Case: 21-1992 Document: 43 Page: 1 Filed: 08/18/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
UNIVERSAL ELECTRONICS, INC.,
Appellant
v.
ROKU, INC.,
Appellee
______________________
2021-1992, 2021-1993, 2021-1994
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
01612, IPR2019-01613, IPR2019-01614.
______________________
Decided: August 18, 2023
______________________
MICHAEL ANTHONY NICODEMA, Greenberg Traurig
LLP, West Palm Beach, FL, argued for appellant. Also rep-
resented by BENJAMIN GILFORD, JAMES J. LUKAS, JR., Chi-
cago, IL.
JON WRIGHT, Sterne Kessler Goldstein & Fox, PLLC,
Washington, DC, argued for appellee. Also represented by
RICHARD CRUDO, LESTIN KENTON; JONATHAN DANIEL
BAKER, Dickinson Wright PLLC, Mountain View, CA;
MICHAEL DAVID SAUNDERS, Austin, TX.
Case: 21-1992 Document: 43 Page: 2 Filed: 08/18/2023
2 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
______________________
Before NEWMAN, REYNA, and STOLL, Circuit Judges.
NEWMAN, Circuit Judge.
This is a consolidated appeal of three Inter Partes Re-
view (“IPR”) petitions filed by Roku, Inc., for three patents
derived from the same parent application and owned by
Universal Electronics, Inc. (“UEI”). The Patent Trial and
Appeal Board (“Board”) held that claims 1–4, 6, 8, 9, and
22–25 of
U.S. Patent No. 7,589,642 (“the ’642 patent”);
claims 2–5, 7–13, and 15 of
U.S. Patent No. 8,004,389 (“the
’389 patent”); and claims 1–5 of
U.S. Patent No. 9,911,325
(“the ’325 patent”) are unpatentable on the ground of obvi-
ousness. 1 The Board upheld challenged claim 14 of the ’389
and claim 7 of the ’325 patent; Roku does not cross-appeal
those rulings.
For the reasons we discuss, we affirm the Board’s deci-
sions in all three IPRs.
BACKGROUND
The Patented Inventions
The three UEI patents are entitled “Relaying Key Code
Signals Through a Remote Control Device,” and state that
they relate “generally to remote control devices and, more
specifically, to relaying key code signals through a remote
control device to operate an electronic consumer device . . .
1 Roku, Inc. v. Universal Elecs., Inc., No. IPR2019-
01612,
2021 WL 1192127 (P.T.A.B. Mar. 29, 2021); No.
IPR2019-01613,
2021 WL 1192128 (P.T.A.B. Mar. 29,
2021); No. IPR2019-01614,
2021 WL 1395255 (P.T.A.B.
Apr. 13, 2021). The Board issued analogous opinions for all
three reviews. Citations to “Board Op.” are to IPR2019-
01612 unless otherwise noted.
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 3
such as televisions, stereo radios, digital video disk players,
video cassette recorders, set-top cable television boxes and
set-top satellite boxes.” ’642 patent, col. 1, ll. 6–16. 2
The patents discuss problems accompanying the provi-
sion and use of electronic remote control technology:
A remote control device typically controls a selected
electronic consumer device by transmitting infra-
red key code signals to the selected electronic con-
sumer device. The infrared signals contain key
codes of a codeset associated with the selected elec-
tronic consumer device. Each key code corresponds
to a function of the selected electronic device, such
as power on, power off, volume up, volume down,
play, stop, select, channel up, channel down, etc. In
order to avoid the situation where a remote control
device unintentionally operates an electronic con-
sumer device that is associated with a different re-
mote control device, manufacturers sometimes use
distinct codesets for the communication between
various electronic consumer devices and their asso-
ciated remote control devices.
Id., col. 1, ll. 21–34. The patents’ written descriptions elab-
orate on these problems and describe a method to relay a
key code through a “remote control device to control a se-
lected one of multiple different electronic consumer devices
without requiring the codeset associated with the selected
electronic consumer device to be stored on the remote con-
trol device.”
Id., col. 1, ll. 51–55.
The representative claim for each patent is as follows:
2 The ’325 patent is a continuation of the ’389 patent,
which is a continuation of the ’642 patent. The specifica-
tions are the same. Unless otherwise noted the citations
are to the ’642 patent.
