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
`U.S. Patent 9,911,325
`_____________________
`
`DECLARATION OF DR. SAMUEL H. RUSS
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Roku EX1003
`U.S. Patent No. 9,911,325
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`IV.
`
`V.
`
`VI.
`
`VII.
`
`Introduction ................................................................................................ 1
`Qualifications ............................................................................................. 1
`Materials considered .................................................................................. 4
`Relevant legal standards ............................................................................. 5
`Level of ordinary skill .......................................................................... 6
`A.
`Claim construction ............................................................................... 7
`B.
`“Key code” ................................................................................................. 8
`“Keystroke indicator signal” ....................................................................... 9
`“Key code signal” ....................................................................................... 9
`C.
`Obviousness ....................................................................................... 10
`Overview of the ’325 patent ......................................................................10
`Embodiment 1 – Transmitting a Key Code from a Key Code
`Generator to a Remote Control Device .............................................. 12
`Embodiment 2 – Transmitting a Key Code from a Key Code
`Generator to an Electronic Consumer Device .................................... 15
`Background of the Technology .................................................................16
`Infrared Remote Controls and Controlling Electronic Consumer
`Devices Were Well-Known ............................................................... 17
`Controlling Electronic Devices Using Key Codes Was Well-
`Known ............................................................................................... 25
`Transmitting Key Codes From Electronic Devices Other Than
`Remote Controls Was Well-Known ................................................... 29
`Transmitting Key Codes Via Modulating Key Codes Onto
`Carrier Signals Was Well-Known ...................................................... 39
`“Blasters” Were Well-known Devices Used to Transmit Key
`Codes According to Modulation Parameters ...................................... 44
`Using a Remote Control as a Relay Device was Well-known ............ 49
`GROUND 1: Claims 1, 2, 3, 5, and 7 of the ’325 Patent are
`Unpatentable under 35 U.S.C. § 103 OVER Rye In view of Skerlos .........51
`
`A.
`
`B.
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`- i -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`Overview of Rye ................................................................................ 52
`A.
`Rye in view of Skerlos discloses Embodiment 2 ................................ 54
`B.
`Independent Claim 1 .......................................................................... 58
`C.
`[1.P]: “A first device for transmitting a command to control a functional
`operation of a second device, the first device comprising:” ...................... 58
`[1.1]: “a receiver;” .................................................................................... 60
`[1.2] “a transmitter;” ................................................................................. 61
`[1.3] “a processing device coupled to the receiver and the transmitter; and”62
`[1.4] “a memory storing instructions executable by the processing device,
`the instructions causing the processing device to:” ................................... 64
`[1.4.1] “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;” ................................................................ 68
`[1.4.2] “format the key code for transmission to the second device; and” . 72
`[1.4.3] “transmit the formatted key code to the second device in a key
`code signal via use of the transmitter;” ..................................................... 78
`[1.4.4] “wherein the generated key code comprises a one of a plurality of
`key code data stored in a codeset, wherein the one of the plurality of key
`code data is selected from the codeset as a function of the keystroke
`indicator received from the third device, wherein each of the plurality of
`key code data stored in the codeset comprises a series of digital ones
`and/or digital zeros, and” ......................................................................... 79
`[1.4.5] “wherein the codeset further comprises time information that
`describes how a digital one and/or a digital zero within the selected one of
`the plurality of key code data is to be represented in the key code signal to
`be transmitted to the second device.” ....................................................... 82
`D.
`Claim 2: “The first device as recited in claim 1, wherein the
`receiver comprises an RF receiver.” ................................................... 86
`Claim 3: “The first device as recited in claim 1, wherein the
`transmitter comprises an IR transmitter.” ........................................... 86
`Claim 5: “The first device as recited in claim 1 , wherein the
`formatted key code is transmitted from the first device to the
`
`E.
`
`F.
`
`- ii -
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`
`
`G.
`
`second device via a wireless connection between the first
`device and the second device.” .......................................................... 87
`Claim 7: “The first device as recited in claim 1, 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.” .................................................................................. 88
`VIII. Ground 2: Claims 1, 2, 3, 4, and 5 of the ’325 Patent are
`Unpatentable under 35 U.S.C. § 103 over Caris In View of DubiL. ..........89
`A. Overview of Caris .............................................................................. 89
`B.
`Caris in view of Dubil discloses Embodiment 2 ................................. 91
`C.
`Independent Claim 1 .......................................................................... 94
`[1.P] “A first device for transmitting a command to control a functional
`
`operation of a second device, the first device comprising:” ...................... 94
`[1.1] “a receiver;” ..................................................................................... 95
`[1.2] “a transmitter;” ................................................................................. 95
`[1.3] “a processing device coupled to the receiver and the transmitter; and”96
`[1.4] “a memory storing instructions executable by the processing device,
`the instructions causing the processing device to:” ................................... 98
`[1.4.1] “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;” .............................................................. 101
`[1.4.2] “format the key code for transmission to the second device; and”103
`[1.4.3] “transmit the formatted key code to the second device in a key
`code signal via use of the transmitter;” ................................................... 106
`[1.4.4] “wherein the generated key code comprises a one of a plurality of
`key code data stored in a codeset, wherein the one of the plurality of key
`code data is selected from the codeset as a function of the keystroke
`indicator received from the third device, wherein each of the plurality of
`key code data stored in the codeset comprises a series of digital ones
`and/or digital zeros, and” ....................................................................... 107
` [1.4.5] “wherein the codeset further comprises time information that
`describes how a digital one and/or a digital zero within the selected one of
