Trials@uspto.gov
`571-272-7822
`
`Paper 33
`Date: April 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`Petitioner,
`v.
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`IPR2019-01615
`Patent 9,716,853 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`This is a Final Written Decision in an inter partes review challenging
`the patentability of claims 1, 3, 5, and 7 of Patent No. 7,895,532 B2
`(Ex. 1001, “the ’853 patent”). We have jurisdiction under 35 U.S.C.
`§ 6(b)(4).
`
`
`
`
`571-272-7822
`
`Paper 33
`Date: April 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`Petitioner,
`v.
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`IPR2019-01615
`Patent 9,716,853 B2
`
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`This is a Final Written Decision in an inter partes review challenging
`the patentability of claims 1, 3, 5, and 7 of Patent No. 7,895,532 B2
`(Ex. 1001, “the ’853 patent”). We have jurisdiction under 35 U.S.C.
`§ 6(b)(4).
`
`
`
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`IPR2019-01615
`Patent 9,716,853 B2
`Petitioner has the burden of proving unpatentability of a claim by a
`preponderance of the evidence. 35 U.S.C. § 316(e). Having reviewed the
`arguments of the parties and the supporting evidence, we find that Petitioner
`has not demonstrated by a preponderance of the evidence that claims 1, 3, 5,
`and 7 are unpatentable.
`
`I.
`
`INTRODUCTION
`A. Background
`Roku, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1, 3, 5, and 7 of the ’853 patent. Paper 2 (“Pet.”).
`Universal Electronics, Inc. (“Patent Owner”) filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”). After we issued an order (Papers 7, 8) that
`granted authorization for additional briefing addressing the issue of
`discretionary denial under 35 U.S.C. § 325(d), Petitioner filed a Reply to the
`Preliminary Response (Paper 9) and Patent Owner filed a Sur-reply to the
`Reply (Paper 11). We instituted an inter partes review. Paper 12 (“Dec.”).
`During the trial, Patent Owner filed a Response (Paper 20, “PO
`Resp.”), Petitioner filed a Reply (Paper 24, “Reply”), and Patent Owner filed
`a Sur-reply (Paper 25, “Sur-reply”). An oral hearing was held with the
`parties on January 25, 2021, and a copy of the transcript was entered into the
`record. Paper 32 (“Tr.”).
`B. Related Matters and Real Parties in Interest
`Petitioner and Patent Owner each state that the ’853 patent is involved
`in Universal Electronics Inc. v. Roku, Inc., Case 8-18-cv-01580, in the
`Central District of California. Pet. 72; Paper 3 (Patent Owner’s Mandatory
`Notices), 2. Patent Owner additionally identifies as related eight other inter
`partes review petitions filed by Petitioner requesting review of other patents
`owned by Patent Owner. Paper 3, 2.
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`Patent 9,716,853 B2
`Petitioner identifies only itself as the real party in interest. Pet. 72.
`Patent Owner also identifies only itself as the real party in interest. Paper 3,
`2.
`
`C. Overview of the ’853 Patent
`The ’853 patent relates to a device that receives “a request from a
`controlling device, such as a remote control, smart phone, or the like” to
`“have one or more target devices perform one or more functional
`operations.” Ex. 1001, code (57). The device “responds to the request by
`applying the optimum methodology to propagate one or more commands” to
`the target device(s) to perform the functional operation(s). Id.
`Figure 1 of the ’853 patent, reproduced below, illustrates an
`exemplary system in which a universal control engine (UCE) according to
`the invention is used to issue commands to control various controllable
`appliances. Id. at 3:39–41.
`
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`In Figure 1, controllable appliances include television 106, cable set
`top box combined with digital video recorder 110, DVD player 108, and AV
`receiver 120. Id. at 3:41–44. Appliance commands are issued by UCE 100
`in response to infrared (“IR”) request signals 116 received from remote
`control device 102 or radio frequency (“RF”) request signals 118 received
`from app 124 resident on smart device 104. Id. at 3:52–56. Transmission of
`commands from UCE 100 to the controllable appliances may take the form
`of wireless IR signals 114 or Consumer Electronic Control (“CEC”)
`commands issued over wired HDMI interface 112 if available. Id. at 2:38–
`45, 3:58–4:4.
