`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2020-00953
`U.S. Patent 9,911,325
`
`
`
`
`
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`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,911,325
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`III.
`
`IV.
`V.
`
`VI.
`
`VII.
`
`B.
`
`
`
`
`
`Introduction ................................................................................................ 1
`Grounds for the Unpatentability of the ’325 patent..................................... 2
`Overview of the ’325 patent ....................................................................... 3
`A.
`Embodiment 2 – Transmitting a Key Code from a Key Code
`Generator to an Electronic Consumer Device ...................................... 5
`The Examiner Provided No Rationale for Allowance During
`Prosecution of the ’325 Patent. ............................................................ 6
`Level of ordinary skill in the art ................................................................. 7
`Claim Construction .................................................................................... 7
`A.
`“Key code” and “Keystroke indicator”................................................. 8
`B.
`“Key code signal” ................................................................................ 8
`Claims 9 and 11-15 are not entitled to a Priority Claim to December
`16, 2003. .................................................................................................... 9
`GROUND E: Claims 9 and 11-15 of the ’325 Patent are
`Unpatentable under 35 U.S.C. § 103 Over Chardon ..................................12
`A. Overview of Chardon ......................................................................... 12
`B.
`Independent Claim 9 .......................................................................... 17
`[9.P]: “A first device for transmitting a command to control a functional
`
`operation of a second device, the first device comprising:” .....................17
`[9.1]: “a receiver;” ...................................................................................20
`[9.2A] / [9.2B] “a first transmitter;” / “a second transmitter;” ..................21
`[9.3] “a processing device coupled to the receiver, the first transmitter, and
`the second transmitter; and” ....................................................................23
`[9.4] “a memory storing instructions executable by the processing device,
`the instructions causing the processing device to:” ..................................24
`[9.4.1] “generate a key code using a keystroke indicator received from a
`third device in communication with first device via use of the receiver, the
`keystroke indicator having data that indicates an input element of the third
`device that has been activated;” ...............................................................25
`[9.4.2] “format the key code for transmission to the second device; and” 28
`
`
`
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`- i -
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`
`
`
`
`D.
`
`E.
`
`F.
`
`G.
`
`[9.4.3] “transmit the formatted key code to the second device in a key
`code signal via use of the first transmitter and a first communication
`protocol;” ................................................................................................30
`[9.4.4] “transmit the formatted key code to the second device in a keycode
`signal via use of the second transmitter and a second communication
`protocol when it is determined that the second device is not responsive to
`the key code signal transmitted via use of the first transmitter and the first
`communication protocol.” .......................................................................31
`C.
`Claim 11: “The first device as recited in claim 9, wherein one
`of the first and second communication protocols comprises a
`wired communication protocol and the other of the first and
`second communication protocols comprises a wireless
`communication protocol.” .................................................................. 33
`Claim 12: “The first device as recited in claim 9, wherein the
`formatted key code is transmitted from the first device to the
`second device via a wired connection between the first device
`and the second device.” ...................................................................... 34
`Claim 13: “The first device as recited in claim 9, wherein the
`receiver comprises an RF receiver.” ................................................... 35
`Claim 14: “The first device as recited in claim 9, wherein the
`first device comprises a further receiver for receiving a media
`from a fourth device in communication with the first device and
`wherein the first device is coupled to the second device to
`provide the media to the second device for display on a display
`device associated with the second device.” ........................................ 37
`Claim 15: “The first device as recited in claim 9, wherein the
`generated key code controls at least one of a power on, power
`off, volume up, and volume down functional operation of the
`second device.” .................................................................................. 39
`Patent Owner is unaware of any secondary considerations of non-
`obviousness ...............................................................................................40
`Conclusion ................................................................................................40
`Standing (37 C.F.R. § 42.104(a)) ..............................................................40
`Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ..............................................41
`A.
`Real Party In Interest (37 C.F.R. § 42.8(b)(1)) ................................... 41
`
`VIII.
`
`IX.
`X.
`XI.
`
`
`
`- ii -
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) ........................................... 41
`Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3)) .......................... 42
`Service Information (37 C.F.R. § 42.8(b)(4)) ..................................... 42
`
`B.
`C.
`D.
