UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ROKU, INC.
`
`Petitioner,
`
`v.
`
`CANON KABUSHIKI KAISHA
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00342
`
`U.S. Patent No. 8,346,986
`
`____________
`
`Declaration of Kyle K. Tsui in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,346,986
`
`Roku Exhibit 1023
`Roku, Inc. v. Canon Kabushiki Kaisha
`IPR2020-00342
`Page 00001
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ROKU, INC.
`
`Petitioner,
`
`v.
`
`CANON KABUSHIKI KAISHA
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00342
`
`U.S. Patent No. 8,346,986
`
`____________
`
`Declaration of Kyle K. Tsui in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,346,986
`
`Roku Exhibit 1023
`Roku, Inc. v. Canon Kabushiki Kaisha
`IPR2020-00342
`Page 00001
`
`
`
`I, Kyle K. Tsui, make the following declaration pursuant to 28 U.S.C. §1746:
`
`1.
`
`2.
`
`I am a senior attorney at the law firm of Ropes & Gray LLP.
`
`I provide this declaration in connection with the above-identified Inter
`
`Partes review proceeding that is being requested at the U.S. Patent and Trademark
`
`Office (“USPTO”) by Roku, Inc. against Canon Kabushiki Kaisha. Unless
`
`otherwise stated, the facts set forth in this Declaration are based on my personal
`
`knowledge.
`
`3.
`
`Ex. 1001 hereto is a true and correct copy of U.S. Patent No. 8,346,986
`
`to Junji Kotani, which is available from the USPTO. This document has been
`
`marked with an exhibit label and page numbers on each page at the bottom right
`
`corner. However, no alternations, other than these noted markings, have been made
`
`to this document.
`
`4.
`
`Ex. 1002 hereto is a certified file history of U.S. Patent No. 8,346,986
`
`to Junji Kotani, which is available from the USPTO. This document has been
`
`marked with an exhibit label and page numbers on each page at the bottom right
`
`corner. However, no alternations, other than these noted markings, have been made
`
`to this document.
`
`5.
`
`Ex. 1004 hereto is a true and correct copy of U.S. Patent No. 7,877,696
`
`to Michael J. Telek et al., which is available from the USPTO. This document has
`
`been marked with an exhibit label and page numbers on each page at the bottom
`
`1
`
`IPR2020-00342 Page 00002
`
`
`
`right corner. However, no alternations, other than these noted markings, have been
`
`made to this document.
`
`6.
`
`Ex. 1005 hereto is a true and correct copy of European Patent
`
`Publication EP0989729 to Hideo Takiguchi et al., which is available from the
`
`European Patent Office. This document has been marked with an exhibit label and
`
`page numbers on each page at the bottom right corner. However, no alternations,
`
`other than these noted markings, have been made to this document.
`
`7.
`
`Ex. 1006 hereto is a true and correct copy of Chinese Patent
`
`CN2935383Y to Zhou Lu et al., which is available from the Chinese Patent Office.
`
`This document has been marked with an exhibit label and page numbers on each
`
`page at the bottom right corner. However, no alternations, other than these noted
`
`markings, have been made to this document.
`
`8.
`
`Ex. 1008 hereto is a true and correct copy of Japanese Patent
`
`Application Publication JP2004-350160 to Hiroshi Suda, which is available from
`
`the Japanese Patent Office. This document has been marked with an exhibit label
`
`and page numbers on each page at the bottom right corner. However, no alternations,
`
`other than these noted markings, have been made to this document.
`
`9.
`
`Ex. 1010 hereto is a true and correct copy of Japanese Patent Laid-Open
`
`No. 7-123379 to Yoshio Iizuka, which is available from the Japanese Patent Office.
`
`This document has been marked with an exhibit label and page numbers on each
`
`2
`
`IPR2020-00342 Page 00003
`
`
`
`page at the bottom right corner. However, no alternations, other than these noted
`
`markings, have been made to this document.
`
`10. Ex. 1012 hereto is a true and correct copy of Japanese Patent Laid-Open
`
`No. 2006-235993 to Haruhito Watanabe, which is available from the Japanese
`
`Patent Office. This document has been marked with an exhibit label and page
`
`numbers on each page at the bottom right corner. However, no alternations, other
`
`than these noted markings, have been made to this document.
`
`11. Ex. 1014 hereto is a true and correct copy of a document titled
`
`Universal Serial Bus Specification, Revision 2.0, which was obtained from the USB
`
`Implementers Forum, Inc. at the following URL: https://www.usb.org/documents.