`The ’853 patent describes that the method, protocol, or medium for
`issuing commands to controllable appliances may vary by appliance and/or
`by function to be performed. Id. at 6:62–64, 7:5–7. “[I]n some instances a
`particular appliance may support receipt of an operational command via
`more than one path,” such as via a CEC command or via an IR command.
`Id. at 7:8–12. A UCE may use a matrix including data cells, each
`corresponding to a specific command and a specific appliance, with the data
`content of the cell including “identification of a form of
`command/transmission to be used and a pointer to the required data value
`and formatting information for the specific command.” Id. at 7:26–29,
`Fig. 7. Matrix 700 may contain a null entry if “a particular function is not
`available on or not supported by a specific appliance.” Id. at 7:46–49. “In
`certain embodiments one or more secondary command matrices . . . may
`also be provisioned, allowing for the use of alternate command methods in
`the event it is determined by the UCE programming that a preferred
`command was unsuccessful.” Id. at 7:42–46.
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`Patent 9,716,853 B2
`Figure 13 of the ’853 patent, reproduced below, illustrates an
`exemplary series of steps performed by a UCE in issuing a function
`command to an appliance. Id. at 3:29–31, 11:40–47.
`
`
`As shown in Figure 13, a command request is received (1300) and a
`corresponding data element, if one exists, is retrieved from a preferred
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`Patent 9,716,853 B2
`command matrix and transmitted to the appliance (1302, 1304, 1306). Id. at
`11:40–57, 12:4–10. In certain cases, when an expected confirmation of
`successful transmission is not received (1308, 1310) and an alternate method
`of issuing the command is available (1312), the data element from an
`alternate command matrix is retrieved and transmitted (1316, 1306). Id. at
`12:10–16, 12:21–35.
`
`D. Illustrative Claims
`Of the challenged claims, claim 1 is the sole independent claim, and
`each of the remaining challenged claims depends directly from claim 1.
`Claim 1 is reproduced below with bracketed notations, corresponding to
`notations in the Petition, added for reference.
`1. [1.P] A universal control engine, comprising:
`[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
`[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 [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 [1.4] for use in
`controlling each of at least a first functional
`operation and a second functional operation of
`the intended target appliance [1.5] and 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 [1.6] by causing a
`one of the first and second communication
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`listing of communication
`the
`in
`methods
`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.
`Ex. 1001, 14:49–15:7.
`
`E. Evidence Relied Upon
`Date
`US 2012/0249890 A1 Oct. 4, 2012
`
`Exhibit
`1005
`
`1006
`
`Reference
`Chardon et al.
`(“Chardon”)
`US 2009/0254500 A1 Oct. 8, 2009
`Stecyk
`HDMI Licensing, LLC, High-Definition
`Multimedia Interface, Specification
`Version 1.3a (November 10, 2006)
`(“HDMI 1.3a”)
`Petitioner also relies upon the Declaration of Dr. Samuel H. Russ
`(Ex. 1003).
`
`2006
`
`1010
`
`F. Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claim(s) Challenged
`1, 3, 5, 7
`1, 3, 5, 7
`1, 3, 5, 7
`1, 3, 5, 7
`
`Reference(s)/Basis
`Chardon
`Chardon and HDMI 1.3a
`Chardon and Stecyk
`Chardon, HDMI 1.3a, Stecyk
`
`35 U.S.C. §1
`103(a)
`103(a)
`103(a)
`103(a)
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), amended 35 U.S.C. § 103. Because the
`application from which the ’853 patent claims priority through a chain of
`continuation applications to an application filed before March 16, 2013, the
`effective date of the relevant amendment, the pre-AIA version of § 103
`applies. Ex. 1001, code (63).
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`
`II. ANALYSIS
`A. Legal Standards
`It is a petitioner’s burden to demonstrate unpatentability. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`1316, 1326–27 (Fed. Cir. 2008)).
