Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 1 of 52 Page ID #:3237
`
`Present: The Honorable
`
` James V. Selna, U.S. District Court Judge
`Lisa Bredahl
`Not Reported
`Deputy Clerk
` Court Reporter
`Attorneys Present for Plaintiffs:
`Attorneys Present for Defendants:
`Not Present
`Not Present
`
`Proceedings: [IN CHAMBERS] Order re Claim Construction
`
`Plaintiff Universal Electronics Inc. (“UEI” or “Plaintiff”) and Defendant Roku,
`Inc. (“Roku” or “Defendant”) have submitted proposed claim constructions for terms
`contained in nine of UEI’s patents. See, e.g., Docket No. 70. Both parties have submitted
`opening and responsive claim construction briefs. UEI Op. Br., Docket No. 84; Roku
`Op. Br., Docket No. 83; UEI Resp. Br., Docket No. 89; Roku Resp. Br., Docket No. 88.
`
`A hearing was held on the parties’ claim construction disputes on August 5, 2019
`and all matters were taken under submission.
`
`The Court construes the claim terms identified herein.
`
`I. BACKGROUND
`
`Nine of UEI’s patents are currently at issue:
`
`• U.S. Pat. 7,589,642 (“the ’642 patent”). Compl., Docket No. 1, Ex. A.
`• U.S. Pat. 8,004,389 (“the ’389 patent”). Id. Ex. B.
`• U.S. Pat. 9,911,325 (“the ’325 patent”). Id. Ex. C
`• U.S. Pat. 9,716,853 (“the ’853 patent”). Id. Ex. D
`• U.S. Pat. 7,782,309 (“the ’309 patent”). Id. Ex. E
`• U.S. Pat. 7,821,504 (“the ’504 patent”). Id. Ex. F
`• U.S. Pat. 7,821,505 (“the ’505 patent”). Id. Ex. G
`
`Roku EX1010
`U.S. Patent No. 7,589,642
`
`

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`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 2 of 52 Page ID #:3238
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Date August 7, 2019
`
`
`
`Case No.
`Title
`
`
`• U.S. Pat. 7,895,532 (“the ’532 patent”). Id. Ex. H
`• U.S. Pat. 8,015,446 (“the ’446 patent”). Id. Ex. H
`
`
`The Mui Patents
`
`
`These nine patents generally cover devices and methods related to a universal
`
`remote control. The patents belong to four patent families, each family sharing a
`common specification.
`
`A.
`
`The parties refer to the ’642 Patent, the ’389 Patent, and the ’325 Patent
`
`collectively as “the Mui Patents.” The Mui Patents generally describe systems for using
`a “remote control device” in combination with, for instance, a “key code generator
`device” to control a user appliance. The remote control device and key code generator
`device respond to a pressed key on the remote control device by transmitting signals
`back and forth between the remote control device, key code generator device, and user
`appliance in various ways.
`
`UEI alleges that Roku infringes Claims 3, 6, 23, and 25 of the ’642 Patent. UEI
`
`Op. Br. at 1. Claims 3 and 6 depend from Claim 1. Claims 23 and 25 depend from Claim
`2. Claim 1 recites:
`
`
`1. A method comprising:
`(a) 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;
`(b) generating a key code within a key code generator device using
`the keystroke indictor signal;
`(c) modulating said key code onto a carrier signal, thereby generating
`a key code signal; and
`(d) transmitting said key code signal from said key code generator
`device to said remote control device.
`
`
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`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 3 of 52 Page ID #:3239
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Date August 7, 2019
`
`Case No.
`Title
`
`UEI also alleges that Roku infringes Claims 2–3, 8–11, 13, and 15 of the ’389
`
`Patent. UEI Op. Br. at 1. Claims 13 and 15 depend from Claim 12, Claims 8–11 depend
`from Claim 4, and Claim 3 depends from Claim 2. Claim 2 recites:
`
`
`
`2. A method comprising:
`(a) 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;
`(b) generating a key code within a key code generator device using
`the keystroke indicator signal, wherein said key code is part of a
`codeset that controls an electronic consumer device;
`(c) modulating said key code onto a carrier signal, thereby generating
`a key code signal;
`(d) transmitting said key code signal from said key code generator
`device; and
`(e) identifying said codeset using input from a user of said remote
`control device, wherein said codeset is identified when said user
`stops pressing a key on said remote control device.