`
`This document has been marked with an exhibit label and page numbers on each
`
`page at the bottom right corner. However, no alternations, other than these noted
`
`markings, have been made to this document.
`
`12. Ex. 1015 hereto is a true and correct copy of a document titled
`
`Universal Serial Bus Common Class Specification, Revision 1.0, which was
`
`obtained from the USB Implementers Forum, Inc. at the following URL:
`
`https://usb.org/sites/default/files/usbccs10.pdf. This document has been marked
`
`with an exhibit label and page numbers on each page at the bottom right corner.
`
`However, no alternations, other than these noted markings, have been made to this
`
`document.
`
`3
`
`IPR2020-00342 Page 00004
`
`
`
`13. Ex. 1016 hereto is a true and correct copy of a PDF document titled
`
`“USB Complete Third Edition,” by Janet L. Axelson, published by Lakeview
`
`Research LLC with a copyright date of 2005, which
`
`is available at
`
`https://www.academia.edu/30851880/USB_Complete_3rdEdition. This document
`
`has been marked with an exhibit label and page numbers on each page at the bottom
`
`right corner. However, no alternations, other than these noted markings, have been
`
`made to this document.
`
`14. Ex. 1017 hereto is a true and correct copy of Plaintiff’s Preliminary
`
`Constructions and Extrinsic Evidence served in Canon, Inc. v. TCL Electronics
`
`Holdings Ltd., No. 2:18-cv-00546 (E.D. Tex.) on December 4, 2019. This document
`
`has been marked with an exhibit label and page numbers on each page at the bottom
`
`right corner. However, no alternations, other than these noted markings, have been
`
`made to this document.
`
`15. Ex 1018 hereto is a true and correct copy of Defendants’ Preliminary
`
`Constructions and Extrinsic Evidence served in Canon, Inc. v. TCL Electronics
`
`Holdings Ltd., No. 2:18-cv-00546 (E.D. Tex.) on December 4, 2019. This document
`
`has been marked with an exhibit label and page numbers on each page at the bottom
`
`right corner. However, no alternations, other than these noted markings, have been
`
`made to this document.
`
`4
`
`IPR2020-00342 Page 00005
`
`
`
`16. Ex. 1019 hereto is a true and correct copy of Canon, Inc.’s Unopposed
`
`Motion to Dismiss Without Prejudice Canon’s Claims Against Roku filed in Canon,
`
`Inc. v. Roku, Inc., No. 6:19-cv-00245 (W.D. Tex.) on July 31, 2019. This document
`
`has been marked with an exhibit label and page numbers on each page at the bottom
`
`right corner. However, no alternations, other than these noted markings, have been
`
`made to this document.
`
`17. Ex. 1020 hereto is a true and correct copy of an Order Dismissing
`
`Without Prejudice Canon's Claims Against Roku filed in Canon, Inc. v. Roku, Inc.,
`
`No. 6:19-cv-00245 (W.D. Tex.) on August 7, 2019. This document has been marked
`
`with an exhibit label and page numbers on each page at the bottom right corner.
`
`However, no alternations, other than these noted markings, have been made to this
`
`document.
`
`18. Ex. 1021 hereto is a true and correct copy of U.S. Patent No. 8,713,206
`
`to Junji Kotani, which is available from the USPTO. This document has been
`
`marked with an exhibit label and page numbers on each page at the bottom right
`
`corner. However, no alternations, other than these noted markings, have been made
`
`to this document.
`
`19. Ex. 1022 hereto is a certified file history of U.S. Patent 8,078,767 to
`
`Junji Kotani, which is available from the USPTO. This document has been marked
`
`with an exhibit label and page numbers on each page at the bottom right corner.
`
`5
`
`IPR2020-00342 Page 00006
`
`
`
`However, no alternations, other than these noted markings, have been made to this
`
`document.
`
`20.
`
`I hereby declare that all statements made herein of my own knowledge
`
`are true and that all statements made on information and belief are believed to be
`
`true; and further that these statements were made with the knowledge that willful
`
`false statements and the like so made are punishable by fine or imprisonment, or
`
`both, under 18 U.S.C. §1001. If called to testify as to the truth of the matters stated
`
`herein, I could and would testify competently.
`
`21.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed this 24th day of December, 2019, at Washington, D.C.
`
`
`
` Kyle K. Tsui
`
`
`
`6
`
`IPR2020-00342 Page 00007
`
`
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