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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
`Patent No. 9,716,853
`
`
`
`
`
`DECLARATION OF DR. DON TURNBULL IN SUPPORT
`OF PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`UEI Exhibit 2002, Page 1 of 26
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`

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`
`I, Dr. Don Turnbull, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is Don Turnbull. I have been retained by counsel for Patent Owner
`
`Universal Electronics Inc. (“Patent Owner” or “UEI”) to provide my independent analysis
`
`regarding the validity of claims 1, 3, 5, and 7 (“Challenged Claims”) of U.S. Patent No. 9,716,853
`
`(“the ‘853 patent”).
`
`A. My Background, Qualifications, Publications, and Testimony
`
`2.
`
`My background, qualifications, publications, and any prior testimony are fully set
`
`forth in my curriculum vitae, which is attached hereto as Exhibit 1.
`
`3.
`
`I am an expert in software design and architecture, including networked systems,
`
`with 30 years of research and development experience. My research and development endeavors
`
`cover various technologies related to multimedia information systems; human-computer
`
`interaction; interface design; user behavioral data collection, analysis and modeling; mobile
`
`(handheld) computing; and multimedia content organization and display, some of which are
`
`subject to patent and trade-secret protection.
`
`4.
`
`My current work centers generally on software research and design in the areas of
`
`information systems. This work includes consumer and enterprise applications such as content
`
`management systems, mobile technologies, recommendation systems, personalization, analytics
`
`applications, search tools and eCommerce platforms. I also research and invent solutions related
`
`to data mining and data science, collecting network and device usage data, software architecture
`
`and interaction design.
`
`5.
`
`I am involved in helping software companies, from small startups to large
`
`corporations, create new technologies and applications. To advise these companies, I research and
`
`
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`UEI Exhibit 2002, Page 2 of 26
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`monitor academic and industry technology developments to keep up-to-date regarding advances
`
`in the field. I am also aware of the history of software development from my professional and
`
`academic experience over the past 30 plus years.
`
`6.
`
`Academically, I received a B.A. in General Studies (in “Knowledge Engineering,”
`
`i.e., computer science, cognitive psychology, and philosophy) from The University of Texas at
`
`Arlington in 1988. In 1995, I earned an M.S. in Information Design and Technology from the
`
`Georgia Institute of Technology where my concentration was on Internet and Web systems in their
`
`very early days with a focus on interactive multimedia systems and interfaces. My work at Georgia
`
`Tech included creating digital media, researching Web server technology, building Web sites,
`
`designing Web-based content management systems, content management methodologies, and
`
`information retrieval systems. In 2002, I received a Ph.D. in Information Studies from the
`
`University of Toronto where my research centered on information systems user behavior data
`
`collection, analysis and recommendation algorithms.
`
`7.
`
`From 2002-2009, I was an Assistant Professor at the School of Information at The
`
`University of Texas at Austin where I created and taught a variety of graduate-level courses
`
`including: Information Architecture and Web Design; Web Information Retrieval, Evaluation &
`
`Design; the Semantic Web; Information System Analytics; and Web Information System Design
`
`and Knowledge Management Systems. As faculty, principal investigator, and research team
`
`director, my areas of exploration included designing information system interfaces and
`
`architectures; large-scale data mining and algorithms (including Web use data for personalization);
`
`techniques for interface design for multimedia access; mobile interaction techniques; Web content
`
`classification; and the design of Web search engines, as well as studying their use.
`
`
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`2
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`UEI Exhibit 2002, Page 3 of 26
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`8.
`
`While an Assistant Professor, I formed and managed a number of research projects.
`
`These projects included information architecture and design for multimedia Web pages and Web
`
`sites; a survey of the history of technologies in Web browsers (including protocols, extensions and
`
`scripting functionality); a multimedia content classification system; and a set of methods for
`
`content analysis and topic distillation. I also advised graduate students and coordinated
`
`information technology research and development including Semantic Web applications, mobile
`
`information system prototypes and server architectures, user understanding of digital content
`
`manipulation, Web accessibility evaluation, Web link mining and analysis, information
`
`architecture design methodologies, and advertising methods and platforms.