`
`
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`- iii -
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`PETITIONER’S EXHIBIT LIST
`
`Description
`U.S. Patent No. 9,911,325 to Mui (“’325 Patent”)
`Prosecution History of U.S. Patent No. 9,911,325 (“Prosecution
`History”)
`Declaration of Dr. Samuel Russ in Support of Petition for Inter
`Partes Review of U.S. Patent No. 9,911,325
`Curriculum Vitae of Dr. Samuel Russ
`U.S. Patent Publication No. 2004/0080428 to Rye et al. (“Rye”)
`U.S. Patent No. 4,426,662 to Skerlos et al. (“Skerlos”)
`U.S. Patent No. 7,562,128 to Caris et al. (“Caris”)
`U.S. Patent No. 8,132,105 to Dubil et al. (“Dubil”)
`Markman Order SACV 18-01580 JVS (Dated August 8, 2019)
`“Device Specification for Infrared Detecting unit for Remote
`Control GP1UV70QS series,” Sharp Corporation Electronic
`Components Group, Opto-Electronic Devices Division (Dated
`December 27, 2002) (“GP1UV70”)
`“Data Formats for IR Remote Control,” Vishay Semiconductors
`(Dated August 27, 2003) (“Vishay”)
`“User Interface – Infrared Learner (Remote Control) AN2092”
`Project Guide, Cypress Semiconductor Corporation (Dated
`November 11, 2002) (“Cypress”)
`“VCR Commander Service User’s Guide,” Scientific-Atlanta, Inc.,
`(Dated September 2000) (“VCR Commander”)
`U.S. Patent No. 5,469,152 to Yamamoto et al. (“Yamamoto”).
`“Infrared Remote Control Transmitter RC5 Product Specification,”
`Philips Semiconductors (Dated June 15, 1999)
`“AT2400 AllTouch Remote Control User’s Guide,” Scientific-
`Atlanta, Inc. (Dated February 2002)
`“EXPLORER 2100 or 3100 Digital Home Communications
`Terminals User’s Installation Guide,” Scientific Atlanta, Inc.
`(Dated July 2000)
`U.S. Patent No. 6,909,471 to Bayley (“Bayley”).
`
`Exhibit No.
`1001
`1002
`
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`1014
`1015
`
`1016
`
`1017
`
`1018
`
`
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`- iv -
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`Description
`U.S. Patent No. 5,745,192 to Bialobrzewski (“Bialobrzewski”)
`U.S. Patent No. 5,365,282 to Levine (“Levine”)
`U.S. Patent No. 6,225,873 to Hill (“Hill”)
`U.S. Patent No. 7,149,474 to Mikhak (“Mikhak”)
`U.S. Patent No. 6,122,010 to Emelko (“Emelko”)
`U.S. Patent No. 7,151,575 to Landry et al. (“Landry”)
`U.S. Patent No. 6,930,730 to Maxon et al. (“Maxon”)
`U.S. Patent No. 6,993,134 to Epstein (“Epstein”)
`Patent Owner’s Infringement Contentions, Ex. C-1, Universal
`Electronics Inc. v. Roku, Inc., 8:18-cv-01580 (C.D. Cal.)
`Intentionally left blank
`U.S. Patent Publication No. 2005/0168658 to Woolgar et al.
`(“Woolgar”)
`U.S. Patent No. 7,861,262 to Gutman (“Gutman”)
`U.S. Patent No. 6,137,802 to Jones et al. (“Jones”)
`U.S. Patent Publication No. 2012/0249890 to Chardon et al.
`(“Chardon”)
`High-Definition Multimedia Interface – Specification Version 1.3a
`(November 10, 2006)
`
`Exhibit No.
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`1031
`1032
`
`1033
`
`
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`- v -
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`

`

`
`
`
`
` Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`Roku Inc. petitions for inter partes review of claims 9 and 11-15 of United
`
`States Patent No. 9,911,325 (“’325 patent”) to Mui, titled “Relaying Key Code
`
`Signals Through a Remote Control Device.” EX1001, ’325 patent. The Petition
`
`demonstrates that claims 9 and 11-15 of the ’325 patent are unpatentable.
`
`I.
