DCT

8:18-cv-01580

Universal Electronics Inc v. Roku Inc

Key Events

Complaint

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Universal Electronics Inc. (Delaware)
- Defendant: Roku, Inc. (Delaware)
- Plaintiff’s Counsel: Alston & Bird LLP
Case Identification: 8:18-cv-01580, C.D. Cal., 09/05/2018
Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement and maintains a regular and established place of business in the district, specifically an office in Santa Monica where it employs numerous individuals including its General Counsel.
Core Dispute: Plaintiff alleges that Defendant’s streaming players, TVs, remotes, and mobile application infringe nine patents related to remote control setup, control signal relaying, and touchscreen user interfaces.
Technical Context: The patents address technologies for simplifying the configuration and use of universal remote controls in home entertainment systems, a market where interoperability across numerous devices is a key challenge.
Key Procedural History: The complaint alleges a prior business relationship between the parties and a failure to reach a licensing agreement. It also notes that the Patent Trademark and Appeal Board (PTAB) previously denied institution of an inter partes review (IPR) proceeding related to one of the asserted patents, finding that the petitioner’s prior art combinations did not teach a key step of the invention.

Case Timeline

Date	Event
2001-11-20	Priority Date for ’532 and ’446 Patents
2003-12-16	Priority Date for ’642, ’389, and ’325 Patents
2004-12-09	Priority Date for ’309, ’504, and ’505 Patents
2009-09-15	U.S. Patent 7,589,642 Issued
2010-08-24	U.S. Patent 7,782,309 Issued
2010-10-26	U.S. Patent 7,821,504 Issued
2010-10-26	U.S. Patent 7,821,505 Issued
2011-02-22	U.S. Patent 7,895,532 Issued
2011-08-23	U.S. Patent 8,004,389 Issued
2011-09-06	U.S. Patent 8,015,446 Issued
2011-10-28	Priority Date for ’853 Patent
2017-07-25	U.S. Patent 9,716,853 Issued
2017-09-01	(approx.) Plaintiff allegedly informed Defendant it had over 30 patents covering its control solutions
2018-03-06	U.S. Patent 9,911,325 Issued
2018-09-05	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,589,642 - “Relaying Key Code Signals Through a Remote Control Device”

Patent Identification: 7,589,642, “Relaying Key Code Signals Through a Remote Control Device,” issued September 15, 2009.

The Invention Explained

Problem Addressed: The patent’s background section describes the inconvenience of consumers possessing multiple remote controls for their various electronic devices and notes that universal remotes have memory limitations, making it impractical to store the thousands of existing command codesets for all possible devices (’642 Patent, col. 1:12-55).
The Patented Solution: The invention proposes a system where the memory-limited remote control does not store the codesets itself. Instead, it sends a “keystroke indicator signal” to a more capable “key code generator device” (such as a set-top box) (’642 Patent, col. 2:1-16). This generator device, which maintains a database of codesets, identifies the correct command, generates the corresponding key code signal, and transmits it back to the remote control, which then relays the final command (e.g., via IR) to the target appliance (’642 Patent, Fig. 1).
Technical Importance: This approach decouples the remote control from the large and ever-expanding library of device command codes, potentially reducing the remote's cost and complexity while enabling control of a wider range of devices (Compl. ¶24).

Key Claims at a Glance

The complaint asserts independent claim 2 (a method claim) (Compl. ¶27).
Essential elements of Claim 2:
- receiving a keystroke indicator signal from a remote control device, wherein the keystroke indicator signal indicates a key on said remote control device that a user has selected;
- generating a key code within a key code generator device using the keystroke indicator signal;
- modulating said key code onto a carrier signal, thereby generating a key code signal; and
- transmitting said key code signal from said key code generator device to an electronic consumer device.
The complaint notes it also asserts at least one other claim of the ’642 Patent (Compl. ¶28).

U.S. Patent No. 8,004,389 - “Relaying Key Code Signals Through a Remote Control Device”

Patent Identification: 8,004,389, “Relaying Key Code Signals Through a Remote Control Device,” issued August 23, 2011.