`
`9.
`
`Before I was an Assistant Professor, I worked many years in a variety of roles in
`
`software research and development, including as a software developer (programmer) and designer,
`
`software engineering methodologist and a technology systems architect. From 1994 through 2000,
`
`my own work was primarily focused on researching, designing and building Internet information
`
`systems and applications. I was also a researcher and a Lead Technical Architect at IBM where I
`
`worked on building an Internet client/server platform for a multimedia client application combined
`
`with a database-driven Web site—the IBM-WorldBook Multimedia Encyclopedia. I also
`
`contributed to designs and advised on numerous other ongoing Internet-focused projects at IBM,
`
`including Web site development tools for eCommerce small business Web sites, digital video
`
`control interfaces, large enterprise (intranet) Web sites including portals, as well as the foundations
`
`for a usability practice at IBM to evaluate IBM software and consumer-based applications.
`
`10.
`
`Earlier, before the Web era, I was a software engineering methodologist and
`
`software developer creating Macintosh, Microsoft Windows, and IBM OS/2 software for building
`
`client/server applications that worked with (relational) databases over networks, which proved to
`
`
`
`3
`
`UEI Exhibit 2002, Page 4 of 26
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`be much of the supporting technology for Internet and Web applications. This included
`
`programming and working as a database administrator and using early Internet networking tools.
`
`I also designed and built early hypertext (SGML) authoring tools, which led to a more commercial
`
`use of the Internet beginning in the early 1990’s.
`
`11. My academic knowledge and professional experience also include network
`
`communication protocols, including Wi-Fi, HDMI, infrared and FireWire as well as the
`
`configuration and control of consumer electronic devices incorporating multimedia control
`
`interfaces.
`
`12.
`
`I am also the author of numerous academic publications including: a textbook on
`
`Web-based information systems use and knowledge work; articles on human-computer interaction
`
`design; personalization for Web-information-retrieval and recommender systems; and numerous
`
`definitive works on
`
`information-architecture (Web site) methodologies, designs, and
`
`implementations. In addition, I am the named inventor on at least one United States patent focused
`
`on content delivery and personalization.
`
`B.
`
`13.
`
`Compensation
`
`I am not, and never have been, an employee of UEI. I am not receiving
`
`compensation for this declaration beyond my normal hourly fees based on my time actually spent
`
`analyzing and documenting my opinions herein on the ‘853 patent, the asserted prior art
`
`publications cited in this declaration and in the Petition, and the issues related thereto. My
`
`compensation is not related to the outcome of this proceeding, and I will not receive any additional
`
`compensation based on the outcome of any IPR or other proceeding involving the ‘853 patent.
`
`II. MATERIALS CONSIDERED
`
`14.
`
`I have reviewed the ‘853 patent, including the Challenged Claims, and its
`
`prosecution history.
`
`
`
`4
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`UEI Exhibit 2002, Page 5 of 26
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`15.
`
`I have also reviewed the Petition for IPR filed by Petitioner Roku, Inc. (“Petitioner”
`
`or “Roku”), as well as the Exhibits attached, including:
`
`•
`
`•
`
`•
`
`•
`
`EX1003: Declaration of Dr. Samuel H. Russ (“Russ Declaration”);
`
`EX1005: U.S Patent Application Publication No. 2012/0249890 (“Chardon”);
`
`EX1006: U.S Patent Application Publication No. 2009/0254500 (“Stecyk”); and
`
`EX1010: High-Definition Multimedia Interface Specification Version 1.3a
`(“HDMI 1.3a”).
`
`16.
`
`In forming my opinions, I have considered the materials listed above and any other
`
`documents cited in this declaration. I have also relied on my own education, knowledge, and
`
`experience in the relevant art.
`
`17.
`
`I have also considered the understanding of a person of ordinary skill in the art
`
`around the time of the invention the Challenged Claims of the ‘853 patent.
`
`III.
`
`SUMMARY OF MY OPINIONS
`
`18.
