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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 No. IPR2021-00758
`
`U.S. Patent 9,641,785
`
`____________
`
`PATENT OWNER RESPONSE
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`C.
`
`
`LIST OF EXHIBITS ................................................................................................ iv
`I.
`Introduction ...................................................................................................... 1
`II.
`Background ...................................................................................................... 2
`A. Overview of Technology. ....................................................................... 2
`B.
`Prosecution History ................................................................................ 8
`1. Prosecution History of the ’785 Patent. ............................................ 8
`2. Prosecution History Relating to Patent No. 9,380,250 ..................... 8
`3. Prosecution History Relating to Patent No. 9,019,435 ..................... 9
`Petitioner’s Asserted Prior Art References ..........................................10
`4. Chardon (Ex. 1005). .......................................................................10
`5. Mishra (Ex. 1009). ..........................................................................11
`6. HDMI (Ex. 1010). ...........................................................................11
`D. Person of Ordinary Skill in The Art (POSITA). ..................................12
`III. Claim Construction ........................................................................................13
`A.
`“wherein the media source device is programmed to provide to the
`controlling device via the first communications link a message
`having data which indicates whether a media sink device coupled
`to the media source device is responsive or unresponsive to a
`command communication transmitted to the media sink device by
`the media source device via a second communications link between
`the media source device and the media sink device” ...........................14
`IV. The Cited Ground does not Render any Claims Unpatentable .....................15
`A. Chardon in view of HDMI and Mishra Do Not Render Obvious any
`Challenged Claim of the ’785 Patent....................................................15
`Petitioner has Failed to Establish that Chardon in view of HDMI
`and Mishra Discloses, Teaches, or Suggests the Invention of Claim
`1. ...........................................................................................................15
`2. Petitioner has Failed to Establish that Chardon in view of HDMI
`Discloses, Teaches, or Suggests “wherein the media source device
`
`1.
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`Case IPR2021-00758
`U.S. Patent 9,641,785
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`is programmed to provide to the controlling device via the first
`communications link a message having data which indicates…the
`media sink device…is responsive or unresponsive to a command
`communication.” ............................................................................19
`3. Petitioner has Failed to Establish that Chardon in view of Mishra
`Discloses, Teaches, or Suggests “…use the data within the message
`to automatically configure the controlling device.” .......................25
`4. Petitioner has failed to Establish that Chardon Discloses, Teaches,
`or Suggests “…issuing a communication directly to the media sink
`device…when the data in the message indicates that the media sink
`device is unresponsive to the command communication.” ............28
`5. Petitioner Has Failed To Establish That Chardon Discloses, Teaches,
`Or Suggests “…issuing a communication directly to the media
`source… to cause the media source device to issue a command …to
`the media sink device… in the event that data indicates that the
`media sink device is responsive to the command communication.”
` ........................................................................................................29
`B. There is no motivation to combine the teachings of Mishra with the
`disclosure of Chardon ...........................................................................30
`C. Dependent Claims 2-13 ........................................................................33
`Conclusion .....................................................................................................33
`
`
`
`
`
`
`V.
`
`
`
`ii
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`

`Case IPR2021-00758
`U.S. Patent 9,641,785
`
`Cases
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`BMW of North America, LLC v. Carrum Technologies, LLC,
`
`
`
`IPR2019-00902 (PTAB Oct. 18, 2019) .............................................................. 33
`
`Phillips v. AWH Corp.,
`
`
`
`415 F.3d 1303 (Fed. Cir. 2005). .......................................................................... 8
`
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V.,
`
`
`
`IPR2016-01692 (PTAB Mar. 2, 2018) ......................................................... 32, 33
`
`Other Authorities
`
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`
`
`
`
`
`
`
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`iii
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`Case IPR2021-00758
`U.S. Patent 9,641,785
`
`LIST OF EXHIBITS
`
`EX2001
`
`EX2002
`
`Exhibit No. Description
`Declaration of Katherine G. Rubschlager in support of motion for
`admission pro hac vice
`Biography of Katherine G. Rubschlager submitted in support of
`motion for admission pro hac vice
`EX2003 Updated Curriculum Vitae of Dr. Samuel Hardie Russ
`Declaration of Dr. Don Turnbull in support of Patent Owner
`Universal Electronics Inc.’s Response to Decision to Institute Inter
`Partes Review of United States Patent No. 10,325,486
`Curriculum Vitae of Dr. Don Turnbull
`Transcript of Deposition of Dr. Samuel Hardie Russ
`
`EX2004
`
`EX2005
`EX2006
`
`
`
`
`
`
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`Case IPR2021-00758
`U.S. Patent 9,641,785
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`I.