`
`UEI also alleges that Roku infringes Claim 2 of the ’325 Patent. UEI Op. Br. at 1.
`
`Claim 2 depends from Claim 1, which recites:
`
`
`1. A first device for transmitting a command to control a functional
`operation of a second device, the first device comprising:
`a receiver;
`a transmitter;
`a processing device coupled to the receiver and the transmitter; and
`a memory storing instructions executable by the processing device,
`the instructions causing the processing device to:
`generate a key code using a keystroke indicator received from a third
`device in communication with first device via use of the
`receiver, the keystroke indicator having data that indicates an
`input element of the third device that has been activated;
`format the key code for transmission to the second device; and
`
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`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 4 of 52 Page ID #:3240
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Date August 7, 2019
`
`
`
`Case No.
`Title
`
`
`transmit the formatted key code to the second device in a key code
`signal via use of the transmitter;
`wherein the generated key code comprises a one of a plurality of key
`code data stored in a codeset, wherein the one of the plurality
`of key code data is selected from the codeset as a function of
`the keystroke indicator received from the third device, wherein
`each of the plurality of key code data stored in the codeset
`comprises a series of digital ones and/or digital zeros, and
`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.
`
`The ’853 Patent
`
`
`B.
`
`The ’853 Patent (also referred to by the parties as the “Arling Patent”) generally
`
`relates to “methods for appliance control” by using “a controlling device, such as a
`remote control, smart phone, tablet computer, etc.” ’853 Patent at 1:63–64. In particular,
`and similar to the Mui Patents, the ’853 Patent discloses a Universal Control Engine
`(“UCE”) that uses various methods to transmit a command function from the controlling
`device to the target appliance. Id. at 2:29–33.
`
`UEI alleges that Roku infringes Claim 5 of the ’853 Patent. UEI Op. Br. at 1.
`
`Claim 5 depends on Claim 1, which recites:
`
`
`
`
`1. A universal control engine, comprising:
`
`a processing device; and
`a memory device having stored thereon instructions executable by the
`processing device, the instructions, when executed by the
`processing device, causing the universal control engine to
`respond to a detected presence of an intended target appliance
`within a logical topography of controllable appliances which
`includes the universal control engine by using an identity
`
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`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 5 of 52 Page ID #:3241
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Date August 7, 2019
`
`
`
`Case No.
`Title
`
`
`associated with the intended target appliance to create a listing
`comprised of at least a first communication method and a
`second communication method different than the first
`communication method for use in controlling each of at least a
`first functional operation and a second functional operation of
`the intended target appliance and to respond to a received
`request from a controlling device intended to cause the
`intended target appliance to perform a one of the first and
`second functional operations by causing a one of the first and
`second communication methods in the listing of
`communication methods that has been associated with the
`requested one of the first and second functional operations to
`be used to transmit to the intended target appliance a command
`for controlling the requested one of the first and second
`functional operations of the intended target appliance.
`
`
`
`
`The Janik Patents
`
`C.
`
`The parties refer to the ’309 Patent, the ’504 Patent, and the ’505 Patent as the
`
`“Janik Patents.” The Janik Patents generally disclose using a “universal controlling
`device” through various interfaces, such as touch-sensitive surfaces.
`
`UEI alleges that Roku infringes Claim 1 of the ’309 Patent. UEI Op. Br. at 1.
`
`Claim 1 recites:
`
`
`1. A method for using a universal controlling device comprised of a
`display having a touch-sensitive surface to transmit data to one or more
`appliances located remotely from the controlling device, comprising:
`causing one or more graphical user interfaces comprised of graphical
`user interface icons to be displayed in the display of the
`universal controlling device;
`accepting via the touch-sensitive surface of the universal controlling
`device a first input type indicative of a selection of a displayed
`graphical user interface icon;
`
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`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 6 of 52 Page ID #:3242
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Date August 7, 2019
`
`
`
`Case No.