`
`In summary, it is my opinion that each of the Challenged Claims of the ‘853 patent
`
`is valid and patentable. Petitioner and its expert, Dr. Russ, have failed to show that the Challenged
`
`Claims are rendered obvious by the prior art under 35 U.S.C. § 103.
`
`IV.
`
`LEGAL PRINCIPLES
`
`19.
`
`I will not offer opinions of the law, as I am not an attorney. However, patent
`
`counsel has informed me of several patent law principles, upon which I have relied to arrive at my
`
`conclusions.
`
`A.
`
`20.
`
`Legal Standard for Claim Construction
`
`It is my understanding that the purpose of the claim construction process is to
`
`determine the meaning of the terms in the Challenged Claims of the ‘853 patent to a POSITA as
`
`of the time that the claimed invention was filed. I also understand that the words of the claims,
`
`
`
`5
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`UEI Exhibit 2002, Page 6 of 26
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`the specification, and the prosecution history are to be primarily considered in order to construe
`
`the claims. These three sources are commonly referred to as “intrinsic evidence,” while everything
`
`else is referred to as “extrinsic evidence.”
`
`21.
`
`At the outset, it is my understanding that in an Inter Partes Review the words of a
`
`claim are generally given their ordinary and customary meaning to a person of ordinary skill in the
`
`art as of the time that the patent application containing the claimed invention was filed.
`
`22.
`
`It is my further understanding that the same words and phrases within a claim or
`
`claims are presumed to have the same meaning. It is also my understanding that different words
`
`and phrases within a claim or claims are presumed to have different meanings. Similarly, all words
`
`in a claim have meaning, and a word or phrase in a claim should not be interpreted so as to render
`
`other words or phrases in the claim superfluous.
`
`23.
`
`It is also my understanding that a POSITA is deemed to read the claim term not
`
`only in the context of the particular claim in which the disputed term appears, but in the context of
`
`the entire patent, including the specification and the prosecution history.
`
`B.
`
`24.
`
`Legal Standard for Obviousness
`
`I understand that a patent claim may be unpatentable if the invention recited in the
`
`claim would have been obvious to one of ordinary skill in the art at the time the invention was
`
`made.
`
`25.
`
`In considering whether the Challenged Claims of the ‘853 patent are obvious, I
`
`have been asked to consider (a) the level of ordinary skill in the art at the time of the claimed
`
`invention, (b) the scope and content of the prior art, and (c) any differences between the prior art
`
`and the Challenged Claims of the ‘853 patent. I further understand that the patent owner may
`
`
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`6
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`UEI Exhibit 2002, Page 7 of 26
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`show “secondary factors” related to nonobviousness, including commercial success, long-felt but
`
`unresolved need, failure of others, copying, praise by others, and unexpected results.
`
`26.
`
`I have been informed that a claim can be obvious in light of a single prior art
`
`reference or multiple prior art references. I understand that a patent claim composed of several
`
`elements is not necessarily proved obvious merely by demonstrating that each of its elements was
`
`independently known in the prior art. I also understand that obviousness should not be analyzed
`
`using the benefit of hindsight. Instead, it must be analyzed from the standpoint of what was known
`
`and understood by a POSITA at the time of the claimed invention. In evaluating whether a claimed
`
`combination would have been obvious, I understand that I may consider whether there was a reason
`
`that would have prompted a POSITA to combine the elements from the prior art in the same
`
`manner as claimed. I also understand that I may consider whether there is some teaching or
`
`suggestion in the prior art itself or within the knowledge of a person with ordinary skill in the art,
`
`to make the claimed combination.
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`27.
`
` I am informed that prior art is to be analyzed from the perspective of a person of
`
`ordinary skill in the art (“POSITA”) who would be involved in the same field as the ‘853 patent at
`
`the time of the invention of the Challenged Claims (i.e., October 28, 2011).
`
`28.
`
`All of the opinions that I express in this declaration have been made from the
`
`standpoint of a POSITA at the time of the invention of the Challenged Claims of the ’853 patent.
`
`29.