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4 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
[’642 patent] Claim 1. A method comprising:
(a) receiving a keystroke indicator signal from
a remote control device, wherein the key-
stroke indicator signal indicates a key on
said remote control device that a user has
selected;
(b) generating a key code within a key code gen-
erator device using the keystroke indictor
signal;
(c) modulating said key code onto a carrier sig-
nal, thereby generating a key code signal;
and
(d) transmitting said key code signal from said
key code generator device to said remote
control device.
[’389 patent] Claim 2. A method comprising:
(a) receiving a keystroke indicator signal from
a remote control device, wherein the key-
stroke indicator signal indicates a key on
said remote control device that a user has
selected;
(b) generating a key code within a key code gen-
erator device using the keystroke indicator
signal, wherein said key code is part of a
codeset that controls an electronic con-
sumer device;
(c) modulating said key code onto a carrier sig-
nal, thereby generating a key code signal;
(d) transmitting said key code signal from said
key code generator device; and
(e) identifying said codeset using input from a
user of said remote control device, wherein
said codeset is identified when said user
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 5
stops pressing a key on said remote control
device.
[’325 patent] Claim 1. A first device for transmit-
ting a command to control a functional operation
of a second device, the first device comprising:
a receiver;
a transmitter;
a processing device coupled to the receiver and
the transmitter; and
a memory storing instructions executable by
the processing device, the instructions
causing the processing device to:
generate a key code using a keystroke indicator
received from a third device in communica-
tion with first device via use of the receiver,
the keystroke indicator having data that
indicates an input element of the third de-
vice that has been activated;
format the key code for transmission to the sec-
ond device; and
transmit the formatted key code to the second
device in a key code signal via use of the
transmitter;
wherein the generated key code comprises a
one of a plurality of key code data stored in
a codeset, wherein the one of the plurality
of key code data is selected from the codeset
as a function of the keystroke indicator re-
ceived from the third device, wherein each
of the plurality of key code data stored in
the codeset comprises a series of digital
ones and/or digital zeros, and wherein the
codeset further comprises time information
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6 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
that describes how a digital one and/or a
digital zero within the selected one of the
plurality of key code data is to be repre-
sented in the key code signal to be trans-
mitted to the second device.
UEI appeals as to all the invalidated claims, arguing
that the Board erred in holding that a skilled artisan would
have been motivated to combine known wireless transmis-
sion technology with known modulation techniques.
The Cited References
Roku filed separate petitions for IPR of the three pa-
tents, citing Mishra, Rye, and Caris as primary references
for relevant wireless transmission technology, combined
with Dubil and Skerlos as references regarding relevant
modulation techniques. UEI argues that the Board misun-
derstood and misconstrued the references, that the Board
erred in finding a motivation to combine the references,
and that the combination of references does not teach the
inventions claimed in the UEI patents.
A
Wireless transmission of key codes
The Mishra, Rye, and Caris references relate to the
wireless transmission of key codes:
Mishra, U.S. Patent Pub. No. 2001/0005197
The Mishra reference is titled, “Remotely Controlling
Electronic Devices,” and describes “a way to program a re-
mote control unit to handle a variety of electronic devices
in a fashion which is easy and quick for the user.”
Id. at ¶
5. The Mishra Abstract summarizes:
A control system enables telephone calls to be an-
swered remotely using a remote control unit also
adapted to remotely control an electronic device
such as VCR. A processor based station may
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 7
communicate with a remote control unit using both
infrared and radio frequency protocols to enable re-
mote telephone communications and remote con-
trol of electronic devices.
Rye, U.S. Patent Pub. No. US2004/0080428
The Rye reference is titled, “RF Audiovisual Compo-
nent Remote Control System,” and states that the object is
“to provide a remote control system for use in controlling
the operation of a multi-brand audiovisual component sys-
tem that is cost effective and reliable.”
Id. at ¶ 12. Its Ab-
stract summarizes:
A handheld remote control unit transmits binary
coded rf address and control signals to an address-
able transceiver where those signals are detected,
decoded and processed to derive binary coded con-
trol signals that are coded in accordance with the
brands or manufacturers of the audiovisual compo-
nents that are to be controlled along with the func-
tion that is to be thus controlled for the addressed
components.
Caris,
U.S. Patent No. 7,562,128 B1
The Caris reference is titled, “STB Connects Remote to
Web Site for Customized Code Downloads,” and “addresses
perceived disadvantages in conventional programming of a
remote control to be used with consumer electronics equip-
ment.” Board Op. at *13. Caris discusses the need for sim-
plifying the process of configuring a remote for use with
different pieces of equipment. ’128 patent, col. 3, ll. 37–42.
