[00:00:08] Speaker 04:
May it please the Court. My name is Ben Guilford and I represent Appellant Universal Electronics.

[00:00:15] Speaker 04:
This appeal is taken from the Board's decision in validating certain claims in Universal's U.S. Patent No.

[00:00:24] UNKNOWN:
9847083.

[00:00:24] Speaker 04:
The 083 patent is directed to an improved method for configuring a universal remote with voice command capabilities.

[00:00:30] Speaker 04:
The claims of the OA-3 patent were cited causing a code set record to be provisioned to a controlling device and further specify that the provisioned code set record comprises protocol and formatting information. Today, I'd like to discuss three main points.

[00:00:45] Speaker 04:
First, the claims of the OA-3 patent require that the claimed protocol and formatting information must be included in the provisioned code set record itself.

[00:00:54] Speaker 04:
Second, the board erroneously rewrote the claims to merely require storing information about protocol and formatting. Third, once the claims are correctly construed, the prior fails to disclose what is claimed.

[00:01:09] Speaker 01:
So at the top of page 20 of your blue brief, you say, quote, the claim protocol and the formatting information must be contained and stored in the provision code set record itself.

[00:01:25] Speaker 01:
Where are you getting that? Where are you getting the requirement that it must be contained in the code set record itself?

[00:01:34] Speaker 01:
Nothing about contained in the claims, right?

[00:01:37] Speaker 04:
I think just so that we're all on the same page, the construction we're advancing I think is best illustrated at page 9, which is in the board's final written decision. It's at note 1.

[00:01:54] Speaker 04:
And in Appendix Page 9, the Board agreed with Universal that the claims require the claimed protocol and formatting information be included in the provision code set record itself.

[00:02:04] Speaker 00:
I'm sorry, I'm at Page 9 under Claim Construction.

[00:02:10] Speaker 04:
Yep, and it's Footnote 1.

[00:02:21] Speaker 01:
Okay, so they, I mean, what they accept is petitioner doesn't appear to dispute this assertion, which is consistent with the claim language reciting.

[00:02:30] Speaker 04:
Right, so when it says the board should, this is the board quoting patent owner, so it says the board should construe the challenge claims to require that the claimed protocol and formatting information be included in the claimed provision code set record itself. And then, you know, they say that there's no dispute and that's supported by the claim language. So that would be Universal's construction of the provisioned code set record.

[00:02:56] Speaker 02:
Can I ask a question just for clarification? I think what you're – so I understand.

[00:03:02] Speaker 02:
You're saying that protocol and formatting information has to be separate from the function itself right is that right the function i think that was it just so i understand let me let me finish so that i explain this correctly so that it has to be separate in that it can't be that the function itself provides because it's in the right protocol and format it itself can't be providing the protocol and formatting information by virtue of its form is that what you're saying

[00:03:37] Speaker 04:
I don't believe so, Your Honor. I think that was a separate argument we advanced before the Board, but it's not the subject of the appeal. The position is that the code set record, the one that's provisioned to the controlling device, has to have actually in it actual protocol and formatting information. So it just has to be somewhere in that provisioned code set record.

[00:04:03] Speaker 02:
In other words, if there is something, say it be a signal or a function, that is in the right format and using the right protocol to operate a particular device, and it's in the record, the code set record, then that's good enough for you. Is that what you're saying?

[00:04:27] Speaker 04:
Theoretically, the example you provided with a signal being in the code set record, I wasn't quite sure from the board's decision if that's what they were saying, but to the extent they were, that simply doesn't make sense. A signal is light. It's radio waves. It's what's sent from the remote control to a controlling device. You can't store a signal.

[00:04:54] Speaker 04:
I think just so we're all on the same page, I'd like to point the panel to appendix page 960, which is a portion of Ajinsky. So this is the main prior art reference that Roku relied on. And I'm looking at appendix page 960, approximately lines 8 through 10. To actually back up a little bit, so...

[00:05:20] Speaker 04:
It says, in the embodiment shown, the notation used in signal columns 112-1 and 112-2 denote the type of signal as well as the code or code sequence of the signal.

