Case IPR2019-01614
`U.S. Patent 9,911,325
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS INC.,
`Patent Owner.
`
`____________
`
`Case IPR2019-01614
`U.S. Patent 9,911,325
`
`____________
`
`DECLARATION OF DR. MICHAEL D. SPRENGER IN SUPPORT OF
`PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,911,325
`
`
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case IPR2019-01614
`U.S. Patent 9,911,325
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`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ................................................................................................................. 1
`I.
`II. QUALIFICATIONS .............................................................................................................. 2
`III. MATERIALS CONSIDERED .............................................................................................. 9
`IV. LEGAL PRINCIPLES ......................................................................................................... 10
`A.
`Priority ............................................................................................................................ 10
`B. Anticipation .................................................................................................................... 11
`C. Obviousness ................................................................................................................... 12
`D. Claim Construction ........................................................................................................ 13
`V.
`PERSON OF ORDINARY SKILL IN THE ART .............................................................. 13
`VI. BACKGROUND ................................................................................................................. 15
`A.
`Technology Background ................................................................................................ 15
`1. Remote Control of Electronic Devices ....................................................................... 15
`2. Universal Remote Controls ........................................................................................ 22
`B. U.S. Patent No. 9,911,325 .............................................................................................. 23
`C.
`Prosecution History ........................................................................................................ 28
`1. Applicant distinguished translating or converting a control signal from “receiving a
`keystroke indicator signal” and then “generating a key code within a key code generator
`device using the keystroke indicator signal” ....................................................................... 28
`2. Applicant distinguished “a key code signal” from “a codeset” .................................. 31
`3. Appeal Board rejected Examiner’s argument that prior art disclosed modulating a key
`code onto a carrier signal ..................................................................................................... 32
`D.
`Prior Denial of Institution for Inter Partes Review of ’642 Patent (IPR2014-01082) .. 33
`VII. Decision to Institute the Present Inter Partes Review ....................................................... 34
`VIII.
`ASSERTED PRIOR ART REFERENCES .................................................................... 35
`A. U.S. Patent Application Publication No. 2004/0080428 (“Rye”) .................................. 35
`B. U.S. Patent No. 4,426,662 (“Skerlos”) ........................................................................... 36
`C. U.S. Patent No. 7,562,128 (“Caris”) .............................................................................. 37
`D. U.S. Patent No. 8,132,105 (“Dubil”).............................................................................. 38
`IX. OPINIONS........................................................................................................................... 40
`A.
`Terms for Claim Construction........................................................................................ 40
`1.
`“key code” .................................................................................................................. 40
`2.
`“keystroke indicator” .................................................................................................. 41
`
`i
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`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
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`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case IPR2019-01614
`U.S. Patent 9,911,325
`3.
`“key code signal” ........................................................................................................ 42
`4.
`“generate a key code using the keystroke indicator signal” ....................................... 44
`B. Ground 1: Rye and Skerlos ............................................................................................ 46
`1. A POSITA would not have combined Rye with Dubil .............................................. 46
`2. Rye and Skerlos do not render obvious Claim 1 ........................................................ 52
`Rye and Skerlos do not disclose [1.3]: “a processing device coupled to the receiver
`a.
`and the transmitter” ............................................................................................................. 53
`b. Rye and Skerlos do not disclose [1.4]: “a memory storing instructions executable by
`the processing device, the instructions causing the processing device to” .......................... 55
`Rye and Skerlos do not disclose [1.4.1]: “generate a key code using a keystroke
`c.
`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” ............................................................................................ 58
`d. Rye and Skerlos do not disclose [1.4.2]: “format the key code for transmission to the
`second device” ..................................................................................................................... 64
`Rye and Skerlos do not disclose [1.4.3]: “transmit the formatted key code to the
`e.
`second device in a key code signal via the use of a transmitter” ......................................... 68
`Rye and Skerlos do not disclose [1.4.4]: “wherein the generated key code comprises a
`f.