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`- iii -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`E.
`
`F.
`
`G.
`
`the plurality of key code data is to be represented in the key code signal to
`be transmitted to the second device.” ..................................................... 110
`D.
`Claim 2: “The first device as recited in claim 1, wherein the
`receiver comprises an RF receiver.” ..................................................114
`Claim 3: “The first device as recited in claim 1, wherein the
`transmitter comprises an IR transmitter.” ..........................................114
`Claim 4: “The first device as recited in claim 1, 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.” .....................................................................115
`Claim 5: “The first device as recited in claim 1, wherein the
`formatted key code is transmitted from the first device to the
`second device via a wireless connection between the first
`device and the second device.” .........................................................115
`[INTENTIONALLY LEFT BLANK] ..................................................... 116
`GROUND A: Claims 8, 9, 11-13, and 15-16 of the ’325 Patent are
`Unpatentable under 35 U.S.C. § 103 Over Rye In view of Skerlos
`and Woolgar. ........................................................................................... 116
`A. Overview of Woolgar .......................................................................116
`B.
`Claims 8 and 16: “The first device as recited in claim 1,
`wherein the first device comprises a further receiver for
`receiving the codeset from a fourth device in communication
`with the first device.” / “The first device as recited in claim 1,
`wherein the first device comprises a further receiver for
`receiving at least one codeset from a fourth device in
`communication with the first device and wherein the at least
`one codeset is used to generate the key code.” ..................................121
`Independent Claim 9 .........................................................................124
`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.” .................................................................135
`Claim 12: “The first device as recited in claim 9, wherein the
`formatted key code is transmitted from the first device to the
`
`
`
`IX.
`X.
`
`C.
`D.
`
`E.
`
`
`
`
`- iv -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`F.
`
`G.
`
`C.
`
`
`
`XI.
`
`XII.
`
`second device via a wired connection between the first device
`and the second device.” .....................................................................137
`Claim 13: “The first device as recited in claim 9, wherein the
`receiver comprises an RF receiver.” ..................................................138
`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.” .................................................................................139
`GROUND B: Claim 6 of the ’325 Patent is Unpatentable under 35
`U.S.C. § 103 Over Rye In view of Skerlos And Gutman. ........................ 140
`A. Overview of Gutman ........................................................................140
`B.
`Claim 6: “The first device as recited in claim 1, 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.” .......................................141
`GROUND C: Claim 14 of the ’325 Patent Is Unpatentable under 35
`U.S.C. § 103 Over Rye In view of Skerlos, Woolgar, And Gutman. ....... 147
`XIII. Ground 2.A: Claims 6, 8, and 16 of the ’325 Patent are Unpatentable
`under 35 U.S.C. § 103 over Caris In View of DubiL. .............................. 148
`A.
`Independent Claim 1 .........................................................................149
`B.
`Claim 6: “The first device as recited in claim 1, 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.” .......................................149
`Claims 8 and 16: “The first device as recited in claim 1,
`wherein the first device comprises a further receiver for
`receiving the codeset from a fourth device in communication
`with the first device.” / “The first device as recited in claim 1,
`wherein the first device comprises a further receiver for
`receiving at least one codeset from a fourth device in
`
`
`
`
`- v -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`XIV.
`
`A.
`
`B.
`C.
`
`D.
`
`E.
`
`F.
`
`communication with the first device and wherein the at least
`one codeset is used to generate the key code.” ..................................151
`GROUND D: Claims 8, 9 and 11-16 of the ’325 Patent are
`Unpatentable under 35 U.S.C. § 103 Over Caris In view of Dubil and
`Woolgar. ................................................................................................. 153
`Claims 8 and 16: “The first device as recited in claim 1,
`wherein the first device comprises a further receiver for
`receiving the codeset from a fourth device in communication
`with the first device.” / “The first device as recited in claim 1,
`wherein the first device comprises a further receiver for
`receiving at least one codeset from a fourth device in
`communication with the first device and wherein the at least
`one codeset is used to generate the key code.” ..................................153
`Independent Claim 9 .........................................................................156
`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.” .................................................................165
`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.” .....................................................................166
`Claim 13: “The first device as recited in claim 9, wherein the
`receiver comprises an RF receiver.” ..................................................168
`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.” .......................................169
`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.” .................................................................................171
`
`G.
`
`- vi -
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`
`XV.
`
`
`
`
`
`
`
`
`
`GROUND E: Claims 9 and 11-15 of the ’325 Patent are
`Unpatentable under 35 U.S.C. § 103 Over Chardon ................................ 172
`A. Overview of Chardon ........................................................................173
`B.
`HDMI CEC .......................................................................................178
`C.
`Independent Claim 9 .........................................................................181
`[9.P]: “A first device for transmitting a command to control a functional
`
`operation of a second device, the first device comprising:” .................... 181
`[9.1]: “a receiver;” .................................................................................. 184
`[9.2A] / [9.2B] “a first transmitter;” / “a second transmitter;” ................. 186
`[9.3] “a processing device coupled to the receiver, the first transmitter, and
`the second transmitter; and” ................................................................... 188
`[9.4] “a memory storing instructions executable by the processing device,
`the instructions causing the processing device to:” ................................. 189
`[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;” .............................................................. 190
`[9.4.2] “format the key code for transmission to the second device; and”194
`[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;” ............................................................................................... 195
`[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.” ...................................................................... 196
`D.
`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.” .................................................................199
`Claim 12: “The first device as recited in claim 9, wherein the
`formatted key code is transmitted from the first device to the
`
`
`
`
`
`
`E.
`
`
`
`
`- vii -
`
`

