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` UNITED STATES DISTRICT COURT
`
` CENTRAL DISTRICT OF CALIFORNIA
`
` SOUTHERN DIVISION
`
` - - -
`
` THE HONORABLE JAMES V. SELNA, JUDGE PRESIDING
`
` UNIVERSAL ELECTRONICS, INC., )
` Plaintiff, )
` vs. )
` ) SACV-18-01580-JVS
` ROKU, INC., )
` Defendant. )
` ------------------------------)
`
`
`
`
` REPORTER'S TRANSCRIPT OF PROCEEDINGS
`
` Santa Ana, California
`
` August 5, 2019
`
`
` SHARON A. SEFFENS, RPR
` United States Courthouse
` 411 West 4th Street, Suite 1-1053
` Santa Ana, CA 92701
` (714) 543-0870
`
`
`
`
`
`
`
`
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 1 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
`
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` UNITED STATES DISTRICT COURT
`
` CENTRAL DISTRICT OF CALIFORNIA
`
` SOUTHERN DIVISION
`
` - - -
`
` THE HONORABLE JAMES V. SELNA, JUDGE PRESIDING
`
` UNIVERSAL ELECTRONICS, INC., )
` Plaintiff, )
` vs. )
` ) SACV-18-01580-JVS
` ROKU, INC., )
` Defendant. )
` ------------------------------)
`
`
`
`
` REPORTER'S TRANSCRIPT OF PROCEEDINGS
`
` Santa Ana, California
`
` August 5, 2019
`
`
` SHARON A. SEFFENS, RPR
` United States Courthouse
` 411 West 4th Street, Suite 1-1053
` Santa Ana, CA 92701
` (714) 543-0870
`
`
`
`
`
`
`
`
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 1 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
`
`
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` 2
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`APPEARANCES OF COUNSEL:
`
`For the Plaintiff:
`
`RYAN W. KOPPELMAN
`TIMOTHY R. WATSON
`ALSTON & BIRD, LLP
`1950 University Avenue, 5th Floor
`East Palo Alto, CA 94303
`(650) 838-2000
`
`EVAN WILLIAM WOOLLEY
`ALSTON & BIRD, LLP
`333 South Hope Street, 16th Floor
`Los Angeles, CA 90071
`(213) 576-1000
`
`
`For the Defendant:
`
`JONATHAN D. BAKER
`DICKINSON WRIGHT, PLLC
`800 West California Avenue, Suite 110
`Sunnyvale, CA 94086
`(408) 701-6200
`
`MICHAEL D. SAUNDERS
`DICKINSON WRIGHT, PLLC
`607 West 3rd Street, Suite 2500
`Austin, TX 78701
`(512) 770-4200
`
`ALSO PRESENT:
`
`Rick Firehammer
`General Counsel for UEI
`Jeremy Black
`Assistant General Counsel for UEI
`
`
`Joseph Hollinger
`Roku Vice-President of Litigation & Intellectual Property
`
`
`
`
`
`
`
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 2 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
`
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`SANTA ANA, CALIFORNIA; MONDAY, AUGUST 5, 2019; 2:31 P.M.
`
`THE CLERK: Item No. 14, SACV-18-01580-JVS,
`
`Universal Electronics, Inc., versus Roku, Inc.
`
`Appearances please, counsel.
`
`MR. KOPPELMAN: Good afternoon, Your Honor. Ryan
`
`Koppelman for plaintiff UEI, and joining me today is Evan
`
`Woolley and Tim Watson from my firm. Also with us in the
`
`gallery is Rick Firehammer, General Counsel for UEI, and
`
`Jeremy Black, Assistant General Counsel for UEI.
`
`THE COURT: Good afternoon. Welcome.
`
`MR. BAKER: Good afternoon, Your Honor. Jonathan
`
`Baker and Michael Saunders on behalf of defendant Roku, Inc.
