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
`_____________________
`
`
`SECOND PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,589,642
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`

`

`
`
`
`
`
`I.
`II.
`III.
`
`IV.
`V.
`
`VI.
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`TABLE OF CONTENTS
`
`B.
`
`C.
`
`D.
`
`Introduction ................................................................................................ 1
`Grounds for the Unpatentability of the ’642 patent..................................... 2
`Overview of the ’642 patent ....................................................................... 3
`A.
`Embodiment 1 – Transmitting a Key Code from a Key Code
`Generator to a Remote Control Device ................................................ 5
`Embodiment 2 – Transmitting a Key Code from a Key Code
`Generator to an Electronic Consumer Device ...................................... 8
`The Examiner Provided No Rationale for Allowance During
`Prosecution of the ’642 Patent ............................................................. 8
`The Claims Challenged in this Petition Were Never Considered
`by the Board ...................................................................................... 11
`Level of ordinary skill in the art ................................................................11
`Claim Construction ...................................................................................12
`A.
`“Key code” and “Keystroke indicator signal” .................................... 12
`B.
`“Key code signal” .............................................................................. 13
`C.
`“Key code generator device”.............................................................. 13
`D.
`“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” (Claim 19).............................................. 15
`GROUND 1 (CONTINUED): Claims 1, 6, 7, 19, and 20 of the ’642
`Patent are Unpatentable under 35 U.S.C. § 103 Over Mishra In view
`of Dubil .....................................................................................................16
`A. Overview of Mishra ........................................................................... 16
`B.
`Overview of Dubil ............................................................................. 18
`C.
`Independent Claim 1 .......................................................................... 20
`[1.P]: “A method comprising:” ................................................................20
`
`[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;” ..................................................21
`
`
`
`- i -
`
`

`

`
`
`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`[1.2] “generating a key code within a key code generator device using the
`keystroke indictor signal;”.......................................................................22
`[1.3] “modulating said key code onto a carrier signal, thereby generating a
`key code signal; and” ..............................................................................23
`[1.4] “transmitting said key code signal from said key code generator
`device to said remote control device.” .....................................................25
`D.
`Claim 6 .............................................................................................. 26
`[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:” ..................26
`[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” .................................................................27
`[6.2]: “transmitting said second key code signal from said remote control
`device to an electronic consumer device.” ...............................................28
`E.
`Claim 7: “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.” ...................................... 29
`Independent Claim 19 ........................................................................ 31
`F.
`[19.P]: “A remote control device, comprising:” .......................................31
`
`[19.1]: “a keypad;” ..................................................................................32
`
`[19.2]: “an RF receiver;” .........................................................................34
`
`[19.3]: “an IR transmitter; and” ...............................................................36
`
`[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.” ...........38
`G.
`Independent Claim 20 ........................................................................ 40
`GROUND 2 (CONTINUED): Claims 2 and 5 of the ’642 Patent are
`Unpatentable under 35 U.S.C. § 103 Over Rye In view of Dubil ..............43
`
`
`
`
`
`- ii -
`
`
`
`
`
`VII.
`
`
`
`

`

`
`
`
`
`VIII.
`
`IX.
`X.
`XI.
`
`
`
`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`A. Overview of Rye ................................................................................ 43
`A.
`Independent Claim 2 .......................................................................... 45
`[2.P] “A method comprising:” .................................................................45
`
`[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;” ..................................................45
`[2.2] “generating a key code within a key code generator device using the
`keystroke indictor signal;”.......................................................................47
`[2.3] “modulating said key code onto a carrier signal, thereby generating a
`key code signal; and” ..............................................................................48
`[2.4] “transmitting said key code signal from said key code generator
`device to an electronic consumer device.” ...............................................50
`B.
`Claim 5: “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.”.............................................................. 51
`Petitioner is unaware of any secondary considerations of non-
`obviousness ...............................................................................................51
`Conclusion ................................................................................................52
`Standing (37 C.F.R. § 42.104(a)) ..............................................................52
`Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ..............................................52
`A.
`Real Party In Interest (37 C.F.R. § 42.8(b)(1)) ................................... 52
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ........................................... 52
`C.
`Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3)) .......................... 54
`D.
`Service Information (37 C.F.R. § 42.8(b)(4)) ..................................... 54
`
`
`
`- iii -
`
`