`Title
`
`
`causing the universal controlling device to transmit to the one or
`more appliances first data representative of the displayed
`graphical user interface icon selected by the first input type;
`accepting via the touch-sensitive surface of the universal controlling
`device a second input type indicative of a motion made across
`the touch-sensitive surface;
`causing the universal controlling device to transmit to the one or
`more appliances second data representative of the motion made
`across the touch-sensitive surface provided by the second input
`type; and
`causing the universal controlling device to distinguish the first input
`type received via the touch-sensitive surface from the second
`input type received via the touch-sensitive surface.
`
`
`UEI also alleges that Roku infringes Claim 5 of the ’504 Patent. UEI Op. Br. at 1.
`
`Claim 5 depends from Claim 1, which recites:
`
`
`1. A method for using a universal controlling device comprised of a
`touch-sensitive surface to command functional operations of one or more
`appliances located remotely from the controlling device, comprising:
`accepting via the touch-sensitive surface of the universal controlling
`device a first input type indicative of a static touch made upon
`the touch-sensitive surface;
`causing the universal controlling device to transmit first data used to
`command at least a first functional operation of the one or
`more appliances, the first data being representative of the static
`touch made upon the touch-sensitive surface;
`accepting via the touch-sensitive surface of the universal controlling
`device a second input type indicative of a moving touch made
`across the touch-sensitive surface;
`causing the universal controlling device to transmit second data used
`to command at least a second functional operation of the one
`or more appliances, the second data being representative of the
`moving touch made across the touch-sensitive surface; and
`
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`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 7 of 52 Page ID #:3243
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Date August 7, 2019
`
`
`
`Case No.
`Title
`
`
`causing the universal controlling device to distinguish the first input
`type received via the touch-sensitive surface from the second
`input type received via the touch-sensitive surface.
`
`
`UEI also alleges that Roku infringes Claims 5, 7, 10, 12, 49, 51 of the ’505 Patent.
`
`UEI Op. Br. at 1. The patentability of Claims 1-12 of the ’505 Patent was confirmed
`during an inter partes reexamination proceeding, where new claims 13-93 were also
`added and determined to be patentable. See ’505 Patent, Inter Partes Reexamination
`Certificate (June 27, 2014). Claims 7, 10, 12, 49, and 51 each depend from Claim 5.
`Claim 5 recites:
`
`
`5. A non-transitory computer-readable media embodied in a physical
`memory device having stored thereon instructions for causing a universal
`controlling device comprised of a display having a touch-sensitive surface
`and adapted to transmit data to one or more appliances located remotely
`from the controlling device to perform steps comprising:
`displaying in the display of the universal controlling device one or
`more graphical user interfaces comprised of graphical user
`interface icons;
`accepting via the touch-sensitive surface of the universal controlling
`device a first input type indicative of a selection of a displayed
`graphical user interface icon;
`initiating a transmission by the universal controlling device to the one
`or more appliances first data representative of the displayed
`graphical user interface icon selected by the first input type;
`accepting via the touch-sensitive surface of the universal controlling
`device a second input type indicative of a motion made across
`the touch-sensitive surface;
`initiating a transmission by the universal controlling device to the one
`or more appliances second data representative of the motion
`made across the touch-sensitive surface provided by the second
`input type; and
`
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`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 8 of 52 Page ID #:3244
`
`
`
`Case No.
`Title
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Date August 7, 2019
`
`allowing the universal controlling device to distinguish the first input
`type received via the touch-sensitive surface from the second
`input type received via the touch-sensitive surface.
`
`
`The Scott Patents
`
`D.
`
`The parties refer to the ’532 Patent and the ’446 Patent as the “Scott Patents.” The
`
`Scott Patents also relate to a user interface on a universal remote control, and
`particularly to programming a remote control to work with a particular user device and a
`network in a proscribed manner. See, e.g. ’532 Patent, 1:1–17.
`
`Specifically, the claims of the ’532 Patent generally relate to an application on the
`
`remote that allows users to set up and execute a sequence of instructions. Id. at 10:40–
`61. UEI alleges that Roku infringes Claim 10 of the ’532 Patent. UEI Op. Br. at 2. Claim
`10 recites:
`
`
`10. A method for automatically creating a sequence of instructions to be
`executed by a controlling device, comprising:
`presenting to a user a graphical user interface including a
`representations of at least one appliance controllable by the
`controlling device;
`using a program to automatically create the sequence of instructions
`to be executed by the controlling device such that the sequence
`of instructions reflects one or more interactions by the user
`with the representations of the at least one appliance
`controllable by the controlling device presented via the
`graphical user interface; and
`causing the automatically created sequence of instructions to be
`executed by the controlling device in response to a selection of
`a user input element of the controlling device.