The Invention Explained

Problem Addressed: As a continuation of the application leading to the ’642 Patent, the ’389 Patent addresses the same fundamental problem of simplifying universal remote control setup and operation without requiring the remote to store extensive codesets (Compl. ¶44; ’389 Patent, col. 1:12-61).
The Patented Solution: The solution is again centered on a key code generator device that receives a keystroke signal and generates the appropriate command for a target appliance (’389 Patent, col. 2:1-16). The complaint specifically highlights a novel element in claim 2 related to a method for identifying the correct codeset during setup: the codeset is identified when the user stops pressing a key in response to a prompt, such as confirming that music has stopped playing (Compl. ¶45, ¶52).
Technical Importance: This method provides an interactive, feedback-based approach for a user to confirm the correct command codeset during the initial configuration of a universal remote control system (Compl. ¶46).

Key Claims at a Glance

The complaint asserts independent claim 2 (a method claim) (Compl. ¶46).
Essential elements of Claim 2:
- receiving a keystroke indicator signal from a remote control device;
- generating a key code within a key code generator device using the keystroke indicator signal, where the key code is part of a codeset;
- modulating the key code onto a carrier signal to generate a key code signal;
- transmitting the key code signal from the key code generator device; and
- identifying the codeset using input from a user, wherein the codeset is identified when the user stops pressing a key on the remote control device.
The complaint notes it also asserts at least one other claim of the ’389 Patent (Compl. ¶47).

U.S. Patent No. 9,911,325 - “Relaying Key Code Signals Through a Remote Control Device”

Patent Identification: 9,911,325, “Relaying Key Code Signals Through a Remote Control Device,” issued March 6, 2018 (Compl. ¶9).
Technology Synopsis: Arising from the same family as the ’642 and ’389 patents, this patent also relates to systems for relaying key codes (Compl. ¶64). The asserted apparatus claim includes limitations related to the physical device and requires the codeset to include timing information describing how digital ones and zeros are represented in the transmitted signal (Compl. ¶65).
Asserted Claims: Claim 1 (apparatus claim) (Compl. ¶66).
Accused Features: Roku streaming players and TVs that transmit commands (e.g., CEC-formatted key codes via HDMI) to control external devices like TVs or sound bars in response to receiving a signal from a Roku remote (Compl. ¶68, ¶75).

U.S. Patent No. 9,716,853 - “System and Method for Optimized Appliance Control”

Patent Identification: 9,716,853, “System and Method for Optimized Appliance Control,” issued July 25, 2017 (Compl. ¶10).
Technology Synopsis: The patent addresses the challenge of controlling multiple consumer electronic devices that use different communication methods (e.g., Wi-Fi, Bluetooth, HDMI, IR) (Compl. ¶90). The invention is a “universal control engine” that detects a target appliance, creates a listing of available communication methods (e.g., IR and CEC) for different functions (e.g., volume and power), and uses the appropriate method to transmit a command when a user makes a request (Compl. ¶91, ¶97).
Asserted Claims: Claim 1 (Compl. ¶92).
Accused Features: Roku products that control an external device's volume or power via CEC or IR, detecting target devices via HDMI and using either IR or CEC to transmit volume/power commands from a Roku remote (Compl. ¶92, ¶97).

U.S. Patent No. 7,782,309 - “Controlling Device with Dual-Mode, Touch-Sensitive Display”

Patent Identification: 7,782,309, “Controlling Device with Dual-Mode, Touch-Sensitive Display,” issued August 24, 2010 (Compl. ¶11).
Technology Synopsis: This patent addresses limitations of prior art remote controls that used GUIs but were limited to a single mode of user interaction (Compl. ¶108). The invention is a method for using a controlling device with a dual-mode touchscreen that can distinguish between a first input type (e.g., a tap to select an icon) and a second input type (e.g., a swipe to browse content) and transmit different data based on the detected input type (Compl. ¶108, ¶119).
Asserted Claims: Claim 1 (method claim) (Compl. ¶111).
Accused Features: The Roku Mobile App’s “Swipe Remote” feature, which allegedly distinguishes between tapping motions to select content and swiping motions to browse content, transmitting corresponding commands to the Roku device (Compl. ¶115, ¶117, ¶119).