`

`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`second device via a wired connection between the first device
`and the second device.” .....................................................................200
`Claim 13: “The first device as recited in claim 9, wherein the
`receiver comprises an RF receiver.” ..................................................200
`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.” .......................................202
`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.” .................................................................................205
`XVI. Other evidence relevant to obviousness ................................................... 206
`
`F.
`
`G.
`
`H.
`
`
`
`
`- viii -
`
`

`

`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`
`I, Samuel H. Russ, declare as follows:
`
`I.
`
`INTRODUCTION
`I have been asked by Roku, Inc. (“Roku”) to provide expert opinions
`
`
`in the above-captioned Inter Partes Review proceeding involving U.S. Patent No.
`
`9,911,325 (“the ’325 patent”), which is entitled “Relaying Key Code Signals
`
`Through A Remote Control Device.”
`
`
`
`I am being compensated by Roku on an hourly basis for the time I
`
`spend in connection with this proceeding. My compensation is not dependent in
`
`any way on the substance of my opinions or in the outcome of this proceeding.
`
`II. QUALIFICATIONS
` My qualifications for forming the opinions set forth in this declaration
`
`are summarized here and explained in more detail in my curriculum vitae, which is
`
`attached as Exhibit 1004. Exhibit 1004. also includes a list of my publications and
`
`the cases in which I have testified at deposition, hearing, or trial during the past
`
`four years.
`
`
`
`I received a Bachelor’s degree in Electrical Engineering from the
`
`Georgia Institute of Technology (“Georgia Tech”) in 1986 and a Ph.D. in
`
`Electrical Engineering from Georgia Tech in 1991.
`
`
`
`From 2007 to the present, I have been a member of the faculty of the
`
`University of South Alabama as an Assistant and Associate Professor in the
`
`
`
`- 1 -
`
`