`
`
`The claims of the ’446 Patent relate to a software on the remote that records
`
`events and uploads them to facilitate debugging. Id. at 6:21–31. UEI alleges that Roku
`
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`Page 8 of 52
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`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 9 of 52 Page ID #:3245
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Case No.
`Title
`
`infringes Claims 1–2 of the ’446 Patent. UEI Op. Br. at 2. Claim 2 is a dependent claim
`that depends from Claim 1. Claim 1 recites:
`
`
`Date August 7, 2019
`
`1. A method for facilitating debugging of a remote control application
`of a controlling device, comprising:
`storing within a memory of the controlling device data captured
`during operation of the controlling device, the data being
`representative of a user interaction with a user interface
`element of the controlling device and an action occurring
`within the remote control application of the controlling device
`resulting from the user interaction with the user interface
`element of the controlling device; and
`causing the controlling device to upload the captured data to a
`computer in communication with the controlling device
`whereby the uploaded captured data is available for use in
`debugging the remote control application of the controlling
`device.
`
`
`
`
`II. LEGAL STANDARD
`
`A. General Claim Construction Principles
`
`Claim construction is “exclusively within the province of the court.” Markman v.
`
`W. Instruments, Inc., 517 U.S. 370, 372 (1996). Such construction “must begin and
`remain centered on” the claim language itself. Interactive Gift Express, Inc. v.
`Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). But extrinsic evidence may
`also be consulted “if needed to assist in determining the meaning or scope of technical
`terms in the claims.” Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1216 (Fed.
`Cir. 1995).
`
`In construing the claim language, the Court begins with the principle that “the
`
`words of a claim are generally given their ordinary and customary meaning.” Phillips v.
`AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotation marks
`omitted). This ordinary and customary meaning “is the meaning that the [claim] term
`
`
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`
`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 10 of 52 Page ID
` #:3246
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Case No.
`Title
`
`would have to a person of ordinary skill in the art in question at the time of the
`invention, i.e., as of the effective filing date of the patent application.” Id. at 1313.
`“[T]he person of ordinary skill in the art is deemed to read the claim term not only in the
`context of the particular claim in which the disputed term appears, but in the context of
`the entire patent, including the specification.” Id.
`
`Date August 7, 2019
`
`“In some cases, the ordinary meaning of claim language as understood by a person
`of skill in the art may be readily apparent even to lay judges, and claim construction in
`such cases involves little more than the application of the widely accepted meaning of
`commonly understood words. In such circumstances general purpose dictionaries may
`be helpful.” Id. at 1314 (internal citation omitted). In other cases, “determining the
`ordinary and customary meaning of the claim requires examination of terms that have a
`particular meaning in a field of art.” Id. Then “the court looks to those sources available
`to the public that show what a person of skill in the art would have understood disputed
`claim language to mean.” Id. (internal quotation marks omitted). These sources include
`“the words of the claims themselves, the remainder of the specification, the prosecution
`history, and extrinsic evidence concerning relevant scientific principles, the meaning of
`technical terms, and the state of the art.” Id. (internal quotation marks omitted).
`
`But it is improper to read limitations from the specification into the claim.
`Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 1368 (Fed. Cir. 2005) (“[I]f we once
`begin to include elements not mentioned in the claim, in order to limit such claim . . . we
`should never know where to stop.”) (quoting Phillips, 415 F.3d at 1312). A court does
`“not import limitations into claims from examples or embodiments appearing only in a
`patent’s written description, even when a specification describes very specific
`embodiments of the invention or even describes only a single embodiment, unless the
`specification makes clear that ‘the patentee . . . intends for the claims and the
`embodiments in the specification to be strictly coextensive.’” JVW Enters., Inc. v.
`Interact Accessories, Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005) (internal citations
`omitted) (emphasis added).
`
`
`
`
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`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 11 of 52 Page ID
` #:3247
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Date August 7, 2019
`
`Case No.