`
`Introduction
`
`The claims of U.S. Patent No. 9,641,785 (“the ’785 Patent”) are directed to
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`the configuration of a “controlling device” to communicate with two additional
`
`hardware devices – a “media sink device” and a “media source device.” The
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`configuration begins with a “command communication” that is transmitted to a
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`media sink device by a media source device. Based on the receipt of the “command
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`communication,” the controlling device is configured in one of two ways – to send
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`a command indirectly to the media sink device via the media source device, or to
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`send a command directly to the media sink device. None of the cited references
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`provide any teaching or suggestion for such a configuration.
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`Petitioner presents an interpretation of claim 1 that relies on the mere
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`capabilities of connected HDMI devices, as determined by HDMI EDID, CEC
`
`Vendor ID, or HDMI “handshakes.” Such an interpretation is contrary to the plain
`
`language of the claim, as supported by the specification, and in particular Figure 5
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`and its related description. Figure 5 first depicts and describes the preliminary steps
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`of identifying the media sink device’s EDID and determining whether the media sink
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`device is CEC enabled. But after this preliminary determination, Figure 5 thereafter
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`tracks the language of the claim, sending a command communication and
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`configuring the remote control depending on a message indicating a response or a
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`non-response to the command. It would be error to adopt an interpretation of the
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`1
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`Case IPR2021-00758
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`claims that ignores the requirement of an initial “command communication,” and
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`instead relies on mere HDMI EDID, CEC Vendor ID, or HDMI “handshakes” for
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`the claimed configuration of the controlling device.
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`Although the Board instituted review on the single ground of the Petition, the
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`Board repeatedly emphasized that the decision to institute review was based in part
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`on the higher weight afforded to the testimony of Petitioner’s expert over UEI’s
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`attorney argument (e.g., Paper 7, at 27-28, 29, and 30). Petitioner’s expert has since
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`conceded the disclosure of Figure 5, and in particular the two different
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`configurations of the remote control that result from a message indicating
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`responsiveness or unresponsiveness to a CEC command. In addition, UEI submits
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`the declaration of Dr. Don Turnbull (Ex. 2004; Dr. Turnbull’s curriculum vitae is
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`attached at Ex. 2005), to show that each of the references in the instituted ground
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`fails to disclose, either alone or in combination, every element of the challenged
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`claims. See Ex. 2004, at 1-23.
`
`II. Background
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`A. Overview of Technology.
`
`The ’785 Patent is directed to a system for dynamically and automatically
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`configuring a remote control to control a media sink device (e.g., a television) based
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`on information that is received from a media source device (e.g., a set-top box)
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`indicating whether the media sink device was responsive or unresponsive to a
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`command transmitted by the media source device. See Ex. 1001, Claim 1 and Ex.
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`2004, at 42-44. The ’785 Patent describes two different configurations of the remote
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`control based on that information. In one configuration, the remote control transmits
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`commands to the media sink device through an intermediate communications link
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`(e.g., a wired HDMI connection) between the media source device and the media
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`sink device. Ex. 2004, at 45. In the other configuration, the remote control transmits
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`commands directly to the media sink device. Ex. 1001, at Claim 1 and Ex. 2004, at
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`45.
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`Figure 1 of the ’785 Patent depicts the general hardware arrangement and
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`communication links of the claimed invention:
`
`3
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`

`

`Media Sink
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`Second Communications
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`Third Communications
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`Case IPR2021-00758
`U.S. Patent 9,641,785
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`Media Source
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`First Communications
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`Controlling
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`
`
`Ex. 1001, Fig. 1 (annotated).