`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” ....................................................... 69
`g. Rye and Skerlos do not disclose [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” ............................................................................................................... 72
`3. Rye and Skerlos do not render obvious Claim 2: “The first device as recited in claim
`1, wherein the receiver comprises an RF receiver” ............................................................. 74
`4. Rye and Skerlos do not render obvious Claim 3: “The first device as recited in claim
`1, wherein the transmitter comprises an IR transmitter” ..................................................... 76
`5. Rye and Skerlos do not render obvious 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” ........................ 76
`6. Rye and Skerlos do not render obvious 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” ...................................... 76
`C. Ground 2: Caris and Dubil ............................................................................................. 77
`1. A POSITA would not have combined Caris with Dubil ............................................ 77
`2. Caris and Dubil do not render obvious Claim 1: ........................................................ 83
`
`ii
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`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
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`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`

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`Case IPR2019-01614
`U.S. Patent 9,911,325
`Caris and Dubil do not disclose [1.3]: “a processing device coupled to the receiver
`a.
`and the transmitter” ............................................................................................................. 83
`b. Caris and Duil do not disclose [1.4]: “a memory storing instructions executable by
`the processing device, the instructions causing the processing device to” .......................... 85
`Caris and Dubil do not disclose [1.4.1]: “generate a key code using the keystroke
`c.
`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” ............................................................................................ 88
`d. Caris and Dubil do not disclose [1.4.2]: “format the key code for transmission to the
`second device” ..................................................................................................................... 92
`Caris and Dubil do not disclose [1.4.3]: “transmit the formatted key code to the
`e.
`second device in a key code signal via the use of a transmitter” ....................................... 100
`Caris and Dubil do not disclose [1.4.4]: “wherein the generated key code comprises a
`f.
`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” ..................................................... 101
`g. Caris and Dubils do not disclose [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” ............................................................................................................. 104
`3. Caris and Dubil do not render obvious Claim 2: “The first device as recited in claim
`1, wherein the receiver comprises an RF receiver” ........................................................... 106
`4. Caris and Dubil do not render obvious Claim 3: “The first device as recited in claim
`1, wherein the transmitter comprises an IR transmitter” ................................................... 107
`5. Caris and Dubil do not render obvious 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” .......................... 107
`6. Caris and Dubil do not render obvious 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” ...................... 108
`X. CONCLUSION ................................................................................................................. 108
`
`
`
`
`
`iii
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`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`

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`Case IPR2019-01614
`U.S. Patent 9,911,325
`I, Michael D. Sprenger, declare that:
`
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Universal Electronics Inc., which I may refer
`
`to as either the “Patent Owner” or “UEI,” for this inter partes review proceeding,
`
`which I may refer to as an “IPR.” I understand that this IPR proceeding involves
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`U.S. Patent No. 9,911,325, which I may refer to as “the ’325 patent” for shorthand.
`
`I understand that the claims challenged in this IPR are Claims 1-5 and 7 of the ’325
`
`patent.
`
`2.
`
`3.
`
`I understand that the ’325 patent is assigned to UEI.
`
`I understand that in this proceeding Roku, Inc., which I may also refer
`
`to as the “Petitioner,” filed a Petition for review of Claims 1-5 and 7 of the ’325
`
`patent.
`
`4.
`
`I understand that the above claims are challenged on the following
`
`three grounds:
`
`References
`Claims Challenged Basis
`1-3, 5, 7
`Obviousness Ground 1: Rye, Skerlos
`1-5
`Obviousness Ground 2: Caris, Dubil
`
`
`
`5.
`
`I have been asked to provide my objective, independent analysis of
`
`the ’325 patent in view of the asserted prior art references cited in the Petition and
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`to provide my opinion regarding the allegations in the Petition, as well as the
`
`supporting opinions of Dr. Samuel H. Russ.
`
`1
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`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`

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`Case IPR2019-01614
`U.S. Patent 9,911,325
`6.