`

`
`Department of Electrical and Computer Engineering. During that time, I have won
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`awards for excellent teaching and have been actively publishing research in home
`
`networking and digital video recording (DVR) technologies. I am active in the
`
`Institute of Electrical and Electronic Engineers (IEEE) and am a Distinguished
`
`Lecturer for the IEEE Consumer Electronics Society. As a consultant, I have
`
`conducted briefings for members of the financial community on technology trends
`
`in the cable, satellite, and IPTV sectors.
`
`
`
`From 2000 to 2007, I worked for Scientific-Atlanta (now Cisco’s
`
`Service Provider Video Tech. Group), where I managed a cable set-top box (STB)
`
`design group that designed four STB models, including the Explorer 4200
`
`(nonDVR) and 8300 (DVR) models. Both models sold several million units. As
`
`design-group manager, I was responsible for managing the design and prototyping
`
`activities of the group and for interfacing with other groups (especially integrated-
`
`circuit design, procurement, software developers, the factory where prototypes
`
`were built, and product managers) and for maintaining the hardware and
`
`mechanical development schedule. Since the products were produced in extremely
`
`high volumes, the projects had very high visibility in the company, and therefore
`
`carried a great deal of responsibility.
`
`
`
`Also while at Scientific-Atlanta, I became a staff expert in home
`
`networking, conducting demonstrations of wireless video technology and
`
`
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`

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`managing a group that developed a new coaxial home networking system. The
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`coaxial system won a Technology and Engineering Emmy® Award in 2013. I
`
`became a staff expert in DVR reliability, and led a team that improved the
`
`software, hardware, repair, and manufacturing processes. I am a named inventor on
`
`fifty-one (51) patent applications that were filed while I was at Scientific-Atlanta,
`
`twenty eight (28) of which have issued as U.S. patents as of the writing of this
`
`report.
`
`
`
`From 1999 to 2000, I was a Staff Electrical Engineer and then Matrix
`
`Manager at IVI Checkmate (now Ingenico), where I managed the hardware design
`
`team that completed the design of the eN-Touch 1000 payment terminal. This
`
`terminal was in widespread use, for example, at the self-checkout at Home Depot.
`
`
`
`I also served on the faculty of Mississippi State University from 1994
`
`to 1999 as an Assistant Professor in the Department of Electrical & Computer
`
`Engineering where I taught circuit board design and two-way interactive video
`
`classes, among other things.
`
`
`
`I have also authored 32 journal articles and conference papers. A
`
`recent conference paper on digital video recording won second place in a “best
`
`paper” competition at the 2011 International Conference on Consumer Electronics
`
`in Las Vegas, NV.
`
`
`
`- 3 -
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`
`III. MATERIALS CONSIDERED
`In formulating my opinions, I have relied upon my training,
`
`
`knowledge, and experience that are relevant to the ’325 patent. Furthermore, I have
`
`considered specifically the following documents listed below in addition to any
`
`other documents cited in this declaration. I understand that the references are true
`
`and accurate copies of what they appear to be:
`
`Exhibit No.
`1001
`1004
`1005
`1006
`1007
`1008
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`1014
`1015
`
`Description
`U.S. Patent No. 9,911,325 to Mui (“’325 Patent”)
`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)
`
`
`
`- 4 -
`
`

