[00:00:00] Speaker 03:
The next case for argument is number 22, 1058, Roku Incorporated Against Universal Electronics.

[00:00:10] Speaker 03:
Mr. Millican.

[00:00:20] Speaker 04:
Thank you, Your Honor.

[00:00:21] Speaker 04:
May it please the court?

[00:00:23] Speaker 04:
The issue in this appeal is simply stated.

[00:00:26] Speaker 04:
Does Shardin's database of CEC command codes and IR command codes render obvious the claimed listing comprised of at least a first communication method and a second communication method?

[00:00:38] Speaker 04:
Since everyone agrees that CEC and IR are communication methods, the answer has to be yes.

[00:00:46] Speaker 04:
And the board's contrary finding should be reversed.

[00:00:49] Speaker 04:
Now the board in reaching its conclusion relied on the fact that a command code standing alone is not the same thing as a communication method, and that's true, but the board missed a critical point.

[00:01:03] Speaker 04:
Shardon doesn't just disclose a list of command codes.

[00:01:06] Speaker 04:
It tells us that its database includes a list of IR command codes and a list of parallel CEC command codes.

[00:01:14] Speaker 04:
And Shardon can choose to send one or the other depending on which communication method it prefers to use.

[00:01:22] Speaker 04:
And so this list has both the command codes and at least two different communication methods by which those codes can be transmitted.

[00:01:30] Speaker 04:
And an analogy may help to make this point.

[00:01:33] Speaker 04:
Suppose I tell my travel agent I need to get from DC to New York tomorrow morning.

[00:01:38] Speaker 04:
So she sends me an email and says, here's a list of Amtrak train numbers and a list of Delta flight numbers that are going from DC to New York on November 4.

[00:01:48] Speaker 04:
I think that as a matter of just sort of normal English usage, you would say that that list of train numbers and flight numbers includes two different transportation methods.

[00:01:58] Speaker 04:
And so it is with Chardon.

[00:02:00] Speaker 04:
Chardon's list of CEC command codes and parallel IR command codes renders obvious the claimed listing of two different communication methods.

[00:02:10] Speaker 02:
I want to interrupt you for a minute.

[00:02:12] Speaker 02:
I think what the board did here was it was very technical.

[00:02:17] Speaker 02:
And you would argue hypertechnical, I bet.

[00:02:21] Speaker 02:
I would disagree with that.

[00:02:22] Speaker 02:
It's reading of the claim terms, communication methods versus command codes.

[00:02:28] Speaker 02:
And so if you did ask for a list of travel methods, and what you got was a list of flights, I mean, that might not answer what your list of communication or travel methods are.

[00:02:44] Speaker 04:
I take your point, Your Honor, but the board agreed and UEI conceded below that the claimed listing does not have to include the literal names of the communication methods in it.

[00:02:58] Speaker 04:
So it is not required that the list have the literal phrases like CECIRRF.

[00:03:04] Speaker 02:
What about the fact that the reference itself says that they're command codes and doesn't say their communication methods?

[00:03:11] Speaker 02:
Again, just relying on the words of the claim.

[00:03:15] Speaker 02:
And there's expert testimony, too.

[00:03:17] Speaker 02:
I'm just presenting to you what would be the substantial evidence to support the board's fact-finding.

[00:03:25] Speaker 02:
And I want to make sure you respond to it.

[00:03:26] Speaker 04:
I understand your question, Your Honor.

[00:03:29] Speaker 04:
It is absolutely true that a command code and a communication method are not the same thing.

[00:03:35] Speaker 04:
But what is also true is that Chardon discloses a list that it tells us includes both CEC command codes and IR command codes.

[00:03:45] Speaker 04:
And Chardon is able to identify which ones are which, because it chooses, I'm going to try a CEC command code first.

[00:03:54] Speaker 04:
And then if that doesn't work, I'll send an IR command code.

[00:03:57] Speaker 04:
And so our point is that, given that it's common ground that the claim doesn't require the listing to include the literal names of the communication methods in it, then Chardon's listing of CEC and IR command codes

[00:04:14] Speaker 04:
necessarily discloses the claimed listing.

[00:04:17] Speaker 02:
I think that the only way...