`I am not currently, nor have I ever been, an employee of UEI. I
`
`received no compensation for this declaration beyond my normal hourly
`
`compensation based on my time actually spent analyzing the ’325 patent, the
`
`asserted prior art references cited herein and in the Petition, and any related issues.
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`I will not receive any added compensation based on the outcome of this IPR, any
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`other IPR, or any other proceeding involving the ’325 patent.
`
`II. QUALIFICATIONS
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`7. My general qualifications can be found in my curriculum vitae
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`attached as Exhibit 1. It includes my educational and professional background,
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`published books, articles, publications, public lectures and conference proceedings.
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`A section details my assignments as an expert witness.
`
`8.
`
`I have over 30 years of experience in engineering, communications,
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`and consumer electronics, including set-top box technologies, smart televisions,
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`video streaming devices and services, broadband technologies and standards, in-
`
`home networking, transmission protocols and circuit design. My expertise
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`includes hardware and software architecture and prototyping, video coding and
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`processing, display technologies, data compression, security, user interfaces and
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`experiences, and system design.
`
`9.
`
`I received my undergraduate Electrical Engineering degree from the
`
`Swiss Federal Institute of Technology (ETH) in Zurich in 1988, and my M.S. and
`
`2
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`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
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`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`

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`Case IPR2019-01614
`U.S. Patent 9,911,325
`Ph.D. degrees in the same field from the University of Colorado at Boulder in 1991
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`and 1998, respectively. In university research environments during the 1980s and
`
`1990s, I have studied computer architecture, computer graphics and image
`
`processing, network communication technologies and protocols, and carried out
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`research in microprocessor design, multiprocessor systems and high-speed fiber-
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`optic interconnection networks for large-scale parallel processing architectures. In
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`the telecom and cable TV industry, over a 20 year period starting in the late 1990s,
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`I have worked in areas covering video and communication technology, broadband
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`and long-haul fiber networks, streaming video architectures, video head-end
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`design, storage, distribution and delivery to the end-user as well as playback at the
`
`user's premises.
`
`10.
`
`In 1991, I started working as a Research Assistant at the
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`Optoelectronic Computing Systems center (OCS), a research and education center
`
`of the University of Colorado at Boulder, where I worked on simulation, design,
`
`and implementation of optical deflection routing and Wavelength Division
`
`Multiplexing (WDM) in fiber-optic interconnects for ultra-highspeed shared
`
`memory multiprocessors. While at this position, I carried out key research and
`
`development of a novel adaptive wavelength-tracking WDM system, which was
`
`ultimately awarded a patent.
`
`3
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`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
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`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`

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`Case IPR2019-01614
`U.S. Patent 9,911,325
`11. Entering the telecom industry in 1998, I started at U.S. West
`
`Communications in the company's Advanced Technologies organization. U.S
`
`West later merged with Qwest Communications International, Inc. in 2000, which
`
`ultimately merged with CenturyLink, Inc. in 2011 to become the third largest
`
`telecommunications operator in the U.S. At U.S. West/Qwest/CenturyLink, I was
`
`responsible for broadband technology evolution, fiber-optic transmission
`
`technologies and video encoder Requests for Information/Requests for Proposal
`
`(RFIs/RFPs), evaluation and vendor selection (a formalized process in the industry
`
`to ensure a level playing field across prospective suppliers of hardware, software,
`
`and network management systems).
`
`12.
`
`I was a key technical lead in multiple rounds of IPTV system
`
`requirements (IPTV was an early form of streaming video) and coordinated
`
`standards activities in the IPTV, broadband access technology, home networking &
`
`consumer electronics space (DLNA) with other groups and organizations. My
`
`responsibilities also included the specification of technical requirements for set-top
`
`boxes and media-enabled consumer electronics devices for large-scale video
`
`deployments. It is worth noting that some of the early video services at US-West
`
`and Qwest featured a mix of IR- as well as RF-based remote controls.
