Case: 22-1058 Document: 40 Page: 1 Filed: 03/31/2023
United States Court of Appeals
for the Federal Circuit
______________________
ROKU, INC.,
Appellant
v.
UNIVERSAL ELECTRONICS, INC.,
Appellee
______________________
2022-1058
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
01615.
______________________
Decided: March 31, 2023
______________________
WILLIAM MILLIKEN, Sterne Kessler Goldstein & Fox,
PLLC, Washington, DC, argued for appellant. Also represented by JON WRIGHT; JONATHAN DANIEL BAKER, Dickinson Wright PLLC, Mountain View, CA; MICHAEL DAVID
SAUNDERS, Austin, TX.
MICHAEL ANTHONY NICODEMA, Greenberg Traurig
LLP, West Palm Beach, FL, argued for appellee. Also represented by BENJAMIN GILFORD, JAMES J. LUKAS, JR., Chicago, IL.
______________________
Case: 22-1058 Document: 40 Page: 2 Filed: 03/31/2023
2 ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
Before NEWMAN, REYNA, and STOLL, Circuit Judges.
Opinion for the court filed by Circuit Judge STOLL.
Dissenting opinion filed by Circuit Judge NEWMAN.
STOLL, Circuit Judge.
Roku, Inc. appeals the Patent Trial and Appeal Board’s
final written decision holding that claims 1, 3, 5, and 7 of
U.S. Patent No. 9,716,853 had not been proven unpatentable as obvious. This 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. Because the question presented involved the
scope and content of the prior art, the Board resolved this
dispute as a purely factual question, which we review for
substantial evidence. The Board thoroughly considered the
evidence of record and found in its final written decision
that the skilled artisan would not have understood the
prior patent’s listing of remote command codes to correspond to the claim limitation at issue. Because the Board’s
finding in this close factual dispute is supported by substantial evidence, we affirm the Board’s final written decision.
BACKGROUND
The ’853 patent relates to universal remotes and, more
specifically, to a universal control engine (UCE) that facilitates communication between a controlling device (i.e., a
remote) and intended target appliances (e.g., a TV, a DVD
player, a sound system, etc.). ’853 patent col. 1 l. 63–col. 2
l. 45. Although the specification of the ’853 patent
acknowledges that universal remotes were known at the
time of the invention, it states that the proliferation of new
communication methods raises the potential for “confusion,
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 3
misoperation, or other problems,” id. at col. 1 ll. 40–59, particularly because the preferred communication method for
transmitting commands “may vary by both appliance and
by the function to be performed,”
id. at col. 6 ll. 62–64. For
example, a user can “power on and select inputs on a TV”
using Consumer Electronic Control (CEC) commands while
“control[ling] the volume on the same TV” using infrared
(IR) commands.
Id. at col. 2 ll. 21–45. The ’853 patent’s
purported invention is the ability to reliably use different
communication methods that enable a single remote control to provide commands to a variety of target appliances,
according to the optimal method of communication for each
target appliance and command.
Id. at col. 2 ll. 16–20.
The ’853 patent’s UCE can “receive commands from a
controlling device” and “apply the optimum methodology to
propagate the command function(s) to each intended target
appliance,” id. at col. 2 ll. 20–37, according to a “preferred
command matrix,”
id. at col. 7 ll. 19–29. The preferred
command matrix, an example of which is shown below, can
be, for example, a list or a table with entries that correspond to a specific command and “comprise identification
of [(1)] a form of command/transmission to be used and
[(2)] a pointer to the required data value and formatting
information for the specific command.”
Id. at col. 7
ll. 19–29.
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4 ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
’853 patent Fig. 7.
Representative claim 1 recites:
1. A universal control engine, comprising:
a processing device; and
a memory device having stored thereon instructions executable by the processing device, the instructions, when executed by the processing device,
causing the universal control engine
to respond to a detected presence of an intended
target appliance within a logical topography of controllable appliances which includes the universal
control engine by
using an identity associated with the intended target appliance to create a listing comprised of at
least a first communication method and a second
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 5
communication method different than the first communication method for use in controlling each of at
least a first functional operation and a second functional operation of the intended target appliance
and
to respond to a received request from a controlling
device intended to cause the intended target appliance to perform a one of the first and second functional operations by
causing a one of the first and second communication methods in the listing of communication methods that has been associated with the requested
one of the first and second functional operations to
be used to transmit to the intended target appliance a command for controlling the requested one
of the first and second functional operations of the
intended target appliance.
Id. at col. 14 l. 41–col. 15 l. 7 (emphasis added to key limitation).