The Abstract summarizes:
A set top box (STB) is marketed together with a
programmable remote. The remote has a dedicated
button to connect the STB to a specific server on
the Internet. The consumer can notify the server
of his/her other CE equipment, which he/she de-
sires to be controllable through the same remote as
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8 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
the one that came with the STB. The server down-
loads to the STB data representative of the rele-
vant control codes. The STB is provided with
means to program the remote with these codes. In
return the server has obtained detailed and accu-
rate information about this consumer’s equipment.
A reliable customer base can thus be built for
streamlining Help Desk operations.
B
Modulation techniques
Dubil and Skerlos describe the transmission of control
codes using known modulation techniques.
Dubil,
U.S. Patent No. 8,132,105 B1
The Dubil reference is titled, “Control Codes for Pro-
grammable Remote Supplied in XML Format” and “relates
to remote control devices and to a service for enabling the
programming of remote controls to be used with consumer
electronics (“CE”) equipment.”
Id., col. 1, ll. 6–8. The Ab-
stract describes the subject matter:
An Internet service makes available control codes
for use on a programmable universal remote. The
remote controls CE equipment through IR or RF
commands. A server supplies the control codes as
XML data that gets processed at the receiver’s set
top box or PC, or the remote itself, for being
properly installed on the remote.
The Board found that Dubil teaches “different modula-
tion schemes that may be used in transmitting control
codes having different bit patterns, including frequency-
shift keying (“FSK”), binary phase-shift keying (“BPSK”),
and pulse-width modulation (“PWM”).” Board Op. at *13.
Dubil states that “[t]he invention covers both the usage of
XML for IR or RF codes and for the GUI. The codes can be
described using a number of parameters defined by XML
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 9
tags. Examples have been mentioned above: carrier fre-
quency, duty cycle, protocol type (FSK, biphase, PWM,
etc.), repetition time, on/off[.]” Dubil, col. 4, ll. 33–37.
Skerlos,
U.S. Patent No. 4,426,662
The Skerlos reference is titled, “IR Remote Control De-
tector/Decoder,” and “relates to remote control receivers
and more specifically is directed to an infrared (IR) remote
control detector/decoder providing improved noise immun-
ity particularly adapted for use with a television receiver.”
Id., col. 1, ll. 5–9. The Abstract describes the subject mat-
ter:
A pulse code modulated (PCM) infrared (IR) remote
control detector/decoder with improved noise im-
munity particularly adapted for use with a televi-
sion receiver is disclosed. The IR pulses are
modulated by means of a high frequency dock sig-
nal in translating the transmitted signal to a
higher frequency, more noise immune portion of
the IR spectrum. After receipt of the transmitted
signal by a signal detector, the high frequency mod-
ulation is removed from the pulses which are then
decoded. Under the control of a microcomputer, the
decoder looks for the start data bit and, if received,
the subsequent control instructions. When the
data transmission has been decoded, the microcom-
puter activates the appropriate control outputs to
the television receiver’s tuner system to achieve
the desired control function.
Skerlos explains that “[t]he present invention is utilized
with a remote control system in which pulse code modu-
lated (PCM) output signals are generated in response to
user operated controls.”
Id., col. 2, l. 67–col. 3, l. 2.
DISCUSSION
Obviousness is a question of law, based on underlying
factual findings. In re NTP, Inc.,
654 F.3d 1279, 1297 (Fed.
Case: 21-1992 Document: 43 Page: 10 Filed: 08/18/2023
10 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
Cir. 2011). On appeal from the Board, we review factual
findings for support by substantial evidence and review le-
gal conclusions de novo. Gen. Elec. Co. v. Raytheon Techs.
Corp.,
983 F.3d 1334, 1345 (Fed. Cir. 2020). Substantial
evidence is “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Consol.
Edison Co. v. NLRB,
305 U.S. 197, 229 (1938).
Patent claim construction is a question of law that the
court reviews de novo. Trs. Of Columbia Univ. v. Symantec
Corp.,
811 F.3d 1359, 1362 (Fed. Cir. 2016) (citing Teva
Pharm. USA, Inc. v. Sandoz, Inc.,
574 U.S. 318 (2015))
(“The construction of claim terms based on the claim lan-
guage, the specification, and the prosecution history are le-
gal determinations.”). When claim construction involves
underlying factual findings, these findings are reviewed for
support by substantial evidence. Knowles Elecs. LLC v.