`
`13. While at Qwest/CenturyLink, I served as editor and contributor to the
`
`Technical Advisory Board (TAB), periodically reporting to the Chief Technology
`
`4
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`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
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`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case IPR2019-01614
`U.S. Patent 9,911,325
`Officer (CTO) and interfacing with large U.S. government customers, covering
`
`emerging technologies (e.g., fiber-optic networking, security, quantum
`
`communication, network traffic optimization, video technologies), assessing their
`
`impact onto CenturyLink and government customers’ network and services as well
`
`as making recommendations for the eventual adoption of certain technologies. I
`
`also represented the company in several important telecommunications standards
`
`bodies, including the Full Service Access Network initiative (FSAN) for Fiber-To-
`
`The-Home (FTTH) Passive Optical Networks (PON), extending existing standards
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`(BPON, GPON), and defining new high-speed, long-reach PON standards (XG-
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`PON1, NG-PON2, XGS-PON). I further represented the company in the ITU-T,
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`Broadband Forum, ATIS T1E1.4 Network Interface, Power & Protection (NIPP) /
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`Network Access Interfaces committees (NIPP-NAI) and Full Service Very high
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`speed Digital Subscriber Loop (FS-VDSL) standards bodies, defining new
`
`standards to improve rate and reach of xDSL technologies over existing twisted
`
`pair copper infrastructure (defining specifications for VDSL2, Dynamic Spectrum
`
`Management, cross-talk cancellation (“vectoring”), MIMO, G.fast). In 2013, I
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`received the CenturyLink Government Services Award for Outstanding
`
`Contributions.
`
`14. After over 16 years with US-West/Qwest/CenturyLink, I started in a
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`new position as Principal Architect of Optical Technologies at CableLabs in 2014.
`
`5
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`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
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`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case IPR2019-01614
`U.S. Patent 9,911,325
`At CableLabs, I established a new fiber optic lab and carried out extensive fiber-
`
`optic lab testing, setting up and verifying novel network configurations, conducting
`
`physical layer tests, and analyzing results. As part of my work in the fiber-optic
`
`lab, I discovered a unique noise signal characteristic suitable for detection of a
`
`detrimental effect in RF-over-Glass (RFoG) networks, known as Optical Beat
`
`Interference (OBI), and developed basic principles for multiple approaches to
`
`detect OBI via dedicated hardware and signal processing algorithms. I also
`
`developed a novel approach for intermediate-distance, low-complexity
`
`implementation of coherent modulation schemes for ultra-high-speed fiber-optic
`
`communication (based on 4-QAM, 8-QAM, 16-QAM and higher order
`
`modulation).
`
`15. After returning to CenturyLink as a Principal Video Architect in 2016,
`
`I worked on Over-The-Top (OTT) video architectures, System-on-Chip (SoC)
`
`specification for next-generation Over-The-Top (OTT) Set-Top Box (STB), and
`
`was responsible for evaluation and vendor selection RFPs for High Efficiency
`
`Video Codec (HEVC) / H.265 video encoder/transcoder applications. I also
`
`specified and upgraded CenturyLink’s Video Demo & Evaluation Lab setup to
`
`support full 4K and High Dynamic Range (HDR) as well as emerging Wide Color
`
`Gamut (WCG) specifications using a multi-display setup and advanced projection
`
`system in a dedicated evaluation environment. I again served as CenturyLink
`
`6
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`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
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`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`

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`Case IPR2019-01614
`U.S. Patent 9,911,325
`representative for video-based standards bodies, including MPEG-DASH
`
`(Dynamic Adaptive Streaming over HTTP) Interoperability Forum, CMAF
`
`(Common Media Application Format) and SVA (Streaming Video Alliance).
`
`16. Over the course of my career, I have acquired broad experience in
`
`computer programming, communication network architectures and protocols,
`
`digital and analog circuit design & technology, computer graphics, video
`
`processing and display technologies.
`
`17.