`
`I understand that Patent Owner has proposed that a POSITA would have had a
`
`bachelor’s degree which involved software design and development coursework, for example,
`
`electrical engineering, computer engineering, computer science, cognitive science, industrial
`
`engineering, information systems, information studies, or a similar degree, and at least one year of
`
`
`
`7
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`UEI Exhibit 2002, Page 8 of 26
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`work experience in software programming, development, or design of consumer applications. I
`
`understand that Patent Owner also proposes that additional education might substitute for some of
`
`the experience, and that substantial experience might substitute for some of the educational
`
`background.
`
`30.
`
`31.
`
`I agree with Patent Owner’s proposed definition of a POSITA.
`
`I understand that Petitioner has proposed that a POSITA would have had at least a
`
`bachelor’s degree in electrical engineering, computer engineering, or equivalent coursework, and
`
`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. (Paper
`
`2 at 13.) I also understand that Petitioner has proposed that a POSITA 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. (Id.)
`
`32.
`
`I do not agree with Petitioner’s definition of a POSITA, as it imports a number of
`
`specific and nuanced requirements that are not necessary to understand the invention of the ‘853
`
`patent. It is also not clear if Petitioner’s “general knowledge” requirement is merely a user or
`
`consumer-level understanding of common home theater consumer products of the time, or if it
`
`requires a more specific understanding of these technologies.
`
`33.
`
`I understand that Petitioner’s expert, Dr. Russ, did not adopt Petitioner’s definition
`
`of a POSITA.
`
`34.
`
`Rather, I understand that Dr. Russ has proposed his own definition of POSITA.
`
`Specifically, I understand that Dr. Russ has proposed that a POSITA would have had a bachelor’s
`
`degree in electrical engineering or equivalent degree with two years of work experience relating
`
`
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`8
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`UEI Exhibit 2002, Page 9 of 26
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`to communications and consumer electronics. (Russ Declaration, EX1003, ¶ 19.) I understand
`
`that Dr. Russ also proposes that a POSITA would have had general knowledge of remote control
`
`devices, consumer electronic devices, and various related technologies as of October 28, 2011.
`
`(Id., ¶ 18.)
`
`35.
`
`Again, it is also not clear if Dr. Russ’ “general knowledge” requirement is merely
`
`a user or consumer-level understanding of common home theater consumer products of the time,
`
`or if it requires a more specific understanding of these technologies.
`
`36.
`
`I note that Dr. Russ does not represent that he meets Petitioner’s proposed definition
`
`of POSITA.
`
`37.
`
`By contrast, I met each of the above proposed definitions of a POSITA as of the
`
`time of the invention of the Challenged Claims of the ‘853 patent.
`
`38. While I agree with Patent Owner’s proposed definition for a POSITA, I performed
`
`my analysis of the ‘853 patent and the asserted prior art from each of the proposed POSITA’s
`
`points of view, and the differences between them did not affect my overall conclusions set forth
`
`below.
`
`VI.
`
`THE BOARD’S INSTITUTION DECISION
`
`39.
`
`I understand that the Board granted review of the Challenged Claims of the ‘853
`
`patent on four grounds: (1) alleged obviousness over Chardon alone; (2) alleged obviousness over
`
`Chardon in combination with HDMI 1.3a; (3) alleged obviousness over Chardon in combination
`
`with Stecyk; and (4) alleged obviousness over Chardon in combination with HDMI 1.3a and
`
`Stecyk.
`
`40.
`
`I understand that Petitioner identified only one ground of unpatentability in the
`
`Petition: “Chardon (EX1005), HDMI 1.3a (EX1010), and Stecyk (EX1006).” (Paper 2 at 3; id. at
`
`
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`9
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`UEI Exhibit 2002, Page 10 of 26
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`36 (“Claims 1, 3, 5, and 7 are Rendered Obvious Over Chardon, and in view of HDMI
`
`Specification and Stecyk.”).) Nevertheless, for the sake of completeness, I address all four
`
`instituted grounds herein.
`
`VII. OVERVIEW OF THE ‘853 PATENT AND TECHNICAL BACKGROUND
`
`41.