Roku filed a petition for inter partes review of claims 1,
3, 5, and 7 of the ’853 patent, asserting that the challenged
claims would have been obvious in view of U.S. Patent Pub.
No. 2012/0249890 (“Chardon”) and other asserted prior art
references. Disposition of the case before us rests, as it did
before the Board, on a single, narrow issue: whether Chardon discloses “a listing comprised of at least a first communication method and a second communication method
different than the first communication method” as recited
in each challenged claim.
Like the patent-in-suit, Chardon describes a remote
control system configured to control various target devices
(e.g., TVs, DVD players, stereo equipment, etc.). Chardon
uses target device identification data to generate a linked
database (e.g., a linked list) including sets of command
codes (i.e., instructions to perform a command) associated
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6 ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
with specific communication protocols. Chardon,
¶¶ [0006]–[0008]. This linked database includes at least
two different sets of command codes—specifically, a set of
CEC command codes and a set of IR command codes. Chardon’s system receives a command to perform a specific action (i.e., volume up) on a target appliance (i.e., a TV) and
first relays the command to the TV using a CEC command
code. Id. at ¶ [0058]. If the system doesn’t receive a response from the TV indicating receipt of the command, the
system then “determine[s] an IR command code . . . to perform the same set of functions as the CEC command code”
and transmits that IR command code to the TV.
Id. Alternatively, the system can determine in advance that a target device “is not configured to receive CEC command
codes” and “send IR command codes . . . instead.”
Id. at
¶ [0058]; see also
id. at ¶ [0068].
Roku argued that Chardon disclosed the disputed
claim limitation to a skilled artisan, devoting much of its
petition to explaining how Chardon “creates a database of
IR and CEC command codes.” J.A. 116. In other words,
Roku established in its petition that Chardon describes a
process for creating a database of command codes, at least
some of which are formatted for transmission according to
a first communication method and some of which are formatted for transmission according to a second communication method. “In this way,” Roku asserted, without further
explanation, “Chardon meets the claimed limitation” of a
listing of “at least a first (e.g., CEC) and second (e.g., IR)
communication method.” Id.
Roku’s petition did not explain how a list of command
codes is a list of communication methods. Nor did it suggest that Chardon’s list of command codes would render
the claimed list of communication methods obvious. For
example, it did not state that Chardon’s list of command
codes is inherently a list of communication methods, or explain that a skilled artisan would have been motivated to
derive a list of communication methods from the command
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 7
codes, or provide evidence that a skilled artisan would have
known that Chardon’s list of command codes was also a list
of communication methods. In its petition, Roku thus assumed 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. But Roku neither articulated this assumption nor explained how the record evidence supported it.
Further, Roku advanced no claim constructions for the
disputed limitation, asserting instead that the relevant
claim language “should simply receive [its] plain and ordinary meaning, as informed by the ’853 patent specification.” J.A. 83.
To support its assertions, Roku’s petition did rely on
the expert testimony of Dr. Samuel Russ. Dr. Russ explained that Chardon’s linked database discloses “a listing
comprised of at least a first communication method (e.g.,
CEC command codes) and a second communication method
(e.g., IR command codes).” J.A. 905 (Russ Decl. ¶ 203).
This testimony seemingly equates CEC command codes
with a first communication method and IR command codes
with a second communication method. Dr. Russ later elaborated, however, that Chardon used its linked database “to
send a CEC command code over HDMI to an HDMI appliance using a first communication method (i.e., HDMI-CEC
over a HDMI cable),” seemingly acknowledging a distinction between command codes and the communication
methods over which the command codes are transmitted.
J.A. 906 (Russ Decl. ¶ 205). Dr. Russ did not testify that a
skilled artisan would have understood Chardon’s linked
database of command codes to teach or suggest a list of
communication methods.
Universal did not dispute that Chardon discloses a process for creating a listing of CEC command codes and IR
command codes. Universal asserted instead that Roku had
failed to establish that this disclosure teaches or renders
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8 ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
obvious creating a listing of two different communication
methods. J.A. 300–02. Universal rebutted Roku’s positions and Dr. Russ’s testimony with that of Dr. Don Turnbull. Dr. Turnbull opined that one of ordinary skill in the
art would “not have understood a ‘command code’ to be a
‘communication method.’” J.A. 3034 (Turnbull Decl.
¶¶ 69–70). He explained that a command code is “an instruction to perform a function,” whereas a communication
method is “a medium or protocol for transmitting or receiving information.” Id. Dr. Turnbull explained that the
’853 patent specification itself “expressly distinguishes between a listing of communication methods and a database
of command codes.” J.A. 3034–35 (Turnbull Decl. ¶ 71). As
support, Dr. Turnbull cited Figure 7 of the ’853 patent,
which shows a matrix with cells comprising “identification
of a form of command/transmission to be used,” such as
CEC and IR.
