UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`Case No. IPR2020-01012
`U.S. Patent 7,589,642
`
`_____________________
`
`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 1003
`U.S. Patent No. 7,589,642
`
`

`

`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 7,589,642
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`III.
`IV.
`
`V.
`
`VI.
`
`B.
`
`Introduction ....................................................................................... 1
`Qualifications .................................................................................... 1
`Materials considered ......................................................................... 3
`Relevant legal standards .................................................................... 5
`A.
`Level of ordinary skill ............................................................... 6
`B.
`Claim construction .................................................................... 7
` “Key code” ................................................................................................ 8
` “Keystroke indicator signal” ...................................................................... 8
` “Key code signal” ...................................................................................... 9
` “Key code generator device” ..................................................................... 9
`C.
`Obviousness ............................................................................ 10
`Overview of the ’642 patent ............................................................ 11
`A.
`Embodiment 1 – Transmitting a Key Code from a Key Code
`Generator to a Remote Control Device ................................... 13
`Embodiment 2 – Transmitting a Key Code from a Key Code
`Generator to an Electronic Consumer Device ......................... 16
`Background of the Technology ....................................................... 17
`A.
`Infrared Remote Controls and Controlling Electronic Consumer
`Devices Were Well-Known .................................................... 18
`Controlling Electronic Devices Using Key Codes Was Well-
`Known .................................................................................... 25
`Transmitting Key Codes From Electronic Devices Other Than
`Remote Controls Was Well-Known ........................................ 28
`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
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`
`
`- i -
`
`