`
`INTRODUCTION
`
`The ’325 patent allegedly solved problems related to programming remote
`
`control devices to control electronic consumer devices. But, the ’325 patent does
`
`not propose any novel or nonobvious solutions. Rather, using key code generator
`
`devices—such as set-top boxes—to facilitate the transmission of key codes to
`
`control electronic consumer devices was already well known in the art. EX1003,
`
`¶¶26-28, 34-100.
`
`The ’325 patent describes the problem of remote control devices having
`
`insufficient memory to store thousands of codesets related to different electronic
`
`consumer devices. EX1001, 1:62-65. Further, the codesets may include different
`
`key codes corresponding to different functions such as “power on, power off,
`
`volume up, volume down, play, stop, select, channel up, channel down, etc.” Id.,
`
`1:39-42. To solve this alleged problem, the ’325 patent proposes the well-known
`
`solution of transmitting a key code from a key code generator device to an
`
`electronic consumer device in response to receiving a command from the remote
`
`control. See Section III.A.
`
`
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`- 1 -
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`

`

`Claims 9 and 11-15, however, recite an entirely different process that is not
`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`supported by the specification of the ’325 patent. Independent claim 9 recites a
`
`“second transmitter” and using this second transmitter when a device is not
`
`responsive to a command transmitted from a first transmitter. As will be further
`
`explained below, because claims 9 and 11-15 are not supported by the
`
`specification, they are not entitled to the priority date of the parent ’642 patent.
`
`Further, U.S. Patent Publication No. 2012/0249890 (“Chardon”) would have been
`
`known to a person of ordinary skill in the art (“POSA”) and would have rendered
`
`claims 9 and 11-15 obvious.
`
`Accordingly, there is at least a reasonable likelihood that at least one claim
`
`of the ’325 patent is unpatentable, as shown herein. As such, Petitioner respectfully
`
`requests that the Board Institute trial on the grounds set forth herein and ultimately
`
`determine that claims 9 and 11-15 of the ’325 patent are invalid.
`
`II. GROUNDS FOR THE UNPATENTABILITY OF THE ’325 PATENT
`
`Roku, Inc. (“Roku”) requests inter partes review of claims 9 and 11-15 of
`
`the ’325 patent and a determination that those claims are unpatentable based on the
`
`following grounds:
`
`
`
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`
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`

`Ground Prior Art
`
`Basis
`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`Claims
`Challenged
`9 and 11-15
`
`E
`
`Chardon (EX1032)
`
`35 U.S.C. § 103
`
`
`
`The ’325 patent claims priority to U.S. Patent No. 7,589,642, which lists the
`
`earliest priority date of the ’325 patent as December 16, 2003. See EX1001, (63).
`
`As explained in Section VI, however, claims 9 and 11-15 are not entitled to this
`
`priority date. Instead, claims 9 and 11-15 are only entitled to the filing date of the
`
`’325 patent (May 13, 2016) at the earliest. The prior art Chardon reference
`
`qualifies as prior art to the ’325 patent for the following reasons:
`
`• Chardon (EX1032) is prior art under at least pre-AIA 35 U.S.C.
`
`§§ 102(a)(1) and 102(a)(2) because it was filed on March 31, 2011 and
`
`published on October 4, 2012, both dates being more than one year
`
`before May 13, 2016, the earliest priority date of claims 9 and 11-15 of
`
`the ’325 patent.
`
`III. OVERVIEW OF THE ’325 PATENT
`
`The ’325 patent generally relates to conventional remote control devices and
`
`controlling electronic consumer devices using key codes corresponding to device
`
`functions. See EX1001, Abstract, 1:19-22. As described in the Background section
`
`of the ’325 patent, these well-known key codes correspond to functions such as
`
`“power on, power off, volume up, volume down, play, stop, select, channel up,
`
`channel down, etc.” Id., 1:39-42. The Background section further explains that it
`
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`- 3 -
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`

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`was well-known to group the key codes into codesets having different bit patterns
`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
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`and timing information corresponding to different functions of the electronic
`
`consumer device. See id., 1:42-53. It was also well-known to use the timing
`
`information to modulate the key codes onto carrier signals to generate key code
`
`signals. See id., 1:48-53.
