitioner admits that Chardon’s database of CEC and IR command
`codes is created before Chardon’s remote receives a target appliance’s
`EDID (i.e., before the alleged “response to a detected presence of an
`intended target appliance”)—and not after, in response to querying a
`target appliance and receiving its EDID; and
`(ii) Petitioner does not assert that Chardon’s “link” is a “listing.” (Paper
`20 at 13-17.)
`Petitioner’s Reply confirms that Petitioner’s positions are flawed.
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`First, Petitioner once again admits in its Reply that Chardon’s database of
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`command codes is created before Chardon’s remote receives a target appliance’s
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`EDID—not in response to the remote receiving a target appliance’s EDID. (See
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`Paper 24 at 7 (“Chardon does not use the EDID to create the pre-linked database of
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`command codes”); see also id. at 3; Paper 2 at 47-48; EX1003, Russ Declaration, ¶¶
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`182, 185; EX1005, Chardon, at [0044], [0050]; EX2002, 7/13/20 Turnbull
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`Declaration, ¶¶ 57-58.) Thus, Petitioner cannot show that Chardon’s creation of a
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`database of command codes meets the Response Limitation.
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`Second, Petitioner once again does not assert that Chardon’s “link” is a
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`“listing.” (See Paper 24 at 2-9; see generally Paper 2.)1 At best, Petitioner has
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`asserted only that a database of command codes created before receiving a target
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`appliance’s EDID is a “listing.” (See, e.g., Paper 2 at 2 (“Chardon’s universal control
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`engine creates a database (i.e., a listing)…”), 21 (“Chardon discloses building a
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`database (i.e., a listing) of IR and CEC command codes.”), 37 (“Chardon solves this
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`problem by creating a database (i.e., a list) ‘configured to store sets of command
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`codes’”), 49 (“Chardon thus creates a database (i.e., a list)…”), 50 (“Chardon
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`discloses a plurality of ways to create a database (i.e. a list)…”), 62 (“using
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`Chardon’s database (i.e., the list)…”).) But Chardon’s “link” is indisputably not a
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`database—it is merely an entry in Chardon’s previously-created database of
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`command codes (see, e.g., Paper 24 at 8; EX1005, Chardon, at [0044]; EX2002,
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`1 Indeed, Petitioner’s Reply repeatedly distinguishes a “link” from a “listing.”
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`(Paper 24 at 8, 13, 16 (Petitioner distinguishing the ‘853 patent’s “command matrix,”
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`which is an embodiment of the claimed “listing,” from a “link” or “pointer” stored
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`in the matrix).)
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`7/13/20 Turnbull Declaration, ¶ 57)—and Petitioner has failed to identify any
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`database that is created in response to Chardon’s remote receiving a target
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`appliance’s EDID (see generally Paper 2; Paper 24; EX1005, Chardon). Thus,
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`Petitioner cannot show that Chardon’s creation of a “link” meets the Response
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`Limitation.
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`Faced with Petitioner’s clear and dispositive admissions and representations,
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`Petitioner resorts to contending that Patent Owner has “mischaracterized”
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`Petitioner’s directly-quoted positions from the Petition. (Paper 24 at 2, 4-5.) But it
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`is Petitioner’s arguments that mischaracterize and mislead. Using the contrived
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`term “linked database,” Petitioner conflates Chardon’s distinct steps of (i) creating
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`a database of command codes and (ii) creating a “link” stored as an entry in the
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`already-created database. (See generally Paper 24.) Petitioner then contrasts the
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`term “linked database” with the equally-contrived terms “pre-linked database” and
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`“unlinked database” to misleadingly assert that Chardon’s remote creates two
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`different databases—one before receiving a target appliance’s EDID and one after
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`receiving a target appliance’s EDID. (Id.)