`

`
`
`
`
`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`GROUND 1: Claims 1, 3, 4, 6, 8, and 9 of the ’642 Patent are
`Unpatentable under 35 U.S.C. § 103 OVER Mishra In view of
`Dubil ............................................................................................... 51
`A. Overview of Mishra ................................................................ 52
`B. Mishra in view of Dubil discloses Embodiment 1 ................... 54
`C.
`Independent Claim 1 ............................................................... 59
`[1.P] “A method comprising:” ................................................................. 59
`
`[1.1] “receiving a keystroke indicator signal from a remote control device,
`
`wherein the keystroke indicator signal indicates a key on said remote
`control device that a user has selected;” .................................................. 61
`[1.2] “generating a key code within a key code generator device using the
`keystroke indictor signal;”....................................................................... 62
`[1.3] “modulating said key code onto a carrier signal, thereby generating a
`key code signal; and” .............................................................................. 65
`[1.4] “transmitting said key code signal from said key code generator
`device to said remote control device.” ..................................................... 67
`D.
`Claim 3 ................................................................................... 69
` “The method of claim 1, wherein said key code consists of a binary
`number.” ................................................................................................. 69
`E.
`Claim 4 ................................................................................... 70
` “The method of claim 1, wherein said key code comprises a binary
`number and timing information, and wherein said timing information
`defines how said binary number is modulated in (c) onto said carrier
`signal.” .................................................................................................... 70
`F.
`Claim 6 ................................................................................... 75
`[6.P] “The method of claim 1, wherein said carrier signal is in a radio
`
`frequency band, wherein said key code signal is received by said remote
`control device, and wherein said method further comprises:” .................. 75
`[6.1] “modulating said key code onto a second carrier signal, thereby
`generating a second key code signal, said modulating being performed on
`said remote control device wherein said second carrier signal is in an
`infrared frequency band; and” ................................................................. 76
`[6.2] “transmitting said second key code signal from said remote control
`device to an electronic consumer device.” ............................................... 79
`
`VII.
`
`
`
`
`
`
`
`- ii -
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`Claim 8 ................................................................................... 81
`G.
` “The method of claim 1, wherein said key code generated in (b) is part of
`a codeset, and wherein said remote control device does not store said
`codeset.” ................................................................................................. 81
`H.
`Claim 9 ................................................................................... 81
` “The method of claim 8, wherein said codeset comprises timing
`information and a plurality of key codes, and wherein said timing
`information describes a digital one and a digital zero.” ........................... 81
`VIII. GROUND 2: Claims 2, 22-25 of the ’642 Patent are Unpatentable
`under 35 U.S.C. § 103 Over Rye In view of Dubil .......................... 82
`A. Overview of Rye ..................................................................... 83
`B.
`Rye in view of Dubil discloses Embodiment 2 ........................ 85
`C.
`Independent Claim 2 ............................................................... 88
`[2.P] “A method comprising:” ................................................................. 88
`
`[2.1] “receiving a keystroke indicator signal from a remote control device,
`
`wherein the keystroke indicator signal indicates a key on said remote
`control device that a user has selected;” .................................................. 89
`[2.2] “generating a key code within a key code generator device using the
`keystroke indictor signal;”....................................................................... 91
`[2.3] “modulating said key code onto a carrier signal, thereby generating a
`key code signal; and” .............................................................................. 95
`[2.4] “transmitting said key code signal from said key code generator
`device to an electronic consumer device.” ............................................... 97
`D.
`Claim 22 ................................................................................. 98
` “The method of claim 2, wherein said key code consists of a binary
`number.” ................................................................................................. 98
`E.
`Claim 23 ................................................................................. 99
` “The method of claim 2, wherein said key code comprises a binary
`number and timing information, and wherein said timing information
`defines how said binary number is modulated in (c) onto said carrier
`signal.” .................................................................................................... 99
`F.
`Claim 24 ............................................................................... 104
`
`
`
`
`
`
`
`
`
`- iii -
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
` “The method of claim 2, wherein said key code generated in (b) is part of
`a codeset, and wherein said remote control device does not store said
`codeset.” ............................................................................................... 104
`G.
`Claim 25 ............................................................................... 105
` “The method of claim 24, wherein said codeset comprises timing
`information and a plurality of key codes, and wherein said timing
`information describes a digital one and a digital zero.” ......................... 105
`Ground 3: Claims 1, 2, 3, 4, 6, 8, 9, and 22-25 of the ’642 Patent are
`Unpatentable under 35 U.S.C. § 103 over Caris In View of
`Skerlos. ......................................................................................... 110
`A.
`Caris in view of Skerlos discloses Embodiment 1 ................. 111
`B.
`Caris in view of Skerlos discloses Embodiment 2 ................. 117
`C.
`Independent claim 1 .............................................................. 121
`[1.P] “A method comprising:” ............................................................... 121
`
`[1.1] “receiving a keystroke indicator signal from a remote control device,
`
`wherein the keystroke indicator signal indicates a key on said remote
`control device that a user has selected;” ................................................ 122
`[1.2] “generating a key code within a key code generator device using the
`keystroke indictor signal;”..................................................................... 123
`[1.3] “modulating said key code onto a carrier signal, thereby generating a
`key code signal; and” ............................................................................ 124
`[1.4] “transmitting said key code signal from said key code generator
`device to said remote control device.” ................................................... 127
`D.
`Claim 3 ................................................................................. 127
` “The method of claim 1, wherein said key code consists of a binary
`number.” ............................................................................................... 127
`E.
`Claim 4: “The method of claim 1, wherein said key code
`comprises a binary number and timing information, and
`wherein said timing information defines how said binary
`number is modulated in (c) onto said carrier signal.” ............ 128
`Claim 6 ................................................................................. 131
`F.
`[6.P] “The method of claim 1, wherein said carrier signal is in a radio
`
`frequency band, wherein said key code signal is received by said remote
`control device, and wherein said method further comprises:” ................ 131
`
`
`
`
`
`IX.
`
`
`
`
`
`- iv -
`
`