`
`With us today in the gallery is Joseph Hollinger,
`
`Vice-President of Litigation and Intellectual Property at
`
`Roku.
`
`THE COURT: Good afternoon. Welcome.
`
`Which terms are we going to discuss this
`
`afternoon?
`
`MR. KOPPELMAN: Good afternoon, Your Honor. Ryan
`
`Koppelman.
`
`The plaintiff and defendant conferred, and what we
`
`had agreed upon is as follows. We would like to present
`
`argument on terms numbered in the tentative 1, 2, 3, 4, and
`
`8, those five terms. So term 1 is "key code signal;" term 2
`
`"key code generator device"; term 3 "by using an identity,"
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
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`UEI Exhibit 2004, Page 3 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
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` 4
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`dot, dot, dot; term 4 "universal controlling device"; and
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`term 8 "causing the automatically created sequence of
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`instructions," dot, dot, dot.
`
`THE COURT: Okay.
`
`MR. KOPPELMAN: What we also worked out is we
`
`would like to go term by term. On the first four, Roku will
`
`go first, present first, and then we will respond. We will
`
`have a short period for a reply. And then on Term 8, UEI
`
`will go first, and Roku will respond, and we will have a
`
`short reply.
`
`THE COURT: Very good.
`
`MR. KOPPELMAN: Thank you, Your Honor.
`
`MR. BAKER: Your Honor, may I approach with a copy
`
`of our presentation to the Court?
`
`THE COURT: You may.
`
`MR. BAKER: I have some extra copies for the
`
`clerks.
`
`(Document handed to the Court)
`
`THE COURT: Mr. Saunders.
`
`MR. SAUNDERS: Thank you, Your Honor.
`
`Let me begin with the term "key code signal,"
`
`which appears in each of the three Mui patents in this case.
`
`I am going to focus on a couple of key points of law and
`
`fact that we think were overlooked in the tentative order.
`
`But just to refresh what the claim construction
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 4 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
`
`
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`disputes were, Roku's claim construction position had
`
`essentially three different issues on that, and they are
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`broken up in the tentative appropriately as three different
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`issues: the first involving modulation, the second
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`involving a specific type of brand of device, and the third
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`about a disclaimer of stored key codes.
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`Today we are going to be submitting on the
`
`tentative as to the second of those three issues, but I will
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`be addressing the modulation issue as well as the disclaimer
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`about storage issue. So it boils down to the two issues I
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`will be talking about are does the key code single contain a
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`modulated key code and has UEI disclaimed signals containing
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`key codes to be stored on a remote control for later use in
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`generating IR signals?
`
`So I will turn first to the modulation and
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`specifically the part of the tentative order dealing with
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`modulation on pages 12 and 13 where the Court stated that:
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`"Roku does not otherwise sufficiently argue that the
`
`applicant demonstrated a clear intent to limit the meaning
`
`of this term in the specification or during prosecution of
`
`the patent."
`
`It's obviously a very important doctrine in patent
`
`law, but it is not a doctrine that applies here. We cited
`
`one case in our brief that the Federal Circuit has held
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`multiple times when we have a coined term claim like the
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 5 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
`
`
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`term "key code signal" -- and the tentative order correctly
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`finds that "key code signal" is a coined term -- that
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`doctrine that is in the tentative order does not apply.
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`We see that specifically held by the Federal
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`Circuit in -- and I have given three cases here, one of them
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`which is cited in the brief. One of them is the Indacon
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`case, 824 F.3d 1352, where the -- again, we have a simple
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`term. It looks simple. The term was "custom link." There
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`the Federal Circuit found it was a coined term and said it
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`has "no plain or established meaning to those skilled in the
`
`art." And the consequence of is that it "cannot be
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`construed broader than the disclosure in the specification,"
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`so as an example of we are not going to use the high bar of
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`ignoring an ordinary meaning when because a term is a coined
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`term it does not have an ordinary meaning.