`A claim is unpatentable as obvious if “the differences between” the
`claimed subject matter “and the prior art are such that the subject matter as a
`whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a) (2012). The question of obviousness is resolved on the
`basis of underlying factual determinations, including: (1) the scope and
`content of the prior art; (2) any differences between the claimed subject
`matter and the prior art; (3) the level of skill in the art; and (4) objective
`evidence of nonobviousness.2 Graham v. John Deere Co. of Kansas City,
`383 U.S. 1, 17–18 (1966).
`Even if prior art references disclose all claim limitations when
`combined, there must be evidence to support an explanation why a person of
`ordinary skill in the art would have combined the references to arrive at the
`claimed invention. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
`F.3d 1342, 1366–67 (Fed. Cir. 2012) (citing Innogenetics, N.V. v. Abbott
`Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008) (holding that “some kind of
`motivation must be shown from some source, so that the [trier of fact] can
`
`
`2 No argument or evidence concerning secondary considerations has been
`adduced.
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`understand why a person of ordinary skill would have thought of either
`combining two or more references or modifying one to achieve the patented
`[invention]”)). An invention “composed of several elements is not proved
`obvious merely by demonstrating that each of its elements was,
`independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 418 (2007). Rather, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does.” Id.
`An obviousness determination “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006));
`see In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
`2016).
`
`B. Level of Ordinary Skill in the Art
`Petitioner argues that one of ordinary skill in the art
`would have had general knowledge of home theater systems,
`control of devices within the home theater systems, and remote
`control devices as of October 28, 2011. Further, a POSA would
`have had: (1) at least a bachelor’s degree in an electrical
`engineering, computer engineering, or equivalent coursework,
`and (2) at least one year of experience researching or developing
`structure and operating principles of common digital content
`reproduction and related appliances, contemporary television
`and home theater standards, and specifications of consumer
`digital reproducing devices of the time.
`Pet. 13. Patent Owner proposes a different standard:
`[A person of ordinary skill in the art] would have had a
`bachelor’s degree which
`involved software design and
`development coursework, for example, electrical engineering,
`computer engineering, computer science, cognitive science,
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`industrial engineering, information systems, information studies,
`or a similar degree, and at least one year of work experience in
`software programming, development, or design of consumer
`applications. Additional education might substitute for some of
`the experience, and substantial experience might substitute for
`some of the educational background.
`PO Resp. 4–5 (internal citations omitted). The ’853 patent specifically
`relates to remote control devices, so we adopt Petitioner’s standard that
`includes general knowledge consistent with the field of the invention, and,
`additionally, is consistent with the prior art presented. See Ex. 1001, 1:63–
`2:3; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior
`art may reflect an appropriate level of skill in the art).
`Patent Owner’s expert testified that his analysis was not affected by
`the definition adopted. See PO Resp. 6; Ex. 2002 (Expert report of Dr. Don
`Turnbull), ¶¶ 37–38. Adopting Patent Owner’s definition would not affect
`our analysis here.
`
`C. Claim Construction
`We apply the same claim construction standard that is applied in civil
`actions under 35 U.S.C. § 282(b), which is articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny. See 37
`C.F.R § 42.100(b) (2019). Under Phillips, claim terms are afforded “their
`ordinary and customary meaning.” Phillips, 415 F.3d at 1312 (quoting
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)).
`“[T]he ordinary and customary meaning of a claim term is the meaning that
`the term would have to a person of ordinary skill in the art in question at the
`time of the invention. . . .” Id. at 1313. “Claim construction begins with the
`words of the claim, which ‘must be read in view of the specification, of
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`which they are a part.’” Wi-Lan, Inc. v. Apple, Inc., 811 F.3d 455, 462 (Fed.
`Cir. 2016) (quoting Phillips, 415 F.3d at 1312–15).
`Petitioner proposes only one claim construction, for limitation [1.4],
`which specifies that the first and second communication methods are “for
`use in controlling each of at least a first functional operation and a second
`functional operation of the intended target appliance.” Pet. 14–17. In our
`Decision on Institution, we found that no specific construction was
`necessary. Dec. 17. Post-institution, the parties’ arguments did not involve
`the construction of this term, and no express construction is necessary for us
`to reach our conclusion. See PO Resp. 10 (Patent Owner stating that no
`construction is required).