`
`The invention of the ’785 Patent is particularly relevant for configuring a
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`controlling device to control HDMI sink devices (e.g., TVs) that have already been
`
`determined to be CEC enabled by a media source device based on preliminary
`
`determinations of the type of connection used by the HDMI sink and EDID data
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`retrieved from the HDMI sink. Ex. 2004, at 46-48. This is depicted in Figure 5 of
`
`the ’785 Patent at steps 502 and 504:
`
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`
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`At preliminary step 502 the EDID is retrieved, and at step 504 it is determined
`
`whether CEC is supported by the sink device. Ex. 1001, at 6:16-31 and Ex. 2004 at
`
`52-54. If CEC is supported, the flow chart continues along the right most path of the
`
`flow chart. Id. at 6:31-35 and Ex. 2004, at 49-50, 55. A first CEC command is sent
`
`5
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`at step 526 to switch the input away from the current selection. Ex. 1001, at 6:31-35
`
`and Ex. 2004, at 56. At step 528 it is determined whether the first CEC command
`
`was executed by checking for a HDCP break. Ex. 1001, at 6:35-45 and Ex. 2004, at
`
`56. If the CEC command was not successfully executed, then the system transitions
`
`to the center, non-CEC pathway of FIG. 5. Ex. 1001 at 6:63-7:10 and Ex. 2004, at
`
`57. If the command was successful and a HDCP break did occur, a second CEC
`
`command is sent at step 530 to switch back to the original input at step 530. Ex.
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`1001, at 6:45-55 and Ex. 2004, at 58. The success of that second command is then
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`confirmed by detecting a HDCP re-connect at step 532. Ex. 1001, at 6:45-55 and Ex.
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`2004, at 58-59 If the second CEC command was not successfully executed, then the
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`system transitions to the center, non-CEC pathway. Ex. 1001, at 6:63-7:10 and Ex.
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`2004 at 59. If the second command was successful and a HDCP re-connect did occur,
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`then the remote control is configured to send CEC commands to the source device
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`at step 534. Ex. 1001, at 6:56-63 and Ex. 2004, at 60-61. If, however, either of the
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`CEC commands were unsuccessful then the flow chart culminates with the
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`configuration of the remote control to send commands directly to the media sink
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`device at step 514. Ex. 1001, at 7:40-45 and Ex. 2004, at 60-61.
`
`The ’785 patent therefore describes two different configurations of the remote
`
`control based on the information received at the remote control that is indicative of
`
`whether the media sink device is responsive or unresponsive to the CEC command
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`that was issued by the media source device. In one configuration, the remote control
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`transmits commands to the media sink device indirectly, by communicating with the
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`media source device and causing the media source device to issue a command to the
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`media sink device. Ex. 1001, at 6:56-60 and Claim 1 and Ex. 2004 at 61. In the other
`
`configuration, the remote control transmits commands directly to the media sink
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`device. Ex. 1001at 7:42-45 and Claim 1 and Ex. 2004 at 61.
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`As depicted in Figure 5 – and only after EDID data is retrieved and a CEC
`
`capability determination is made – independent claim 1 of the ’785 Patent requires
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`that: the media source device initially transmits a command communication to the
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`media sink device via the second communications link; such that the media source
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`device then provides the controlling device, via the first communications link, a
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`message having data indicating the media sink device’s responsiveness to the
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`command communication; and finally, the data within the message is used by the
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`controlling device to automatically configure the controlling device to either issue a
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`communication directly to the media sink device via the third communications link
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`if the data indicates the media sink device is unresponsive to the command
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`communication, or issue a communication indirectly to the media sink device though
`
`the intermediate media source device if the data indicates the media sink device is
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`responsive to the command communication. See Ex. 1001 at Claim 1 and Ex. 2004,
`
`at 51.
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`B.
`
`Prosecution History
`
`1. Prosecution History of the ’785 Patent.
`
`The ’785 Patent was filed as Application No. 15/180,188 on June 13, 2016.