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`However, Petitioner’s own arguments acknowledge that Chardon’s remote
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`does not create two different databases before and after receiving a target appliance’s
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`EDID. (Id. at 3, 7; Paper 2 at 47-48; EX1003, Russ Declaration, ¶¶ 182, 185;
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`EX1005, Chardon, at [0044], [0050]; EX2002, 7/13/20 Turnbull Declaration, ¶¶ 57-
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`58.) Rather, Chardon’s remote creates a single command code database before
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`receiving the target appliance’s EDID, and then, after receiving the EDID, creates a
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`“link” that is stored as an entry in the previously-created database. (Id.) Again, as
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`explained above, neither of these steps meets the Response Limitation.
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`Accordingly, Petitioner has failed to show that Chardon discloses, teaches, or
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`suggests the Response Limitation.
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`2.
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`Petitioner Has Failed To Show That Chardon Discloses,
`Teaches, Or Suggests “using an identity associated with the
`intended target appliance to create a listing” (“Identity
`Limitation”).
`Petitioner has also failed to show that Chardon discloses, teaches, or suggests
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`the Identity Limitation because the alleged “listing” of Chardon is not created using
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`an alleged “identity” associated with an intended target appliance but is instead
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`created before Chardon’s remote even receives the alleged “identity” associated with
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`the intended target appliance.2
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`Petitioner does not dispute that, according to the Identity Limitation, the UCE
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`must create a “listing” using an “identity” associated with the intended target
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`appliance. (Paper 20 at 18; Paper 24 at 5-9.)
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`2 Petitioner complains that Patent Owner addressed the Response Limitation and the
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`Identity Limitation separately, but Petitioner fails to explain why it was improper for
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`Patent Owner to do so. (Paper 24 at 2-3, 5.)
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`Petitioner also does not dispute that the alleged “an identity associated with
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`the intended target appliance” of Chardon is an “EDID, or device make or model
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`number, or vendor ID.” (Id.)
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`As explained in Patent Owner’s Response and as Petitioner cannot dispute,
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`Petitioner cannot show that either of the purported steps to create Chardon’s “linked
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`database” (i.e., creating a database of command codes and then later creating a “link”
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`that is stored as an entry in the already-created database) meets the Identity
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`Limitation—and thus cannot show that Chardon discloses, teaches, or suggests the
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`Identity Limitation—because:
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`(i)
`Petitioner admits that Chardon does not use an EDID, a device make or
`model number, or a vendor ID to create its database of command codes; and
`(ii) Petitioner does not assert that Chardon’s “link” is a “listing.” (Paper
`20 at 17-20.)
`Again, Petitioner’s Reply confirms that Petitioner’s positions are flawed.
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`First, Petitioner once again admits in its Reply that Chardon does not use an
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`EDID, a device make or model number, or a vendor ID to create its database of
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`command codes. (See Paper 24 at 7; see also id. at 3; EX2002, 7/13/20 Turnbull
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`Declaration, ¶ 66.) Thus, Petitioner cannot show that Chardon’s creation of a
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`database of command codes meets the Identity Limitation.
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`Second, as noted above, Petitioner once again does not assert that Chardon’s
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`“link” is a “listing.” (See Paper 24 at 2-9; see generally Paper 2.) Rather, Petitioner
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`has asserted only that a database is a “listing” (see, e.g., Paper 2 at 2, 21, 37, 49, 50,
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`62), and Petitioner has failed to identify any database that Chardon creates using a
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`target appliance’s EDID, device make or model number, or vendor ID (see generally
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`Paper 2; Paper 24; EX1005, Chardon). Thus, Petitioner cannot show that Chardon’s
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`creation of a “link” meets the Identity Limitation.
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`While Petitioner asserts for the first time in its Reply that Chardon discloses
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`storing a “link” in a command code database and that the specification of the ‘853
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`patent similarly discloses storing a “pointer” in a command matrix (Paper 24 at 8-
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`9), Petitioner’s belated attempt to compare Chardon to the specification of the ‘853
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`patent is improper, irrelevant, and immaterial for at least two reasons.