`

`
`
`
`
`H.
`
`I.
`
`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`[6.1] “modulating said key code onto a second carrier signal, thereby
`generating a second key code signal, said modulating being performed on
`said remote control device wherein said second carrier signal is in an
`infrared frequency band; and” ............................................................... 132
`[6.2] “transmitting said second key code signal from said remote control
`device to an electronic consumer device.” ............................................. 135
`G.
`Claim 8: “The method of claim 1, wherein said key code
`generated in (b) is part of a codeset, and wherein said remote
`control device does not store said codeset.” .......................... 136
`Claim 9: “The method of claim 8, wherein said codeset
`comprises timing information and a plurality of key codes, and
`wherein said timing information describes a digital one and a
`digital zero.” ......................................................................... 137
`Independent Claim 2 ............................................................. 138
`[2.P] “A method comprising:” ............................................................... 138
`[2.1] “receiving a keystroke indicator signal from a remote control device,
`wherein the keystroke indicator signal indicates a ke[y] on said remote
`control device that a user has selected;” ................................................ 139
`[2.2] “generating a key code within a key code generator device using the
`keystroke indictor signal;”..................................................................... 141
`[2.3] “modulating said key code onto a carrier signal, thereby generating a
`key code signal; and” ............................................................................ 142
`[2.4] “transmitting said key code signal from said key code generator
`device to an electronic consumer device.” ............................................. 144
`Claim 22 ............................................................................... 145
`J.
` “The method of claim 2, wherein said key code consists of a binary
`number.” ............................................................................................... 145
`K.
`Claim 23 ............................................................................... 145
` “The method of claim 2, wherein said key code comprises a binary
`number and timing information, and wherein said timing information
`defines how said binary number is modulated in (c) onto said carrier
`signal.” .................................................................................................. 145
`L.
`Claim 24 ............................................................................... 146
`
`
`
`
`
`
`
`
`
`- v -
`
`

`

`X.
`XI.
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
` “The method of claim 2, wherein said key code generated in (b) is part of
`a codeset, and wherein said remote control device does not store said
`codeset.” ............................................................................................... 146
`M. Claim 25 ............................................................................... 146
` “The method of claim 24, wherein said codeset comprises timing
`information and a plurality of key codes, and wherein said timing
`information describes a digital one and a digital zero.” ......................... 146
`[Intentionally Left Blank] .............................................................. 146
`GROUND 1 (CONTINUED): Claims 7, 19, and 20 of the ’642
`Patent are Unpatentable under 35 U.S.C. § 103 OVER Mishra In
`view of Dubil ................................................................................ 146
`A.
`Claim 7 ................................................................................. 147
` “The method of claim 6, further comprising: (g) pressing a power-on key
`of said remote control device causing said remote control device to
`transmit said keystroke indicator signal that is received in (a), wherein the
`pressing in (g) causes said electronic consumer device to turn on.” ....... 147
`B.
`Independent Claim 19 ........................................................... 150
` Claim Construction for “Means for receiving a key code from said RF
`receiver and for sending said key code to said IR transmitter… wherein
`said means is a microcontroller” ........................................................... 150
`[19.P]: “A remote control device comprising:” ...................................... 152
`[19.1]: “a keypad;” ................................................................................ 152
`[19.2]: “an RF receiver;” ....................................................................... 154
`[19.3]: “an IR transmitter; and” ............................................................. 156
`[19.4]: “means for receiving a key code from said RF receiver and for
`sending said key code to said IR transmitter such that said key code is
`modulated onto an IR carrier signal, said IR carrier signal with said key
`code modulated thereon being transmitted from said remote control device
`by said IR transmitter, wherein said means is a microcontroller.” ......... 158
`C.
`Independent Claim 20 ........................................................... 161
`[20.P]: “A method comprising:” ............................................................ 161
`
`[20.1]: “receiving a keystroke indicator signal from a remote control
`
`device;” ................................................................................................. 162
`
`
`
`
`
`
`
`
`
`- vi -
`
`

`

`
`
`XII.
`
`
`
`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`[20.2] “using said keystroke indicator signal to generate a key code,
`wherein a key code generator device generates said key code;” ............ 163
`[20.3] “modulating said key code onto a carrier signal and thereby
`generating a key code signal; and” ........................................................ 165
`[20.4] “transmitting said key code signal from said key code generator
`device to said remote control device, wherein said remote control device
`transmits said key code signal to an electronic consumer device.” ........ 167
`GROUND 2 (CONTINUED): Claim 5 of the ’642 Patent are
`Unpatentable under 35 U.S.C. § 103 Over Rye In view of Dubil .. 170
`A.
`Claim 5 ................................................................................. 171
` “The method of claim 2, further comprising: (e) pressing a power-on key
`of said remote control device causing said remote control device to
`transmit said keystroke indicator signal that is received in (a), wherein
`said key code signal transmitted in (d) is received onto said electronic
`consumer device, and wherein said pressing in (e) causes said electronic
`consumer device to turn on.” ................................................................. 171
`XIII. Other evidence relevant to obviousness ......................................... 172
`
`
`
`- vii -
`
`