`
`Ex. 1002 at 0005. The ’785 Patent, through various continuations, claims the benefit
`
`of U.S. Application Ser. No. 13/240,640 filed on Sep. 22, 2011. Id. at 0011. The
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`’785 Patent also claims the benefit of U.S. Application Ser. No. 14/676,556 filed on
`
`April 1, 2015. Id. On September 2, 2016, the Examiner issued a non-statutory double
`
`patenting rejection over related Patent Nos. 9,019,435 and 9,380,250. Ex. 1002, at
`
`0062-0066. This rejection was overcome when the Applicant filed a terminal
`
`disclaimer over the referenced patent. On Feb. 2, 2017, the Examiner issued a Notice
`
`of Allowance. Id. at 0136. The ’785 Patent issued on May 2, 2017. Id. at 0144. See
`
`also Ex. 2004, at 63-64.
`
`2. Prosecution History Relating to Patent No. 9,380,250
`
`The claims of the ’250 patent were not rejected during prosecution. Ex.
`
`1016, generally. Ex. 2004, at 65. The Applicant submitted a terminal disclaimer
`
`over related Patent No. 9,019,435 together with the filing of the application that
`
`matured into the ’250 patent. Ex. 1016 at 0072-0075. The claims were subject to
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`minor Examiner’s Amendments in the Notice of Allowance (id. at 0083-0090), but
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`otherwise the claims were allowed as filed. In the Notice of Allowance, the
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`Examiner specifically referenced the following language in the claim as being
`
`significant to the reasons for allowance:
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`using the data within the message to automatically configure the
`
`controlling device such that the controlling device will respond to an
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`activation of an input element of the controlling device by issuing a
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`communication directly to the second controllable appliance to control the
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`functional operation of the second controllable appliance when the data in the
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`message indicates that the second controllable appliance is unresponsive to
`
`the command communication.
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`Id. at 0088-0089.
`
`3. Prosecution History Relating to Patent No. 9,019,435
`
`Allowed claim 1 of the ’435 patent is nearly identical to claim 1 of the ’785
`
`patent, hence the Examiner’s rejection for double patenting and the subsequent
`
`terminal disclaimer. Ex. 2004, at 66.
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`The originally filed claims of the ’435 patent were subject to several
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`rejections, leading to certain amendments to the claims. Id. at 66-71. In particular,
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`in response to a second office action, dated August 1, 2013, Applicant responded
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`by amending rejected independent claim 1. Notably, the Applicant added the
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`recitation of a specific “message” communicated from the second controllable
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`appliance (i.e., the source device) to the controlling device is used to configure the
`
`controlling device. Ex. 1017, at 0158 and Ex. 2004, at 69-70.
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`Applicant’s amendments and arguments were not initially accepted by the
`
`Examiner, and Applicant responded by filing a pre-appeal brief and ultimately an
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`Appeal Brief. Ex. 2004, at 71-73. In its Appeal Brief, Applicant specifically cited
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`the portions of Figure 5 of the specification that describe in detail each limitation
`
`of claim 1. Ex. 1017, at 0222 and Ex. 2004, at 73.
`
`The Examiner reopened prosecution after the Appeal Brief was filed and
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`mailed another office action indicating that claims 1-17 were allowed. Ex. 1017, at
`
`0244 and Ex. 2004 at 74. The Applicant corrected some minor linguistic issues
`
`present in claim 18 in response to this office action (Id. at 0272-0273), and the
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`application was subsequently allowed. Id. at 0279-0284.
`
`C.
`
`Petitioner’s Asserted Prior Art References
`
`4.
`
`Chardon (Ex. 1005).
`
`Petitioner relies on primary reference U.S. Patent Publication No.
`
`2012/0249890 (“Chardon”). Chardon discloses an arrangement where a “multi-
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`media gateway” (e.g., set-top box) communicates with an “HDMI appliance[]” (e.g.,
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`TV) by transmitting command codes to the HDMI appliance. Ex. 1005, at [0030]
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`and Ex. 2004, at 76-79. The commands that Petitioner relies on in the petition –
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`whether CEC or IR – are sent via the multi-media gateway 110, not the remote
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`control 115. See Ex. 2004, at 79-80 and 89. Chardon does not disclose configuring
`
`a remote control in any way, and certainly does not disclose dynamic configuration
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`that results in the selection of one of two pathways based on data indicating
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`responsiveness or unresponsiveness to a command. See Ex. 2004, at 76-78.