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`First, it is well-settled that prior art must be compared to the challenged
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`claims, not to the challenged patent’s specification. See, e.g., Google, Inc. v.
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`Whitserve LLC, IPR2013-00249, Paper 32 at 24 (PTAB Sept. 9, 2014) (“To the
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`extent that Whitserve contends that the prior art must be compared to the
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`specification, as opposed to the construed claims, its contention is inapposite.”).
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`Second, as a matter of common sense, whether the specifications of Chardon
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`and the ‘853 patent both disclose a “link” stored as an entry in a “listing” has no
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`bearing on how (and when) Chardon’s alleged “listing” was created—and
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`particularly whether Chardon’s alleged “listing” was created using the claimed
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`“identity” associated with an intended target appliance. (EX1001, ‘853 patent, at
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`claim 1.)
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`Thus, Petitioner has failed to show that Chardon discloses, teaches, or
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`suggests the Identity Limitation.
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`3.
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`Petitioner Has Failed To Show That Chardon Discloses,
`Teaches, Or Suggests “creat[ing] a listing comprised of at
`least a
`first communication method and a second
`communication method
`different
`than
`the
`first
`communication method”
`(“Communication Methods
`Limitation”).
`Petitioner has also failed to show that Chardon discloses, teaches, or suggests
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`the Communication Methods Limitation because the “command codes” in the
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`alleged “listing” of Chardon are not “communication methods” and Chardon’s
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`alleged “listing” does not comprise “communication methods.”
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`Petitioner does not dispute that, under the Communication Methods
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`Limitation, the UCE must create a “listing” comprised of at least two different
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`“communication methods.” (Paper 20 at 20; Paper 24 at 9-16; EX1001, ‘853 patent,
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`at claim 1.)
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`Petitioner also does not dispute that a POSITA would have understood a
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`“communication method” to be a medium or protocol for transmitting or receiving
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`information. (Paper 20 at 21-22; Paper 24 at 9-16; see also id. at 10-11 (Petitioner
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`using “transmission medium” and “communication method” interchangeably);
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`EX2002, 7/13/20 Turnbull Declaration, ¶ 70.)
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`Additionally, Petitioner concedes that the alleged “listing” of Chardon (i.e.,
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`the “linked database”) is comprised of “command codes” (Paper 24 at 10
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`(“Accordingly, Chardon describes its linked database as being comprised of at least
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`two ‘sets’ of command codes”)), and concedes that a POSITA would not have
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`understood “command codes” to be the claimed “communication methods” (see
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`Paper 20 at 25-26; EX2002, 7/13/20 Turnbull Declaration, ¶ 70; Paper 24 at 9-16
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`(Petitioner failing to dispute that a POSITA would not have understood “command
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`codes” to be “communication methods”); id. at 10-11 (Petitioner distinguishing
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`“command codes” from “communication methods”)).
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`Moreover, Petitioner does not dispute that the Petition improperly reads
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`Chardon’s “command codes” on multiple, distinct claim elements of Challenged
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`Claim 1 (i.e., “a first communication method and a second communication method,”
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`“a received request,” and “a command”). (See Paper 24 at 14-15 (Petitioner
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`admitting that it reads Chardon’s command codes on the claimed “received request”
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`and failing to dispute that it reads Chardon’s command codes on the claimed
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`“command”); see also Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616
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`F.3d 1249, 1254 (Fed. Cir. 2010); Oxford Nanopore Technologies, Inc. v. Pacific
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`Biosciences of California, Inc., IPR2018-01792, Paper 10 at 18 (PTAB Mar. 26,
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`2019); Cisco Systems, Inc. v. Egenera, Inc., IPR2017-01341, Paper 10 at 14-15
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`(PTAB Nov. 13, 2017).)
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`In view of the above, Petitioner cannot show that Chardon discloses, teaches,
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`or suggests the Communication Methods Limitation.