`
`In holding my various positions in research and industry, I have
`
`gained extensive experience in image acquisition, display technologies, associated
`
`circuitry, and processing algorithms. I also have broad hands-on experience with
`
`video technology including extensive laboratory and field testing, configuration,
`
`calibration and evaluation of a range of devices in the video area. These include
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`encoders and decoders for carrier deployment; video processors for image
`
`enhancements, video switching matrices, as well as displays and projectors for
`
`internal testing. I have designed laboratory setups and selected displays suitable to
`
`evaluate video encoders and video delivery configurations, while internally
`
`training staff to compare and assess the visual quality of encoded video. In 2010, I
`
`started giving bi-annual lectures on video encoding technologies in the University
`
`of Colorado's ITL program.
`
`7
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`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
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`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`

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`Case IPR2019-01614
`U.S. Patent 9,911,325
`18.
`I am currently a consultant offering expertise in digital video and
`
`audio encoding/transcoding/decoding technologies and standards (e.g., MPEG-2,
`
`MPEG-4, H.264/AVC, H.265/HEVC, Google VP8/VP9, AV1, Dolby Digital/AC-
`
`3, AAC, DTS), 2D and 3D video, imaging and encoding technologies, including
`
`stereoscopic/multiview/free-view 3D video display technologies, as well as
`
`consumer electronics. Additional consulting areas include broadband architectures
`
`and technologies (including Digital Subscriber Line (DSL), coaxial cable and
`
`Hybrid Fiber-Coax (HFC) networks, fiber optics, point-to-point free-space optics),
`
`as well as video head-ends and broadcast systems.
`
`19.
`
`I am an inventor with 10 granted U.S. patents and 9 pending
`
`applications, covering the areas of visualization, enhanced graphical user interfaces
`
`(GUIs) and GUI navigation methods, novel content navigation methods, video
`
`streaming, dynamic high dynamic range and wide color gamut signaling, media
`
`processing, time-/place-shifting applications for set top boxes and in-home
`
`integration, Fiber-To-The-Home operational status, streaming broadband network
`
`health, advanced audio control mechanisms, video encoding artifact detection,
`
`agile digital rights management (DRM) for video content and secure imaging. I
`
`have approximately a dozen publications, was featured on the cover of OSP
`
`Magazine (a widely read trade publication in the telecom industry), and wrote an
`
`8
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`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
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`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case IPR2019-01614
`U.S. Patent 9,911,325
`article as part of the main cover story (OSP Magazine May 2013 issue, entitled
`
`“Game Changers 2013”).
`
`III. MATERIALS CONSIDERED
`
`20.
`
`I have reviewed the ’325 patent, including the challenged claims, and
`
`its prosecution history. I have also reviewed the Petition for inter partes review
`
`filed by Petitioner, as well as the Exhibits attached, including:
`
`EX1003: Declaration of Dr. Samuel Russ in Support of Petition for
`Inter Partes Review of U.S. Patent No. 9,911,325 (“Russ Decl.”)
`
`EX1005: U.S. Patent Application Publication No. 2004/0080428 to
`Rye (“Rye”)
`
`EX1006: U.S. Patent No. 4,426,662 to Skerlos et al. (“Skerlos”)
`
`EX1007: U.S. Patent No. 7,562,128 to Caris et al. (“Caris”)
`
`EX1008: U.S. Patent No. 8,132,105 to Dubil et al. (“Dubil”)
`
`
`
`
`
`
`
`
`
`
`
`
`
`21.
`
`I have also reviewed the Patent Owners Preliminary Response (which
`
`I may refer to as “POPR”), the Patent Owner Response (which I may refer to as
`
`“POR”), any associated exhibits, and the decision by the PTAB or “Board” to
`
`institute the present IPR.
`
`22.
`
`I understand that the ’325 patent is related to U.S. Patent No.
`
`7,589,642, which I may refer to as “the ’642 patent.” I understand that the ’642
`
`patent is also the subject of a Petition for inter partes review by the Petitioner and
`
`is also supported by the same expert as this Petition, Dr. Russ.
`
`9
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
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`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case IPR2019-01614
`U.S. Patent 9,911,325
`23.
`I understand that the ’325 patent is also related to U.S. Patent No.