`
`According to the ’325 patent, one limitation of the widespread use of
`
`codesets is the existence of “thousands of codesets” used to control electronic
`
`consumer devices. Id., 1:60-62. The ’325 patent explains that manufacturers of
`
`remotes may wish to limit the memory on their remote control devices to a size
`
`that is insufficient to store the thousands of existing codesets. Id., 1:62-65.
`
`In response to this described problem, the ’325 patent describes two well-
`
`known solutions using a “key code generator device” to manage the codesets and
`
`generate key codes, as depicted in Figure 1. See id., 2:10-22. The claims of the
`
`’325 patent are only directed to the second solution—Embodiment 2.
`
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`- 4 -
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`EX1001, FIG. 1 (annotated).
`
`
`
`A. Embodiment 2 – Transmitting a Key Code from a Key Code
`Generator to an Electronic Consumer Device
`Embodiment 2 describes a key code generator device controlling an
`
`electronic consumer device in response to receiving a command from the remote
`
`control device. EX1001, 6:31-33. The key code generator device sends a key code
`
`signal directly to the electronic consumer device. Id.
`
`
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`- 5 -
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`

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`In particular, a user presses a key on the remote control, and the remote
`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`
`
`control transmits a conventional keystroke indicator signal to the key code
`
`generator device 12. Id., 6:43-47. The key code generator device then determines
`
`which key code of the identified codeset corresponds to the pressed key. Id., 6:47-
`
`54. The key code generator device then performs a conventional modulation of the
`
`key code onto a carrier signal to generate a key code signal. Id., 6:24-30.
`
`In contrast to Embodiment 1, here, the key code generator device then
`
`transmits this key code signal directly to the electronic consumer device. Id., 6:60-
`
`61; EX1003, ¶¶34-36. Upon receiving the key code signal, the electronic consumer
`
`device performs the corresponding instruction. See EX1001, 6:61-65.
`
`B.
`
`The Examiner Provided No Rationale for Allowance During
`Prosecution of the ’325 Patent.
`The Examiner did not provide any rationale or explanation for allowing the
`
`’325 patent. For example, the Examiner allowed claims 9 and 11-15 in the Non-
`
`Final Office Action mailed on April 21, 2017 without any explanation or analysis
`
`related to satisfying the written description requirement. EX1002, 68-78. In
`
`response to amendments made to other claims, the Examiner indicated that the
`
`claims were allowable without providing any additional explanation or rationale.
`
`See id., 92-94.
`
`
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`- 6 -
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art, at the time the ’325 patent was filed,
`
`would have a bachelor’s degree in electrical engineering or equivalent degree with
`
`two years of work experience relating to communications and consumer
`
`electronics. EX1003, ¶¶15-18.
`
`V. CLAIM CONSTRUCTION
`The claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005) applies to this proceeding. See 83 Fed. Reg. 51,340, 51,340-
`
`59 (Oct. 11, 2018); 37 C.F.R. § 42.100. Under this standard, words in a claim are
`
`given their plain meaning, which is the meaning understood by a person of
`
`ordinary skill in the art at the time of the alleged invention, and after reading the
`
`entire patent. Phillips, 415 F.3d at 1312-13.
`
`The parties are currently involved in a parallel civil action involving the
`
`’325 patent and its parent case, the ’642 patent. See Section XI. The ’325 patent to
`
`Mui is one of nine patents in that action. In that proceeding, the parties agreed
`
`upon constructions for “key code” and “keystroke indicator signal,” but requested
`
`a district-court construction for the term “key code signal.” Patent Owner’s claim
`
`construction positions and the district court’s resolution are set forth below.
`
`Petitioner does not believe that any other terms require construction in this
`
`proceeding. As demonstrated in the Ground below, the claims are unpatentable
`
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`- 7 -
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`

`under both Patent Owner’s and the court’s claim constructions of each of the claim
`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`terms below.
`
`“Key code” and “Keystroke indicator”
`A.