`Title
`
`B. Means Plus Function Claims
`
`Under 35 U.S.C. § 112(6),1 means-plus-function claiming occurs when an element
`
`in a claim is a “means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof . . . .” In that case, “such claim shall be
`construed to cover the corresponding structure, material, or acts described in the
`specification and equivalents thereof.” Id. This provision allows “patentees to express a
`claim limitation by reciting a function to be performed rather than by reciting structure
`for performing that function . . . .” Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`1347 (Fed. Cir. 2015) (en banc). At the same time, it constrains “how such a limitation is
`to be construed, namely, by restricting the scope of coverage to only the structure,
`materials, or acts described in the specification as corresponding to the claimed function
`and equivalents thereof.” Id.
`
`The failure to use the term “means” creates a rebuttable presumption that § 112(6)
`
`does not apply. See Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341,
`1347 (Fed. Cir. 2016). To overcome this presumption a challenger must show “that the
`claim term fails to recite sufficiently definite structure or else recites function without
`reciting sufficient structure for performing that function.” Id. (quoting Williamson, 792
`F.3d at 1348). The challenger must establish § 112(6)’s applicability by a preponderance
`of the evidence. Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1019 (Fed. Cir. 2017).
`
`Once a court concludes that a term is subject to § 112(6), it follows a two-step
`
`process. Williamson, 792 F.3d at 1351. “First, the court must determine the claimed
`function. Second, the court must identify the corresponding structure in the written
`description of the patent that performs the function.” Noah Sys., Inc. v. Intuit Inc., 675
`F.3d 1302, 1311 (Fed. Cir. 2012) (internal citations omitted). “Where there are multiple
`claimed functions . . . the patentee must disclose adequate corresponding structure to
`perform all of the claimed functions. If the patentee fails to disclose adequate
`corresponding structure, the claim is indefinite.” Williamson, 792 F.3d at 1351.
`
`
`
`
`1 § 112(6) was renamed as § 112(f) by the America Invents Act, Pub. L. No. 112–29 (“AIA”), which
`took effect on September 16, 2012. Because the inventors here applied for the patents-in-suit before the
`act’s passage, § 112(6) applies.
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`CV-90 (06/04) CIVIL MINUTES – GENERAL
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`Page 11 of 52
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`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 12 of 52 Page ID
` #:3248
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Date August 7, 2019
`
`Case No.
`Title
`
`A corresponding structure is one that the specification or prosecution history
`
`“clearly links . . . to the function recited in the claim.” Id. The specification’s disclosure
`of a corresponding structure “must be of adequate corresponding structure to achieve the
`claimed function.” Id. (internal quotations omitted). “If a person of ordinary skill in the
`art would be unable to recognize the structure in the specification and associate it with
`the corresponding function in the claim, a means-plus-function clause is indefinite.” Id.
`
`For cases “involving a special purpose computer-implemented means-plus-
`
`function limitation,” the disclosed structure must “be more than simply a general
`purpose computer or microprocessor.” Noah, 675 F.3d at 1312. Instead, the specification
`must “disclose an algorithm for performing the claimed function.” Id. (quoting Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008)). “The
`specification can express the algorithm ‘in any understandable terms including as a
`mathematical formula, in prose, or as a flow chart, or in any other manner that provides
`sufficient structure.’” Id. (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323,
`1340 (Fed. Cir. 2008)).
`
`
`
`
`
`
`
`
`III. ANALYSIS
`
`The Parties have agreed to the following constructions:
`
`
`A. Agreed Constructions
`
`
`
`
`Claim Term
`“key code” (’642 Patent, Claims 1, 2, 6,
`23, 25; ’389 Patent, Claims 2, 4, 8, 9, 10,
`11, 12, 13, 15; and ’325 Patent, Claim 1) 2
`
` Agreed Construction
`“a code corresponding to the
`function of an electronic device,
`optionally including timing
`information”
`“a signal, distinct from a key code,
`corresponding to a pressed key [on a
`
`“keystroke indicator signal” /
`“keystroke indicator” (’642 Patent, Claims
`1, 2; ’389 Patent, Claim 2; and
`
`2 The claim listing for each agreed and disputed term includes: (1) Asserted claims where the claim
`term appears and (2) independent claims where the claim term appears and from which asserted
`claim(s) depend(s).
`
`CV-90 (06/04) CIVIL MINUTES – GENERAL
`
`
`Page 12 of 52
`
`

`

`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 13 of 52 Page ID
` #:3249
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`Case No.