[00:04:21] Speaker 04:
It is, Your Honor.

[00:04:22] Speaker 04:
We had a couple of optional secondary references, but I don't think they're necessary and they're not relevant on appeal.

[00:04:29] Speaker 02:
Was this the only difference between the prior art and the claims as identified as argued by the parties and disputed in the proceedings below?

[00:04:39] Speaker 04:
UEI made some other arguments that were not addressed by the board.

[00:04:43] Speaker 04:
This is the only ground that the board relied on.

[00:04:46] Speaker 04:
But I think to your point, Judge Stoll, I think the only way that UEI could win here is if the claims were read so narrowly as to require the literal names of the communication methods to be in the list.

[00:04:59] Speaker 04:
And that's an interpretation that the board expressly disavowed in its decision on rehearing, and that's found at Appendix 29.

[00:05:08] Speaker 04:
And I think that it's also worth, just for clarity, to spend a little bit of time on the rehearing decision.

[00:05:15] Speaker 04:
If you were to simply read the final written decision in this case, you might think that the board's determination did turn on some type of claim construction.

[00:05:26] Speaker 04:
Because the board appeared to read the claim to acquire that the system actually consult the listing to decide which communication method to use.

[00:05:35] Speaker 04:
That is how the embodiment disclosed in Figure 7 of the patent works.

[00:05:39] Speaker 04:
It actually uses the matrix to decide which communication method to use.

[00:05:44] Speaker 04:
The claim, however, doesn't require that.

[00:05:46] Speaker 04:
The claim just says that one of the two communication methods is caused to be used.

[00:05:51] Speaker 04:
And so that's why we petitioned for rehearing.

[00:05:55] Speaker 04:
We argued in our petition for rehearing that, board, you have construed the claim too narrowly.

[00:06:01] Speaker 04:
The claim does not require that the system consult the listing to decide which communication method to use.

[00:06:07] Speaker 04:
And the board in its decision on rehearing made very clear that it wasn't interpreting the claim that narrowly either.

[00:06:14] Speaker 04:
It says this at Appendix 32.

[00:06:17] Speaker 04:
It was not reading the claims to require that the system consult the listing to decide which communication method to be used.

[00:06:23] Speaker 04:
So the board was extremely clear in its decision on rehearing that it was finding against us based on this straightforward factual finding that even though CEC and IR are communication methods, Chardon's list of CEC command codes and IR command codes doesn't teach or suggest a list that includes two different communication methods.

[00:06:49] Speaker 04:
So that's why this is a substantial evidence appeal, not a claim construction appeal.

[00:06:53] Speaker 04:
And we'd submit that the factual finding in question is just plainly wrong and lacks any evidence, much less substantial evidence.

[00:07:01] Speaker 02:
I think that maybe they relied on, and it could be wrong.

[00:07:07] Speaker 02:
I can't remember if this is just in the briefing or in the PTAP's decision.

[00:07:11] Speaker 02:
But they relied on questions that were asked at argument.

[00:07:16] Speaker 02:
And the answer was, I don't know whether a person of ordinary skill in the art, if you put a generic command code in front of them, would say, oh, yeah, I recognize this as a CEC command code or an IR command code.

[00:07:27] Speaker 02:
How do you respond to that?

[00:07:29] Speaker 04:
I would say that's irrelevant.

[00:07:31] Speaker 04:
Whether a command code in the abstract, whether a skilled artisan could look at it on the page and say that's CEC or that's IR, I don't think that's relevant because for two reasons.

[00:07:42] Speaker 04:
First, Chardon tells us that the command codes in its database are CEC command codes and IR command codes.

[00:07:48] Speaker 04:
We don't have to guess.

[00:07:49] Speaker 04:
The disclosure is right there.

[00:07:51] Speaker 04:
And second, Chardon's system itself must be able to tell the difference, because that's how it decides which command code to use.

[00:08:00] Speaker 04:
In one embodiment, for example, it tries a CEC command code first, and then if that works, great, but if it doesn't work,

[00:08:08] Speaker 04:
it will use the IR command code that corresponds to that same function and send that.

[00:08:14] Speaker 02:
One of the things I did in preparing for today was I read your petition before the PTAB where this particular claim limitation was addressed compared to Chardon.

