DCT

8:18-cv-01580

Universal Electronics Inc v. Roku Inc

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:18-cv-01580, C.D. Cal., 12/15/2025
  • Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant Roku maintains a regular and established place of business in the district, employs numerous individuals there, and has committed the alleged acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s streaming players, remotes, mobile application, and underlying software infringe seven patents related to universal remote control setup, optimized multi-device communication, and graphical user interfaces.
  • Technical Context: The technology at issue involves methods for simplifying the configuration and use of universal remote controls to manage an increasingly complex ecosystem of home entertainment devices.
  • Key Procedural History: This Second Amended Complaint consolidates actions originally filed in 2018 and 2020. The complaint notes significant prior proceedings, including a concluded International Trade Commission (ITC) investigation where Roku was found to have infringed U.S. Patent No. 10,593,196, a determination affirmed by the Federal Circuit with the Supreme Court denying certiorari. Several of the asserted patents have also been subject to ex parte reexamination or inter partes review. The complaint also states the Court has previously issued rulings finding certain claims of the ’853, ’532, and ’446 patents to be patent-eligible under 35 U.S.C. § 101.

Case Timeline

Date Event
2001-11-20 Earliest Priority Date for ’532 and ’446 Patents
2003-12-16 Earliest Priority Date for ’389 and ’325 Patents
2005-09-08 Earliest Priority Date for ’317 Patent
2011-02-22 ’532 Patent Issued
2011-08-23 ’389 Patent Issued
2011-09-06 ’446 Patent Issued
2011-10-28 Earliest Priority Date for ’853 and ’196 Patents
2017-07-25 ’853 Patent Issued
2017-09-01 Plaintiff allegedly informs Defendant in writing of its patent portfolio
2018-01-01 Approximate date of original 2018 complaint filing
2018-03-06 ’325 Patent Issued
2020-01-01 Approximate date of original 2020 complaint filing
2020-03-17 ’196 Patent Issued
2020-03-24 ’317 Patent Issued
2021-07-09 ITC Initial Determination finds infringement of ’196 Patent
2021-11-10 ITC Final Determination finds infringement of ’196 Patent
2023-09-01 ’196 Patent ex parte reexamination certificate issued
2023-12-08 ’317 Patent ex parte reexamination certificate issued
2023-12-12 ’325 Patent ex parte reexamination certificate issued
2023-12-13 ’853 Patent inter partes review certificate issued
2024-01-01 Federal Circuit affirms ITC determination regarding ’196 Patent
2024-03-28 ’389 Patent inter partes review certificate issued
2024-03-28 ’325 Patent inter partes review certificate issued
2024-12-20 ’446 Patent ex parte reexamination certificate issued
2025-01-13 U.S. Supreme Court denies certiorari in ITC case for ’196 Patent
2025-12-15 Second Amended Complaint Filed

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

U.S. Patent No. 8,004,389 - Relaying Key Code Signals Through a Remote Control Device (Issued Aug 23, 2011)

The Invention Explained

  • Problem Addressed: As consumers acquire multiple electronic devices, a single universal remote control may lack sufficient memory to store the thousands of unique "codesets" (command data) required to operate them all (U.S. Patent 7,589,642, col. 1:40-50).
  • The Patented Solution: The invention proposes a system where a central "key code generator device" (such as a set-top box) stores the extensive library of codesets. A simplified remote control sends a signal indicating which key was pressed to the generator. The generator identifies the correct key code, generates a corresponding signal (e.g., on a radio frequency carrier), and transmits it back to the remote control. The remote control then "relays" this key code to the target appliance, typically using a standard infrared (IR) signal. This architecture shifts the memory and processing burden from the remote to a more powerful hub device (U.S. Patent 7,589,642, Abstract).
  • Technical Importance: This approach allowed for the manufacturing of simpler, less expensive remote controls that could still support a virtually unlimited and updatable library of consumer electronics devices (Compl. ¶29).