U.S. Patent No. 7,821,504 - “Controlling Device with Dual-Mode, Touch-Sensitive Display”

Patent Identification: 7,821,504, “Controlling Device with Dual-Mode, Touch-Sensitive Display,” issued October 26, 2010 (Compl. ¶12).
Technology Synopsis: Similar to the ’309 Patent, this patent relates to a method for using a remote control with a dual-mode touch-sensitive display (Compl. ¶130). The invention distinguishes between a “static touch” (first input type) and a “moving touch” (second input type) made on the surface and transmits different data to an appliance based on which input is received (Compl. ¶130, ¶140).
Asserted Claims: Claim 1 (method claim) (Compl. ¶133).
Accused Features: The Roku Mobile App’s home screen, which allegedly uses static touches (taps) to select options and moving touches (swipes) to navigate content like channel lists (Compl. ¶136, ¶138).

U.S. Patent No. 7,821,505 - “Controlling Device with Dual-Mode, Touch-Sensitive Display”

Patent Identification: 7,821,505, “Controlling Device with Dual-Mode, Touch-Sensitive Display,” issued October 26, 2010 (Compl. ¶13).
Technology Synopsis: This patent claims a physical universal controlling device (apparatus), rather than a method, with a dual-mode touch-sensitive display (Compl. ¶151). The device’s processor is programmed to distinguish a first input type (e.g., selecting a GUI icon) from a second input type (e.g., a motion across the surface) and cause a transmitter to send different data accordingly (Compl. ¶160-162).
Asserted Claims: Claim 1 (apparatus claim) (Compl. ¶154).
Accused Features: Smartphones and tablets running the Roku Mobile App, which are alleged to be universal controlling devices capable of distinguishing between tapping and swiping motions to control Roku devices and other connected appliances (Compl. ¶156, ¶160-162).

U.S. Patent No. 7,895,532 - “User Interface for a Remote Control Application”

Patent Identification: 7,895,532, “User Interface for a Remote Control Application,” issued February 22, 2011 (Compl. ¶14).
Technology Synopsis: The patent addresses user interfaces for remote control applications that can become crowded and complex when controlling many appliances (Compl. ¶173). The invention is a method where the controlling device presents representations of controllable appliances, uses a program to automatically create a sequence of instructions based on user interaction (e.g., selecting a device to pair), and executes that sequence (Compl. ¶173, ¶178-179).
Asserted Claims: Claim 10 (method claim) (Compl. ¶175).
Accused Features: The pairing process of the Roku Mobile App, which presents a list of controllable Roku devices and, upon user selection, automatically executes instructions to connect the app to the selected device (Compl. ¶177-179).

U.S. Patent No. 8,015,446 - “User Interface for a Remote Control Application”

Patent Identification: 8,015,446, “User Interface for a Remote Control Application,” issued September 6, 2011 (Compl. ¶15).
Technology Synopsis: This patent addresses the problem of debugging remote control applications after they have been sold to consumers (Compl. ¶190). The invention describes a method for debugging where a controlling device stores data from user interactions and uploads that captured data to a computer where it is available for use in debugging the application (Compl. ¶190, ¶195).
Asserted Claims: Claim 1 (method claim) (Compl. ¶192).
Accused Features: The Roku Mobile App and other Roku products that store data related to user interactions (e.g., search history, channels accessed) and upload it to Roku servers, where it is allegedly used for purposes including debugging and fixing bugs in software updates (Compl. ¶194, ¶195).