Cirrus Logic, Inc.,
883 F.3d 1358, 1361–62, 1364 (Fed. Cir.
2018).
Claim Construction
The Board invalidated various claims based on its con-
struction of certain claim terms. UEI argues that the
Board erred in construing and applying four terms: (A) the
“generating” term relating to the key code of the ’642 pa-
tent and the ’389 patent (“generating a key code within a
key code generator device using the keystroke indicator
signal”); (B) the “means” term in the ’389 patent (“means
for receiving a key code from said RF receiver and for send-
ing said key code to said IR transmitter such that said key
code is modulated onto an IR carrier signal”); (C) the “pro-
cessing device” term in the ’325 patent (“causing the pro-
cessing device to: generate a key code . . . format the key
code . . . and transmit the formatted key code”); and (D) the
“timing information” term in the ’642 and ’325 patents
(“codeset further comprises time information”).
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 11
A
The term “generating a key code”
The Board held claims 1–4, 6, 8, 9, and 22–25 of the
’642 patent and claims 2–3 of the ’389 patent obvious over
Mishra or Rye in combination with Dubil. UEI states that
the Board erroneously construed “generating a key code
within a key code generator device using the keystroke in-
dicator signal” and that the Board’s construction is incon-
sistent with the plain language of the claims and with the
undisputed construction of the “key code generator device.”
UEI Br. 2–3.
UEI argues that the specifications and prosecution his-
tories of the ’642 and ’389 patents state the correct con-
struction and that “[t]he Board’s finding that Mishra and
Rye disclose ‘generating a key code within a key code gen-
erator device using the keystroke indicator signal’ is based
on a construction of that limitation that includes ‘receiving
an appliance control code and merely translating or con-
verting the code into another format, such as an infrared
signal.’” Id. at 44.
UEI argues that under the correct construction “[n]ei-
ther Mishra nor Rye discloses ’generating a key code within
a key code generator device using the keystroke indicator
signal.’” Id. at 50. UEI states that the Board found that
“Mishra and Rye disclose merely ‘translating’ or ‘convert-
ing’ a received key code into another format.” Id. UEI em-
phasizes that “the correct construction of the limitation
‘generating a key code within a key code generator device
using the keystroke indicator signal’ excludes ‘translating’
or ‘converting’ a received key code into another format.” Id.
Roku responds that the “generating” limitation as con-
strued by the Board does not exclude translating or con-
verting a key code into another format, and that “[t]he
Board properly construed this limitation consistent with its
plain and ordinary meaning to encompass scenarios where
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12 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
the set-top box (1) translates a keystroke indicator signal
received from a remote control into a format appropriate
for controlling a consumer device, as disclosed in Mishra;
and (2) uses the received keystroke indicator signal to ob-
tain the corresponding key code from a look-up table and
converts the signal to the appropriate code, as disclosed in
Rye and Caris.” Roku Br. 38–39. We discern no error in
the Board’s statement:
We are not persuaded that there is sufficient basis
for construing the “generating” limitation so
broadly as to capture the identification of a key
code from a codeset while simultaneously excluding
translation of a received code. By forgoing a
straightforward recitation of “identifying” in the
claims in favor of a broader recitation of “generat-
ing,” the patentee clearly meant for the term not to
be limited to mere identification of a key code but
also to include other forms of generation of the key
code.
Board Op. at *11.
Substantial evidence supports the Board’s finding that
each of Mishra, Rye, and Caris discloses the “generating”
limitation under the Board’s construction. Mishra gener-
ates a key code signal by translating a command signal re-
ceived from the remote control into a format suitable for
controlling a device. The Board explained for claim 1 of the
’642 patent:
Independent claim 1 recites “generating a key code
within a key code generator device using the key-
stroke indicator signal.” Petitioner contends that
this limitation is disclosed by Mishra’s determina-
tion of a corresponding control code through trans-
lation of the command signal received from the
RCU into a format appropriate for controlling an
appliance . . . . In accordance with our adopted con-
struction of the limitation, we agree that such
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 13
translation qualifies as “generating a key code,”
and that Mishra therefore meets the limitation.
Board Op. at *15 (internal citations omitted).
Rye describes converting an input control signal to be
compatible with the operating binary code for the selected
audiovisual component. The Board applied Rye to claim 2
of the ’642 patent:
Like independent claim l, independent claim 2 re-
cites “generating a key code within a key code gen-
erator device using the keystroke indicator signal.”