`

`
`
`
`
`Exhibit No.
`1001
`1002
`
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`1015
`1016
`
`1017
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`PETITIONER’S EXHIBIT LIST
`
`Description
`U.S. Patent No. 7,589,642 to Mui (“’642 Patent”)
`Prosecution History of U.S. Patent No. 7,589,642 (“Prosecution
`History”)
`Declaration of Dr. Samuel Russ in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,589,642
`Curriculum Vitae of Dr. Samuel Russ
`U.S. Patent Publication No. 2001/0005197 to Mishra et al.
`(“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 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)
`
`
`
`- iv -
`
`

`

`
`
`
`
`Exhibit No.
`
`1018
`
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`1027
`1028
`
`1029
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`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 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”)
` Infringement Contentions Exhibit B-1, Universal Electronics Inc.
`v. Roku, Inc., 8:18-cv-01580 (C.D. Cal.)
`Infringement Contentions Exhibit A-1, Universal Electronics Inc.
`v. Roku, Inc., 8:18-cv-01580 (C.D. Cal.)
`
`
`
`- v -
`
`

`

`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`Roku Inc. petitions for inter partes review of claims 1, 2, 5-7, 19, and 20 of
`
`United States Patent No. 7,589,642 to Mui, titled “Relaying Key Code Signals
`
`Through a Remote Control Device.” EX1001, ’642 patent. The Petition
`
`demonstrates that claims 1, 2, 5-7, 19, and 20 of the ’642 patent are unpatentable.
`
`I.
`
`INTRODUCTION
`The ’642 patent allegedly solved problems related to programming remote
`
`control devices to control electronic consumer devices. But, the ’642 patent does
`
`not propose any novel or nonobvious solutions. Rather, its use of key code
`
`generator devices—such as set-top boxes, or the like—to facilitate the transmission
`
`of key codes to control electronic consumer devices was already well-known in the
`
`art. EX1003, Russ Decl., ¶¶39-102.
`
`The ’642 patent describes the problem of remote control devices having
`
`insufficient memory to store thousands of codesets related to different electronic
`
`consumer devices. EX1001, 1:47-50. For example, 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., 1:25-28. To solve this alleged problem, the ’642 patent proposes two well-
`
`known solutions.
`
`First, the ’642 patent proposes transmitting a key code from a key code
`
`generator device to a remote control device so that the remote control can re-
`
`
`
`- 1 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`transmit the key code to an electronic consumer device. See Section III.A. Second,
`
`the ’642 patent proposes transmitting a key code from a key code generator device
`
`directly to an electronic consumer device in response to receiving a command from
`
`the remote control. See Section III.B. Not only were these solutions trivial, but they
`
`were also explicitly disclosed by U.S. Patent Publication Nos. 2001/0005197
`
`(EX1005, “Mishra”) and 2004/0080428 (EX1007, “Rye”). Additionally, U.S.
`
`Patent No. 8,132,105 (EX1006, “Dubil”) discloses other well-known and simple
`
`claimed communication techniques that are not central to the invention and would
`
`have been known to a person of ordinary skill in the art (“POSA”), such as
`
`modulation techniques for modulating a key code onto a carrier signal, the binary
`
`format of key codes, and timing parameters associated with key codes.
`
`Accordingly, there is at least a reasonable likelihood that at least one claim
`
`of the ’642 patent is unpatentable, as shown herein. Petitioner respectfully requests
`
`that the Board institute trial on the grounds set forth herein and determine that
`
`claims 1-2, 5-7, 19, and 20 of the ’642 patent are unpatentable.
`
`II. GROUNDS FOR THE UNPATENTABILITY OF THE ’642 PATENT
`
`Roku, Inc. (“Roku”) requests inter partes review of claims 1-2, 5-7, 19, and
`
`20 of the ’642 patent and a determination that those claims are unpatentable based
`
`on the following grounds:
`
`
`
`
`
`- 2 -
`
`