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`That's even more clear in the Irdeto access case,
`
`383 F.3d 1295, where the Federal Circuit said -- again, we
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`are dealing with another simple -- what seems like a simple
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`term, "group key." The Federal Circuit says that "the heavy
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`presumption of ordinary meaning," which is the exact legal
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`doctrine that the tentative order is referring to on pages
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`12 and 13 -- it says that doctrine does not apply where "a
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`disputed term lacks an accepted meaning in the art."
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`That's why we submit that all of the evidence of
`
`record demonstrates that the term "key code signal" lacks an
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 6 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
`
`
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`accepted meaning in the art. And the consequence because of
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`that is we're not applying the heavy presumption. Instead,
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`we construe it only as broad as what the specification
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`provides.
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`Lastly, the Honeywell Intern case, 488 F.3d 982,
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`again, the same holding: "Without a customary meaning of a
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`term within the art, the specification usually supplies the
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`best context for deciphering claim meaning."
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`So we submit that that portion of the tentative
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`order is inconsistent with this line of authority from the
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`Federal Circuit as to coined terms, which requires rather
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`that presume there is some ordinary meaning because one is
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`lacking for a coined term, we're going to go ahead and go to
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`the specification first to determine the meaning. In this
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`case, there is no doubt the specification whenever
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`describing the key code signal it's in the context of
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`modulation.
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`Next I am going to turn to an important point of
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`fact that I believe the tentative order doesn't address.
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`It's UEI's statements during the prosecution of the '642
`
`Patent. What we see here is part of a reply brief to the
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`PTAB on appeal, and they are talking about their patent.
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`What they say is that the specification uses all of the key
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`claim terms, and it goes through one by one, and it gets to
`
`"key code signal." What UEI said is the specification "also
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 7 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
`
`
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`indicates quite clearly what a key code signal is." All of
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`these terms are clearly defined by the specification. So
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`UEI told the world, told the Patent Office, that if you want
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`to know what the meaning of "key code signal" is you have to
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`go to the specification, and in the specification, they said
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`it's modulation.
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`In fact, we know that it's modulation, because in
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`the very same filing in the Patent Office on just the page
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`before that UEI said all of these terms are defined, it
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`described what it believed the key code signal was. It
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`described it in the context of modulating a key code. What
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`UEI told the world was: "The key code generator device
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`modulates the key code onto a first carrier signal, thereby
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`generating a first key code signal."
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`So when UEI told the world our patent defines a
`
`"key code signal" and when it is summing up how it is
`
`defining a "key code signal," it's describing it as using
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`modulation. We submit that requires a construction of the
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`term "key code signal" to include the concept that it is a
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`modulated key code that's in the key code signal and not
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`just any key code.
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`If there is any other doubt, the Abstract is a
`
`good example of how repeatedly time and time again the
`
`specification of the Mui patents describe the key code
`
`signal in the context of modulating the key code. It
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 8 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
`
`
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`describes "the key code generator device generates a key
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`code," and then it says it "modulates that key code onto a
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`radio frequency carrier signal, thereby generating a first
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`key code signal." And it describes again "modulatng the key
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`code onto an infrared frequency carrier signal, thereby
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`generating a second key code signal."
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`In both cases whenever we're talking about a key
`
`code signal, it's using modulation. UEI told the world look
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`to this if you want to know what a key code signal is.
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`If Your Honor has any questions about this issue,
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`otherwise, I will turn to the next issue.
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`THE COURT: Very good.
`
`MR. SAUNDERS: The next issue is the issue of
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`disclaimer of stored IR codes and specifically that UEI
`
`disclaimed from the meaning of the term "key code signal"
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`having signals that are used to update or cause a remote
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`control to store key codes.
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`So what I have put up on this slide is the
`
`specific portion of the prosecution history where UEI was
`
`discussing and distinguishing the "Goldstein" reference.
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`Specifically, it's talking about sending an IR code to
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`update the codeset or key codes on a remote control device.