[00:05:34] Speaker 04:
So Oginski's telling us right there exactly what's in the alleged code set record.

[00:05:40] Speaker 04:
It's an indication of the type of signal as well as the code or code sequence of the signal. As far as the protocol and formatting information goes, what Roku and the board focused on was the indication of the type of signal.

[00:05:54] Speaker 04:
So I guess circling back to your original question, Your Honor, if theoretically an indication of a type of signal was itself protocol and formatting information or a portion of it, then I don't think there would be a dispute here, but the simple fact is that an indication of a signal type is not itself protocol-informating information. You're multiple layers of extraction away from the actual information you're using to create and send, for example, a Bluetooth signal.

[00:06:33] Speaker 04:
And that's really the central dispute here, is that the board...

[00:06:38] Speaker 04:
took universal proposed construction, agreed with it, and then at Appendix Page 40, proceeded to reconstrue the claim, presumably to make the prior art fit. So if we look at Appendix Page 40, it's right at the top.

[00:06:57] Speaker 04:
The board stated that the claims merely require storing some information about protocol and formatting in the code set record, such as a code denoting the type of signals.

[00:07:10] Speaker 04:
And your honors, storing some information about protocol and formatting is fundamentally different than storing protocol and formatting information itself.

[00:07:21] Speaker 04:
For example, information about protocol and formatting encompasses mere references to protocol and formatting. So that would include maybe an indication of which type of protocol and formatting to look up, or an indication of where to obtain protocol and formatting from.

[00:07:41] Speaker 02:
If you look at figure 1B on Appendix page 950, what do you think that box, what do you think that depicts?

[00:07:54] Speaker 02:
My understanding is that was being read on the code set.

[00:07:59] Speaker 02:
in the claim.

[00:08:00] Speaker 04:
Right. That whole big box would be the provision code set record, and then a small portion of that is the protocol and formatting information.

[00:08:08] Speaker 02:
And what do you think is the... Well, I think that they pointed to the thing that's called Signal 1112-1. Am I right?

[00:08:18] Speaker 04:
I'm sorry.

[00:08:20] Speaker 04:
I misheard you. I heard 7B from the 083 patent. You are talking about Figure 1B from Maginski.

[00:08:25] Speaker 02:
Yeah, because you were talking about that patent.

[00:08:28] Speaker 04:
My apologies.

[00:08:29] Speaker 02:
So, yes. So that's page A950. Got it.

[00:08:33] Speaker 04:
Would you mind giving me the question again just so that we're all on the same page?

[00:08:37] Speaker 02:
I was asking you, it's my understanding that the board was identifying this memory as being the code set.

[00:08:47] Speaker 00:
Yes.

[00:08:47] Speaker 02:
Mapping on the code set. Yes. Correct. And identifying signal 112-1 in particular as the thing that provided the required protocol and formatting information.

[00:09:02] Speaker 04:
That column.

[00:09:03] Speaker 02:
Yeah. Can you tell me why you think that's wrong?

[00:09:07] Speaker 04:
Sure.

[00:09:08] Speaker 02:
You said before a signal can't be in a code set. I was using the language signal because that's what's in this picture.

[00:09:14] Speaker 04:
Understood, Your Honor. So, signal column...

[00:09:18] Speaker 04:
There's two that they kind of point to, so 112-1 is at the top part, and then 112-2 is at the bottom. They're both generally depicting the same thing. If we look at appendix page 960, which I had mentioned a little earlier, again, about lines 8 to 10, this is where Ajinsky tells us exactly what those notations in the single column mean. They say it means the...

[00:09:46] Speaker 04:
I'm directly quoting here, the notation used in signal columns 1... You're on column 9.

[00:09:51] Speaker 04:
About lines 7 to 10. So towards that first paragraph of column 9 in Nijinsky. So it says, in the embodiment shown, the notation used in signal columns 112-1 and 112-2 denote the type of signal as well as the code or code sequence of the signal.