`
`8,004,389, which I may refer to as “the ’389 patent.” I understand that the ’389
`
`patent is also the subject of a Petition for inter partes review by the Petitioner and
`
`is also supported by the same expert as this Petition, Dr. Russ.
`
`24.
`
`In forming my opinions, I have considered the materials listed above
`
`and any documents cited in this declaration. I have also relied on my own
`
`education, knowledge, and experience in the relevant art.
`
`25.
`
`I have also considered the understanding of a person of ordinary skill
`
`around the time of the invention the ’325 patent.
`
`IV. LEGAL PRINCIPLES
`
`26.
`
`I am not an attorney and will not offer opinions on the law.
`
`27.
`
`In forming the analyses and conclusions expressed in my declaration,
`
`I have applied the legal principles described in the following paragraphs, which
`
`were provided to me by counsel for the Patent Owner.
`
`A. Priority
`
`28.
`
`I understand that a patent may claim the benefit of the filing day of an
`
`earlier filed application if the earlier filed application provides adequate disclosure
`
`of the patent’s claims. I understand that the disclosure requirement is satisfied if a
`
`person of ordinary skill in the art could clearly conclude that the inventor invented
`
`the claimed subject matter as of the earlier filing date sought. I understand that the
`
`10
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case IPR2019-01614
`U.S. Patent 9,911,325
`earlier filed application does not need to describe the claimed subject matter in
`
`precisely the same terms as found in the claims at issue.
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`B. Anticipation
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`29.
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`I have been informed that a patent claim is invalid as anticipated
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`under 35 U.S.C. § 102 if each and every element of a claim, as properly construed,
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`is found either explicitly or inherently in a single prior art reference. Under the
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`principles of inherency, if the prior art necessarily functions in accordance with, or
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`includes the claimed elements, it anticipates.
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`30.
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`I have been informed that a claim is invalid under 35 U.S.C. § 102(a)
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`if the claimed invention was known or used by others in the U.S., or was patented
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`or published anywhere, before the Applicant’s invention. I further have been
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`informed that a claim is invalid under 35 U.S.C. § 102(b) if the invention was
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`patented or published anywhere, or was in public use, on sale, or offered for sale in
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`this country, more than one year prior to the filing date of the patent application
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`(critical date). And a claim is invalid, as I have been informed, under 35 U.S.C.
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`§ 102(e), if an invention described by that claim was described in a U.S. patent
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`granted on an application for a patent by another that was filed in the U.S. before
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`the date of invention for such a claim.
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`11
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case IPR2019-01614
`U.S. Patent 9,911,325
`C. Obviousness
`
`31.
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`I have been informed that a patent claim is invalid as “obvious” under
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`35 U.S.C. § 103 in light of one or more prior art references if it would have been
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`obvious to a person of ordinary skill in the art at the time of the alleged invention
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`(“POSITA”), taking into account (1) the scope and content of the prior art, (2) the
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`differences between the prior art and the claims, (3) the level of ordinary skill in
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`the art, and (4) any so called “secondary considerations” of non-obviousness,
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`which include “long felt need” for the claimed invention, commercial success
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`attributable to the claimed invention, unexpected results of the claimed invention,
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`skepticism of others, failure by others to achieve the claimed invention, and
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`“copying” of the claimed invention by others.
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`32.
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`I have been informed that a claim can be obvious in light of a single
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`prior art reference or multiple prior art references. To be obvious in light of a
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`single prior art reference or multiple prior art references, there must be a reason
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`that would have prompted a POSITA to modify the single prior art reference, or
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`combine two or more references, in a manner that provides the elements of the
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`claimed invention. This reason may come from a teaching, suggestion, or
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`motivation to combine, or may come from the reference(s) themselves, the
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`knowledge or “common sense” of a POSITA, or from the nature of the problem to
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`be solved, and this reason may be explicit or implicit from the prior art as a whole.
`
`12
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2019-01614
`
`Universal Electronics Inc., Exhibit 2013
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case