UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ROKU, INC.
`
`Petitioner,
`
`v.
`
`CANON KABUSHIKI KAISHA
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00355
`
`U.S. Patent No. 7,746,413
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`CANON EXHIBIT 2016
`Roku, Inc. v. Canon Kabushiki Kaisha
`IPR2020-00342
`
`Page 1 of 10
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ROKU, INC.
`
`Petitioner,
`
`v.
`
`CANON KABUSHIKI KAISHA
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00355
`
`U.S. Patent No. 7,746,413
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`CANON EXHIBIT 2016
`Roku, Inc. v. Canon Kabushiki Kaisha
`IPR2020-00342
`
`Page 1 of 10
`
`
`
`U.S. Patent No. 7,746,413
`Petition for Inter Partes Review
`
`
`The ’413 Accused Products may be operated through voice
`commands when the voice command button on an enhanced remote
`control, such as a magnifying glass button, as shown below, is pressed.
`An operation screen is then displayed on the television, displaying a
`microphone and a message to hold the microphone button and speak,
`also as shown below.
`
`
`As shown below, if the ’413 Accused Product does not detect
`or recognize the voice command, a different form is displayed
`prompting the user to retry the voice search, or to click one of two
`options: (1) text search, or (2) cancel the voice control process.
`
`15
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`Page 2 of 10
`
`
`
`U.S. Patent No. 7,746,413
`Petition for Inter Partes Review
`
`
`
`If “Text search” is selected, another operation form is
`displayed, allowing the user to type in text by navigating an on-screen
`keyboard using the enhanced remote control, as shown below.
`
`
`Ex. 1011 ¶¶68-70 (emphasis added; footnote omitted); see also ¶¶71-72 (control of
`
`a phone display displays operation forms depending on the buttons/inputs
`
`(attributes) that the phone receives). The litigation exhibit is submitted by
`
`16
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`Page 3 of 10
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`
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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 1 of 95 PageID #: 675
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CIVIL ACTION NO. 2:18-cv-00546
`
`JURY TRIAL DEMANDED
`
`CANON, INC.
`
`Plaintiff,
`
`vs.
`TCL ELECTRONICS HOLDINGS LTD.,
`TCL CORPORATION,
`SHENZEN TCL NEW TECHNOLOGIES CO.
`LTD.,
`TCL KING ELECTRICAL APPLIANCES
`(HUIZHOU) CO., LTD.,
`TCL KING ELECTRONICS (CHENGDU)
`CO., LTD.,
`TCL KING ELECTRICAL APPLIANCES
`(NANCHANG) CO., LTD.,
`TCL TONGLI ELECTRONICS (HUIZHOU)
`CO., LTD.,
`TONLY ELECTRONICS HOLDINGS LTD.
`
`Defendants.
`
`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Canon, Inc. (“Canon” or “Plaintiff”) brings this First Amended Complaint for
`
`Patent Infringement (“Amended Complaint”) and for Jury Trial against Defendants TCL
`
`Electronics Holdings Ltd. (formerly known as TCL Multimedia Technology Holdings, Ltd.),
`
`TCL Corporation, Shenzen TCL New Technologies Co. Ltd., TCL King Electrical Appliances
`
`(Huizhou) Co., Ltd., TCL King Electronics (Chengdu) Co., Ltd., TCL King Electrical
`
`Appliances (Nanchang) Co., Ltd., TCL Tongli Electronics (Huizhou) Co., Ltd. and Tonly
`
`Electronics Holdings Ltd. (collectively, “TCL” or “Defendants”). Canon alleges as follows:
`
`1
`
`Roku Exhibit 1011
`Roku, Inc. v. Canon Kabushiki Kaisha
`IPR2020-00355
`Page 00001
`
`Page 4 of 10
`
`
`
`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 20 of 95 PageID #: 694
`
`
`Kabushiki Kaisha” as their Assignee, “Canon Kabushiki Kaisha” is a Japanese translation for
`
`Canon Inc. and is an identical entity as Canon Inc., the plaintiff of this action.
`
`51.
`
`The Asserted Patents are valid and enforceable.
`
`DEFENDANTS’ INFRINGING PRODUCTS AND ACTIVITIES
`
`52.
`
`Defendants, directly or through intermediaries, including its subsidiaries, make,
`
`use, sell, offer to sell within the United States and/or import into the United States and this
`
`District infringing television systems that integrate the Roku operation system (“Roku OS”)
`
`(henceforth, “Roku TV”).
`
`53.
`
`Certain Roku TVs comprise a television that displays a number of operation
`
`screens, each with a number of operation forms that can be and are displayed, depending on the
`
`remote control device being used. They are capable of acquiring an attribute of a remote control
`
`device and determining an operation form corresponding to the remote control device from
`
`among a plurality of operation forms based on the acquired attribute of the remote control device
`
`by evaluating a degree of suitability between the remote control device and the plurality of
`
`operation forms and display an operation screen related to the determined operation form
`
`displayed.
`
`54.
`
`Certain Roku TVs, moreover, comprise a television to which various classes /
`
`types of external devices can be connected; contents retrieved from these various external
`
`devices can be displayed on the system’s display. Furthermore, each of these Roku TVs are
`
`capable of recognizing and also distinguishing among the classes / types of external devices
`
`connected to the television. Depending on the class / type of the external device connected to the
`
`system, the Roku TVs are capable of determining whether to continue (or to end) displaying
`
`20
`
`IPR2020-00355 Page 00020
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`Page 5 of 10
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`
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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 21 of 95 PageID #: 695
`
`
`contents retrieved from the external device when such device is disconnected. And, depending
`
`on the class / type of the external device connected to the system and how such device is
`
`disconnected from the system, the Roku TVs are capable of determining whether to continue (or
`
`to end) displaying contents retrieved from the external device when such device is disconnected.