`
`The ‘853 patent “relates generally to enhanced methods for appliance control via
`
`use of a controlling device, such as a remote control, smart phone, tablet computer, etc., and in
`
`particular to methods for taking advantage of improved appliance control communication methods
`
`and/or command formats in a reliable manner which is largely transparent to a user and/or
`
`seamlessly integrated with legacy appliance control technology.” (‘853 patent, EX1001, at 1:63-
`
`2:3.) The ‘853 patent explains that “the recent proliferation of wireless and wired communication
`
`and/or digital interconnection methods such as WiFi, Bluetooth, HDMI, etc., amongst and between
`
`appliances has resulted in a corresponding proliferation of such communication protocols and
`
`command formats.” (Id. at 1:45-50.) However, “appliance manufacturer adoption of such newer
`
`methods remains inconsistent and fragmented.” (Id. at 1:52-54.) Thus, there may be “confusion,
`
`mis-operation, or other problems when a user or manufacturer of a controlling device, such as a
`
`remote control, attempts to take advantage of the enhanced features and functionalities of these
`
`new control methods.” (Id. at 1:54-59.)
`
`42.
`
`The ‘853 patent is entitled “System and Method for Optimized Appliance Control,”
`
`and was issued on July 25, 2017. (Id. at [54], [45].)
`
`43.
`
`The application for the ‘853 patent was filed on November 23, 2015, and is a
`
`continuation of U.S. Patent App. No. 13/933,877 (filed on July 7, 2013, now U.S. Patent No.
`
`9,219,874), which is a continuation of U.S. Patent App. No. 13/657,176 (filed on October 22, 2012,
`
`now U.S. Patent No. 9,215,394). (Id. at [22], [63].) Additionally, the ‘853 Patent claims priority
`
`
`
`10
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`UEI Exhibit 2002, Page 11 of 26
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`to two U.S. provisional applications, filed on October 28, 2011 and August 8, 2012, respectively.
`
`(Id. at [60].)
`
`44.
`
`The ‘853 patent’s “invention comprises a modular hardware and software solution,
`
`hereafter referred to as a Universal Control Engine (UCE), which is adapted to provide device
`
`control access across a variety of available control methodologies and communication media, such
`
`as for example various infrared (IR) remote control protocols; Consumer Electronic Control (CEC)
`
`as may be implemented over a wired HDMI connection; internet protocol (IP), wired or wireless;
`
`RF4CE wireless; Bluetooth (BT) wireless personal area network(s); UPnP protocol utilizing wired
`
`USB connections; or any other available standard or proprietary appliance command
`
`methodology.” (Id. at 2:4-16.) As the ‘853 patent states, since “each individual control paradigm
`
`may have its own strengths and weaknesses, the UCE may be adapted to combine various control
`
`methods in order to realize the best control option for each individual command for each individual
`
`device.” (Id. at 2:16-20.) For example, “CEC commands may be used to power on and select
`
`inputs on a TV appliance while IR commands may be used to control the volume of the same TV
`
`appliance.” (Id. at 2:42-45.)
`
`45.
`
`The Challenged Claims of the ‘853 patent are reproduced below:
`
`1. A universal control engine, comprising:
`
`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 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 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 for use in controlling
`each of at least a first functional operation and a second functional
`operation of the intended target appliance and to respond to a
`
`
`
`11
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`UEI Exhibit 2002, Page 12 of 26
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`received request from a controlling device intended to cause the
`intended target appliance to perform a one of the first and second
`functional operations by causing a one of the first and second
`communication methods in the listing of communication methods
`that has been associated with the requested one of the first and
`second functional operations to be used to transmit to the intended
`target appliance a command for controlling the requested one of the
`first and second functional operations of the intended target
`appliance.
`
`3. The universal control engine as recited in claim 1, wherein the
`instructions cause the universal control engine to initiate a detection
`of the presence of the intended target appliance within the logical
`topography of controllable appliances.
`
`5. The universal control engine as recited in claim 1, wherein the
`instruction cause the universal control engine to cause a prompt to
`be displayed in a display associated with the universal control
`engine in response to a detected presence of the intended target
`appliance within a logical topography of controllable appliances, the
`prompt requesting a user to provide data indicative of the identity
`associated with the intended target appliance.