Petitioner contends that this limitation is disclosed
by Rye’s procedure of “convert[ing] the input con-
trol signal so that it is compatible with the operat-
ing binary code for the selected audiovisual
component whose IR remote control code is ob-
tained from the look-up table 46.”
Board Op. at *21 (internal citations omitted).
UEI argued to the Board that “Rye’s converting of a re-
ceived control code was expressly disclaimed from ‘gener-
ating a key code’ during prosecution.” Id. (quoting UEI
Board Br. 40) The Board stated that “we disagree that
there was an effective prosecution history disclaimer that
limits the scope of the ‘generating’ limitation as Patent
Owner proposes.” Id. Roku states that “UEI makes a sim-
ilar argument on appeal. While UEI tries to disguise its
true argument by not using the word ‘disclaimer’ in its
brief, its invitation for the Court to depart from the ordi-
nary meaning of ‘generating’ is obviously premised on a
disclaimer theory.” Roku Br. 43. However, we are not di-
rected to a disclaimer, and none is cited. A disclaimer of a
legal right should be clear and explicit. See Trivascular,
Inc. v. Samuels,
812 F.3d 1056, 1063–64 (Fed. Cir. 2016)
(“The party seeking to invoke prosecution history dis-
claimer bears the burden of proving the existence of a ‘clear
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14 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
and unmistakable’ disclaimer that would have been evi-
dent to one skilled in the art.”).
The Board found that both Mishra and Rye disclose the
“generating” limitation, Board Op. at *15, *21, and that
Caris generates a key code signal by identifying the corre-
sponding code from a look-up table, id. at *27. Substantial
evidence supports the Board’s findings that Mishra, Rye,
and Caris disclose generating a key code by converting or
translating a received signal, as the term is used in claims
1–4, 6, 8, 9, and 22–25 of the ’642 patent and claims 2 and
3 of the ’389 patent. We conclude that the Board correctly
applied these references to the claim term “generating a
key code.”
B
The term “means for receiving a key code”
The “means” limitation, “means for receiving a key
code from said RF receiver and for sending said key code to
said IR transmitter such that said key code is modulated
onto an IR carrier signal,” appears in claims 12–15 of the
’389 patent. UEI argues that the Board erred in holding
these claims obvious based on Mishra in combination with
Dubil, and also based on Caris in combination with Skerlos
and Yazolino (
U.S. Patent No. 5,329,370). UEI Br. 3–4.
UEI states that the Board’s construction of the “means”
limitation is legally erroneous, and that Roku’s combina-
tions of references does not disclose this limitation under
the proper construction.
Id.
The means-plus-function provision of Title 35 (previ-
ously § 112(6)) states:
§ 112(f) Element in Claim for a Combina-
tion.—
An element in a claim for a combination may be ex-
pressed as a means or step for performing a speci-
fied function without the recital of structure,
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 15
material, or acts in support thereof, and such claim
shall be construed to cover the corresponding struc-
ture, material, or acts described in the specification
and equivalents thereof.
This provision “allows a patentee to recite a function to be
performed as a claim limitation rather than reciting struc-
ture or materials for performing that function.” Omega
Eng’g, Inc. v. Raytek Corp.,
334 F.3d 1314, 1321 (Fed. Cir.
2003). Analysis of a means-plus-function limitation follows
an established protocol:
The construction of a means-plus-function limita-
tion follows a two-step approach. First, we must
identify the claimed function, staying true to the
claim language and the limitations expressly re-
cited by the claims. Once the functions performed
by the claimed means are identified, we must then
ascertain the corresponding structures in the writ-
ten description that perform those functions. A dis-
closed structure is corresponding “only if the
specification or the prosecution history clearly
links or associates that structure to the function re-
cited in the claim.” In other words, the structure
must be necessary to perform the claimed function.
Id. (internal citations omitted).
The parties agree that the claimed function is “receiv-
ing a key code from said RF receiver and for sending said
key code to said IR transmitter such that said key code is
modulated onto an IR carrier signal.” Board Op. (’389 pa-
tent) at *12. Construing the recited means, the Board
adopted Roku’s proposed construction: “a microcontroller
that performs the algorithm of receiving a key code from an
RF receiver that has received a first key code signal and
translating the key code so that the key code is modulated
onto an infrared carrier signal resulting in a second key
code signal.”
Id. at *14. This construction is consistent
with the specification’s description of the remote control
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16 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
that performs the receiving and sending functions. As §
112(f) provides, the claim scope is limited to the structure
in the specification and its equivalents. See Aristocrat
Techs. Austl. Pty v. Int’l Game Tech.,
521 F.3d 1328, 1333
(Fed. Cir. 2008).