[00:10:12] Speaker 04:
And the board and Roku focus on...

[00:10:15] Speaker 04:
the type of signal for protocol and formatting information. And again, our position, Your Honor, just so that we're all on the same page, is that an indication of the type of signal is not protocol and formatting information.

[00:10:32] Speaker 04:
I'm sure this will come up when Roku's console is before you, but there was a lot of discussion in Roku's brief about whether Universe is arguing that all of the protocol and formatting information, or only some of it, has to be in the provision code set record. And I think that kind of just dances around the main issue, which is that Ajinsky doesn't have any protocol and formatting information in the alleged provision code set record.

[00:11:02] Speaker 04:
And again, this stems back to, is an indication of a signal type protocol and formatting information Or is it just help you figure out where the... Right, so for example, let's say signal column 112-1 indicates Bluetooth.

[00:11:24] Speaker 04:
You're multiple levels of abstraction away from where the actual protocol and formatting information is. So the system has to say, okay, we're sending a Bluetooth signal Where is the stuff for the Bluetooth protocol? I've got to go figure out where that is, and then it has to go actually look it up. So you're multiple levels of abstraction away from the actual protocol and formatting information itself.

[00:11:48] Speaker 02:
And your view would be that all of it, all of that has to be in the code set, not just identifying some of it that allows you to go somewhere else to get the rest of it.

[00:11:57] Speaker 04:
That is not our position.

[00:11:59] Speaker 04:
I think both parties agree that there has to at least be some of the actual protocol-informating information in the provision code set record. This court doesn't need to determine the exact quantum of protocol-informating information that needs to be in there to rule in Universal's favor. The issue, again, is that there's simply no protocol-informating information in the alleged provision code set record. So again, all we have here is an indication of a signal type. That's not protocol-informating information.

[00:12:32] Speaker 04:
The system still needs to actually go find that stuff, and there's no evidence anywhere in the record that the system is getting that protocol-informating information from the Jansky's alleged code set record.

[00:12:46] Speaker 02:
So that your signal type is not protocol formatting information?

[00:12:51] Speaker 04:
Correct.

[00:12:52] Speaker 04:
Again, the system has to actually go look it up from somewhere, and we have no idea where that somewhere is. See, I'm into my time here, but I just want to briefly point out that Roku's theory and the theory the board adopted is that Ajinsky discloses this limitation. So there has to be either an express or inherent disclosure.

[00:13:13] Speaker 04:
Here we simply don't know where the system is actually getting the protocol and formatting the information.

[00:13:18] Speaker 04:
Thank you.

[00:13:34] Speaker 03:
Morning may please the court. Again, Scott McKeown of Wolf Greenfield for Appellee Roku. My understanding of the briefing is that this was about claim construction. I'm surprised to hear opposing counsel say that this isn't about the amount of protocol and information. That was my understanding of the briefing. That's what they argued in their briefing, that it was the complete set.

[00:13:56] Speaker 03:
Everything needed to be in the code record.

[00:14:00] Speaker 03:
So now we seem to be getting into what the prior art is teaching, which I don't understand to be presented in the briefs. Nevertheless, as pointed out in Oginski, there is a signal in that column.

[00:14:12] Speaker 03:
So the board relied on three different ways that Oginski teaches protocol and formatting information, which is important. It's not a protocol. They wrote the claims to recite protocol and formatting information. That can be any level of information. at any level of abstraction. So for example, if you have a signal and it's coded IR, infrared, that signal is going to have a code, it's going to have a format, you press the button, the device that you're shooting it at understands the protocol and format. That was one way the board found the claim met.

[00:14:42] Speaker 03:
The other way was that in some cases where you have multiple protocols and formats. You might have a designation of Bluetooth. You might have a designation of coded IR. The remote needs to know which protocol to use, so it will look to that protocol and formatting information, and whether it has to look it up later doesn't matter, right? It doesn't say directly in the claim.

[00:15:05] Speaker 02:
Do you want to identify a particular intrinsic element of the pattern suit itself to support what you're saying, since, as you know, it's a climate destruction issue?