`In the parallel civil action, Patent Owner and Petitioner have agreed on a
`
`construction for the claim term “key code” as “a code corresponding to the
`
`function of an electronic device, optionally including timing information.” EX1009
`
`Markman order, 12. Patent Owner and Petitioner have also agreed on a
`
`construction for the claim term “keystroke indicator” as “a signal, distinct from a
`
`key code, corresponding to a pressed key [on a remote control].” Id., 12-13. While
`
`Petitioner does not set forth or advocate for any specific construction of “key code”
`
`or “keystroke indicator signal” in this Petition, the reference described below
`
`renders obvious the challenged claims of the ’325 patent under these constructions,
`
`as well as their plain and ordinary meanings.
`
`“Key code signal”
`B.
`In the parallel civil action, Patent Owner previously proposed a construction
`
`for “key code signal” as being “a signal containing a key code.” EX1010, 13. The
`
`court provided its own construction of a “signal containing a modulated key code.”
`
`Id., 13-23. For purposes of this proceeding, the reference described below renders
`
`obvious the challenged claims of the ’325 patent under either of these
`
`constructions.
`
`
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`VI. CLAIMS 9 AND 11-15 ARE NOT ENTITLED TO A PRIORITY
`CLAIM TO DECEMBER 16, 2003.
`The specification of the ’325 patent does not support the claim elements of
`
`claim 9. Specifically, the ’325 patent does not provide any written description
`
`support for a device that includes a “second transmitter” or “transmit[ting] [a]
`
`formatted key code to [a] second device in a keycode signal via use of the second
`
`transmitter and a second communication protocol when it is determined that the
`
`second device is not responsive to [a] key code signal transmitted via use of the
`
`first transmitter and the first communication protocol.” Because no written
`
`description support exists for these claim elements, claims 9 and dependent claims
`
`11-15 are not entitled to claim priority to the earliest date of December 16, 2003.
`
`As the Federal Circuit has repeatedly articulated, in order to satisfy the
`
`written description requirement, “the description must ‘clearly allow persons of
`
`ordinary skill in the art to recognize that [the inventor] invented what is claimed.’
`
`In other words, the test for sufficiency is whether the disclosure of the application
`
`relied upon reasonably conveys to those skilled in the art that the inventor had
`
`possession of the claimed subject matter as of the filing date.” Ariad
`
`Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`
`(internal citations omitted); see also Lockwood v. American Airlines, Inc., 107 F.3d
`
`1565, 1572 (Fed. Cir. 1997) (“It is not sufficient for purposes of the written
`
`
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`

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`description requirement of § 112 that the disclosure, when combined with the
`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`knowledge in the art, would lead one to speculate as to modifications that the
`
`inventor might have envisioned, but failed to disclose.”).
`
`In view of this requirement, the Board has determined that when claims lack
`
`written description support, the claims are not entitled to the priority date of an
`
`earlier application. See Dr. Reddy’s Labs. S.A. v. Indivior UK Ltd., IPR2019-
`
`00329, Paper 21 (P.T.A.B. June 3, 2019); Amneal Pharms., LLC v. Purdue Pharma
`
`L.P., IPR2016-01412, Paper 39 (P.T.A.B. Feb. 8, 2018) (affirmed Purdue Pharma
`
`L.P. v. Iancu, 767 F. App’x 918 (Fed. Cir. 2019)).
`
`In the instant case, the ’325 patent claims priority to U.S. Patent Appl. No.
`
`10/737,029 (now U.S. Patent No. 7,589,642) filed on December 16, 2003. The
`
`’325 patent is a continuation application and has an identical specification. Neither
`
`of these specifications, however, provide written description support for a “second
`
`transmitter” or “transmit[ting] [a] formatted key code to [a] second device in a
`
`keycode signal via use of the second transmitter and a second communication
`
`protocol when it is determined that the second device is not responsive to [a] key
`
`code signal transmitted via use of the first transmitter and the first communication
`
`protocol.”
`
`For example, the specification of the ’325 patent states that its “key code
`
`generator device can transmit key codes to the electronic consumer device to be
`
`
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`- 10 -
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`

`

`controlled via a hardwired connection rather than a wireless link.” EX1001, 10:18-
`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`20. This statement, however, does not disclose using two transmitters or
`
`transmitting a key code using a second transmitter when a device is not responsive
`
`to the command being transmitted using a first transmitter.