`
`5. Mishra (Ex. 1009).
`
`Petitioner relies on U.S. Patent Publication No. 2001/0005197 (“Mishra”) as
`
`a secondary reference. Mishra is directed to a “control system [that] enables
`
`telephone calls to be answered remotely using a remote control unit also adapted to
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`remotely control an electronic device such as a VCR.” Ex. 1009 at Abstract and Ex.
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`2004, at 104. In direct contrast with the system disclosed in Chardon, Mishra
`
`discloses that the remote control is the only device that communicates commands to
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`the target device (e.g., a VCR) via IR. The “master” (e.g., set-top box) is never in
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`communicative control with the target device, and Mishra does not disclose any
`
`HDMI connection. Moreover, Mishra discloses what was already known in the art –
`
`basic remote-control configuration. But like Chardon, there is no disclosure of
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`dynamic configuration based on data
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`indicating a media sink device’s
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`responsiveness or unresponsiveness to a command issued by the media source
`
`device. Id. at [0016]-[0019].
`
`6. HDMI (Ex. 1010).
`
`Petitioner also relies on HDMI v.1.3a (“HDMI”) as a secondary reference.
`
`HDMI is a specification to describe the High-Definition Multimedia Interface “for
`
`transmitting digital television audiovisual signals from DVD players, set-top boxes
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`and other audiovisual sources to television sets, projectors and other video displays.”
`
`Ex. 1010 and Ex. 2004, at 100. These core concepts were disclosed in the ’785
`
`Patent. Ex. 1001 at 5:9-15. Accordingly, HDMI does not add anything of substance
`
`to Petitioner’s arguments. See Ex. 2004, at 101-103.
`
`D.
`
`Person of Ordinary Skill in The Art (POSITA).
`
`The Board adopted Petitioner’s proposed definition of the level of ordinary
`
`skill in the art, which was proposed as:
`
`Petitioner proposes that a person of ordinary skill in the art would
`
`have had general knowledge of home theater systems, control of
`
`devices within the home theater systems, and remote control devices,
`
`as well as (1) at least a bachelor’s degree in electrical engineering,
`
`computer engineering, or equivalent coursework, and (2) at least one
`
`year of experience researching or developing structure and operating
`
`principles of common digital content reproduction and related
`
`appliances, contemporary television and home theater standards, and
`
`specifications of consumer digital reproducing devices of the time.
`
`Paper 7, at 9 (citing Pet. (Paper 2) at 13-14).
`
`UEI’s own proposal differed from the Petitioner’s definition of the level of
`
`ordinary skill in the art in terms of the level of experience specifically with home
`
`theater systems. UEI proposed the following definition of the level of ordinary skill
`
`in the art:
`
`[A person of ordinary skill in the art] would have had a
`
`bachelor’s degree that involved software design and development
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`coursework, for example, electrical engineering, computer engineering,
`
`computer
`
`science, cognitive
`
`science,
`
`industrial engineering,
`
`information systems, information studies, or a similar degree, and at
`
`least one year of work experience in software programming,
`
`development, or design of consumer applications as of Sep. 22, 2011,
`
`the priority date of the 785 Patent. Additional education might
`
`substitute for some of the experience, and substantial experience might
`
`substitute for some of the educational background.
`
`Paper 7, at 9 (citing Prelim. Resp. (Paper 6) at 5-6).
`
`Dr. Turnbull agreed with UEI’s definition of the level of ordinary skill in the
`
`art, however the conclusions resulting from his analysis did not change when
`
`reviewing the cited references from the perspective of the level of ordinary skill in
`
`the art as proposed by the Petition and as adopted by the Board. Ex. 2004, at 31-41;
`
`see also Ex. 2004, at 24-29.