`We determine that no specific construction is required to resolve the
`controversy before us, and thus decline to construe this limitation. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`D. Obviousness over Chardon, alone or in view of HDMI 1.3a and/or
`Stecyk
`Petitioner argues that claims 1, 3, 5, and 7 would have been obvious
`“over Chardon (EX1005), alone or in view of HDMI Specification
`(EX1010), and Stecyk (EX1006).” Pet. 36.
`1. Overview of Chardon
`Chardon, published on October 4, 2012, is a U.S. Patent Application
`Publication of an application filed March 31, 2011.3 Ex. 1005, codes (43),
`
`
`3 Petitioner contends that Chardon qualifies as prior art under pre-AIA
`35 U.S.C. §§ 102(a) and (e). Pet. 4. In the Preliminary Response, Patent
`Owner argued that Chardon is not prior art under pre-AIA 35 U.S.C.
`§ 102(a), but did not dispute that Chardon qualifies as prior art under pre-
`AIA 35 U.S.C. § 102(e). Prelim. Resp. 14–15. In the Decision on
`Institution, we determined for the purposes of institution that Chardon is
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`(22). Chardon relates to configuring a remote-control system including by
`querying a display for identification data for the display and storing the
`display’s identification data and command codes configured for controlling
`the display. Id. at code (57), ¶ 7. Chardon describes an entertainment
`system with a set of HDMI appliances including, for example, an HDMI
`display and speakers, and HDMI sources such as a cable or a satellite set-
`top-box, a personal video recorder, a DVD player, and a personal computer,
`among others. Id. ¶¶ 30, 37, Fig. 1. A multi-media gateway having a
`remote-control engine may be included in the entertainment system. Id.
`¶¶ 30–32, 44. The entertainment system also supports access, for example
`via a connection to a remote server, to a database that stores sets of
`command codes, such as sets of IR command codes and CEC command
`codes. Id. ¶¶ 30–35. For example, the remote database may store sets of
`command codes such as sets of IR and CEC command codes, and a link that
`associates a given appliance with the set of command codes configured to
`control that appliance. Id. ¶ 33.
`The remote control system includes a memory and processor to store
`and operate a remote-control engine application. Id. ¶¶ 39, 43. Sets of
`command codes including IR and CEC command codes may be stored in
`memory of the remote control. Id. ¶¶ 39, 43. The remote control also may
`include an IR transceiver, an RF transceiver, and a bus that includes a CEC
`bus or communication port over which CEC command codes may be
`communicated to HDMI appliances. Id. ¶¶ 38–40, 43.
`
`
`prior art at least under pre-AIA 35 U.S.C. § 102(e). Dec. 17 n.4. Neither
`party has made further arguments on this issue.
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`In one embodiment, “the remote-control engine operating on the
`remote-control system of the multimedia gateway is configured to collect the
`Extended Display Identification Data (EDID) of an HDMI display.”
`Id. ¶ 44. This may occur “if the multi-media gateway and HDMI display are
`coupled by an HDMI cable.” Id. “The remote-control engine of the multi-
`media gateway or the remote control device may query the HDMI display
`via a two-way IR or RF communication to collect the EDID.” Id.; see also
`id. ¶ 47. “The multi-media gateway or the remote-control device may be
`configured to ‘link’ the EDID for the HDMI display with the locally stored
`set of command codes (IR command codes and/or CEC command codes) for
`the HDMI display.” Id. ¶ 44.
`In operation, the remote control engine sends a CEC command code
`to an HDMI appliance to be executed. Id. ¶ 58, Fig. 5, element 500. If a
`response is not received indicating that the command code has been received
`and executed, an IR command code is sent to the HDMI appliance. Id. ¶ 58,
`Fig. 5, elements 510, 530, 540; see also id. ¶ 62, Fig. 6.
`2. Overview of HDMI 1.3a
`HDMI 1.3a is version 1.3a of the High-Definition Multimedia
`Interface specification. Ex. 1010, 17. “The High-Definition Multimedia
`Interface is provided for transmitting digital television audiovisual signals
`from DVD players, set-top boxes and other audiovisual sources to television
`sets, projectors and other video displays.” Id. HDMI carries audio, video,
`control, and status information. Id. HDMI 1.3a describes transmitting the
`audiovisual signals from an audiovisual source (a device with HDMI output)
`to an HDMI sink (a device with an HDMI input) such as television sets,
`projectors, and other video displays. Id. at 17, 21. HDMI 1.3a describes an
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`optional CEC line “for high-level user control of HDMI-connected devices.”
