Last week, the U.S. Court of Appeals for the Federal Circuit issued a decision in Roku, Inc., v. Universal Electronics, Inc., 2022-1058 (Mar. 31, 2023), affirming the Board’s nonobviousness determination.
Universal Electronics owns U.S. Patent No. 9,716,853, which relates to a universal remote that provides commands to a variety of target appliances according to a command matrix, i.e., a list or table with entries corresponding to a command form to be used for specific appliances. The claims recite “using an identity associated with the intended target appliance to create a listing comprised of at least a first communication method and a second communication method different than the first communication method….”
Roku petitioned for inter partes review of claims of the ’853 patent, asserting that they would have been obvious in view of a reference to Chardon, which describes a remote control system configured to control target devices using two different formats to relay command codes. Roku argued that because Chardon’s command codes are formatted for transmission via different communication methods, its list of command codes is necessarily a list of communication methods as claimed in the ’853 patent. However, Roku’s petition did not explain how a list of command codes is a list of communication methods, nor did Roku suggest that Chardon’s list of command codes would render the claimed list of communication methods obvious.
The Board found Roku had not shown that the challenged claims would have been obvious because Roku failed to show that a person of skill in the art would have understood a command code and a communication method to be the same thing. Roku appealed.
The Federal Circuit rejected Roku’s arguments, finding substantial evidence supported the Board’s conclusion. Indeed, the Court agreed with Universal that Roku had failed to show that Chardon’s command codes formatted for transmission via a particular communication method are communication methods. Additionally, the Court noted that “the specification itself distinguishes a list of communication methods from a separate list of command codes.” Expert testimony also supported the Board’s finding that Roku failed of meet its burden of proof, according to the Court.
The Court concluded that “[b]ecause the Board’s factual finding—that Chardon’s listing of command codes did not teach or suggest a listing of communication methods—was supported by substantial evidence, we affirm the Board’s decision that Roku has not shown that the challenged claims would have been obvious."