`
`III. Claim Construction
`
`The claims are interpreted using the standard articulated in Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005). See 37 C.F.R. § 42.100(b). Under the Phillips
`
`standard, claim terms are generally given their ordinary and customary meaning as
`
`understood by a POSITA when read in the context of the specification and
`
`prosecution history. Phillips, 415 F.3d at 1313. However, a claim term will not
`
`receive its ordinary meaning if the patentee acted as his or her own lexicographer
`
`and clearly set forth a definition of the disputed claim term either in the specification
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`or prosecution history. Id. at 1316. Similarly, if the intrinsic evidence reveals an
`
`intentional disclaimer, or disavowal, of claim scope by the inventor, the inventor has
`
`dictated the correct claim scope, and the inventor’s intention is regarded as
`
`dispositive. See id.
`
`The Board suggests that the parties have taken different positions with respect
`
`to the proper claim construction of certain terms in claim 1 of the ’785 Patent.
`
`However, Patent Owner respectfully submits that the present dispute does not turn
`
`on the proper construction of terminology in the claims, but instead the present
`
`dispute relates to the relevance of the specification in interpreting the scope of the
`
`claims. Indeed, in light of the clear and unambiguous disclosure in the specification,
`
`the plain and ordinary meaning of the terminology of claim 1 is appropriate for
`
`resolving the differences in the parties’ view of the relevance of the cited references.
`
`See Ex. 2004, at 30 and 105.
`
`A.
`
`“wherein the media source device is programmed to provide to the
`controlling device via the first communications link a message
`having data which indicates whether a media sink device coupled
`to the media source device is responsive or unresponsive to a
`command communication transmitted to the media sink device by
`the media source device via a second communications link between
`the media source device and the media sink device”
`
`Patent Owner proposes that this term can generally be understood by its plain
`
`and ordinary meaning, in light of the specification. As discussed in greater detail
`
`below, Figure 5 and the accompanying disclosure in the specification of the ’785
`
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`patent clearly describe the recited “message,” how it is generated, and where it is
`
`transmitted—all of which are elements that the Petitioner has failed to properly
`
`interpret. Therefore, no explicit claim construction is warranted for the claims of the
`
`’785 Patent. See Ex. 2004, at 105.
`
`IV. The Cited Ground does not Render any Claims Unpatentable
`
`The Board instituted review on a single ground: Chardon (EX1005) in view
`
`of HDMI v1.3a (EX1010) and Mishra (EX1009). Paper 7, at 31 and Ex. 2004, at 62
`
`and 75.
`
`For the reasons discussed in detail below, including the declaration of Dr.
`
`Turnbull, none of the references in the single cited ground, whether considered alone
`
`or in combination, discloses or teaches each and every element of the challenged
`
`claims. See Ex. 2004, at 106-109.
`
`A. Chardon in view of HDMI and Mishra Do Not Render Obvious any
`Challenged Claim of the ’785 Patent.
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`1. Petitioner has Failed to Establish that Chardon in view of HDMI and
`Mishra Discloses, Teaches, or Suggests the Invention of Claim 1.
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`Claim 1 of the ’785 patent is directed to the automatic configuration of a
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`controlling device based on two possible outcomes of a command communication
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`transmitted from the media source device to the media sink device – responsive or
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`unresponsive. This automatic configuration is implemented at the controlling device
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`upon receipt of “a message having data which indicates whether … the media sink
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`device … is responsive or unresponsive to a command communication” from the
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`media source device. If the data indicates responsiveness, the controlling device is
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`automatically configured to send communications to the source device, which acts
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`as an intermediary, to then be sent to the sink device – an arrangement that requires
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`three hardware devices. If the data indicates unresponsiveness, the remote control
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`communicates directly with the sink device – an arrangement that requires two
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`hardware devices. Ex. 2004, at 110.
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`Chardon, HDMI and Mishra do not disclose the claimed automatic
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`configuration of a controlling device to communicate via the two claimed pathways.
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`Instead, Chardon discloses, consistent with the HDMI standard, that HDMI
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`appliances that are connected to one another via cables can communicate via CEC
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`commands and in some cases via IR. Mishra merely discloses that remote control
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`devices can be configured. Id. at 111.