[00:08:27] Speaker 02:
And I would say that there was almost a presumption in that petition that what Chardon called command codes are, in fact, communication methods.

[00:08:38] Speaker 02:
Am I wrong about that?

[00:08:40] Speaker 02:
Is there some technical explanation or even logical explanation in there for why it is that the command codes are communication methods?

[00:08:51] Speaker 04:
Well, I think what the petition was saying was that Chardon has the command codes and it literally discloses the communication method by which the command code is to be transmitted.

[00:09:04] Speaker 04:
IR is the communication method.

[00:09:06] Speaker 02:
Do you want to tell me where you think the best place is in your petition to answer my question?

[00:09:13] Speaker 04:
Sure.

[00:09:13] Speaker 04:
Maybe the easiest way to do it is if you look at our gray brief, this goes through the petition and the supporting expert testimony.

[00:09:26] Speaker 04:
So beginning at page five of the gray brief, we say, our petition explained that Chardon creates a database of IR and CEC command codes.

[00:09:40] Speaker 04:
And that's citing appendix 116 from the petition.

[00:09:43] Speaker 04:
And the skilled artisan would have understood this to be a listing of CEC command codes and IR command codes.

[00:09:51] Speaker 04:
And the patent itself explains that CEC and IR are communication methods.

[00:09:57] Speaker 04:
So we didn't think that that would be a point of dispute, the fact that CEC is one of the claimed communication methods and IR is one of the claimed communication methods.

[00:10:05] Speaker 04:
And then our expert went further.

[00:10:07] Speaker 04:
And equated, and you can see this at appendix 906 paragraph 205, he explicitly equated the first communication method with HDMI CEC over an HDMI cable.

[00:10:21] Speaker 04:
So I think it was very clear that we were mapping the- I understand what you're saying.

[00:10:26] Speaker 02:
I really just wanted to ask a question about your petition alone.

[00:10:29] Speaker 02:
I have a petition in light of the expert testimony.

[00:10:31] Speaker 02:
And so I'm looking at page A116 to 118.

[00:10:36] Speaker 02:
And I've read that, and I just didn't see where there was anything that said command codes or communication methods are explained, why it is that even though the reference refers to command codes, those are in fact also communicating communication methods.

[00:10:54] Speaker 02:
It's assumed.

[00:10:55] Speaker 02:
I understand it's a basic point, but I'm just trying to ask you if there is an explanation in there.

[00:11:01] Speaker 04:
Well, I'd also point you to Appendix 126, which is part of our petition.

[00:11:05] Speaker 04:
And this, like Dr. Russ's declaration, explicitly maps the first communication method to HDMI CEC over an HDMI cable.

[00:11:15] Speaker 04:
That's at the bottom of the page on Appendix 126.

[00:11:19] Speaker 04:
And then it says, if that first communication method fails, Chardon will then try to send to the same device

[00:11:25] Speaker 04:
an IR command code that performs the same function as the HDMI CEC command code.

[00:11:32] Speaker 04:
Thus, Chardon discloses its listed communication methods are used for controlling the same functional operation of the same target device.

[00:11:42] Speaker 02:
I think that's extremely... Well, that's in a different section.

[00:11:47] Speaker 02:
It is, but it's... It's in a different section.

[00:11:48] Speaker 04:
It's in a different section, but it's talking about the same communication methods.

[00:11:52] Speaker 04:
And I think that was very clear from the petition.

[00:11:56] Speaker 04:
And I think, again, that where the board sort of went astray here is it got hung up on this fact that a communication method in the abstract is not the same thing as a communication code.

[00:12:07] Speaker 04:
But I think that, respectfully, that's just not sort of addressing the crux of our argument here.

[00:12:12] Speaker 00:
Counselor, did I hear you correctly earlier stated that you thought this was a substantial evidence quid?

[00:12:18] Speaker 04:
In light of the board's sort of agreement with our claim construction positions and its decision for rehearing, yes, I think this is a substantial evidence case.

[00:12:30] Speaker 00:
You seem to be arguing a different theory that the board should have adopted.

[00:12:36] Speaker 04:
A different theory from what, Your Honor?