III. The Accused Instrumentality

Product Identification

The complaint names two categories of accused instrumentalities:
1. Roku Hardware Products: This includes various models of Roku streaming players (e.g., Roku Ultra, Roku Streaming Stick), Roku TVs, and Roku remotes (e.g., Roku Enhanced Remote). These products are accused of infringing the patents related to signal relaying and optimized appliance control (the ’642, ’389, ’325, and ’853 patents) (Compl. ¶27, ¶46, ¶66, ¶92).
2. Roku Mobile App: This is a software application for smartphones and tablets that functions as a remote control for Roku devices. It is accused of infringing the patents related to touchscreen GUIs, user interface setup, and debugging (the ’309, ’504, ’505, ’532, and ’446 patents) (Compl. ¶111, ¶133, ¶154, ¶175, ¶192).

Functionality and Market Context

The Roku hardware products are streaming media players that enable users to access programming services on a television (Compl. ¶6). The Roku Mobile App provides remote control functionality for these players on a touchscreen device, including features like a "Swipe Remote" that uses both tapping and swiping gestures (Compl. ¶117). The complaint asserts that Roku is a "relative newcomer to home entertainment control" that has incorporated UEI's patented technologies without a license (Compl. ¶2).
No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

7,589,642 Patent Infringement Allegations

Claim Element (from Independent Claim 2)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
receiving a keystroke indicator signal from a remote control device, wherein the keystroke indicator signal indicates a key on said remote control device that a user has selected	The Roku box or TV receives a keystroke indicator signal from a Roku remote, indicating a key that the user has pressed.	¶29	col. 3:41-50
generating a key code within a key code generator device using the keystroke indicator signal	The Roku box or TV generates a key code during the set-up process in response to the keystroke indicator signal.	¶30	col. 4:25-34
modulating said key code onto a carrier signal, thereby generating a key code signal	The Roku products generate key code signals onto a carrier signal, such as Bluetooth, IR, or Wi-Fi Direct.	¶31	col. 4:35-42
transmitting said key code signal from said key code generator device to an electronic consumer device	The Roku products transmit key code signals to a consumer electronic device (e.g., a TV or sound bar) using RF, IR, or HDMI CEC signaling.	¶32	col. 5:41-54

Identified Points of Contention

Scope Questions: A central question may be whether the system architecture described in the patent, where a key code is generated and transmitted to a consumer device, reads on the accused setup process where Roku is configuring its own remote to control other devices.
Technical Questions: The complaint alleges the "generating a key code" step occurs "during at least the set-up process" (Compl. ¶30). A question for the court will be whether this setup functionality maps onto the claim's requirement for generating a key code for ongoing device control, or if there is a temporal or functional mismatch.

8,004,389 Patent Infringement Allegations

Claim Element (from Independent Claim 2)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
receiving a keystroke indicator signal from a remote control device...	The Roku products receive a keystroke indicator signal from a Roku remote when a user presses a key.	¶48	col. 3:41-50
generating a key code within a key code generator device... wherein said key code is part of a codeset that controls an electronic consumer device	During the set-up process, the Roku products generate a key code that is part of a codeset (e.g., IR or CEC codes) for controlling a TV.	¶49	col. 4:25-34
modulating said key code onto a carrier signal, thereby generating a key code signal	The Roku products generate key code signals on a carrier such as Bluetooth, Wi-Fi Direct, or IR.	¶50	col. 4:35-42
transmitting said key code signal from said key code generator device	The Roku products transmit key code signals to a remote control device or a consumer device using various transmission methods.	¶51	col. 5:41-54
identifying said codeset using input from a user of said remote control device, wherein said codeset is identified when said user stops pressing a key on said remote control device	During setup, the user provides input on the Roku remote in response to on-screen prompts like "Did the music stop playing?" When the user stops pressing a key, the codeset is identified.	¶52	col. 7:4-15

Identified Points of Contention

Scope Questions: The primary point of contention will likely be the construction of "wherein said codeset is identified when said user stops pressing a key." The dispute will center on whether the user interaction with the "Did the music stop playing?" screen during setup meets this specific limitation.
Technical Questions: An evidentiary question will be what technically occurs when the user "stops pressing a key." Does this action itself trigger the identification of the codeset as required by the claim, or is the identification triggered by a subsequent action (e.g., pressing a "Yes" button), potentially creating a mismatch with the claim language?