Key Claims at a Glance

  • The complaint asserts at least independent claim 6 (Compl. ¶30).
  • Key elements of apparatus claim 6 include:
    • A receiver configured to receive a first key code signal, wherein the first carrier signal is in a radio frequency band.
    • A transmitter configured to transmit a second key code signal, wherein the second carrier signal is in an infrared frequency band.
    • A keypad that includes a key corresponding to the key code.
  • The complaint reserves the right to assert additional claims (Compl. ¶30).

U.S. Patent No. 9,911,325 - Relaying Key Code Signals Through a Remote Control Device (Issued Mar 6, 2018)

The Invention Explained

  • Problem Addressed: The patent addresses the same problem as its parent, the ’389 Patent: enabling a simple remote to control many devices without storing all the command codes locally (Compl. ¶42).
  • The Patented Solution: The patent builds on the relay system of the ’389 Patent, adding further specificity to the function being controlled. The invention claims a system where the relayed key code is explicitly for controlling fundamental and universally necessary operations, namely "at least one of a power on, power off, volume up, and volume down functional operation of the second device" (Compl. ¶43).
  • Technical Importance: This patent appears to focus the broader relay concept on ensuring a baseline of reliable control for the most essential and frequently used consumer electronic functions, which was allegedly not a conventional approach at the time of invention (Compl. ¶43).

Key Claims at a Glance

  • The complaint asserts at least independent claim 7 (Compl. ¶44).
  • Key elements of apparatus claim 7, a controlling device, include:
    • A receiver for receiving a first key code signal from a key code generator device.
    • A transmitter for transmitting a second key code signal to a second device.
    • Instructions causing the device to relay the key code from the first signal to the second signal.
    • A limitation that the key code controls a power or volume functional operation of the second device.
  • The complaint reserves the right to assert additional claims (Compl. ¶44).

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

  • Patent Identification: System and Method for Optimized Appliance Control, issued July 25, 2017 (Compl. ¶13).
  • Technology Synopsis: The patent describes a "universal control engine" (UCE) to address the challenge of controlling devices that use multiple, different communication methods (e.g., IR, HDMI-CEC, Wi-Fi). The UCE identifies a target appliance and creates a dynamic listing of different communication methods available to control various functions of that single appliance (Compl. ¶¶56-57).
  • Asserted Claims: Claims 1, 2, 3, 5, 6, and 7 (Compl. ¶59).
  • Accused Features: Roku Streaming Players and TVs are alleged to be universal control engines that allow control of target appliances using multiple communication methods (Compl. ¶59).

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

  • Patent Identification: User Interface for a Remote Control Application, issued February 22, 2011 (Compl. ¶14).
  • Technology Synopsis: The invention seeks to simplify cluttered user interfaces on universal remotes by using a graphical user interface (GUI) on a touch screen device. The GUI presents icons representing appliances; selecting an icon automatically creates and executes a sequence of instructions to control the represented appliance, improving user experience (Compl. ¶¶72-73).
  • Asserted Claims: Claims 10, 11, and 12 (Compl. ¶75).
  • Accused Features: The Roku Mobile App installed on smartphones and tablets is alleged to infringe (Compl. ¶75).

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

  • Patent Identification: User Interface for a Remote Control Application, issued September 6, 2011 (Compl. ¶15).
  • Technology Synopsis: The patent addresses the difficulty of debugging remote control applications after they have been sold. It describes a method for a remote control application to record data associated with user interactions with its GUI and synchronize that data with a server, making it accessible to a support team for debugging purposes (Compl. ¶¶89-90).
  • Asserted Claims: Claims 1, 2, 3, and 4 (Compl. ¶92).
  • Accused Features: Roku TVs and the Roku Mobile App are alleged to infringe by storing data related to user interaction with remote control applications (Compl. ¶92).