`Id. at 139; id. at 24, 128.
`HDMI 1.3a describes a physical address discovery algorithm that
`allocates physical addresses for each device upon power-up or “whenever a
`new device is added” to an HDMI cluster, indicated by a change in the HPD
`(“Hot Plug Detect”) signal. Id. at 139–142. An HDMI source can access an
`HDMI sink’s Enhanced Extended Display Identification Data (“E-EDID”),
`which contains an EDID structure, to discover the configuration or
`capabilities of the sink. Id. at 25, 128, 134. A high voltage level for the
`HPD signal indicates that the E-EDID for a sink is readable. Id. at 139.
`3. Overview of Stecyk
`Stecyk relates to a home theater network system including a control
`system providing centralized control of the devices in the home theater
`network system. Ex. 1006 ¶¶ 1, 47, 70. A digital module (“DM”) allows a
`user to operate the devices of the home theater network. Id. ¶ 71. The
`digital module includes a device management system module that, in turn,
`maintains a device container list and a device interconnect list. Id. ¶¶ 74, 77.
`The device container list “is a list, or database, of all the supported devices”
`of the home theater network, with information about each device placed into
`a device container object in memory. Id. ¶ 78. A device container object
`includes, for a device, a logical device ID, model number ID, and IR code
`file (for IR-signal controlled devices) containing IR codes for each
`supported remote control device key for the device. Id. ¶¶ 78, 85–87.
`Stecyk discloses that, when an audiovisual receiver device is detected
`in the system, “the user is prompted to identify the device in the control
`system from a list of known devices.” Id. ¶¶ 7–8, 45. If the user indicates
`that the device is not a known device, the user may be presented with a
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`learning mode by which the system learns the control codes for the device.
`Id. ¶¶ 45, 99, 102–104, Figs. 9B, 10C, 10D.
`4. Claim 1
`Petitioner argues that claim 1 is unpatentable as obvious over
`Chardon, or alternatively, over Chardon and Stecyk and/or HDMI 1.3a. Pet.
`2–3, 36–63.
`
`a) Preamble, limitation 1.1
`While not arguing that the preamble (“[a] universal control
`engine . . .”) is limiting, Petitioner asserts that Chardon teaches or suggests a
`universal control engine in Chardon’s multi-media gateway that includes a
`remote control system and a remote control engine, and that uses stored
`command codes to control connected devices in a home theater system.
`Pet. 38–40 (citing Ex. 1005 ¶¶ 7, 30, 36, 43, Fig. 1; Ex. 1003 ¶¶ 163–165).
`Alternatively, Petitioner argues that Stecyk describes a universal control
`engine. Id. at 32–33, 40 (citing Ex. 1006 ¶¶ 5, 50; Ex. 1003 ¶¶ 166–168).
`With respect to limitation 1.1 (“a processing device; and a memory
`device having stored thereon instructions executable by the processing
`device . . .”), Petitioner asserts that Chardon’s remote control system has a
`processor and a memory with stored executable instructions. Pet. 40–42
`(citing Ex. 1005 ¶¶ 36, 38, 39, 88, Fig. 2, elements 205, 210; Ex. 1003
`¶¶ 170, 171). Petitioner further argues that Chardon’s disclosure that the
`stored instructions are used to configure the UCE to communicate command
`codes to the HDMI appliances teaches that the executable instructions cause
`the universal control engine to store command codes and to cause them to be
`executed. Id. at 41–42 (citing Ex. 1005 ¶¶ 34, 38–40, 43, 46; Ex. 1003
`¶ 171).
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`Patent Owner does not present any arguments regarding the teachings
`of Chardon or Stecyk with respect to these limitations.