[00:12:39] Speaker 00:
On the protocol, the protocol-specific issue, you seem to be arguing a different theory that the PTEN should have adopted

[00:12:49] Speaker 00:
a different theory than what it did under the evidence.

[00:12:53] Speaker 04:
I'm not sure I would put it quite that way, Your Honor.

[00:12:57] Speaker 04:
I think that the board never really grappled with the fact that the command codes in Chardon are identified as protocol specific.

[00:13:06] Speaker 00:
I guess that's what I mean.

[00:13:07] Speaker 00:
You're arguing that basically PTAB was wrong and that you were right.

[00:13:17] Speaker 00:
But you're dealing with one set of evidence here.

[00:13:21] Speaker 00:
And under substantial evidence, you have to show that there was a lack of substantial evidence, not that you have a different theory.

[00:13:30] Speaker 00:
Or even if your theory is correct, it could be that you can have two different outcomes that result from the same facts or the same record.

[00:13:41] Speaker 00:
And we have to defer to the PTAP.

[00:13:44] Speaker 00:
And here, why is it, I mean, I haven't heard you yet attack the PTAN's rationale why it's not supported by substantial evidence.

[00:13:53] Speaker 04:
It's not because the sole point that the board relied on and the sole point that UEI's expert relied on is the undisputed point that a command code

[00:14:06] Speaker 04:
is not the same thing as a communication method.

[00:14:09] Speaker 04:
That does not get the board far enough to make a reasoned decision that Chardon's list of CEC specific command codes and IR specific command codes doesn't teach or suggest the claim listing of multiple communication methods.

[00:14:27] Speaker 04:
The factual point that it made that a command code is different from a communication method is correct.

[00:14:33] Speaker 04:
But that is not sufficient for the board to find that Chardon doesn't render this limitation obvious.

[00:14:39] Speaker 04:
And that's why we'd submit that the board's decision is not supported by substantial evidence.

[00:14:47] Speaker 04:
I see I'm well into my rebuttal time.

[00:14:49] Speaker 04:
I'm happy to answer any further questions or reserve the balance.

[00:14:53] Speaker 03:
Anything else for counsel?

[00:14:56] Speaker 04:
Thank you.

[00:14:56] Speaker 04:
Thank you.

[00:14:58] Speaker 01:
The board's decision is supported by substantial evidence because it was responding to the very arguments that Roku made in the petition.

[00:15:13] Speaker 01:
If we look at appendix page 21, the board actually quotes from the petition.

[00:15:23] Speaker 01:
Petitioner further argues that, and then they're quoting from the petition, that Chardon's linked databases are used to control the functional operations of the intended target appliance to which they have been linked.

[00:15:35] Speaker 01:
And they do so because, quote, depending on the contents of the database for a given appliance, the remote control engine may preferentially try CEC first for that appliance and use IR as a secondary communication method.

[00:15:49] Speaker 01:
So that's what the board was responding to.

[00:15:53] Speaker 01:
that argument and look what the board said.

[00:15:56] Speaker 01:
Petitioner's argument that the method of transmission is dependent on the contents of the database is not supported by its citations to Chardon.

[00:16:06] Speaker 01:
In Chardon's Figure 5, described in paragraph 58, the remote control transmits a CEC command code first and only transmits an IR command code if no response is received, indicating that the CEC command code was received and executed by the target appliance.

[00:16:23] Speaker 01:
So when counsel argued that in the Chardon method, there is a choice of communication methods, there is no choice.

[00:16:31] Speaker 01:
First of all, a command code is not a communication method.

[00:16:35] Speaker 01:
And what the Chardon device does is sends the CEC command code by default.

[00:16:44] Speaker 01:
And if no response is received indicating that the CEC command code was received and executed, it'll send the IR.

[00:16:52] Speaker 01:
So the board goes on responding to Roku's argument on the next page, APPX 22.

[00:17:02] Speaker 01:
However, Chardon does not describe deciding whether to send an IR code based on consulting an EDE linked database of command codes.

[00:17:11] Speaker 01:
They made that finding because they're responding to Roku's argument about what Chardon discloses.

[00:17:16] Speaker 01:
And our position before the board was

[00:17:20] Speaker 01:
that the petitioner did not provide any analysis or expert testimony to show that Chardon's alleged use of database-linked command codes meets the listing limitation.