[00:15:13] Speaker 03:
Sure. So the patent itself just talks about protocol and formatting information. There's nowhere in the patent that talks about you have to use all of it. Specifically, in the final written decision, the board relied on some examples in the patent that talked about certain carrier frequencies and certain CRC codes and formatting.

[00:15:42] Speaker 03:
If I could find the mention of it here in the record.

[00:15:52] Speaker 02:
Is it column 10 of the patent itself?

[00:15:56] Speaker 02:
Column 10 lines 48 to like 55? Is that what you're referring to?

[00:16:03] Speaker 03:
Sorry, you're on which appendix page are you looking at?

[00:16:06] Speaker 02:
It's appendix page 96.

[00:16:17] Speaker 03:
And the column and line, sorry.

[00:16:20] Speaker 02:
Column 10, lines 47 to 55, about-ish. It says each code set. Yes.

[00:16:27] Speaker 03:
Thank you, Your Honor. So the patent itself talks about four examples, and these are examples of physical layer protocols. They're given as illustrative examples, frame size, carrier frequency, et cetera.

[00:16:44] Speaker 03:
So again, going back to Ajinsky, when there's an option to use Bluetooth or coded IR, and the function that you're trying to accomplish has a designation of Bluetooth in the code set record, the remote is using that information, because that's all the claims require, is using the information. It doesn't say that it has to be a physical layer protocol actually stored there. It doesn't say all of the procedures need to be stored there. There's nowhere in the patent that would require that kind of narrowing construction.

[00:17:16] Speaker 02:
Well, yeah, their argument in response would be, well, this doesn't mention, you know, whether it's Bluetooth or infrared or whatever it is, and instead it goes to a level of depth that's lower than that.

[00:17:30] Speaker 03:
That's correct, Your Honor.

[00:17:31] Speaker 02:
So...

[00:17:34] Speaker 02:
And your response to that is?

[00:17:37] Speaker 03:
The response to that would be the same response that they heard from the board, which is the specification clearly describes these as examples, not that every protocol and format that has these kinds of characteristics, all of that needs to be stored in the code set record.

[00:17:55] Speaker 03:
Instead, the way that the remote would work, again, if you have a function that's using coded IR or Bluetooth, You'll see the designation. Okay, I have Bluetooth. I've got a Bluetooth transmitter in the remote. I've got an IR transmitter in the remote. I'm going to kick off that process to transmit this code out.

[00:18:11] Speaker 02:
And those processes would provide the information like the carrier frequency, data frame size, and those details?

[00:18:17] Speaker 03:
In some cases, if it were not. For example, if you only had coded IR and there were no other choices in the remote, that would be stored directly in the code set record. So that was the first example that the board relied on the signal. is designated as a signal in Aginski. That's number one. Number two, there are separate designations of Bluetooth, IR, et cetera. And then thirdly, Aginski teaches this sort of catch-all with, you can use any protocol that you find helpful to convey this information from one point to another. So the board relied on three independent bases to, again, map the claim construction to the art, but the briefing is mostly about the claim construction being erroneous, and the basis for that is just that, well, during the deposition of this technical expert that made clear that they weren't testifying on claim construction, they were explaining how protocol and formatting works in a general engineering sense, and therefore we should take everything that expert said and then port that into a claim that's much broader and recites protocol and formatting information.

[00:19:22] Speaker 03:
It's information that's used. That's it. It doesn't have to be anything specific. It doesn't have to be this laundry list of physical layer characteristics in column 10. It just has to be information, and the board pointed out three different ways to get at that.

[00:19:41] Speaker 03:
If there are no further questions, happy to rest in the breeze. Thank you.

[00:19:47] Speaker 04:
A couple of quick points, Your Honors.

[00:19:53] Speaker 04:
Council said that the protocol and formatting information doesn't have to be anything specific. I don't think that's accurate, especially in terms of how the board construed protocol and formatting information.

[00:20:04] Speaker 02:
Sticking to the claim construction, what do you think the board held with its claim construction?