`
`Similarly, the ’325 patent’s description of “autoscan functionality” also does
`
`not provide any description for these claim elements. For example, the ’325 patent
`
`states that when applying “the autoscan functionality, key code generator device 12
`
`identifies the codeset used to communicate with a particular electronic consumer
`
`device by generating and transmitting a sequence of key code signals … Each of
`
`these key code signals contains a different key code corresponding to the same
`
`desired function on different device types, brands and models.” Id., 10:35-52.
`
`While the ’325 patent describes different key codes, nowhere does the ’325 patent
`
`describes using two transmitters and transmitting a key code using a second
`
`transmitter when a device is not responsive to the command being transmitted
`
`using a first transmitter.
`
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`Thus, because the ’325 patent does not provide any written description
`
`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
`
`
`support for these claim elements, claims 9 and 11-15 are not entitled to claim
`
`priority to December 16, 2003.1
`
`VII. GROUND E: CLAIMS 9 AND 11-15 OF THE ’325 PATENT ARE
`UNPATENTABLE UNDER 35 U.S.C. § 103 OVER CHARDON
`A POSA would have found claims 9 and 11-15 of the ’325 patent to have
`
`been obvious in view of Chardon. EX1003, ¶¶298-349.
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`A. Overview of Chardon
`Chardon was not considered during prosecution of the ’325 patent or any
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`parent application. Chardon discloses an embedded remote-control system within
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`an entertainment system that operates on a variety of remote control platforms,
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`such as HDMI, IR, and RF enabled appliances. EX1032, ¶¶6, 20, 40; EX1003,
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`1 An intervening application (U.S. Pat. No. 9,355,553 filed on May 21,
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`2011) claims “(f) determining that the key code signal using the first modulation
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`technique cannot be used to communicate with the electronic consumer device; and
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`(e) transmitting the key code signal from the key code generator device to the
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`electronic consumer device using a second modulation technique.” This claim
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`language, however, also does not provide any support for two transmitters or
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`transmitting a key code using a second transmitter, so the ’325 patent is not entitled
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`to this priority date either.
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`¶¶299-306. As illustrated in annotated Figure 1 below, Chardon discloses an
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`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
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`entertainment system 100 that includes a set of HDMI appliances 105 (e.g. HDMI
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`display 105a and HDMI sources 105b) and a multi-media gateway 110. Id., ¶30.
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`EX1032, FIG. 1 (annotated).
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`Chardon explains that the set of HDMI appliances (or sources) may provide
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`various media including, for example, audio, video, still images, applications, etc.
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`The HDMI sources include typical home theater devices such as “a set-top-box
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`(e.g., cable set-top-box, satellite set-top-box, etc.), a personal video recorder
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`(PVR), a DVD player (e.g., a Blu-ray™ disk player), a computer (desktop, laptop,
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`Petition for Inter Partes Review of
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`netbook, tablet, PDA, etc.), a smartphone, a portable media player (iPod™, iPad™,
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`etc.), a digital camera, a digital video camera, a digital media adapter, etc.”
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`EX1032, ¶30. Chardon’s HDMI sources also provide media to multiple-media
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`gateway 110, HDMI display 105a, and/or one or more other HDMI sources. Id.
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`Chardon discloses that the multi-media gateway operates as a control device
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`for connected devices (e.g., HDMI appliances) within the entertainment system
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`and may internally include a “remote-control system” 140 that runs a “remote-
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`control engine” 145. Id., ¶¶38, 45. Chardon also discloses that remote control
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`system 140— i.e., Chardon’s universal control engine —could be included in any
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`or each of the HDMI appliances. Id., ¶38.
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`EX1032, FIG. 2 (annotated).
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`Chardon’s universal control engine 140 includes a processor 205, memory
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`Petition for Inter Partes Review of
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`210, a set of transceivers 210, and a bus 215. EX1032, ¶38. Chardon explains that
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`the bus may be a Consumer Electronics Control or “CEC” bus, and that the HDMI
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`appliances will monitor the bus through the remote control system 140. Id., ¶40.
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`Moreover, Chardon discloses that each HDMI appliance may include IR and RF
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`transceivers, and that the HDMI appliances may further communicate with each
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`other and with the multi-media gateway having the universal control engine
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`through both IR and RF transceivers. Id.