`Title
`
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Date August 7, 2019
`
`
`
`
`
`remote control]”
`
`’325 Patent, Claim 1)
`
`
`
`
`B. Disputed Terms
`
`
`1.
`
`“key code signal” (’642 Patent, Claims 1, 2, 6; ’389 Patent, Claims 2, 4,
`8; ’325 Patent, Claim 1)
`
`
`UEI’s Construction
`
`“a signal containing a
`
`key code”
`
`
`
`
`
`Court’s Construction
`
`“signal containing
`
`a modulated key
`code”
`
`
`
`Roku’s Construction
`
`“a signal, for controlling a
`
`specific type, brand,
`and model of consumer
`electronic device, and
`which contains a modulated
`key code. Excludes
`signals containing key codes
`to be stored on the
`remote control for later use
`in generating IR signals.”
`
`The parties have three primary arguments regarding the meaning of the term “key
`code signal.” First, the parties dispute whether the claimed key code signal must always
`contain a modulated key code. Second, the parties dispute whether the key code signal
`must be “for controlling a specific type, brand, and model of consumer electronic
`device.” Third, the parties dispute whether the specification and prosecution history of
`the Mui Patents require that the key code signal “[e]xcludes signals containing key codes
`to be stored on the remote control for later use in generating IR signals.”
`
`
`
`a) modulation
`
`
`The asserted claims of the ’642 Patent and the asserted claims of the ’389 Patent
`
`already require that the claimed key code signal is modulated. Claim 1 of the ’642
`
`CV-90 (06/04) CIVIL MINUTES – GENERAL
`
`
`Page 13 of 52
`
`

`

`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 14 of 52 Page ID
` #:3250
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Date August 7, 2019
`
`Case No.
`Title
`
`Patent, for instance, states “modulating said key code onto a carrier signal, thereby
`generating a key code signal.” ’642 Patent, Claim 1. However, this requirement does not
`appear in the asserted claims of the ’325 Patent. Claim 1 of the ’325 Patent, for instance,
`states, “format the key code for transmission to the second device; and transmit the
`formatted key code to the second device in a key code signal via use of the transmitter.”
`’325 Patent, Claim 1. The claim language itself would thus suggest that the phrase “key
`code signal” should not necessarily be limited to require that it contains a modulated key
`code.
`
`Roku relies on the specification to support its argument that the term “key code
`
`signal” as it appears in the ’325 Patent claims must also be limited to containing a
`modulated key code. Roku emphasizes its position that “key code signal” is a coined
`term. It then refers to disclosed embodiments in the specification where the key code
`signal includes a modulated key code.
`
`At the hearing, UEI argued that Figure 4 of the Mui Patents shows an example of
`
`a key code signal that has not been modulated and simply includes a key code with the
`addition of a start bit, parity bit, and stop bit:
`
`
`CV-90 (06/04) CIVIL MINUTES – GENERAL
`
`
`Page 14 of 52
`
`

`

`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 15 of 52 Page ID
` #:3251
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`SACV 18-01580 JVS (ADSx)
`Universal Electronics Inc. v. Roku, Inc.
`
`Date August 7, 2019
`
`
`
`Case No.
`Title
`
`
`
`’642 Patent, FIGS. 4, 5. However, in describing the figures, the specification includes
`the following description:
`
`FIG. 4 and FIG. 5 illustrate key code signal 19 in two specific
`embodiments. In both embodiments, the key code is transmitted as a stream
`of digital values 010100011100, where the system code is transmitted first
`immediately followed by the key data without any place holders between
`them. The standardized system code determined in step 102 need not
`identify the brand or model of VCR 13, but only the fact that first electronic
`consumer device 13 is a VCR. The key code is modulated in step 103 using
`timing information associated with the codeset for VCR 13. Thus, the
`particular brand and model of VCR 13 is able to understand the key code
`modulated using the appropriate timing information.
`
`CV-90 (06/04) CIVIL MINUTES – GENERAL
`
`
`Page 15 of 52
`
`

`

`Case 8:18-cv-01580-JVS-ADS Document 101 Filed 08/08/19 Page 16 of 52 Page ID
` #:3252
`UNITED STATES DISTRICT COURT
`CENTRAL DIST