V. Key Claim Terms for Construction

"key code generator device"

(from ’642 Patent, Claim 2; ’389 Patent, Claim 2)

Context and Importance: This term defines the central processing unit of the claimed system. The complaint identifies Roku's boxes and TVs as this device. Its construction is critical because it must be the component that receives the keystroke indicator, possesses the codeset library, and generates the final command signal.

Intrinsic Evidence for Interpretation:

Evidence for a Broader Interpretation: The specification states the device "may, for example, be or include the Internet" or a "database of codesets... maintained at a remote location" (’389 Patent, col. 7:37-39), suggesting it need not be a single, self-contained physical box but could be a networked system.
Evidence for a Narrower Interpretation: The primary embodiment described and illustrated is a "set-top box" that "generates the on-screen displays" and communicates with other local devices (’389 Patent, col. 3:24-28; Fig. 1). This could support an interpretation limiting the term to a single piece of consumer electronics equipment central to a home entertainment system.

"wherein said codeset is identified when said user stops pressing a key on said remote control device"

(from ’389 Patent, Claim 2)

Context and Importance: This limitation is a key differentiator from the parent ’642 Patent and is central to the infringement allegation against Roku's setup process. Practitioners may focus on this term because the infringement case for the ’389 patent hinges on whether Roku's interactive setup feature meets this precise, action-based definition of "identifying."

Intrinsic Evidence for Interpretation:

Evidence for a Broader Interpretation: The patent describes a general "autoscan functionality" where the system cycles through codesets and the user provides feedback (’389 Patent, col. 7:4-15). A party could argue that "stops pressing a key" is just one example of such user feedback and should be interpreted broadly to cover any user action that confirms a successful test.
Evidence for a Narrower Interpretation: The claim language is highly specific: identification occurs "when" the user stops pressing the key. This temporal language suggests the cessation of the key press is the direct trigger for identification. The specification supports this, stating "When the user stops pressing the power-on key, then the key code generator device 12 identifies the codeset of the last transmitted key code" (’389 Patent, col. 7:15-18). This may support a narrow reading where the system must react specifically to the key-up event.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement for all asserted patents. The basis for inducement includes Roku’s creation and dissemination of promotional materials and instruction guides that allegedly teach and encourage end users to use the accused products in an infringing manner (e.g., Compl. ¶37, ¶57). Specific examples cited include step-by-step instructions on Roku's support website for setting up enhanced remotes and using the mobile app (Compl. ¶37, ¶57, ¶83, ¶124).

Willful Infringement

The complaint alleges willful infringement for all asserted patents. The basis for willfulness includes alleged pre-suit knowledge of the patents and infringement. Specific facts alleged to support knowledge include: Plaintiff informing Defendant in September 2017 that it held over 30 patents covering its control solutions; Defendant’s own patents citing documents that refer to Plaintiff's patents over 290 times; and Plaintiff’s marking of its patents on its "NevoSmart App" (Compl. ¶36, ¶56, ¶82, ¶100). The complaint also alleges that "Roku copied various aspects of UEI's patented technology" (Compl. ¶36).

VII. Analyst’s Conclusion: Key Questions for the Case

This case presents a broad challenge to Roku's remote control ecosystem, spanning hardware setup, signal transmission, and software user interfaces. The resolution of the dispute may turn on several key questions for the court:

A core issue will be one of temporal and functional mapping: do the methods claimed in the ’642 and ’389 patents, which describe a real-time signal relay system for ongoing device control, read on the accused functionality, which the complaint primarily identifies as occurring during a one-time "set-up process"?
A key question of claim construction will be the interpretation of the phrase "wherein said codeset is identified when said user stops pressing a key" in the ’389 Patent. The case may depend on whether Roku's interactive setup screen, which prompts a user for confirmation after a test signal is sent, meets the specific sequence and triggering event required by this language.
An evidentiary question will be one of knowledge and intent: what evidence can be presented to establish that Roku had pre-suit knowledge of the specific asserted patents and either deliberately copied the claimed technology or proceeded with willful blindness to a high probability of infringement, as required to support the claim for willfulness?