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`In the tentative order on page 16, it does not
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`find that persuasive and says that what this is really doing
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`is distinguishing key code signals from key codes. We agree
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 9 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
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`with that point, but the important issue is not the fact
`
`that they were distinguishing key code signals from key
`
`codes, but how were they distinguishing key codes from key
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`code signals?
`
`What we see in this passage is that UEI is
`
`admitting that Goldstein teaches signals containing key
`
`codes. It says: "Goldstein may teach sending an IR code or
`
`an entire codeset." That's a signal containing a key code.
`
`So that alone means that we cannot have a construction that
`
`permits the term "key code signal" to simply read on a
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`signal containing a key code, which is what UEI proposed and
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`what we assume is encompassed by a no construction tentative
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`order.
`
`So the question is what is the basis of the
`
`distinguishing? Well, if one of skill in the art reads
`
`that, you can see the basis is it's used to update the
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`remote control in Goldstein, and they're saying that's not a
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`key code signal.
`
`Next what I want to turn to is the very next page
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`of -- the next major paragraph in the same office action,
`
`the same portion of the prosecution history, and it's one
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`that the tentative order notes in one of the footnotes on
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`page 16, Footnote 4. Obviously there was some discomfort in
`
`what UEI was saying in this portion of the prosecution
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`history and trying to make that consistent with their
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 10 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
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`explanation now.
`
`What we see is in that prosecution history --
`
`first, in the prior slide, they were talking about Goldstein
`
`does not meet all the limitations. Next they are talking
`
`about the obviousness basis. What is problematic with the
`
`obviousness combination involving Goldstein? What we see
`
`here are two important points. One that the Court noted in
`
`its footnote is that UEI is arguing "claim 2 does not recite
`
`that any key code or codeset is ever stored on the remote
`
`control device." They are arguing that as a basis for
`
`distinguishing this combination.
`
`That language is a little wierd, but the last
`
`sentence of that portion makes it even more clear what UEI's
`
`ultimate argument was. UEI's ultimate argument -- they
`
`conclude: "The motivation proposed by the Examiner would
`
`only result in a combination wherein codesets, or at least
`
`key codes, are stored on a remote control device." They are
`
`making that argument because they are saying that does not
`
`satisfy the pending claim. There is no other reason for
`
`that argument that the motivation would result in a certain
`
`combination other than the argument that that combination
`
`doesn't read on the claim.
`
`So we know that UEI has unambiguously stated that
`
`having codesets for at least key codes stored on a remote
`
`control device are not on the claim. The only question
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 11 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
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`there is what's the limitation in the claims that this
`
`disavow is tied to? The answer was provided in the section
`
`I previously showed. They made the same argument about
`
`updating a remote control with key codes just a paragraph
`
`before in the office action response, and they underlined
`
`the term "key code signal."
`
`So if you read these two paragraphs in the
`
`prosecution history together, it makes it abundantly clear
`
`that UEI was talking about the term "key code signal," and
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`they were disclaiming from that term "key code signal" "key
`
`codes stored on a remote device" because that was their
`
`argument for attempting to get around the "Goldstein"
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`reference and the combination that included the "Goldstein"
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`reference.
`
`One other point to emphasize, Your Honor, is that
`
`this interpretation of the prosecution history is not one
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`that is out of no where, out of left field, some
`
`unexplainable reason why they said it. The statement in the
`
`prosecution history about the "Goldstein" reference talking
`
`about not storing key codes on a remote control device, not
`
`being what they consider their invention, is fully
`
`consistent with what the specification describes.
`
`The specification says what are we seeking by this
`
`invention. What we are seeking is a system for enabling a
`
`remote control device to control multiple consumer
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 12 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
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`electronic devices without requiring the codeset to be
`
`stored on a remote control device. The specification states
`
`that's the purpose of invention. Then during the
`
`prosecution history, they specifically tied that disclaimer
`
`-- they repeated that disclaimer, and they tied it to the
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`term "key code signal."