Id. He explained that the matrix “expressly
distinguishes between command codes and the communication methods (e.g., CEC and IR) that are used to communicate the command codes.” J.A. 3035 (Turnbull Decl.
¶ 72) (citing ’853 patent col. 7 ll. 30–42). Dr. Turnbull emphasized that the ’853 patent clearly differentiates between the “form of command/transmission to be used” and
the data value and formatting information for the specific
command, which is “stored elsewhere” in memory.
J.A. 3034–35 (Turnbull Decl. ¶¶ 71–72); see also ’853 patent col. 7 ll. 26–29. Thus, he explained, the ’853 patent
makes “clear that a listing of communication methods is
not the same thing as a database of command codes.”
Id.
In its final written decision, the Board determined that
Roku had not shown that the challenged claims would have
been obvious. The Board explained that although Roku
“specifically equate[d] ‘a first communication method’ with
‘CEC command codes’ and ‘a second communication
method different from the first communication method’
with ‘IR command codes,’” J.A. 20 (citing J.A. 119–20,
126–27), it failed to show that one of ordinary skill would
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 9
have understood that these were the same things. The
Board emphasized that Roku cited “no analysis or expert
testimony” to show that Chardon’s linked database of command codes and the transmission of those command codes
over two different communication methods taught or suggested “the claimed listing that is comprised of at least two
different communication methods.” J.A. 22. Acknowledging that there was “no requirement that literal names of
different command transmission mediums . . . appear in
the text of the listing,” the Board nevertheless found that
the record fell “short of providing evidence that one of ordinary skill in the art would have understood stored command codes” to identify communication methods rather
than act as a “reference for codes to be used once the communication method to be used is determined in some other
way.” Id. (cleaned up). Thus, the Board concluded that
Roku had not shown by a preponderance of the evidence
that the challenged claims would have been obvious over
Chardon alone, or in combination with other cited prior art
references.
Roku requested rehearing, alleging among other things
that the Board “erred by implicitly construing,” J.A. 525,
the term “communication method” as “the ‘method of transmission’ or the ‘transmission medium’ through which the
selected command is sent,” J.A. 528. The Board denied
Roku’s petition, explaining that it did not so construe the
claims. J.A. 29. Furthermore, the Board explained that,
even if it had construed the claim term as averred by Roku,
“the outcome . . . would have been no different.” Id. Specifically, the Board emphasized that the question of
“whether a command code teaches a communication
method” presents a factual question that the Board had already considered and “decided in favor of Patent Owner”
Universal, and Roku’s attempt to characterize the Board’s
analysis as including an implicit construction was both incorrect and unpersuasive. J.A. 31.
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10 ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
Roku appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
The ultimate question of obviousness is a legal question that we review de novo with underlying factual findings that we review for substantial evidence. Fleming
v. Cirrus Design Corp., 28 F.4th 1214, 1221 (Fed. Cir.
2022). Those underlying findings of fact, as enumerated by
the Supreme Court nearly six decades ago, include the Graham factors—“basic factual inquiries,” the answers to
which provide a foundation for the ultimate determination
of obviousness or nonobviousness. Graham v John Deere
Co. of Kan. City,
383 U.S. 1, 17–18 (1966). The Graham
factors include: “(1) the scope and content of the prior art,
(2) differences between the prior art and the claims at issue, (3) the level of ordinary skill in the pertinent art, and
(4) the presence of objective indicia of nonobviousness such
as commercial success, long felt but unsolved needs, failure
of others, and unexpected results.” Elbit Sys. of Am., LLC
v. Thales Visionix, Inc.,
881 F.3d 1354 (Fed. Cir. 2018) (internal quotation marks omitted) (citing Graham, 383 U.S.
at 17–18). Substantial evidence is evidence such that a
“reasonable fact finder could have arrived at the agency’s
decision.” OSI Pharms., LLC v. Apotex Inc.,
939 F.3d 1375,
1381 (Fed. Cir. 2019) (quoting In re Gartside,
203 F.3d
1305, 1312 (Fed. Cir. 2000)). “[T]he possibility of drawing
two inconsistent conclusions from the evidence does not
prevent an administrative agency’s finding from being supported by substantial evidence.” Consolo v. Fed. Mar.