`

`
`
`Exhibit No.
`1016
`
`1017
`
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`1029
`1030
`1031
`1032
`
`1033
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`Description
`“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”).
`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”)
`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 A1 to Chardon et al.
`(“Chardon”)
`High-Definition Multimedia Interface – Specification Version 1.3a
`(November 10, 2006)
`
`IV. RELEVANT LEGAL STANDARDS
`I have also relied upon various legal principles (as explained to me by
`
`
`Roku’s counsel) in formulating my opinions. My understanding of these principles
`
`are summarized below.
`
`
`
`I understand that a patent claim defines the metes and bounds of an
`
`alleged invention. I further understand that a claimed invention must be new,
`
`
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`- 5 -
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`

`

`
`useful, and non-obvious over the prior art for it to be patentable. I understand that
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
`
`in this proceeding Roku has the burden of proving that the challenged claims are
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`unpatentable over the prior art by a preponderance of the evidence. I understand
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`that “a preponderance of the evidence” is evidence sufficient to show that a fact is
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`more likely true than it is not.
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`In determining the patentability of a claim, I understand that the first
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`step is to construe the claim from the perspective of a person of ordinary skill in
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`the art (“POSA”) to determine its meaning and scope. Once construed, I
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`understand that the claim is to be considered against the prior art from the
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`perspective of a POSA as further summarized below.
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`A. Level of ordinary skill
`I understand that a claim must be analyzed from the perspective of a
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`POSA at the time the claimed invention was allegedly invented by the patentee.
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`Roku’s counsel has asked me to consider the time period shortly before December
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`16, 2003, which is the earliest priority date of the ’325 patent, as the potential date
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`of invention of the claims of the ’325 patent.
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`In ascertaining the appropriate level of ordinary skill in the art of a
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`patent, I understand that several factors should be considered including (1) the
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`types of problems encountered in the art; (2) the prior art solutions to those
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`problems; (3) the rapidity with which innovations are made; (4) the sophistication
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`of the technology; and (5) the educational level of active workers in the field of the
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`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
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`patent.
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`I further understand that a POSA is a person who is presumed to be
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`aware of the pertinent art, thinks along conventional wisdom in the art, and is a
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`person of ordinary creativity. Accordingly, a POSA of the ’325 patent would have
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`had general knowledge of remote control devices, consumer electronic devices,
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`and various related technologies as of December 16, 2003.
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` Thus based on my experience and my understanding of the legal
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`principles summarized here, I believe that a POSA in the context of the ’325 patent
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`at the time of the patent’s earliest priority date of December 16, 2003, would have
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`had a bachelor’s degree in electrical engineering or equivalent degree with two
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`years of work experience relating to communications and consumer electronics.
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`Well before December 16, 2003, my level of skill in the art was at least that of a
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`POSA, as discussed above.
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`B. Claim construction
`I have been informed by Roku’s counsel that in this proceeding, the
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`United States Patent and Trademark Office (“PTO”) interprets the claims of an
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`unexpired patent, such as the ’325 patent, under the same standards used in a
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`United States District Court. This includes interpreting the claims through the lens
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`of POSA in view of the entire patent. Accordingly, in formulating my opinions, I
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`have reviewed the claims of the ’325 patent as I perceive a POSA would have
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`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 9,911,325
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`understood them at the time of the earliest priority date (December 16, 2003) of the
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`’325 patent, after reading the entire ’325 patent specification. I have also reviewed
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`a Markman order provided by the district court in a pending proceeding also
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`directed to the ’325 patent.
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` Finally, I have been informed that claim construction is ultimately a
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`question of law. Accordingly, I understand that a tribunal may choose to construe
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`certain terms to provide clarity to the proceeding should any dispute arise between
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`the parties over how a term should be construed. If the tribunal chooses to construe
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`any term, then I reserve my right to review and potentially modify any opinions
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`below in view of such constructions.
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`“Key code”
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`I understand that in the related district court proceeding, Patent Owner
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`and Petitioner have previously agreed to a construction for “key code” as being a
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`“a code corresponding to the function of an electronic device, optionally including
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`timing information.” EX1009, Markman order, 12. While a POSA reading the
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`term “key code” would understand the term as having its plain and ordinary
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`meaning, the combination of references described below in Grounds 1-2 render
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`obvious the claims of the ’325 patent under its plain and ordinary meaning or the
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`agreed-upon construction.
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`Declaration of Dr. Samuel