`
`Therefore, that requires the term "key code
`
`signal" be construed to reflect that disclaimer because the
`
`public has a right to rely on the statements in the
`
`prosecution history. A public notice function of the
`
`prosecution history means when UEI argued that "a
`
`combination wherein codesets, or at least key codes, are
`
`stored on a remote control device" that that is not
`
`something that can be read on going forward with that issued
`
`patent.
`
`Last I will just address one issue that was raised
`
`in the tentative order where a cited a portion of the
`
`specification about learning remote controls and suggested
`
`that the discussion about learning remote controls in the
`
`specification in the Mui patents was inconsistent with
`
`Roku's claim construction position.
`
`We submit, Your Honor, that the learning remote
`
`control embodiment is a red herring for several reasons.
`
`First of all, the cited portion of the specification about
`
`the learning remote control does not describe permanent
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 13 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
`
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`storage of key code data. In fact, it only talks about a
`
`temporary passing through of key code data, which is not
`
`inconsistent with Roku's claim construction position. Roku
`
`admits that the whole point of the Mui patents is for
`
`temporary flowing through a key code from the key code
`
`generator.
`
`This is another example not of a key code
`
`generator device but of a temporary flowing through. What
`
`we can see is two parts of language there in column 8, line
`
`63, through column 9, line 3, is it talks about first of all
`
`we have a user that's pressing these various keys on the one
`
`remote control that's being used to program the learning
`
`remote control, and it talks about what is happening after
`
`that. It says: "once collected on learning remote control
`
`device, are automatically transmitted."
`
`So we submit that that's consistent with them
`
`simply being on the learning remote control on a temporary
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`basis. And nothing in the word "records" requires some
`
`storage beyond that temporary period of time to simply
`
`collect and then forward on those collected key codes.
`
`However, even if the Court reaches a different
`
`conclusion as to the disclosure about what a learning remote
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`is, it's still not relevant to the specific issue here
`
`because the learning remote functionality is unrelated to
`
`what is claimed. What are in the claims are signals
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 14 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
`
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`originating from a key code generator, and that's what the
`
`specification and the claims talk about as a key code
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`signal, that there is no purpose for a key code generator
`
`device if we are in the context of a learning remote control
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`embodiment because the remote already has the key codes
`
`learned from the other remote control.
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`Lastly, we submit that even if the Court found
`
`that this portion of the specification contradicted the
`
`other portions of the specification and raised an ambiguity,
`
`the law is clear that ambiguities in the specifications
`
`cannot overcome a clear prosecution disclaimer.
`
`UEI has clearly said storing key codes on a remote
`
`control device is not our invention, and they tied that
`
`specifically to the term "key code signal." That portion of
`
`the prosecution history is what the public is entitled to
`
`rely on and therefore requires a construction of the term to
`
`reflect that disavow.
`
`If Your Honor has no questions, I will proceed to
`
`the next term -- I'm sorry. I will allow counsel to
`
`respond.
`
`THE COURT: No. Thank you.
`
`MR. WATSON: Your Honor, may I approach?
`
`THE COURT: Please.
`
`(Document handed to the Court)
`
`THE COURT: I guess the first question is is this
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 15 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
`
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`a coined term?
`
`MR. WATSON: Your Honor, UEI -- we agree generally
`
`with the tentative order in that this requires no
`
`construction.
`
`With respect to whether or not this is a coined
`
`term, I believe that the key difference here between our
`
`scenario versus other scenarios that might be in cases that
`
`Roku was citing is that here the parties and the Court has
`
`already agreed on the construction of "key code." We
`
`also had -- it's clear from everyone's briefing no one is
`
`disputing what a signal in fact is.
`
`We would submit, Your Honor, to the extent this is
`
`a coined term, it is so on the basis of the definition of
`
`"key code," which has already been resolved. In other
`
`words, Your Honor, the fact that key code has been resolved
`
`here, no further construction is necessary as to "key code
`
`signal."