Comm’n,
383 U.S. 607, 620 (1966).
As explained above, the question considered by the
Board and raised on appeal is whether Chardon’s list of
command codes formatted to be transmitted via different
communication methods is, itself, a list of different
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 11
communication methods as recited in the claims. We can
see both sides of this factual dispute. 1
On one hand, before this court, Roku advances the reasonable argument that because (1) CEC and IR are communication protocols—which neither party disputes
qualify as communication methods—and (2) Chardon discloses “a protocol-specific list of CEC command codes” and
“a protocol-specific list of IR command codes,” Chardon necessarily discloses creating a listing comprised of at least
two different communication methods “as a matter of
logic.” Appellant’s Br. 24–27. Although Roku does not dispute that a “command code” is not the same as a “communication method,” it argues that Chardon’s protocol-specific
“listing unambiguously indicates both the command code
and the communication protocol (i.e., communication
method) to be used in transmission.” Id. at 28–29.
On the other hand, as Universal persuasively argues,
Roku has failed to show that the Board’s fact finding—that
Chardon’s command code formatted for transmission via a
particular communication method was not proven to be a
communication method—was unsupported by substantial
evidence. Appellee’s Br. 23. First, Universal notes that
Roku’s argument contradicts the disclosure of the ’853 patent itself. Id. at 24. For example, the ’853 patent describes its listing as a “command matrix,” comprising “a
series of data cells” that include “identification of a form of
command/transmission to be used” and “a pointer to the
1 The dissent asserts that we should apply de novo
review to this issue. But Roku expressly raises only a factual question on appeal: whether Chardon teaches a particular claim element. See Appellant’s Br. 21 (“That
factual issue is the sole subject of this appeal.”). We thus
view the issue on appeal as a Graham factor underlying
obviousness—not as a question of the ultimate conclusion
of obviousness.
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12 ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
required data value and formatting information for the
specific command,” which is stored in a separate location
in memory. ’853 patent col. 7 ll. 19–29. In other words, the
patent specification itself distinguishes a list of communication methods from a separate list of command codes. Second, Universal argues that the Board’s decision is
supported by Dr. Turnbull’s expert testimony. Appellee’s
Br. 25–26. According to Universal, the Board was entitled
to weigh Dr. Turnbull’s testimony that a skilled artisan
“would not have understood a ‘command code’ to be a communication method,” J.A. 3034 (Turnbull Decl. ¶¶ 69–70),
more heavily than Dr. Russ’s more vague and unexplained
testimony that Chardon’s linked database discloses “a listing of at least a first communication method (e.g., CEC
command codes) and a second communication method (e.g.,
IR command codes),” J.A. 905 (Russ Decl. ¶ 203). Finally,
Universal points out that Roku does not dispute the basic
fact that a command code is different than a communication method.
Review of the record as a whole reveals that the factual
dispute at hand was highly contested and closely decided.
Most significantly for our purposes, the Board’s finding was
supported by substantial evidence. Specifically, the
Board’s finding flows from the ’853 patent specification itself and Dr. Turnbull’s testimony. This evidence supported
the Board’s finding that Roku had failed to meet its burden
of proof. The Board, in its role as factfinder in the first
instance, was entitled to weigh the evidence in the record,
including this evidence against Roku.
An appellate court “do[es] not and should not reweigh
evidence or make factual findings.” Impax Lab’ys. Inc.
v. Lannett Holdings Inc., 893 F.3d 1372, 1382 (Fed. Cir.
2018). As an appellate court, our role is to review the
Board’s findings for substantial evidence, not to step into
its place and make those findings anew.
Id. Indeed, although this court could well have decided the factual dispute at hand differently than the Board did, it is not the
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 13
province of this court to do so. Teva Pharms. USA, Inc.
v. Sandoz, Inc.,
574 U.S. 318, 327 (2015) (explaining that a
lower tribunal, which has “presided over, and listened to,
the entirety of a proceeding has a comparatively greater
opportunity to gain that familiarity than an appeals court
judge who must read a written transcript or perhaps just
those portions to which the parties have referred”).
Because 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.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm the Board’s final written decision.
AFFIRMED
Case: 22-1058 Document: 40 Page: 14 Filed: 03/31/2023
United States Court of Appeals
for the Federal Circuit
______________________
ROKU, INC.,
Appellant
v.
UNIVERSAL ELECTRONICS, INC.,
Appellee
______________________
2022-1058
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
01615.
______________________
NEWMAN, Circuit Judge, dissenting.
I respectfully dissent, for I have concerns as to both
procedural and substantive aspects of the court’s ruling.