[00:17:35] Speaker 01:
And the board agreed.

[00:17:36] Speaker 01:
We therefore agree with Pat and owner that petitioner provides no analysis or expert testimony to show that the alleged use of Chardon's linked database of command codes to transmit commands over two different communication methods

[00:17:48] Speaker 01:
is sufficient to disclose the claim listing.

[00:17:52] Speaker 01:
Now, one thing of note in Chardon is that Chardon does not disclose that its CEC or IR command codes are specific to only one type of communication method.

[00:18:08] Speaker 01:
They're command codes.

[00:18:10] Speaker 01:
For example, appendix page 944, paragraph 39 of Chardon,

[00:18:15] Speaker 01:
Chardon discloses that its IR command codes are configured to be transmitted in IR or RF form.

[00:18:23] Speaker 01:
Command codes and communication methods are not the same thing, and there's no dispute.

[00:18:27] Speaker 01:
A command code is an instruction to perform a function, and a communication method is a medium or protocol for transmitting or receiving information, such as command codes.

[00:18:36] Speaker 01:
And I think the board's conclusion, based on everything Roku argued in the petition, is worth noting.

[00:18:46] Speaker 01:
Quote, the record falls short of providing evidence that one of ordinary skill in the art would have understood stored command codes to act as an identification of communication methods to be used rather than a reference for codes to be used once the communication to be used is determined in some other way.

[00:19:03] Speaker 01:
This is a substantial evidence case.

[00:19:06] Speaker 01:
And all the board did was respond and deal with Roku's arguments in the petition.

[00:19:11] Speaker 01:
And based on those arguments, the board found that Roku

[00:19:16] Speaker 01:
did not read on the listing limitation.

[00:19:21] Speaker 01:
And we respectfully request that the board's judgment be affirmed.

[00:19:25] Speaker 02:
Council, could you give me that site for Chardon again for where, as I understand it, you're saying the IR command codes can be sent by IR or RF, did you say?

[00:19:34] Speaker 01:
Yes, of course, Your Honor.

[00:19:36] Speaker 01:
Configured to be transmitted in IR or RF.

[00:19:39] Speaker 01:
That's appendix page 944, and that's paragraph 39 of chart.

[00:19:48] Speaker 03:
Do you have a theory as to how come the board, in looking at these three cases, which have many similarities in style and the relevance of the prior art, came out with different conclusions?

[00:20:07] Speaker 03:
Is your sense

[00:20:08] Speaker 03:
that now that we're on appellate review, the real way to look at it and the way the board handled it was whether they were dealing with claim construction or questions of law or substantial evidence as to how to resolve the kind of balance

[00:20:34] Speaker 03:
case as compared with the others?

[00:20:37] Speaker 01:
I wish I had a theory, Your Honor.

[00:20:38] Speaker 01:
I think it's issue dependent.

[00:20:40] Speaker 01:
There's been a lot of briefing.

[00:20:42] Speaker 01:
On some issues, they were issues of claim construction.

[00:20:45] Speaker 01:
On some issues, they were issues of substantial evidence.

[00:20:50] Speaker 01:
But if I had a theory, Your Honor, with all due respect, I would be sitting where you are.

[00:20:55] Speaker 01:
And I don't have a theory.

[00:20:58] Speaker 03:
OK, neither do I. Thank you.

[00:21:02] Speaker 03:
Do you have any more questions?

[00:21:04] Speaker 00:
I got five theories.

[00:21:07] Speaker 03:
OK, thank you.

[00:21:08] Speaker 04:
Thank you, Your Honors.

[00:21:10] Speaker 04:
I'd just like to make three brief points.

[00:21:12] Speaker 04:
The first goes to Judge Stoll, your question about the fact that some of the command codes in Chardon can be transmitted by either IR or RF.

[00:21:22] Speaker 04:
All that shows is that those command codes are associated with both the IR communication method and the RF communication method.

[00:21:30] Speaker 04:
And so that would mean that Chardon's list includes more than two communication methods.

[00:21:34] Speaker 04:
So I don't think that undercuts our argument at all.