`

`
`Basis
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`Claims
`Challenged
`1, 6, 7, 19, 20
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`2, 5
`
`Prior Art
`
`Mishra (EX1005)
`Dubil (EX1006)
`Rye (EX1007)
`Dubil (EX1006)
`
`
`
`Ground
`
`1
`
`2
`
`
`
`The earliest priority date of the ’642 patent, on its face, is December 16,
`
`2003. See EX1001, (22). The prior art references cited for each ground above
`
`qualify as prior art to the ’642 patent for the following reasons:
`
`• Mishra (EX1005) is prior art under at least pre-AIA 35 U.S.C. §§ 102(a),
`
`102(b), and 102(e) because it was filed on February 17, 2001 and
`
`published on June 28, 2001, both dates being before the earliest priority
`
`date of the ’642 patent.
`
`• Dubil (EX1006) is prior art under at least pre-AIA 35 U.S.C. § 102(e)
`
`because it was filed on October 10, 2000, more than one year before the
`
`earliest priority date of the ’642 patent.
`
`• Rye (EX1007) is prior art under at least pre-AIA 35 U.S.C. § 102(e)
`
`because it was filed on October 25, 2002, more than one year before the
`
`earliest priority date of the ’642 patent.
`
`III. OVERVIEW OF THE ’642 PATENT
`
`The ’642 patent generally relates to conventional remote control devices and
`
`controlling electronic consumer devices using key codes corresponding to device
`
`
`
`- 3 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`functions. See EX1001, Abstract, 1:6-9. As described in the Background section of
`
`the ’642 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., 1:25-28. As admitted by the ’642 patent, it was well-
`
`known to group key codes into codesets having different bit patterns and timing
`
`information corresponding to different functions of the electronic consumer device.
`
`See id., 1:28-38. 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., 1:34-38.
`
`According to the ’642 patent, one limitation of the widespread use of
`
`codesets was the existence of “thousands of codesets” used to control electronic
`
`consumer devices. Id., 1:45-47. The ’642 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., 1:47-50.
`
`In response, the ’642 patent describes and claims two well-known solutions
`
`using a “key code generator device” to manage codesets and generate key codes as
`
`depicted in Figure 1. See id., 1:62-2:6. This Petition describes these solutions as
`
`Embodiment 1 and Embodiment 2.
`
`
`
`- 4 -
`
`

`

`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`EX1001, FIG. 1 (annotated).
`
`
`
`A. Embodiment 1 – Transmitting a Key Code from a Key Code
`Generator to a Remote Control Device
`Embodiment 1 describes the well-known process of transmitting a key code
`
`from a key code generator (e.g., a set top box) to a remote control device. The
`
`remote control device then re-transmits the key code to an electronic consumer
`
`device. See EX1001, 1:59-2:15.
`
`
`
`- 5 -
`
`

`

`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`To initiate this process, a user presses a key on the remote control. Id., 3:36-
`
`37. Pressing a key causes the remote control device to transmit a “keystroke
`
`indicator signal 16” corresponding to the pressed key to the key code generator
`
`device 12. See id., 3:46-50. As admitted by the ’642 patent, the remote control uses
`
`one of a number of “commonly used modulation techniques” to modulate an
`
`identification code onto the keystroke indicator signal. Id., 4:8-14. In response to
`
`receiving the keystroke indicator signal from remote control device, key code
`
`generator device 12 returns a key code to the remote control device. Id., 4:15-26.
`
`According to the ’642 patent, the key code generator device is a set-top box
`
`that is capable of communicating with a database of codesets via the Internet. See
`
`id., 8:28-43. The set-top box downloads new codesets and stores them on a mass
`
`storage hard disk within the set-top box. See id., 8:38-43.
`
`After determining the key code, the key code generator device modulates the
`
`key code onto a carrier signal to generate a “first key code signal 19.” See id., 4:35-
`
`37. Figure 5 depicts a key code signal generated from the well-known technique of
`
`pulse width modulation. See id., 4:42-47, 4:66-5:5.
`
`
`
`- 6 -
`
`

`

`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`EX1001, FIG. 5.
`
`
`
`After modulating the key code onto a carrier signal to generate a first key
`
`code signal, the key code generator device transmits the first key code signal to the
`
`remote control device. See EX1001, 5:37-40. The remote control device then
`
`receives the first key code signal and transmits the key code to the electronic
`
`consumer device in the form of a second key code signal. Id., 5:41-44. The ’642
`
`patent depicts the waveform diagram of the second key code signal as being the
`
`same as the well-known waveform diagram shown in Figure 5 for key code signal
`
`19. Id., 5:60-63. The electronic consumer device then receives the second key code
`
`signal 22, recovers the key code, and performs the function desired by the user. See
`
`id., 5:64-6:2. In this way, the remote control device can be used to control a new
`
`electronic consumer device using key codes transmitted from key code generator
`
`device 12. See id., 8:43-48.
`
`
`
`- 7 -
`
`