I
With respect to procedure, the court holds that because
the parties did not dispute claim construction at the Patent
Trial and Appeal Board (“PTAB” or “Board”), our appellate
review is limited to whether substantial evidence supports
the PTAB’s decision of non-obviousness. Claim construction and obviousness are questions of law, whose underlying factual components may or may not be disputed. When
disputed, factual findings of the PTAB are reviewed for
support by substantial evidence, as the panel majority
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2 ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
recognizes, see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
1073 (Fed. Cir. 2015) (reciting the standard of review for
PTAB findings of fact), whereas the ultimate questions of
law remain for de novo determination on appeal,
id.
The panel majority states that because “the question
presented involved the scope and content of the prior
art, the Board resolved this dispute as a purely factual
question, which we review for substantial evidence.” Maj.
Op. at 2. The majority then finds that substantial evidence
supports the PTAB’s finding that “Chardon’s listing of command codes did not teach or suggest a listing of communication methods.” Id. at 13. This is the focus of my dissent,
for the majority declines to review the ultimate legal question of validity of U.S. Patent No. 9,716,853 (the “’853 patent”) and instead reviews solely the Board’s specific factfinding discussed therein.
The decision on appeal is “that Petitioner has not established by a preponderance of the evidence that any of
claims 1, 3, 5, or 7 of the ’853 patent are unpatentable.” J.A.
24. My concern is with the majority’s implicit holding that
if the underlying findings of fact are supported by substantial evidence, then we do not review the ultimate legal
question of non-obviousness.
I believe that de novo review is appropriate for the
questions of law presented herein, along with review of any
underlying facts for support by substantial evidence. 1
1 The panel majority misperceives my dissent. I do
not “assert[] that we should apply de novo review to this
[factual] issue.” Maj. Op. at 11 n.1. I do assert that we
should apply de novo review to the issue on appeal, that is,
the legal issue of obviousness. “It is emphatically the province and duty of the judicial department to say what the
law is. Those who apply the rule to particular cases, must
of necessity expound and interpret that rule.” Marbury v.
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 3
II
It is not disputed that universal “remotes” were known
at the time of the invention described and claimed in the
’853 patent. Communicating commands via both wireless
and wired communication methods was well known: “a
‘communication method’ is a medium or protocol for transmitting or receiving information (e.g., CEC [consumer electronics control], IR [infrared], RF [radio frequency], etc.).”
Universal Elecs. Br. 5 (citing the ’853 patent col. 2 ll. 4–16,
col. 6 ll. 25–28, 62–67, col. 14 ll. 20–24). The Chardon reference describes a “database of CEC and IR command
codes.” Id. at 1.
In this appeal it is not disputed that a person of ordinary skill in the field of this invention would understand
that the CEC and IR command codes listed and disclosed
by Chardon are the same as the CEC and IR command
codes listed and communicated in the ’853 patent. Chardon
shows a Universal Control Engine (“UCE”) receiving a command code from a remote control device, and it shows the
UCE employing the applicable communication method to
transmit the command to the appliance. This is the subject
matter of the ’853 patent. As the panel majority recites,
“[t]he ’853 patent’s purported invention is the ability to reliably use different communication methods that enable a
single remote control to provide commands to a variety of
target appliances, according to the optimal method of communication for each target appliance and command.” Maj.
Op. at 3 (citing the ’853 patent col. 2 ll. 16–20).
The panel majority also recites that “Chardon discloses
a process for creating a listing of CEC command codes and
IR command codes” for communication to remote appliances. Id. at 7. Chardon teaches “at least two different
Madison,
5 U.S. 137, 177 (1803). This foundation of appellate review applies whether or not any facts are disputed.
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4 ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
communication methods,” namely CEC and IR, Roku Reply
Br. 1, and “[a] skilled artisan would understand that Chardon’s listing of parallel sets of CEC and IR command codes
and its description of algorithms for selecting which communication method to use reads precisely on the challenged claims.” Id. at 11. Although the parties discuss
differences between the details disclosed by Chardon and
by the ’853 patent, and the majority recognizes some such
differences, these details are unclaimed by the ’853 patent
and cannot be used to support non-obviousness.
An example is that for selecting the communications
method, the ’853 patent shows use of a “matrix” in Figure
7, and states that the matrix contains the “form of command/transmission to be used and a pointer to the required
data value and formatting information for the specific command,” Roku Reply Br. 10 (quoting the ’853 patent col. 7 ll.
26–29), while Chardon lists “both CEC-formatted command codes and a parallel set of IR-formatted command
codes.” Id. (citing Chardon, ¶¶ [0008], [0039], [0044]).
However, any difference in the selection method does not
appear in the claims.
Applying the requisite analysis of law and fact, I conclude that the ’853 patent claims at issue would have been
obvious in view of Chardon, because the methods described
in the claims and the prior art are substantially identical
and serve the same purpose and use. I respectfully dissent
from my colleagues’ contrary ruling.