`
`7. The universal control engine as recited in claim 1, wherein the
`instructions cause the universal control engine to initiate an
`interrogation of the intended target appliance to determine which of
`a plurality of communication methods are supported by the
`appliance for use in receiving a command for controlling at least one
`of the first and second functional operations and using results
`obtained from the interrogation to create the listing.
`
`(Id. at claims 1, 3, 5, and 7.)
`
`VIII. OVERVIEW OF THE ASSERTED PRIOR ART
`
`46.
`
`I understand that Dr. Russ has provided opinions regarding the following
`
`references. These references are discussed in detail below:
`
`Exhibit Number
`
`Prior Art
`
`1005
`
`1006
`
`U.S Patent Application Publication No. 2012/0249890 (“Chardon”)
`
`U.S Patent Application Publication No. 2009/0254500 (“Stecyk”)
`
`
`
`12
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`UEI Exhibit 2002, Page 13 of 26
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`
`1010
`
`High-Definition Multimedia Interface Specification Version 1.3a
`(“HDMI 1.3a”)
`
`47.
`
`I have reviewed Chardon, HDMI 1.3a, and Stecyk. For at least the reasons detailed
`
`below, I disagree with Dr. Russ’ opinions that the Challenged Claims of the ‘853 patent are
`
`unpatentable under 35 U.S.C. § 103. As a general matter, Dr. Russ fundamentally misreads and
`
`misunderstands the Challenged Claims and the limitations contained therein, and oversimplifies
`
`the innovations of the Challenged Claims and fails to recognize their advantages over the prior art.
`
`In many instances, Dr. Russ ignores portions of the claim language and mischaracterizes the prior
`
`art references in an attempt to make them appear as if they disclose features that they do not
`
`disclose. As discussed herein, each of the asserted prior art references is missing one or more
`
`limitations of the Challenged Claims of the ‘853 patent.
`
`IX. CLAIM CONSTRUCTION
`
`A.
`
`“for use in controlling each of at least a first functional operation and a second
`functional operation of the intended target appliance”
`
`48.
`
`Challenged Claim 1 of the ‘853 patent recites “for use in controlling each of at least
`
`a first functional operation and a second functional operation of the intended target appliance.”
`
`(‘853 patent, EX1001, at claim 1.)
`
`49.
`
`50.
`
`In my opinion, no specific construction is necessary for this term.
`
`I understand that in related District Court litigation, Petitioner proposed that this
`
`term should be construed as: “create a listing by using an identity associated with the intended
`
`target appliance. The listing must contain two different communication methods, each of which
`
`can control and is associated with the same two or more functional operations of the same, single
`
`target appliance. Does not include selecting a communication protocol and thereafter using the
`
`
`
`13
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`UEI Exhibit 2002, Page 14 of 26
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`selected communication protocol for any and all commands sent to the target appliance.” (Paper
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`2 at 15.)
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`51.
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`I understand that the District Court did not adopt Petitioner’s proposed
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`construction, and instead construed this term to mean: “for use in controlling the same at least a
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`first functional operation and a second functional operation of the same intended target appliance.”
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`(Paper 2 at 15.)
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`52.
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`Petitioner asserts in the Petition that the “district court effectively adopted
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`Petitioner Roku’s position as to the content of the listing.” (Paper 2 at 16.) Thus, it is not clear to
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`me whether Petitioner is advocating for the same construction it proposed in the District Court
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`litigation, or whether Petitioner is advocating for the construction that the District Court actually
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`adopted.
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`53.
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`In any event, it is clear to me that the District Court did not, in fact, effectively
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`adopt Petitioner’s proposed construction. The two constructions are completely different from
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`each other. From even a cursory glance, the District Court changed the majority of Petitioner’s
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`proposed construction. For example, I understand that the District Court explained that “Roku
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`proposes a negative claim limitation, arguing that creating a listing ‘does not include selecting a
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`communication protocol and thereafter using the selected communication protocol for any and all
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`commands sent to the target appliance.’” (EX1017 at 35.) The District Court then stated that the
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`evidence “does not support limiting the meaning of the claims of the ’853 Patent to add the
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`negative limitation that Roku proposes.” (Id. at 36.) Therefore, it appears that the District Court
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`specifically rejected portions of Petitioner’s proposed construction.