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`Petitioner relies on several different embodiments in Chardon that are distinct
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`from one another, but generally describe how one HDMI device can control a second
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`HDMI device. Id. at 81-88 and 112-113. Petitioner cites to an embodiment in
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`paragraph 12 of Chardon, arguing that this disclosure “explicitly recognizes the
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`alleged improvement contemplated by the ‘785 patent.” Paper 2, at 2. But paragraph
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`12 of Chardon describes an embodiment that merely includes a “first HDMI
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`appliance” and a “second HDMI appliance.” Ex. 2004, at 114. A CEC command
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`code is sent from the first appliance to the second appliance, and if no response is
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`received to the CEC command code the first appliance resends the command to the
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`second appliance via IR. In this embodiment, no data is sent indicating
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`unresponsiveness to the CEC command, no configuration is described, no different
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`communication pathway can be elected, and only two HDMI devices are involved.
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`Id. at 114. Petitioner’s expert, Dr. Russ, agreed with this general characterization of
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`Chardon’s paragraph 12 and confirmed his understanding that this is describing the
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`Figure 6 embodiment of Chardon. Ex. 2006, at 89 and 114.
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`Petitioner also relies on Figure 5 to support its interpretation of Chardon.
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`Paper 2, at 21. Figure 5 is described as “a high-level flow diagram of a method for
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`operating a remote-control engine on a remote-control system of the multimedia
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`gateway according to one embodiment of the present invention.” Ex. 1005 at [0026],
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`[0058] (emphasis added). The multimedia gateway (depicted at 110 in Figure 1)
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`includes the remote-control engine (140) on a remote-control system (145), and
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`thereby Chardon again describes an HDMI appliance that provides the functionality
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`of the remote-control engine (140) for both monitoring the responsiveness of other
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`HDMI-appliances and for sending commands to the other HDMI-appliances via
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`either CEC or IR. Ex. 2004, at 115. Once again, no data is sent indicating
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`responsiveness or unresponsiveness to the CEC command, no configuration of a
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`controlling device that is separate from the “first HDMI appliance” and the “second
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`HDMI appliance” is described, and no controlling device is configured to utilize one
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`of two different and discrete communication pathways for sending a particular
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`command. Id.
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`Petitioner also attempts to rely on the embodiment of Figure 6 (Pet. at 43, 48),
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`but this example is also far removed from the invention of the ’785 Patent. The flow
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`diagram of Figure 6 begins with a remote control device that transmits a set of IR
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`codes. Ex. 1005, at [0062]. But after the initial codes are sent, the remote control
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`device does not further interact with the system to automatically configure itself
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`based on whether HDMI devices are responsive to CEC commands. Ex. 2004, at
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`116. After the remote control device sends the initial IR command codes, the remote
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`control device need not know whether the subsequent CEC-based commands were
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`successful or not, because the multimedia gateway will either silently watch the CEC
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`commands being executed by monitoring the CEC bus, or the multimedia gateway
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`will step in and intercept an unsuccessful CEC command and translate that CEC
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`command into an IR command transmitted from the multimedia gateway to the
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`intended destination HDMI-device via the onboard IR blaster. Id. at 116-118. In
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`either event, the first HDMI device always sends the same CEC signal. The
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`multimedia gateway either does nothing or translates that signal to IR. Once again,
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`no data is sent indicating responsiveness or unresponsiveness to the CEC command,
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`no configuration of a controlling device that is separate from the “first HDMI
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`appliance” and the “second HDMI appliance” is described, and no controlling device
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`is configured to utilize one of two different and discrete communication pathways
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`for sending a particular command. Id. at 118.
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`Chardon simply does not disclose the invention of the ’785 Patent – the
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`automatic configuration of a remote control device by a media source device for
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`communication via one of two pathways based on data indicating the responsiveness
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`or unresponsiveness of a media sink device. Id. Mishra merely discloses a basic,
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`manually configurable remote control, but in no way addresses the failings of
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`Chardon. Id. Petitioner’s citations to the HDMI Specification are limited, and the
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`HDMI Specification is never cited for anything more than the ability for HDMI
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`devices to communicate with one another. Id.
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`2. Petitioner has Failed to Establish that Chardon in view of HDMI Discloses,
`Teaches, or Suggests “wherein the media source device is programmed to
`provide to the controlling device via the first communications link a message
`having data which indicates…the media sink device…is responsive or
`unresponsive to a command communication.”
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`a. Chardon, HDMI, and Mishra, considered alone or in c