[00:21:37] Speaker 04:
The second point is, I heard a lot during my friend's argument about the fact that as the board found in its final written decision, Chardon does not consult its database of command codes to decide which communication method to use.

[00:21:56] Speaker 04:
That is true, but that is not required by the claims.

[00:22:01] Speaker 04:
And the board did not find that that was required by the claims.

[00:22:06] Speaker 04:
You can see that in the rehearing decision at Appendix 32.

[00:22:09] Speaker 04:
And so that is not a meaningful distinction in the context of asking whether Chardon discloses the limitations of these claims.

[00:22:19] Speaker 04:
And then the final point that I'd like to make, and this goes both to my friend's point that the board responded to the arguments we made in the petition and also, Judge Raina, back to your question about why isn't the board's theory sort of sufficient.

[00:22:35] Speaker 04:
And I think that it's made very clear at appendix 30 to 31, which is part of the board's decision on rehearing,

[00:22:44] Speaker 04:
And the board is talking about this dispute about whether a list of protocol-specific CDC and IR command codes teaches or suggests a listing comprised of two different communication methods.

[00:22:57] Speaker 04:
And the board says the hearing transcript reflects this dispute.

[00:23:02] Speaker 04:
We asked patent owner if a communication code indicates which method should be used, why wouldn't Chardon's database meet the limitation of the claim.

[00:23:10] Speaker 04:
The patent owner responded with their point that my friend made again that a command code is different than a communication method.

[00:23:18] Speaker 04:
And then the board accurately characterized our argument in response, which has been the same throughout the petition, the reply, the oral hearing and on appeal that Chardon is not talking about a generic command code database.

[00:23:33] Speaker 04:
Going on to appendix 31, Chardon is talking about a very specific list of CEC command codes and a very specific list of IR command codes.

[00:23:43] Speaker 04:
And then counsel at the oral hearing further made the point that Chardon has to be able to figure out which is which, because otherwise it wouldn't be able to choose one to send.

[00:23:53] Speaker 04:
But then, in actually reaching its conclusion, the board doesn't address that argument.

[00:24:00] Speaker 04:
It says, in short, the record shows that the issue of whether a command code teaches a communication method was in dispute

[00:24:08] Speaker 04:
And we decided in favor of Pat Noehner on that issue.

[00:24:11] Speaker 00:
That completely allides the actual crux of the dispute, which is- Did the board also make reference to the testimony, to Universal's expert testimony in this regard?

[00:24:26] Speaker 00:
That's an appendix 19, and this is extradimensional.

[00:24:31] Speaker 00:
He provided evidence that's different from what you're saying.

[00:24:36] Speaker 00:
No, Your Honor.

[00:24:36] Speaker 04:
His evidence was solely that a communication method is not the same thing as a command code.

[00:24:42] Speaker 04:
And I have a cite for that.

[00:24:44] Speaker 04:
You can find this testimony from their experts at appendix 3034.

[00:24:50] Speaker 00:
I'm referring to his testimony that listing the command codes is not a listing of communications methods.

[00:24:58] Speaker 04:
I'm sorry.

[00:24:58] Speaker 04:
Where are you referring to?

[00:25:00] Speaker 00:
On Appendix 19, the board cited Universal's expert for his testimony that a person skilled in the art would have understood that enlisting the command codes is not enlisting a communication method.

[00:25:19] Speaker 04:
And they're citing this testimony where the patent owner's expert said a command code is not a communication method.

[00:25:26] Speaker 04:
And my point is that it's just simply not enough to get us to the conclusion that Chardon's list... But is that substantial evidence?

[00:25:33] Speaker 04:
No, Your Honor.

[00:25:35] Speaker 04:
Why?

[00:25:35] Speaker 04:
Because Chardon does not simply disclose a list of command codes full stop.

[00:25:42] Speaker 04:
It discloses a list of CEC and IR command codes

[00:25:47] Speaker 04:
Chardon contains hardware that is able to send those two different types of command codes and Chardon is able to tell the difference between those two types of command codes because it chooses to use one transmission medium first and then a second transmission medium second.

[00:26:03] Speaker 04:
And so no, it is not substantial evidence to conclude that that disclosure doesn't render the claim obvious.

[00:26:13] Speaker 04:
Thank you.