UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`ROKU, INC.,
`Petitioner
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner
`
`
`_____________________
`
`Case Nos. IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
`_____________________
`
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`PETITIONER’S NOTICE RANKING PETITIONS FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 9,911,325
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`ROKU, INC.,
`Petitioner
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner
`
`
`_____________________
`
`Case Nos. IPR2020-00951 and IPR2020-00953
`Patent 9,911,325
`_____________________
`
`
`PETITIONER’S NOTICE RANKING PETITIONS FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 9,911,325
`
`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
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`I.
`
`Introduction
`Petitioner is simultaneously filing two petitions (IPR2020-00951 and
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`IPR2020-00953) challenging the patentability of certain claims in U.S. Patent No.
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`9,911,325. Currently pending IPR2019-01614 (instituted April 16, 2020)
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`challenges different claims of the ’325 patent. Petitioner has filed a Motion to join
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`the two Petitions referenced here with IPR2019-01614.
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`Under the Board’s November 2019 Consolidated Trial Practice Guide
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`(“TPG”), Petitioner submits this paper with each petition to rank the petitions,
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`explain their differences, and advocate for institution of both. Trial Practice Guide,
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`59-60 (Nov. 2019).
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`The Board should consider the merits of the petitions in the following order:
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`(1) IPR2020-00951 (“the Rye/Caris Petition”); and (2) IPR2020-00953 (“the
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`Chardon Petition”).
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`II.
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`Succinct Explanation of Differences between the Petitions
`Petitioner challenges the claims of the ’325 patent in the following manner:
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`IPR2020-00951
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`Ground Basis References
`1
`§103 Rye, Skerlos
`A
`§103 Rye, Skerlos and Woolgar
`B
`§103 Rye, Skerlos, Gutman
`C
`§103 Rye, Skerlos, Woolgar, Gutman
`2.A
`§103 Caris, Dubil
`D
`§103 Caris, Dubil, Woolgar
`IPR2020-00953
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`1
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`Claims
`1
`8, 9, 11-13, 15-16
`6
`14
`1, 6, 8, 16
`8, 9, 11-16
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`
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`Ground Basis References
`1
`§103 Chardon
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`The main difference between the two petitions is the prior-art dates of the
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`Claims
`9, 11-15
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`asserted references. In Rye/Caris Petition all references predate December 16,
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`2003. In the Chardon Petition, on the other hand, Chardon predates May 13, 2016,
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`the earliest filing date Petitioner believes that the ’325 patent can claim priority for
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`independent claim 9. Petitioner must therefore demonstrate that claim 9 of the ’325
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`patent is not entitled to its earliest priority date for Chardon to qualify as prior art.
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`The other main difference is that the Rye/Caris Petition utilizes the same primary
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`references from the currently instituted IPR2019-01614, while the Chardon
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`petition is narrowly tailored to use art specifically based on the ’325 patent’s
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`priority date for independent claim 9, as discussed below. Accordingly, the
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`obviousness grounds also contain material differences. Although each set of
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`references discloses every claim element, they do not use identical language or the
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`same level of detail. For example, in the Chardon Petition, the Chardon reference
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`discloses almost all (if not all) of the claim elements. On the other hand, the
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`Rye/Caris Petition relies on a combination of references to establish the
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`obviousness of the challenged claims along with various motivations to combine.
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`Accordingly, the petitions have different starting points and different rationales as
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`to why the challenged claims are obvious.
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`2
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`III. The Board should exercise its discretion to institute both petitions.
`The TPG gives two reasons why multiple petitions may be necessary: (1)
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`“when the patent owner has asserted a large number of claims in litigation” or (2)
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`“when there is a dispute about priority date.” TPG, 59. Here, both reasons apply.