The Board determined that the ’389 patent describes
the algorithm for the claimed sending and receiving func-
tions, stating that “Petitioner’s proposed structure goes be-
yond a mere restatement of the function by including
specific reference to key code signals and translation of the
key code. Petitioner supports its proposal by citing to col-
umn 5, lines 45–59, of the ’389 patent, which makes specific
reference to the first and second key code signals, as well
as to ‘translating the communicated key code.’” Board Op.
(’389 patent) at *13. The specification of the ’389 patent
illustrates:
Next (step 104), an RF transmitter 20 of
key code generator device 12 transmits first key
code signal 19 in the form of an RF transmission to
an RF receiver 21 on remote control device 11.
Next (step 105), remote control device 11
receives first key code signal 19 and relays the key
code communicated by first key code signal 19 to
VCR 13 in the form of a second key code signal 22.
Remote control device 11 is a slave to key code gen-
erator device 12. Remote control device 11 relays
the key code by receiving first key code signal 19 in
RF form and translating the communicated key
code so that the key code is modulated onto a sec-
ond carrier signal resulting in second key code sig-
nal 22. In this example, the second carrier signal
is an infrared signal with a frequency in the range
between three hundred gigahertz and three hun-
dred terahertz.
’389 patent, col. 5, ll. 45–59. The Board correctly concluded
that the algorithm for performing the claimed “receiving”
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 17
and “sending” functions is disclosed, for this passage de-
scribes the claimed means by which the remote control mi-
crocontroller carries out the function of receiving a key code
from the RF receiver and sending the code to the IR trans-
mitter.
Roku correctly states that “the Board’s articulation of
the claimed structure, which includes only the particular
algorithm required to perform the claimed function, is
faithful to the specification’s own description and con-
sistent with the extrinsic evidence of record.” Roku Br. 55.
See Univ. of Pitt. of Commonwealth Sys. Of Higher Educ.
v. Varian Med. Sys., Inc.,
561 F. App’x 934, 941 (Fed. Cir.
2014) (“The district court properly located the disclosure of
an algorithm that covered what was necessary to perform
the claimed function . . . and nothing more . . . . The algo-
rithm need only include what is necessary to perform the
claimed function.”).
UEI argues that “[t]he Board’s finding that Mishra in
combination with Dubil and Caris in combination with
Skerlos and Yazolino disclose the Means Limitation should
also be reversed because it is based on a legally erroneous
construction of the structure of the Means Limitation as ‘a
microcontroller that performs the algorithm of receiving a
key code from an RF receiver that has received a first key
code signal and translating the key code so that the key
code is modulated onto an infrared carrier signal resulting
in a second key code signal.’” UEI Br. 58.
The Board found that the microcontroller of Mishra
controls reception of a key code from an RF transceiver and
transmits the key code with an IR transmitter. And, in
light of Dubil’s modulating key code techniques, the Board
concluded that Misha thus teaches the “means for receiv-
ing a key code.” See Board Op. (’389 patent) at *27 (“For the
‘means for receiving a key code,’ Petitioner identifies the
microcontroller, discussed above in connection with de-
pendent claim 10, which controls reception of a key code
Case: 21-1992 Document: 43 Page: 18 Filed: 08/18/2023
18 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
from an RF transceiver, and transmits the key code with
an IR transmitter. Because this identification is sufficient
under our adopted construction of the ‘means for receiving
a key code,’ and because Petitioner makes explicit refer-
ence to its analysis of modulating key codes in light of Du-
bil, we conclude that Petitioner makes a sufficient
showing.” (internal citations omitted)).
The Board made a similar finding regarding the micro-
controller of the means limitations for Caris in combination
with Skerlos and Yazolino, stating:
In addition to Caris and Skerlos, Petitioner relies
on Yazolino in addressing limitations of claims that
recite a “microcontroller” in some form . . . . [Roku’s
expert] testifies that, in Petitioner’s proposed com-
bination of Caris and Skerlos, the modulation de-
scribed in Skerlos “would be performed by a
microcontroller in the remote control,” but that
“Caris does not explicitly describe these opera-
tional details.” Petitioner accordingly reasons that
a person of ordinary skill in the art “would have
known to look to references, such as Yazolino,
which explicitly describes the circuitry of a remote
control such as the one disclosed by Caris.” In light
of Petitioner’s evidence, we find this reasoning,
which is supported by rational underpinning, suffi-
cient to effect the combination of those teachings
with those of Caris and Skerlos.