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`54.
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`Nevertheless, my opinions herein would be the same regardless of whether this
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`term is construed as Petitioner proposed in the District Court litigation, as the District Court
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`14
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`construed the term, or not at all. In other words, the construction of this term is immaterial to my
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`opinion herein.
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`X.
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`PETITIONER HAS FAILED TO SHOW THAT THE CHALLENGED CLAIMS OF
`THE ‘853 PATENT ARE UNPATENTABLE
`A.
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`Instituted Ground 1: Chardon Alone Does Not Render The Challenged Claims
`Obvious.
`1.
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`Chardon Alone Does Not Render Obvious Challenged Independent
`Claim 1.
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`a.
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`Petitioner Has Failed To Meet Its Burden Of Proving 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”)
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`55.
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`It is my understanding that Petitioner and Dr. Russ assert that the alleged “listing”
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`of Chardon is an “EDID-linked database of CEC and IR command codes.” (Paper 2 at 47
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`(“Chardon’s listing is a[n] EDID-linked database of CEC and IR command codes.”); id. at 52;
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`EX1003, Russ Declaration, ¶¶ 180, 182, 188, 194; Paper 12 at 27.)
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`56.
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`It is also my understanding that Petitioner and Dr. Russ assert that the alleged
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`“respon[se] to a detected presence of an intended target appliance” of Chardon occurs when
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`Chardon’s remote “queries” a target appliance for an EDID, receives the appliance’s EDID, and
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`then “links” the EDID with a set of command codes. (Paper 2 at 45-46, 51, 64; EX1003, Russ
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`Declaration, ¶¶ 178-179, 191, 217; Paper 9 at 4-5; Paper 12 at 24.)
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`57.
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`In my opinion, Chardon does not disclose, teach, or suggest that its remote responds
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`to receiving a target appliance’s EDID (or CEC vendor ID) by creating a database of CEC and IR
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`command codes. (See generally EX1005, Chardon.) Rather, Chardon discloses that its remote
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`responds to querying a target appliance and receiving its EDID by creating a “link” between the
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`EDID and a locally stored set of command codes, and storing the “link” as “an entry in a local
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`15
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`UEI Exhibit 2002, Page 16 of 26
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`memory” in the database of command codes. (EX1005, Chardon, at [0044]; see also id. at
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`Abstract, claim 1, claim 9, [0007], [0034]; Paper 2 at 46-47, 51; EX1003, Russ Declaration, ¶¶
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`180, 182, 192; Paper 12 at 18-19, 27.)
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`58.
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`Further, it is my opinion that Chardon discloses that the database of CEC and IR
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`command codes is created before the remote creates a “link” between a received EDID and the
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`locally stored set of command codes, and not in response to querying a target appliance and
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`receiving its EDID. (EX1005, Chardon, at [0044] (disclosing that the sets of command codes are
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`already locally stored on the remote when the remote receives the target appliance’s EDID), [0050]
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`(same); id. at [0046] (disclosing that the command codes are installed when the remote is
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`“configured” or “setup”), [0048] (same); id. at [0049] (disclosing that an appliance may be
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`identified by transmitting one or more command codes that have already been stored on the remote
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`to the appliance); see also Paper 2 at 47-48; EX1003, Russ Declaration, ¶¶ 182, 185.)
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`59.
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`Petitioner and Dr. Russ discuss two “scenarios” where Chardon’s remote can
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`receive updated “function information” for unrecognized CEC command codes stored in the
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`remote’s local memory. (Paper 2 at 48-50; EX1003, Russ Declaration, ¶¶ 186-187.) In my
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`opinion, both “scenarios” are consistent with Chardon’s teaching that the database of CEC and IR
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`command codes is created before the remote receives an EDID and “links” the EDID with the set
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`of c