`
`With respect to the specific limitations that Roku
`
`is seeking to impose on "key code signal" itself, we believe
`
`that this is a violation of the general claim construction
`
`principles the Court set out, specifically that they are
`
`improperly trying to read limitations from the specification
`
`into the claim. I'll address each one that they are
`
`proceeding with in turn beginning with the modulation.
`
`Now, in the tentative, the Court asked the parties
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 16 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
`
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`both how the specification weighs on the modulation issue,
`
`and also with respect to the '325 Patent, how that could be
`
`satisfied without modulation.
`
`Your Honor, we believe that the answer to both of
`
`those is tied together. Specifically, we would refer Your
`
`Honor to Figs. 3 and 4 and the discussions -- I'm sorry --
`
`Figs. 4 and 5 and the discussions beginning in column 4 of
`
`the patent related to these figures.
`
`So before Your Honor is Fig. 4 of the Mui patents.
`
`What the specification describes is that this is a key code
`
`signal that is a UR type of communication. That's a
`
`universal asynchronous receiver and transmitter
`
`communication. As you can see, Your Honor, this is labeled
`
`as a "key code signal" in the patent. This has what is
`
`characterized as system data and key data that the
`
`specification explains is the key code here.
`
`So what it says is this key code has been modified
`
`by adding a start bit, a parity bit, and a stop bit. Now,
`
`there is no discussion as to this specific figure of it
`
`being modulated. So merely what we have here is an example
`
`where the key code has been formatted with additional data
`
`that creates a key code signal and allows for transmission.
`
`Then, Your Honor, if we look at Fig. 5, this is an
`
`example where the specification tells us that a key code was
`
`modulated onto a signal using pulse with modulation.
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 17 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
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`So the difference here effectively is that you can
`
`have a signal that's formatted for transmission as we see in
`
`Fig. 4, and if there is not that additional step of
`
`modulating as we saw in the result for Fig. 5, it would not
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`necessarily be a modulated signal. So that we believe that
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`is the key distinction here entirely consistent with the
`
`specification, and also with the distinction that Your Honor
`
`recognized in the claim language where certain claims use
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`the term "modulation" whereas others don't.
`
`THE COURT: So if we are confined to the
`
`specification, both modulated and unmodulated key code
`
`signals appear.
`
`MR. WATSON: That's correct.
`
`THE COURT: Okay.
`
`MR. WATSON: Also, the other thing that Roku has
`
`not addressed is the fact that some of the claims do in fact
`
`use the term "modulation." As we pointed out in our
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`briefing, adding another modulation requirement into the
`
`term "key code signal" would in effect render those
`
`limitations that already exist superfluous, which the law
`
`teaches that we are not supposed to do. So based on both
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`the disclosure of the spec and the plain words chosen by the
`
`patentee, Roku's proposed construction is incorrect.
`
`Also, counsel referred to references to
`
`"modulation" in the prosecution history. We would say that
`
`SHARON A. SEFFENS, U.S. DISTRICT COURT REPORTER
`
`UEI Exhibit 2004, Page 18 of 102
`Roku, Inc. v. Universal Electronics, Inc., IPR2019-01615
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`this is neither a disclaimer nor inconsistent because, as
`
`Your Honor is aware, there are many claims of this patent
`
`that do require modulation. So merely pointing out in the
`
`specification that there are instances where the key code
`
`generator device modulates a key code signal is consistent
`
`because that is part of some of the claims here.
`
`Moving on then to Roku's second aspect of its
`
`construction, the storing element, this is based on an
`
`alleged disclaimer. We would submit that the Court
`
`correctly recognized that the portions of the prosecution
`
`history do not arise to a disclaimer.
`
`What I am showing in the slide here is both the
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`office action and a portion of the response. We believe
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`this gives some context here. What's interesting is as you
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`see in the office action the Examiner referred to Goldstein
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`"teaches a key code generator in the form of a
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