`b) Limitations 1.2, 1.3, and 1.4
`(1) Petitioner’s Contentions
`With respect to limitation 1.2 (the stored instructions causing the
`universal control engine “to respond to a detected presence of an intended
`target appliance . . .”), Petitioner asserts that Chardon teaches the “logical
`topography of controllable appliances” in the description of controllable
`appliances such as HDMI display and HDMI sources that each are
`connected via HDMI cables and can remotely control each other. Pet. 43–46
`(citing Ex. 1005 ¶¶ 3, 30, 44, Fig. 1 elements 105a, 105b; Ex. 1003 ¶¶ 177,
`178, 180, 181). Petitioner argues that Chardon’s remote control system
`responds to the detected presence of an appliance by linking a received
`EDID from an HDMI display with stored command codes used to control
`the display. Id. at 46 (citing Ex. 1005 ¶ 44; Ex. 1003 ¶¶ 178, 180).
`Petitioner further contends that one of ordinary skill in the art “would
`have recognized that such a logical topography where all HDMI-compatible
`devices can communicate with each other is an important feature of
`HDMI[’s] CEC [standard],” and that the appliances in Chardon would be
`controlled as explained in HDMI 1.3a. Id. at 43–45 (citing Ex. 1005 ¶¶ 1, 3,
`30, Fig. 1; Ex. 1010, 25, 139, 1424, 195; Ex. 1003 ¶¶ 73–76, 177–179).
`Specifically, Petitioner argues that one of ordinary skill would have
`recognized that the collection of the EDID data of the HDMI display (the
`
`
`4 The Petition cites to page 126 of Ex. 1010 for the “physical address
`discovery algorithm,” however this algorithm appears on page 142 of the
`document, internally paginated as 126 of 156 in one subsection of the
`document.
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`Patent 9,716,853 B2
`“intended target appliance”) could have, for example, been accomplished via
`HDMI’s HPD as described in HDMI 1.3a. Id. at 45 (citing Ex. 1010, 139;
`Ex. 1003 ¶ 179).
`With respect to limitation 1.3 (specifying the response to the detected
`presence of an intended target appliance is “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”), Petitioner argues that Chardon creates a
`database of IR and CEC command codes, including identifying and storing
`previously unrecognized CEC command codes, and applying similar
`identification and storage techniques to IR command codes. Pet. 47–50
`(citing Ex. 1005 ¶¶ 20, 33, 39, 48, 52, 53, 55, 56, 88; Ex. 1003 ¶¶ 182–189).
`Petitioner further describes Chardon’s creation of a link between EDID
`information for HDMI appliances and this database of command codes. Id.
`at 50–52 (citing Ex. 1005 ¶¶ 7, 44, 51; Ex. 1003 ¶¶ 190–196); id. at 21–24
`(citing Ex. 1005 ¶¶ 4, 43, 46, 49, 53, 55, 57, 58; Ex. 1003 ¶¶105–110, 133–
`138). Petitioner argues that, when this link is created, the result is a linked
`database of command codes, where the command codes are linked to the
`EDID or other identifying information. Id. at 22–23 (citing Ex. 1005 ¶¶ 44,
`49; Ex. 1003 ¶¶ 136–137), 46 (citing Ex. 1005 ¶ 44; Ex. 1003 ¶¶ 178–180);
`47–52; Reply 3–4.
`Chardon describes, after the collection of EDID from a display, the
`linking of the EDID “with the locally stored set of command codes (IR
`command codes and/or CEC command codes) for the HDMI display.”
`Ex. 1005 ¶ 44. Chardon further describes that “[t]he link may be an entry in
`a local memory in a file, database, etc. where the EDID is stored with the
`sets of command codes.” Id. Petitioner argues that, while Chardon does not
`
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`Patent 9,716,853 B2
`use the word “listing,” one of ordinary skill would have understood that the
`database of Chardon constitutes such a listing. Pet. 53 (citing Ex. 1003
`¶¶ 194–196).
`Petitioner further argues with reference to limitation 1.3 that the
`combination of Chardon and Stecyk also would have taught or suggested the
`“modi[fication of] Chardon’s building of command code databases to
`include the claimed ‘listing.’” Pet. 55–56. Petitioner argues that Stecyk
`discloses a device container list (“DCL”) that is a list of all supported
`devices in a home theater network system. Id. at 55 (citing Ex. 1006 ¶ 78;
`Ex. 1003 ¶ 199). The DCL contains a device container object (“DCO”) for
`each device that contains model number ID and, where relevant, an IR code
`file. Id. (citing Ex. 1006 ¶ 78, 95; Ex. 1003 ¶ 200).