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`First, Patent Owner served Petitioner, on September 18, 2018, with a district
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`court complaint alleging infringement of the ’325 patent. On December 24, 2018,
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`Patent Owner served infringement contentions in the district court litigation
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`asserting, in relevant part, claims 1, 2, 4, and 7 of the ’325 patent. On March 14,
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`2019, the district court granted Petitioner’s request that Patent Owner select a
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`subset of its asserted claims across the six patents-in-suit. In response, on April 5,
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`2019, Patent Owner elected to only proceed on claim 2 of the ’325 patent. Then,
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`one year later, on September 18, 2019, Petitioner filed a petition for inter partes
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`review challenging claims 1, 2, 3, 4, 5, and 7 of the ’325 patent. The Board
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`instituted trial in IPR2019-01614 on April 16, 2020. At about the same time as trial
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`was instituted, and over 18 months after serving the complaint in the district court
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`action, Patent Owner filed an ITC complaint under 19 U.S.C. § 1337 against
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`Petitioner. Among the claims asserted in the ITC complaint, Patent Owner newly
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`introduced claims 6, 8, 9, and 11-16 of the ’325 patent, which were never asserted
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`in the district court case. Independent claim 9 is a new lengthy claim and claims
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`3
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`11-15 depend from claim 9. Two petitions are warranted due to Patent Owner’s
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`addition of various new and lengthy claims at the ITC.
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`Second, two petitions are also warranted because the parties will dispute the
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`’325 patent’s priority date. The ’325 patent’s priority date has not been decided, so
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`Petitioners’ provide two petitions with invalidating art based on different possible
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`priority dates. The Rye/Caris Petition is based on a priority date no earlier than
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`December 16, 2003—the filing date of the ’325 patent’s earliest parent, the ’642
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`patent. The Chardon Petition, on the other hand, is based on a priority date no
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`earlier than May 13, 2016— the earliest priority date the ’325 patent is entitled for
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`claim 9 and 11-15.
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`Specifically, the ’325 patent claims priority to U.S. Patent No. 7,589,642
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`which lists the earliest priority date of the ’325 patent as December 16, 2003. See
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`EX1001, (22). However, claims 9 and 11-15 are not entitled to this priority date,
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`because the ’325 patent does not disclose at least the following elements of
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`independent claim 9: (i) a “second transmitter” or (ii) “transmit[ting] [a] formatted
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`key code to [a] second device in a keycode signal via use of the second transmitter
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`and a second communication protocol when it is determined that the second device
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`is not responsive to [a] key code signal transmitted via use of the first transmitter
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`and the first communication protocol.” These elements are also unsupported by
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`other applications in the family. To the extent that Patent Owner argues that U.S.
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`
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`4
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`
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`Patent No. 9,355,553 provides support, then Chardon is prior art under §102(e)—
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`meaning that Patent Owner can also attempt to antedate this reference. Since no
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`tribunal has decided the priority date with respect to independent claim 9 of the
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`’325 patent, both petitions are necessary to address the possible outcomes.
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`IV. Conclusion
`This case satisfies both of the Board’s justifications for filing two petitions.
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`First, Patent Owner has asserted many new claims at the ITC and the challenged
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`claims of the ’325 patent are the newly asserted lengthy claims. Second, the second
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`ranked petition using Chardon depends on the Board’s ultimate finding on the
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`priority date of the ’325 patent. Thus, due to the newly asserted, lengthy claims
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`and the questions surrounding the ’325 patent’s appropriate priority date,
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`addressing all grounds in a single petition is untenable. As explained in the
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`accompanying motion for joinder, these two grounds will not unduly burden the
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`Board or the parties. The Rye/Caris Petition utilizes the same primary references
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`from the currently instituted IPR2019-01614 IPR that challenges different claims
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`than the ones challenged here. Additionally, the Chardon petition is narrowly
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`tailored to use art specifically based on the ’325 patent’s priority date. The Board
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`should therefore institute trial for both IPR2020-00951 and IPR2020-00953.
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`Date: May 18, 2020
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`
`/Lestin Kenton/
`
`Lestin L. Kenton, Reg. No. 72,314
`Attorney for Petitioner Roku, Inc.
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`6
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`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that on May 18, 2020, a true and correct
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`
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`copy of the foregoing PETITIONER’S NOTICE RANKING PETITIONS FOR INTER
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`PARTES REVIEW OF U.S. PATENT NO. 9,911,325 was served in its entirety on the
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`following parties via FedEx Express® or Express Mail:
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`GREENBERG TRAURIG, LLP
`77 W. WACKER DRIVE
`SUITE 3100
`CHICAGO IL 60601-1732
` PAIR Correspondence Address for U.S.P.N. 9,911,325
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`Date: May 18, 2020
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`
`/Lestin Kenton/
`
`Lestin L. Kenton, Reg. No. 72,314
`Attorney for Petitioner Roku, Inc.
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`7
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