`

`
`
`Declaration of Dr. Samuel H. Russ
`U.S. Pat. No. 7,589,642
`
`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.
`
`7,589,642 (“the ’642 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
`
`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 managing
`
`
`
`- 2 -
`
`

`

`
`
`a group that developed a new coaxial home networking system. The 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.
`
`III. MATERIALS CONSIDERED
`In formulating my opinions, I have relied upon my training, knowledge,
`
`
`
`
`- 3 -
`
`

`

`
`
`and experience that are relevant to the ’642 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
`1016
`
`1017
`
`Description
`U.S. Patent No. 7,589,642 to Mui (“’642 Patent”).
`Curriculum Vitae of Dr. Samuel Russ.
`U.S. Patent Publication No. 2001/0005197 to Mishra (“Mishra”).
`U.S. Patent No. 8,132,105 to Dubil et al. (“Dubil”).
`U.S. Patent Publication No. 2004/0080428 to Rye et al. (“Rye”).
`U.S. Patent No. 7,562,128 to Caris et al. (“Caris”).
`U.S. Patent No. 4,426,662 to Skerlos et al. (“Skerlos”).
`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 Contol,” 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.
`“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)
`
`
`
`- 4 -
`
`

`

`
`
`Exhibit No.
`
`1018
`
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`1027
`
`Description
`“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 B2 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”)
`
`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, useful,
`
`and non-obvious over the prior art for it to be patentable. I understand that in this
`
`proceeding Roku has the burden of proving that the challenged claims are
`
`unpatentable over the prior art by a preponderance of the evidence. I understand that
`
`“a preponderance of the evidence” is evidence sufficient to show that a fact is more
`
`likely true than it is not.
`
`
`
`- 5 -
`
`

`

`
`
`
`
`In determining the patentability of a claim, I understand that the first
`
`step is to construe the claim from the perspective of a person of ordinary skill in the
`
`art (“POSA”) to determine its meaning and scope. Once construed, I understand that
`
`the claim is to be considered against the prior art from the perspective of a POSA as
`
`further summarized below.
`
`A. Level of ordinary skill
`I understand that a claim must be analyzed from the perspective of a
`
`
`POSA at the time the claimed invention was allegedly invented by the patentee.
`
`Roku’s counsel has asked me to consider the time period shortly before December
`
`16, 2003, which is the earliest priority date of the ’642 patent, as the potential date
`
`of invention of the claims of the ’642 patent.
`
`
`
`In ascertaining the appropriate level of ordinary skill in the art of a
`
`patent, I understand that several factors should be considered including (1) the types
`
`of problems encountered in the art; (2) the prior art solutions to those problems; (3)
`
`the rapidity with which innovations are made; (4) the sophistication of the
`
`technology; and (5) the educational level of active workers in the field of the patent.
`
`
`
`I further understand that a POSA is a person who is presumed to be
`
`aware of the pertinent art, thinks along conventional wisdom in the art, and is a
`
`person of ordinary creativity. Accordingly, a POSA of the ’642 patent would have
`
`
`
`- 6 -
`
`