`With respect to limitation 1.4, Petitioner argues that the command
`codes in Chardon’s database can be used to control functional applications
`of the target appliance. Pet. 56–58. Petitioner cites Chardon’s use of “its
`EDID-linked, command-code database to send a CEC command code over
`HDMI to an HDMI appliance using a first communication method” as
`teaching this limitation. Id. at 57 (citing Ex. 1005 ¶¶ 12, 58).
`(2) Patent Owner’s Contentions
`Patent Owner presents a number of arguments regarding Petitioner’s
`showing for limitations 1.2, 1.3, and 1.4 of claim 1. PO Resp. 13–31.
`Among these arguments, Patent Owner argues that Petitioner does not show
`how the command codes Petitioner points to in the EDID-linked command
`code database teach or suggest communication methods, as required by these
`limitations, which require the creation of “a listing comprised of at least a
`first communication method and a second communication method different
`than the first communication method.” Id. at 20–28.
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`Patent Owner argues that the ’853 patent teaches a “communication
`method” is a medium or protocol, such as CEC, IR, or RF. PO Resp. 21–22
`(citing Ex. 1001 2:4–16, 6:25–28, 6:62–67, 14:20–24; also citing similar
`statements by Petitioner and Petitioner’s Expert (Pet. 1–2, 5, 8, 47, 71;
`Ex. 1003 ¶¶ 29, 30, 36, 106, 109, 113, 114, 120, 234)). Patent Owner argues
`that one of ordinary skill in the art would have understood that a listing of
`command codes is not a listing of communication methods. Id. at 22–23
`(citing Ex. 2002 ¶¶ 71–72); Sur-reply 12–13 (“[U]sing a database comprised
`of command codes is not the same thing as creating a database comprised of
`communication methods.”). Patent Owner asserts that Petitioner and
`Petitioner’s expert also distinguish a command code, sent using a
`communication method, from the communication method itself. PO Resp.
`25–26 (citing Pet. 57; Ex. 2003, 49:12–16, 48:12–49:10).
`Patent Owner shows that the command matrix described in the ’853
`patent Specification includes indicators of communication methods to be
`used for specific functions on specific appliances. Id. at 23 (citing Ex. 1001,
`Fig. 7, 7:19–24, 7:26–28). This disclosure is contrasted by Patent Owner
`with the ’853 patent’s disclosure that command codes to be transmitted via
`these communication methods are found elsewhere in memory, not in this
`matrix. Id. at 24 (citing Ex. 1001, 7:37–42, 9:52–59; Ex. 2002 ¶¶ 71–72).
`Patent Owner additionally argues that the Petition is faulty as claim 1
`requires, separately, a communication method (as recited in limitations 1.2
`and 1.6), a response to a received request (as recited in limitations 1.5 and
`1.6), and a transmitted command (limitation 1.6), and Petitioner has not
`adequately described how each of these is taught or suggested by Chardon’s
`command codes. PO Resp. 27.
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`
`(3) Analysis
`Our analysis focuses on the question of whether Petitioner has shown
`by a preponderance of the evidence that Chardon teaches or suggests a
`database (the “listing” of claim 1) that is “comprised of at least a first
`communication method and a second communication method different than
`the first communication method,” which methods are “used to transmit to
`the intended target appliance a command for controlling” a functional
`operation of a target appliance, as required by claim 1. We find that
`Petitioner has not sufficiently adduced that a database “comprised of” CEC
`and IR command codes would teach or suggest claim 1’s listing.
`Petitioner states in the Petition that Chardon’s database of command
`codes linked to the EDIDs for the target devices teaches this listing. Pet. 47
`(“Chardon’s listing is a[n] EDID-linked database of CEC and IR command
`codes,” (emphasis added), “Chardon creates a database of IR and CEC
`command codes” (emphasis added)). Petitioner describes Chardon as
`“disclos[ing] a plurality of ways to create a database . . . of function
`information and CEC command codes associated with the function
`information . . . [and] also explain[ing] that
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