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`Faced with overwhelming and undisputed evidence demonstrating that
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`Petitioner’s original argument in the Petition cannot succeed,3 Petitioner rewrites the
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`claim language to raise a brand-new, attorney-only argument that Chardon’s “linked
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`database” meets the Communication Methods Limitation because Chardon
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`purportedly uses the “linked database” to convey at least two different sets of
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`command codes over at least two different communication methods. (See, e.g.,
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`Paper 24 at 1 (“where the codesets use different transmission mediums like CEC
`
`over HDMI and IR”), 10 (“Chardon’s linked database discloses use of at least two
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`different command transmission mediums”); id. at 11 (“Chardon’s linked databases,
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`when accessed, are used to control the functional operations of the intended target
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`appliance … using either CEC over HDMI or IR to transmit the commands.”); id.
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`(“a linked listing of different sets of command codes that cause those
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`communication methods to be used.”); id. at 12 (“[Chardon] offers two different
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`3 As noted in Patent Owner’s Response, the Petition merely asserts, without
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`explanation or analysis, that the alleged “first communication method” and “second
`
`communication method” of Chardon are command codes. (See Paper 20 at 24
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`(citing Paper 2 at 52, 53, 56; EX1003, Russ Declaration, ¶¶ 194, 203).)
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`command transmission mediums for a particular functional operation, and thus
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`discloses at least two different communication methods.”); id. at 14 (“Chardon’s
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`EDID-linked database [] enables communication … via at least two different
`
`transmission methods”).)
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`Petitioner’s new argument is without merit and is contradicted by the clear
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`and unambiguous language of the Challenged Claims. At the outset, Petitioner
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`attempts to rewrite the Communications Methods Limitation to remove the express
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`requirement that the claimed listing is “comprised of” of at least two different
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`communications methods. (See, e.g., Paper 24 at 10 (“Chardon’s linked database
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`discloses use of at least two different command transmission mediums”); see also
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`EX1001, ‘853 patent, at claim 1 (expressly reciting that the claimed “listing” is
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`“comprised of” at least two different communication methods).) Petitioner provides
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`no analysis or expert testimony to show that the alleged use of Chardon’s “linked
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`database” of command codes
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`to
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`transmit commands over
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`two different
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`communication methods is sufficient to disclose the claimed listing that is comprised
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`of at least two different communication methods. (See generally Paper 24 at 10-
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`16.)4 As a matter of common sense, using a database comprised of command codes
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`4 Petitioner confuses the Communication Methods Limitation with the Functional
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`Operations Limitation—which, according to Petitioner, recites that the listing is used
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`is not the same thing as creating a database comprised of communication methods.
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`Further, Petitioner’s assertion that Chardon discloses “using” the “linked database”
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`to transmit commands over two different communication methods is conclusory and
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`unsupported. (Paper 24 at 11 (citing EX1005, Chardon, at [0058], [0060], FIG. 5).)
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`The cited passages from Chardon say nothing about a “linked database” or using a
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`“linked database” to transmit commands, and Petitioner provides no analysis or
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`expert testimony to support such a contention. (See generally EX1005, Chardon, at
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`[0058], [0060], FIG. 5; see also Paper 24 at 11 (Petitioner failing to support its
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`argument with expert testimony).) Thus, Petitioner’s new argument is conclusory,
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`factually unsupported, and insufficient to establish obviousness. See ActiveVideo
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`Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1327 (Fed. Cir.
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`2012).
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`Petitioner also asserts for the first time in its Reply that Chardon meets the
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`Communication Methods Limitation because the specifications of Chardon and the
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`‘853 patent are purportedly similar. (Paper 24 at 13-14 (comparing Chardon to the
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`specification of the ‘853 patent); id. at 16 (“indeed, the two methods of Chardon and
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`[the] ‘853 patent are nearly indistinguishable.”).) Petitioner’s argument is wrong
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`to control at least two different functional operations using at least two different
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`communication methods (Paper 2 at 56-58; Paper 24 at 16).