`

`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`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
`
`B.
`
`electronic consumer device in response to receiving a command from the remote
`
`control device and sending a key code signal directly to the electronic consumer
`
`device. EX1001, 6:7-9.
`
`In particular, a user presses a key on the remote control, and the remote
`
`control transmits a keystroke indicator signal to the key code generator device 12.
`
`Id., 6:19-23. The key code generator device then determines which key code of the
`
`identified codeset corresponds to the pressed key. Id., 6:24-30. The key code
`
`generator device then performs the same conventional modulation of the key code
`
`onto a carrier signal as described in Embodiment 1 to generate a key code signal.
`
`Id.
`
`In contrast to Embodiment 1, here, the key code generator device then
`
`transmits this key code signal directly to the electronic consumer device. Id., 6:36-
`
`38; EX1003, ¶¶36-38. Upon receiving the key code signal, the electronic consumer
`
`device performs the corresponding instruction. See EX1001, 6:38-42.
`
`C. The Examiner Provided No Rationale for Allowance During
`Prosecution of the ’642 Patent
`The Examiner did not provide any rationale or explanation for allowing the
`
`’642 patent. The Examiner initially rejected the claims with a Non-Final Office
`
`
`
`- 8 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`Action mailed on June 6, 2006 and a Final Office Action mailed October 19, 2006.
`
`In response to the Final Office Action, the Applicant submitted a response leading
`
`to an Advisory Action mailed on February 7, 2007. Throughout this period, the
`
`Examiner indicated that certain claims were allowable.1 These claims were
`
`particularly narrow as seen from claim 11 (reproduced below). EX1002, ’642 File
`
`History, 63. The other broader claims, such as claims 1 and 2, were rejected.
`
`EX1002, 63.
`
`
`
`The Applicant continued to pursue the other broader claims via an appeal to
`
`the Board. While the Board reversed the Examiner’s rejection of claims 1 and 2 for
`
`not demonstrating a sufficient teaching of modulating a key code onto a carrier
`
`
`1 Claims 11-12 and 17 based on the original numbering were allowed.
`
`EX1002, 43-55.
`
`
`
`- 9 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`signal, the Board supplied another rejection adding an additional reference. See
`
`EX1002, 308-11.
`
`In response to the Board’s decision, the Applicant amended the claims,
`
`including claim 1, but did not amend or provide arguments related to claim 2. See
`
`id., 315. These amendments are displayed below.
`
`EX1002, 315.
`
`
`
`In view of these amendments, the Examiner reasserted the Board’s rejection
`
`of claim 1 with the same references, but indicated that claim 2 was allowable
`
`without providing any additional explanation. See EX1002, 327-28. Further, the
`
`Examiner did not provide any additional rationale in the Notice of Allowance. See
`
`
`
`- 10 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`id., 344-50. In view of this silence, the Examiner provided no explanation for
`
`suddenly allowing claim 2 despite the same claim being present throughout the
`
`entirety of prosecution. In view of this apparently erroneous allowance, the
`
`Applicant amended claim 2 to include the elements of claim 1 resulting in the
`
`current version of claim 1 as listed in the ’642 patent. See id., 333.
`
`D. The Claims Challenged in this Petition Were Never Considered
`by the Board
`A past petition for Inter Partes Review was filed in IPR2014-01082. The
`
`petition presented several grounds of unpatentability directed to claims 2, 5, 22,
`
`and 23 of the ’642 patent. See Universal Remote Control, Inc. v. Universal
`
`Electronics, Inc., IPR2014-01082, DI, 4-5 (P.T.A.B., December 18, 2014). The
`
`Board denied institution, stating that the petition did not adequately describe the
`
`teaching of a modulation of a key code onto a carrier signal. See id. at 6-8.
`
`Petitioner filed a Petition in IPR2019-01612, which was instituted on April
`
`1, 2020. The Board instituted trial on all challenged claims: claim 1-4, 6, 8, 9, and
`
`22-25. Petitioner seeks to join the instant Petition with the IPR2019-01612
`
`proceeding. The instant Petition demonstrates the unpatentability of claims 5, 7,
`
`19, and 20–claims not previously considered by the Board.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art, at the time the ’642 patent was filed,
`
`would have a bachelor’s degree in electrical engineering or equivalent degree with
`
`
`
`- 11 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`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. 51340, 51340-
`
`359 (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 1303, 1312-13.
`
`The parties are currently involved in a parallel civil action involving the
`
`’642 patent. See Section XIII. In this proceeding the parties agreed upon
`
`constructions for “key code” and “keystroke indicator signal” but requested a
`
`district court construction for the terms “key code signal” and “key code generator
`
`device.” 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.
`
`“Key code” and “Keystroke indicator signal”
`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.”
`
`
`
`- 12 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`EX1010, Markman order, 12. Patent Owner and Petitioner have also agreed on a
`
`construction for the claim term “keystroke indicator signal” (and “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 combination of references described in the Grounds below render
`
`obvious the challenged claims of the ’642 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. While Petitioner does not set forth or advocate for any specific
`
`construction of “key code signal” in this Petition, the combination of references
`
`described in the Grounds below render obvious the challenged claims of the ’642
`
`patent under either of these constructions.
`
`“Key code generator device”
`C.
`In the parallel civil action, Patent Owner 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
`
`
`
`- 13 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`identified codeset.” EX1010, 23. Patent Owner further argued that “key code
`
`generator device” 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.” Id., 23-24.
`
`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 device”
`
`and “(2) identifying the key code corresponding to a pressed key for that codeset.”
`
`Id., 23-30 (citing EX1001, 9:60–66, 3:9–12, 7:4–43, 7:60–8:18, 8:28–9:14, 4:24–
`
`26, 6:24–25). While Petitioner does not set forth or advocate for any specific
`
`construction of “key code generator device” in this Petition, the combination of
`
`references described in the Grounds below render obvious the challenged claims of
`
`the ’642 patent under either of these constructions.
`
`
`
`- 14 -
`
`