Board Op. (’389 patent) at *31 (internal citations omitted).
These findings are supported by substantial evidence,
particularly the disclosures in the cited references as dis-
cussed above. These findings support the Board’s construc-
tion. On this construction, UEI does not dispute that
Mishra in combination with Dubil, and Caris in combina-
tion with Skerlos and Yazolino, disclose the “means” limi-
tation. We affirm the Board’s determinations regarding
this term.
Case: 21-1992 Document: 43 Page: 19 Filed: 08/18/2023
UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 19
C
The term “processing device”
The Board found that it would have been obvious to a
skilled artisan that Caris’ set top box (STB) would include
a processing device as recited in the processing device lim-
itation in claims 1–5 of the ’325 patent. Board Op. (’325
patent) at *20. UEI states that the Board erred. UEI ar-
gues that “Claim 1 of the ’325 patent recites a ‘processing
device’ that performs the steps or functions of ‘generat[ing]
a key code,’ ‘format[ting] the key code,’ and ‘transmit[ting]
the formatted key code.’” UEI Br. 62. UEI states that
“Roku conceded that Caris does not disclose that its set-top
box (“STB”) has a ‘processing device.’”
Id.
UEI states that the Board offered no reasoning to sup-
port its conclusion that it would have been obvious to mod-
ify Caris to include a processing device that performs the
functions of generating, formatting, and transmitting.
Id.
at 62–63. Roku responds with the testimony of its expert,
Dr. Russ, that “set-top boxes containing such devices for
processing received commands and transmitting key codes
were well-known in the art.” Roku Br. 65. Dr. Russ stated:
Caris describes the functionality of an STB as
well as a receiver and a transmitter but does not
explicitly illustrate the processing device of the
STB that is used for generating a key code and
transmitting the key code as will be further de-
scribed below. However, in view of the STB func-
tionality described in Caris, a POSA would have
found it obvious that this functionality would have
been performed using a processing device coupled
to the receiver and the transmitter. STBs typically
included processing devices such as processors or
microcontrollers that controlled the functionality of
the STBs.
Case: 21-1992 Document: 43 Page: 20 Filed: 08/18/2023
20 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
***
A POSA would have understood that STBs
would receive a command from a remote control
and use a processing device to interpret the com-
mand and identify a corresponding key code. The
STBs would also identify potential parameters,
such as modulation and timing parameters, used to
transmit the key code to another device. A pro-
cessing device would be used to access memory and
retrieve the corresponding key code as well as per-
form the modulation of the key code for transmis-
sion. Thus, a POSA would have understood that
Caris’ STB would include a processing device in or-
der to perform the functions described in Caris.
Russ Decl. ¶¶ 173, 176 (Appx2334, 2336) (internal citations
omitted). Dr. Russ provided
U.S. Patent No. 6,909,471
(Bayley), as a reference, and stated: “As illustrated in Bay-
ley, processing devices in STBs were well-known prior to
the ’325 patent and executed instructions in memory to re-
ceive commands and transmit corresponding control
codes.”
Id. at ¶¶ 174–75 (Appx2334–36). The Board stated:
We credit Dr. Russ’ testimony and are per-
suaded by Petitioner’s argument and the cited evi-
dence that, in view of what was well-known to
ordinarily skilled artisans, it would have been ob-
vious to a person of ordinary skill in the art that
Caris’s STB would include a processing device that
performs the claimed functions, including the func-
tions to “generate a key code,” “format the key
code,” and “transmit the formatted key code” and
that for Caris to perform the claimed functions, the
STB would include memory storing instructions ex-
ecuted by the processing device.
Board Op. at *20.
Case: 21-1992 Document: 43 Page: 21 Filed: 08/18/2023
UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 21
We conclude that substantial evidence, including ex-
pert testimony and the cited references, supports the
Board’s findings, and that the Board correctly construed
the processing device limitation.
D
The term “timing information”
The parties also debate the “timing information” limi-
tation wherein key code/codeset comprises timing/time in-
formation. This term is present in claims 4, 9, 23, and 25
of the ’642 patent and claims 1–5 of the ’325 patent.