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`because, as noted above, prior art must be compared to the challenged claims, not
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`to the challenged patent’s specification. See Google, IPR2013-00249, Paper 32 at
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`24. Moreover, Petitioner’s argument confirms that Chardon’s “linked database” of
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`command codes is not the claimed listing comprised of at least two different
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`communication methods. As Petitioner concedes, the specification of the ‘853
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`patent describes a listing (e.g., command matrix 700) with data cells that include an
`
`indicator that a certain communication method may be used and a “pointer” to
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`command data and formatting information stored in a separate code library. (Paper
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`24 at 13; see also Paper 20 at 22-24; EX1001, ‘853 patent, at FIG. 7, 7:19-42;
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`EX2002, 7/13/20 Turnbull Declaration, ¶¶ 71-72.) In other words, the ‘853 patent
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`distinguishes between a listing comprised of communication methods on the one
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`hand, and a library or database of command codes (e.g., Chardon’s “linked
`
`database”) on the other. (Paper 20 at 22-24; EX2002, 7/13/20 Turnbull Declaration,
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`¶¶ 71-72.)
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`Additionally, Petitioner asserts in its Reply that Patent Owner “implies” that
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`the Communication Methods Limitation “requires the literal names of different
`
`command transmission mediums to appear in the text of the listing.” (Paper 24 at
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`11.) But Patent Owner does not assert (and has never asserted) that such a
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`requirement exists in the ‘853 patent. Regardless, Petitioner has failed to show that
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`Chardon discloses, teaches, or suggests the Communication Methods Limitation
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`with or without such a requirement.
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`Thus, Petitioner has failed to show that Chardon discloses, teaches, or
`
`suggests the Communication Methods Limitation.
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`4.
`
`Petitioner Has Failed To Show That Chardon Discloses,
`Teaches, Or Suggests “[create a listing comprised of at least
`a first communication method and a second communication
`method different than the first communication method] for
`use in controlling each of at least a first functional operation
`and a second functional operation of the intended target
`appliance” (“Functional Operations Limitation”).
`Petitioner has failed to show that Chardon discloses, teaches, or suggests the
`
`Functional Operations Limitation because Petitioner misreads the claim and
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`incorrectly asserts that the claimed “listing” of independent claim 1—not the
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`claimed “communication methods”—is for use in controlling the claimed first and
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`second functional operations.
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`In Petitioner’s Reply, Petitioner doubles-down on its misreading of
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`Challenged Claim 1 of the ‘853 patent and asserts once again that the claimed
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`“listing” of Challenged Claim 1 is for use in controlling the claimed first and second
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`functional operations. (Paper 24 at 17 (“it is the listing of communication methods
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`that controls the functional operation of the target appliance.”).)
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`As demonstrated in Patent Owner’s Response and as Petitioner has admitted,
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`however, the claims and specification of the ‘853 patent are clear that it is the at least
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`two different communication methods in the “listing” that are for use in controlling
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`the first and second functional operations. (Paper 20 at 29; EX1001, ‘853 patent, at
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`claim 1, 2 and 7, 6:62-7:18; EX2002, 7/13/20 Turnbull Declaration, ¶ 74; EX2005,
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`Petitioner’s CC Brief, at 14; EX2006, Petitioner’s Reply CC Brief, at 11.)
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`In any case, Petitioner cannot show that Chardon discloses, teaches, or
`
`suggests the Functional Operations Limitation because:
`
`(1) Petitioner has failed to show that Chardon discloses, teaches, or suggests
`
`the claimed “listing” (see Secs. II(A)(1)-(3), supra);
`
`(2) Petitioner has failed to show that Chardon’s “linked database” is used to
`
`control first and second functional operations (see Sec. II(A)(3), supra); and
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`(3) Petitioner has failed to assert in the Petition that Chardon discloses,
`
`teaches, or suggests using two different communication methods to control first and
`
`second functional operations and instead asserts only that Chardon discloses using
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`two different types of command codes to control a single functional operation (Paper
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`20 at 30 (citing Paper 2 at 57-58)).