`

`
`
`
`
`D.
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`“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” (Claim 19)
`Claim 19 recites a “means-plus-function” element with the function of
`
`“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.”
`
`Under 37 C.F.R. § 42.104(b)(3), the Petition is required to provide a claim
`
`construction identifying the structure for this claimed function. As recited in claim
`
`19 itself and in various portions of the specification, the structure corresponding to
`
`this function is a “microcontroller.” See EX1001, 4:63-5:3, 6:49-53, 12:36-37;
`
`EX1003, ¶¶270-75.
`
`Claim 19 explicitly recites the structure corresponding to the function as
`
`being a “microcontroller.” See EX1001, 12:36-37. The specification of the ’642
`
`patent provides further support and states that its “[r]emote control device 11”
`
`includes “a microcontroller integrated circuit (for example, a Z8 microcontroller
`
`available from Zilog, Inc. of San Jose, Calif.)” See EX1001, 6:49-53 (emphasis
`
`added). To perform the function of transmitting the key code, the specification
`
`further explains that the “microcontroller on remote control device 11 uses timing
`
`information associated with the commonly used codeset to generate a pulse width
`
`modulated keystroke indicator signal 16.” See EX1001, 3:63-4:3 (emphasis added).
`
`
`
`- 15 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`Thus, the structure corresponding to the claimed function is a “microcontroller.”
`
`EX1003, ¶¶270-75.
`
`VI. GROUND 1 (CONTINUED): CLAIMS 1, 6, 7, 19, AND 20 OF THE
`’642 PATENT ARE UNPATENTABLE UNDER 35 U.S.C. § 103 OVER
`MISHRA IN VIEW OF DUBIL
`A POSA would have found claims 1, 6, 7, 19, and 20 of the ’642 patent
`
`obvious in light of the disclosures of Mishra (EX1005) and Dubil (EX1006).
`
`EX1003, ¶¶103-31, 140-49, 263-303.2 Claim 7 depends from claim 6, which
`
`depends from independent claim 1. Claims 19 and 20 are independent claims.
`
`A. Overview of Mishra
`Similar to the ’642 patent, Mishra describes a remote control operating as a
`
`relay that (1) receives control codes from a set-top box and (2) transmits the
`
`control codes to an electronic consumer device, such as a television. See EX1005,
`
`¶37; EX1003, ¶¶104-07. Mishra also describes the same problem as the ’642 patent
`
`by describing the undesirable complexity that arises when programming universal
`
`remote controls to control multiple electronic devices. Compare EX1005, ¶¶2, 4-5
`
`with EX1001, 1:39-50. To solve this issue, Mishra describes a similar solution as
`
`
`2 The combination of Mishra and Dubil teaches all of the elements of claims
`
`1, 6, 7, 19, and 20 under both Patent Owner’s and the court’s claim constructions
`
`of “key code signal” and “key code generator device.” See Section V.
`
`
`
`- 16 -
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642
`
`
`
`the one claimed in the ’642 patent: relaying a control code through a remote
`
`control to control an electronic device. See EX1005, ¶37.
`
`Figure 1 from Mishra (reproduced and annotated below) depicts two
`
`communication pathways.
`
`EX1005, FI