Roku, Inc. v. Universal Electronics, Inc.
Docket No. 2022-1058 (IPR2019-01615) (https://cafc.uscourts.gov/opinions-orders/22-1058.OPINION.3-31-2023_2103471.pdf)
NEWMAN, REYNA, STOLL
March 31, 2023
Brief Summary: PTAB IPR FWD concluding Roku did not show Universal’s remote control claims obvious affirmed as based on substantial evidence.
Summary: Roku appealed PTAB IPR final written decision (FWD) holding that claims 1, 3, 5 and 7 of US 9,716,853 relating to universal remotes had not been proven unpatentable. This opinion explains that “[t]his case turns on a single question— whether a person of ordinary skill in the art would have understood the prior art’s disclosure of a listing of remote command codes formatted for transmission via two different communication methods to be a listing comprised of at least a first communication method and a second communication method different than the first communication method”, which the FC panel described as a “close factual dispute”. That dispute is whether the prior art Chardon reference (US 2012/0249890), also related to “a remote control system configured to control various target devices” disclosed that listing. It explained that Roku did not explain in its petition how Chardon’s “list of command codes is necessarily a list of communication methods” but presented expert testimony that also failed to show this point. Universal argued “that Roku had failed to establish that this disclosure teaches or renders obvious creating a listing of two different communication methods” and rebutted Roku’s expert with its own expert who “opined that one of ordinary skill in the art would “not have understood a ‘command code’ to be a ‘communication method’” (e.g., “the ’853 patent makes “clear that a listing of communication methods is not the same thing as a database of command codes”). The PTAB concluded Roku had not shown the two to be the same thing and therefore did not show obviousness by a preponderance of the evidence (“over Chardon alone, or in combination with other cited prior art references”). Roku requested rehearing, alleging the Board “erred by implicitly construing…“the ‘method of transmission’ or the ‘transmission medium’ through which the selected command is sent”, which was denied in part because even under that construction “the outcome . . . would have been no different”. The FC panel found the PTAB’s conclusion to be supported by substantial evidence (the factual standard (Impax, FC 2018; Teva, FC 2015); “in its role as factfinder in the first instance, was entitled to weigh the evidence in the record”). FN1 notes that Judge Newman’s dissent argued the issue should have been considered de novo but that majority did not “view the issue on appeal as a Graham factor underlying obviousness—not as a question of the ultimate conclusion of obviousness.”