[00:20:13] Speaker 04:
So at Appendix Page 40, the board stated that the claims merely require – this is at the very top of Appendix Page 40 – they said – The claims merely require storing some information about protocol and formatting in the code set record, such as a code denoting the type of signal. So the fundamental disconnect between the parties' positions is, you know, is storing information about protocol and formatting the same as storing the protocol and formatting information itself. Our position is that those are fundamentally different things.

[00:20:44] Speaker 04:
And I think... As Roku's console pointed out, their position, you could look up the protocol and formatting information itself from somewhere else.

[00:20:54] Speaker 04:
But our view is that the claims clearly require that the provision code set record comprises protocol and formatting information. That information has to actually be in the code set record. It doesn't have to be all, but it has to be at least some, and it appendix page 9. I believe the board agreed with us, but when they analyzed the prior art, they rewrote the claims I think, to make the prior fit, and that's just not, simply not what the claims say. At least some actual protocol and formatting information has to be in the code set record.

[00:21:26] Speaker 04:
And an indication of a signal type is not protocol and formatting information.

[00:21:31] Speaker 01:
Your argument with respect to claim construction is not that the board's claim construction was incorrect, but that they misapplied it to the prior art. Is that the essence of your argument?

[00:21:40] Speaker 04:
No, Your Honor. The board did misconstrue the claim. They took...

[00:21:45] Speaker 04:
The claim term, which is the provision code set record comprising protocol and formatting information, and rewrote it to say that you only have to have some information about protocol and formatting.

[00:21:58] Speaker 02:
So you're really emphasizing this information about point.

[00:22:02] Speaker 04:
Absolutely.

[00:22:03] Speaker 02:
The concern I have about that is that I think that might have just been language that was used, because it said language about protocol and formatting could be stored elsewhere. the other language about protocol and formatting could be stored elsewhere. And then later, in just a few lines below in the next paragraph, It says, as noted above, the claim is not recorded that all of the protocol and formatting be included in the code set record.

[00:22:33] Speaker 02:
I feel like you're reading a lot into their phrase, information about protocol and formatting, when they were actually talking about protocol and formatting.

[00:22:42] Speaker 04:
Well, I think they tell us exactly what they meant when they apply the prior art to the claim. They're saying that an indication of a single type

[00:22:49] Speaker 02:
fits the claim, but when you really think about it... I think they think that it is protocol and formatting information, not that it's merely about it.

[00:22:57] Speaker 04:
Well, just so that we're on the same page, Your Honor, at Appendix Page 21, the Board construed protocol and formatting information as information needed to transmit a signal from one device to another in a way that the receiving device can make sense of and use the signal. That's extremely specific type of information. As you discussed with Roku's console, it's things like frame length and stuff like that. It's really technical stuff that you use to help send this code. I get that those are examples, but that's the type of information we're talking about. When you have an indication of a Bluetooth signal, you're multiple layers of extraction away from that stuff that we're talking about.

[00:23:34] Speaker 02:
And so it sounds like you are now saying that code denoting the type of a signal is not protocol and formatting information.

[00:23:44] Speaker 04:
I think that's been our position throughout.

[00:23:46] Speaker 02:
But that is... It's a factual question, isn't it?

[00:23:50] Speaker 04:
I think it's tied with this construction. Because, again, our position is that some information about protocol and formatting is extremely different from Independence Page 9, where they agreed with us that the claimed protocol and formatting information has to be included in the provision code set record itself. So our position is those are two very different constructions, and also it clearly affects the application of the art to the claims based on how you're... So you're thinking, due to intrinsic evidence, protocol and formatting information cannot include the type of signal.

[00:24:25] Speaker 02:
Like, is it in, you know, Bluetooth or Wi-Fi or infrared or whatever it is?

[00:24:30] Speaker 04:
Absolutely, and just as a matter of common sense, frankly, Your Honor.

[00:24:35] Speaker 01:
Okay, time to thank you.

[00:24:36] Speaker 04:
Thank you, Your Honors.