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`IPR2019-01615
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`Patent Owner’s Sur-Reply
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`B. Chardon In Combination With HDMI 1.3a And/Or Stecyk Does
`Not Render The Challenged Claims Obvious.
`1.
`Petitioner Has Failed To Show That Chardon In
`Combination With HDMI 1.3a And/Or Stecyk Discloses,
`Teaches, Or Suggests Each And Every Limitation Of The
`Challenged Claims.
`Petitioner has failed to show that Chardon in combination with HDMI 1.3a
`
`and/or Stecyk renders the Challenged Claims obvious because Petitioner has failed
`
`to show that Chardon in combination with HDMI 1.3a and/or Stecyk discloses,
`
`teaches, or suggests each and every limitation of the Challenged Claims.
`
`As discussed above, Petitioner has failed to show that Chardon discloses,
`
`teaches, or suggests each of the Response Limitation, the Identity Limitation, the
`
`Communication Methods Limitation, and the Functional Operations Limitation
`
`(collectively, the “Listing Limitations”).
`
`Additionally, there is no dispute that:
`
`(i)
`Petitioner does not assert that HDMI 1.3a discloses, teaches, or
`suggests any of the Listing Limitations. (Paper 20 at 32; Paper 24 at 18-21; Paper
`12 at 22.)
`(ii) Petitioner does not assert that Stecyk discloses, teaches, or suggests any
`of the Listing Limitations. (See Paper 24 at 21 (“[Petitioner] relies on Stecyk as an
`alternative to Chardon in case Patent Owner attempted to argue that Chardon’s
`EDID-linked databases do not qualify as ‘listings.’ However, Patent Owner does
`not appear to challenge that particular aspect of Chardon’s linked databases.”); see
`also Paper 2 at 3; EX1003, Russ Declaration, ¶ 32; Paper 12 at 11.)
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`Thus, Petitioner has failed to show that Chardon in combination with HDMI
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`1.3a and/or Stecyk discloses, teaches, or suggests each and every limitation of the
`
`Challenged Claims.
`
`2.
`
`Petitioner Has Failed To Establish A Motivation To Combine
`Chardon With Stecyk.
`Petitioner has failed to establish a motivation to combine Chardon with
`
`Stecyk. Petitioner cannot dispute that it has neither argued nor offered any evidence
`
`to show that a POSITA would have been motivated to combine Chardon with
`
`Stecyk.
`
`As Petitioner admits in its Reply, Petitioner does not propose combining
`
`Chardon with Stecyk, and instead is simply using Stecyk to attempt to confirm that
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`Chardon’s database of command codes would have been considered a “listing.” (See
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`Paper 24 at 21; see also Paper 2 at 3; EX1003, Russ Declaration, ¶ 32; Paper 12 at
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`11.) Based on this admission alone, Petitioner cannot show that a POSITA would
`
`have been motivated to combine Chardon with Stecyk. See, e.g., Henny Penny Corp.
`
`v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019) (affirming finding of no
`
`motivation to add a cooking oil quality sensor to a prior art system where the prior
`
`art system already taught a cooking oil quality sensor).
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`Patent Owner’s Sur-Reply
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`3.
`
`Petitioner Has Failed To Establish A Motivation To Combine
`Chardon With HDMI 1.3a.
`Petitioner has also failed to establish a motivation to combine Chardon with
`
`HDMI 1.3a.
`
`Petitioner does not dispute that, at the time of the invention of the Challenged
`
`Claims (i.e., October 28, 2011), HDMI 1.3a was not the current version of the HDMI
`
`standard. (Paper 20 at 38-39; Paper 24 at 19-21.) Petitioner also does not dispute
`
`that, between th