`
`55.
`
` Certain Roku TVs comprise a television to which various types of external
`
`devices can be connected; content retrieved from these various external devices can be displayed
`
`on the system’s display. Furthermore, each of these Roku TVs is capable of and does recognize
`
`and distinguish among the types of external devices connected to the television. Depending on
`
`the type of the external device connected to the system, the Roku TVs are capable of varying the
`
`timing for stopping the display of contents retrieved from the external device after such device is
`
`disconnected. And, depending on the type of the external device connected to the system and
`
`how such device is disconnected from the system, the Roku TVs are capable of varying the
`
`timing for stopping the display of contents retrieved from the external device after such device is
`
`disconnected.
`
`56.
`
`Certain Roku TVs comprise a television capable of receiving and displaying
`
`streaming contents over the Internet. Furthermore, each of these Roku TVs is capable of storing
`
`URL information associated with the streaming contents, accessing the URLs while the TV is
`
`turned off or while the TV is displaying broadcast programs, buffering the streaming contents
`
`while the TV is turned off or while the TV is displaying broadcast programs and displaying the
`
`buffered contents after the TV is turned back on or controlled to switch from displaying
`
`broadcast programs to displaying streaming contents again.
`
`21
`
`IPR2020-00355 Page 00021
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`Page 6 of 10
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`
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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 22 of 95 PageID #: 696
`
`
`57.
`
`Infringing products include, among others, the following Roku TVs: 3-series TV
`
`systems (e.g., Models 32S325, 40S325, 43S325, 49S325, 28S305, 32S301, 32S305, 32S327,
`
`40S303, 40S305, 43S303, 43S305, 49S303, and 49S305), 4-series TV systems (e.g., Models
`
`43S421, 50S421, 55S421, 65S421, 43S423, 75S423, 75S425, 43S403, 43S405, 43S425, 49S403,
`
`49S405, 49S425, 50S423, 50S425, 55S423, 55S425, 55S401, 55S403, 55S405, 65S401, 65S403,
`
`65S405, 65S423 and 65S425), 5-series TV Systems (e.g., Models 43S515, 43S517, 49S515,
`
`49S517, 55S515, 55S517, 65S515 and 65S517), 6-series TV Systems (e.g., Models 75R517,
`
`55R613, 55R615, 55R617, 65R615, 65R617, 75R617 and 75R615), P6-series TV Systems (e.g.,
`
`Models 55P605 and 55P607), and C8-series TV Systems (e.g., Models 55C803, 55C807,
`
`65C807, 75C803 and 75C807), S-series TV systems (e.g., 32S3700, 40FS3750, 65US5800,
`
`55US5800, 32S3700, 40F3750, 32S3750, 28S3750, 32S3850A, 32S3850B, 32S3850P, 32S3850,
`
`55FS3750, 48FS3750, 55FS3850, 50FS3850, 32S3800, 50FS3800, 40FS3800, 40FS3850,
`
`40FS4610R, 48FS3700, 48FS4610R, 55FS3700, 55FS4610R), P-series TV systems (e.g.,
`
`55UP130, 43UP130, 50UP130, 55UP120, 50UP120, 43UP120, 49FP110, 43FP110)
`
`(collectively, the “Accused Products”).
`
`58.
`
`On information and belief, Defendants introduced its first Roku TV in August
`
`2014. See, e.g., Ex. 9 (TCL Launches Premium Roku TV Models, May 13, 2015 Press Release)
`
`(“TCL Roku TVs feature a personalized home screen with access to all entertainment sources,
`
`making it easy to navigate between gaming console, cable or satellite box, and the more than
`
`2,000 streaming channels . . ..”).
`
`59.
`
`Defendants, directly or through intermediaries, including its subsidiaries, maintain
`
`websites targeting consumers in the United States; these websites identify various retail stores
`
`22
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`IPR2020-00355 Page 00022
`
`Page 7 of 10
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`
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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 23 of 95 PageID #: 697
`
`
`within this District as places where the Accused Products can be purchased. For example, one
`
`website directs consumers to purchase Defendants’ Model 55C807 at Amazon, BrandsMart,
`
`Walmart, and other retail stores:
`
`23
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`IPR2020-00355 Page 00023
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`Page 8 of 10
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`
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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 24 of 95 PageID #: 698
`
`
`
`
`24
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`IPR2020-00355 Page 00024
`
`Page 9 of 10
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`
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`Case 2:18-cv-00546-JRG Document 22 Filed 04/25/19 Page 25 of 95 PageID #: 699
`
`
`Ex. 10 (https://www.tclusa.com/products/home-theater/c-series/tcl-55-class-c-series-4k-uhd-hdr-
`
`roku-smart-tv-55c807). These retail stores allow consumers to pick up Accused Product at local
`
`stores, such as a Walmart store located at 6001 N. Central Expressway, Plano TX 75023, an
`
`address that is within this District.
`
`
`
`Ex. 11 (https://www.walmart.com/ip/TCL-55-Class-4K-2160P-Dolby-Vision-HDR-Roku-Smart-
`
`LED-TV-55C807).
`
`COUNT I
`(Direct Infringement of the ’413 Patent pursuant to 35 U.S.C. § 271(a))
`
`60.
`
`Canon repeats, realleges, and incorporates by reference, as if fully set forth herein,
`
`the allegations of the preceding paragraphs.
`
`61.
`
`Defendants, directly or through intermediaries, including its subsidiaries, have
`
`directly infringed and continue to directly infringe Claims 1-5, 7-11 of the ’413 Patent literally
`
`25
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`IPR2020-00355 Page 00025
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`Page 10 of 10
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