UEI states that substantial evidence does not support
the Board’s findings that: “(i) Mishra or Rye in combination
with Dubil and Caris in combination with Skerlos disclose
the limitation ‘wherein said key code . . . comprises timing
information’ in challenged claims 4 and 23 of the 642 pa-
tent; (ii) that Mishra or Rye in combination with Dubil dis-
closes the limitation ‘wherein said codeset comprises
timing information’ in challenged claims 9 and 25 of the
642 patent; and (iii) Caris in combination with Dubil dis-
closes the limitation ‘wherein the codeset further comprises
time information’ in challenged claim 1 of the [’]325 pa-
tent.” UEI Br. 51.
Claim 4 of the ’642 patent is representative:
4. The method of claim 1, wherein said key code
comprises a binary number and timing infor-
mation, and wherein said timing information de-
fines how said binary number is modulated in (c)
onto said carrier signal.
’642 patent, col. 10, ll. 36–39.
UEI argues that the Board simply “adopted Roku’s po-
sition that Dubil and Skerlos disclose ‘wherein said key
code comprises . . . timing information’ because the alleged
timing information in Dubil and Skerlos would purportedly
Case: 21-1992 Document: 43 Page: 22 Filed: 08/18/2023
22 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
be ‘used to modulate a binary number onto a carrier fre-
quency.’” UEI Br. 51. UEI states that:
Even if it is true that the timing information in Du-
bil and Skerlos is used to modulate a key code or
binary number onto a carrier frequency, this has no
bearing on whether the key code or codeset com-
prises timing information, as claimed. Indeed, the
claims of the Challenged Patents expressly distin-
guish between a key code or codeset that “com-
prises timing information,” and using timing
information to modulate a key code or binary num-
ber onto a carrier frequency.
UEI Br. 52–53 (emphases original).
The Board found that Dubil discloses timing parame-
ters such as “duty cycle,” “repetition time,” and “on/off
times of the signal.” Board Op. at *25. Roku’s expert ex-
plained that Dubil’s “on/off times” define timing for the bi-
nary numbers of the key codes, wherein “the amount of
‘on/off’ time used for each digital one or digital zero would
describe timing information . . . to define how the binary
key code would be modulated onto a carrier signal.” Russ
Decl. ¶ 137 (Appx1091).
The Board found that a skilled artisan would have con-
sidered Dubil’s and Skerlos’ teaching of timing information
“as part of considering the teachings for wireless transmis-
sion of key codes.” Board Op. at *19, *29. This conclusion
was supported by the expert testimony that “[i]f a POSA
did not already understand the formatting of a key code, a
POSA would look to references” such as Dubil and Skerlos,
which “describ[e] the format as well as how to transmit the
key codes using a carrier signal.” Russ Decl. ¶ 139
(Appx1092). Dr. Russ declared:
A POSA would understand that the Skerlos
teaches a key code comprising the timing infor-
mation because Skerlos uses this the timing
Case: 21-1992 Document: 43 Page: 23 Filed: 08/18/2023
UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 23
information described in Skerlos to modulate the
“bits of coded information” onto a carrier signal. As
previously explained . . ., this type of modulation
was well-known and the inclusion of timing infor-
mation in a key code to modulate the key code onto
a carrier signal was well-known.
Id. at ¶230 (Appx1150).
We conclude that the Board correctly construed the
“timing information” limitation to conform with existing
knowledge such as is shown in the Dubil and Skerlos refer-
ences, which describe the format and transmission of key
codes using a carrier signal.
E
The combination of references
The Board found that Mishra, Rye, and Caris describe
wirelessly transmitting a key code signal from a set-top box
to a remote control. The Board found that a person of ordi-
nary skill in this field would have been motivated to com-
bine known modulation techniques with known wireless
transmission, for the references are in closely related fields
of endeavor, and the Board’s conclusion was supported by
expert testimony and citations to relevant references.
The parties repeat the debate on this appeal. We con-
clude that substantial evidence supports the Board’s find-
ings concerning the combination of references, in turn
supporting the Board’s conclusion that it would have been
obvious to a skilled artisan to combine Dubil’s and Skerlos’
modulation and timing information with the wireless key
code transmission of Mishra, Rye, and Caris. This conclu-
sion is founded on the content of the references and the ex-
pert testimony, and is in accordance with law. We affirm
the Board’s holding that it would have been obvious to mod-
ulate the Mishra/Rye/Caris codes as in Dubil and Skerlos.
Case: 21-1992 Document: 43 Page: 24 Filed: 08/18/2023
24 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
CONCLUSION
We have considered all the arguments concerning
these three patents and affirm the Board’s decisions of in-
validity of the claims at issue.
AFFIRMED