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`The universal control engine memory may be configured to “store a local
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`file or a local database 220, which includes sets of command codes.” Id., ¶39. The
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`sets of command codes include at least sets of “IR command codes (configured to
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`be transmitted in IR or RF)” and sets of “Consumer Electronic Control (CEC)
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`command codes” that are either “standard CEC command codes” or “custom CEC
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`command codes.” Id. Memory 210 may also store “computer code (e.g. compiled
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`computer code) for one or more applications executable by the processor” and
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`applications “for remote-control engine 145, which may include Logitech’s
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`Harmony Link™ engine.” Id.
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`Chardon discloses building a database of IR and CEC command codes. It
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`does so through a variety of methods. One way Chardon populates its listing is to
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`download the IR and CEC command codes during what it calls a “setup process.”
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`Petition for Inter Partes Review of
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`Id., ¶¶47, 48, 52. Another way that Chardon populates its listing is by downloading
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`the command codes from a remote database based on information received from an
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`HDMI appliance. Id. And yet another way that Chardon populates its listing is by
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`attempting “to determine the functions associated with” the HDMI appliance by
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`“compar[ing] two sets of states of an HDMI appliance.” Id., ¶55.
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`Chardon’s universal control engine uses the created listing to facilitate
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`communication between a remote-control device and an intended appliance. For
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`example, Chardon discloses that its universal control engine may be configured to
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`transmit and receive a variety of command codes. Exemplary codes include
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`wireless IR and RF codes as well as wired CEC command codes. The universal
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`control engine receives a command for an intended target appliance and acts as “a
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`bridge device for communicating command codes received from remote-control
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`device 115 to the HDMI appliances.” Id., ¶43. Chardon’s universal control engine
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`thus receives commands from a remote-control device and transmits those
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`commands to an intended appliance.
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`Chardon’s universal control engine can use a first communication method
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`and/or a second communication to communicate with an intended appliance. In
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`one example, Chardon discloses that its universal control engine “is configured to
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`transmit a CEC command code to an HDMI appliance via an HDMI cable.” Id.,
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`¶58; see also EX1003, ¶¶307-12. If the remote control engine does not receive a
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`“response from the HDMI appliance, the remote control engine is configured to
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`assume that the HDMI appliance did not receive the CEC command code.” Id. In
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`that case, the remote control engine “determines an IR command code to send to
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`the HDMI appliance that directs the HDMI appliance to perform the same set of
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`functions as the CEC command code.” Id., ¶¶58, 4. In this way, Chardon corrects
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`and compensates for failed or limited communications by sending a command
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`using both wired and wireless transmitters.
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`B.
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`Independent Claim 9
`[9.P]: “A first device for transmitting a command to control
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`a functional operation of a second device, the first device
`comprising:”
`Figure 1 from Chardon as annotated below depicts a “multi-media gateway
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`110,” which teaches the claimed “first device.” See EX1032, ¶30. “Multi-media
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`gateway 110” includes “a remote-control system 140, which is configured to run a
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`remote-control engine 145.” Id., ¶¶30, 36. Figure 2 illustrates an embodiment of
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`this remote-control system 140.
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`Petition for Inter Partes Review of
`U.S. Patent No. 9,911,325
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`EX1032, FIG. 1 (annotated)
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`Petition for Inter Partes Review of
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`EX1032, FIG. 2 (annotated).
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`Chardon explains that memory 210 within the remote-control system 140
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`stores “sets of command codes” which includes “at least one set of IR command
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`codes (configured to be transmitted in IR or RF)” as well as “at least one set of
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`Consumer Electronic Control (CEC) command codes.” EX1032, ¶39. The IR, RF,
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`and CEC command codes are transmitted to other “HDMI appliances” using “IR
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`transceivers” or CEC but 215. Id., ¶40. The HDMI appliances teach the claimed
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`“second device.” “HDMI appliances may include an HDMI display 105a and a set
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`of HDMI sources 105b” such as set-top-boxes, PVRs, DVD players, computers, or
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`other electronic consumer devices. Id., ¶30. In addition to directin