`

`
`
`had general knowledge of remote control devices, consumer electronic devices, and
`
`various related technologies as of December 16, 2003.
`
` Thus based on my experience and my understanding of the legal
`
`principles summarized here, I believe that a POSA in the context of the ’642 patent
`
`at the time of the patent’s earliest priority date of December 16, 2003, would have
`
`had a bachelor’s degree in electrical engineering or equivalent degree with two years
`
`of work experience relating to communications and consumer electronics. Well
`
`before December 16, 2003, my level of skill in the art was at least that of a POSA,
`
`as discussed above.
`
`B. Claim construction
`I have been informed by Roku’s counsel that in this proceeding, the
`
`
`United States Patent and Trademark Office (“PTO”) interprets the claims of an
`
`unexpired patent, such as the ’642 patent, under the same standards used in a United
`
`States District Court. This includes interpreting the claims through the lens of POSA
`
`in view of the entire patent. Accordingly, in formulating my opinions, I have
`
`reviewed the claims of the ’642 patent as I perceive a POSA would have understood
`
`them at the time of the earliest priority date (December 16, 2003) of the ’642 patent,
`
`after reading the entire ’642 patent specification. I have also reviewed a Markman
`
`order provided by the district court in a pending proceeding also directed to the ’642
`
`patent.
`
`
`
`- 7 -
`
`

`

`
`
` Finally, I have been informed that claim construction is ultimately a
`
`question of law. Accordingly, I understand that a tribunal may choose to construe
`
`certain terms to provide clarity to the proceeding should any dispute arise between
`
`the parties over how a term should be construed. If the tribunal chooses to construe
`
`any term, then I reserve my right to review and potentially modify any opinions
`
`below in view of such constructions.
`
`“Key code”
`
`I understand that in the related district court proceeding, Patent Owner
`
`
`
`and Petitioner have previously agreed to a construction for “key code” as being a “a
`
`code corresponding to the function of an electronic device, optionally including
`
`timing information.” EX1010, Markman order, 12. While a POSA reading the term
`
`“key code” would understand the term as having its plain and ordinary meaning, the
`
`combination of references described below in Grounds 1-3 render obvious the claims
`
`of the ’642 patent under its plain and ordinary meaning or the agreed-upon
`
`construction.
`
`“Keystroke indicator signal”
`
`I understand that in the related district court proceeding, Patent Owner
`
`
`
`and Petitioner have previously agreed to a construction for “keystroke indicator
`
`signal” and “keystroke indicator” as being a “a signal, distinct from a key code,
`
`corresponding to a pressed key [on a remote control].” EX1010, 12-13. While a
`
`
`
`- 8 -
`
`

`

`
`
`POSA reading the term “keystroke indicator signal” would understand the term as
`
`having its plain and ordinary meaning, the combination of references described
`
`below in Grounds 1-3 render obvious the claims of the ’642 patent under its plain
`
`and ordinary meaning or the agreed-upon construction.
`
`“Key code signal”
`
`I understand that in the related district court proceeding, Patent Owner
`
`
`
`has previously provided a construction for “key code signal” as being “a signal
`
`containing a key code.” EX1010, 13. I understand that the court considered this
`
`construction and provided its own construction of a “signal containing a modulated
`
`key code.” EX1010, 13-23. While a POSA reading the term “key code signal” would
`
`understand the term as having its plain and ordinary meaning, the combination of
`
`references described below in Grounds 1-3 render obvious the claims of the ’642
`
`patent under its plain and ordinary meaning or either the Patent Owner’s or the
`
`court’s constructions.
`
`“Key code generator device”
`
`I understand that from the Markman order set out in the corresponding
`
`
`
`district court proceeding, Patent Owner previously proposed a construction for “key
`
`code generator device” as being “an electronic consumer device, other than a remote
`
`control, that identifies a codeset and generates a key code from the identified
`
`codeset.” EX1010, 23. Patent Owner further stated that “key code generator device”
`
`
`
`- 9 -
`
`

`

`
`
`was not governed by 35 U.S.C. § 112(6), but to the extent 35 U.S.C. § 112(6)
`
`applied, the corresponding structure would be a “set-top box, television, a stereo
`
`radio, a digital video disk player, a video cassette recorder, a personal computer, a
`
`set-top cable television box or a set-top satellite box and equivalents thereof.”
`
`EX1010, 23.
`
` The court construed the claim as being subject to 35 U.S.C. § 112(6)
`
`and construed the corresponding function as “generate a key code” and the
`
`corresponding structure as Patent Owner’s proposed structure. The court also
`
`construed the “key code generator device” as performing the steps of “(1) identifying
`
`a codeset usable to communicate with an electronic consumer de