U.S. Patent No. 10,593,196 - System and Method for Optimized Appliance Control

  • Patent Identification: System and Method for Optimized Appliance Control, issued March 17, 2020 (Compl. ¶16).
  • Technology Synopsis: The patent aims to solve control issues arising from the fragmented adoption of newer communication methods (like HDMI-CEC) alongside legacy methods (like IR). It describes a system where a media device (e.g., a set-top box) contains instructions to configure a remote control to communicate directly with an appliance when the appliance signals it will not respond to a command sent from the media device itself, creating a reliable fallback control path (’196 Patent, col. 2:1-7; Compl. ¶¶105-106).
  • Asserted Claims: Claims 15 and 18 (Compl. ¶107).
  • Accused Features: Roku streaming sticks and players that allegedly run software to implement this hybrid control method (Compl. ¶107).

U.S. Patent No. 10,600,317 - System and Method for Simplified Setup of a Universal Remote Control

  • Patent Identification: System and Method for Simplified Setup of a Universal Remote Control, issued March 24, 2020 (Compl. p.5, ¶18).
  • Technology Synopsis: The invention addresses the frustrating process of manually entering setup codes for universal remotes. It discloses a device that provides an interactive, on-screen instruction set. In response to a user identifying an appliance's type and brand, the device selects and presents a plurality of likely command codes for the user to test, simplifying configuration (’317 Patent, Abstract; Compl. ¶¶120-121).
  • Asserted Claims: Claims 12, 31, 40, 41, 44, 48, 59, and 73 (Compl. ¶122).
  • Accused Features: Roku Streaming Players that provide an interactive on-screen setup process for controlling other devices (Compl. ¶122).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the "Accused Instrumentalities" as a comprehensive suite of Defendant’s products and software, including Roku Streaming Players, Roku Remotes, the Roku Mobile App, devices with the app installed, Roku TVs, and the underlying Roku OS and related firmware (Compl. ¶10).

Functionality and Market Context

  • The Accused Instrumentalities collectively form an ecosystem for streaming digital media. The complaint alleges that these products incorporate several specific functionalities that map to the patents-in-suit. These include: an on-screen, interactive process for setting up Roku remotes to control external devices like TVs and soundbars (Compl. ¶¶30, 122); the ability for remotes to control power and volume on those external devices (Compl. ¶44); a software-based "universal control engine" for managing communications with multiple appliances via different protocols like IR and HDMI-CEC (Compl. ¶59); a mobile application with a GUI for remote control (Compl. ¶75); and a hybrid control system that can configure a remote to use IR commands as a fallback when CEC commands are not viable (Compl. ¶107). The complaint positions Roku as a "relative newcomer" that chose not to license Plaintiff's "key UEI technologies" (Compl. ¶2).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits for each asserted patent (Exhibits I, J, K, L, M, N, and O) but these exhibits were not provided with the complaint document. Accordingly, the narrative infringement theories are summarized below in prose.

  • ’389 Patent Infringement Allegations: The complaint alleges that Roku's remote control setup process directly infringes claim 6. The theory is that the Roku Remotes function as the claimed apparatus for relaying key code signals. During setup, the Roku player or TV (the "key code generator device") determines the correct command and sends a signal to the Roku Remote (the "controlling device"); the remote then generates and transmits a corresponding IR signal to the target appliance (e.g., a TV) to test a function like "mute" (Compl. ¶¶30-31).

  • ’325 Patent Infringement Allegations: The infringement theory for the ’325 Patent is similar to that for the ’389 Patent but focuses on the specific functions recited in claim 7. The complaint alleges that when Roku's products are used to control the power or volume of an external device, such as a TV or sound bar, via a Roku remote, they practice the claimed invention (Compl. ¶¶44-45).

  • Identified Points of Contention:

    • Scope Questions: For the ’389 and ’325 patents, a central question may be whether the communication between the Roku player and the Roku remote constitutes a "first key code signal" as recited in the claims. An analysis may focus on whether the remote merely "relays" a received signal on a different carrier frequency or whether it receives a higher-level instruction from the player and "independently generates" the final IR signal, which could raise questions of a mismatch with the claim language.
    • Technical Questions: The infringement analyses will depend on the specific technical implementation of the Roku OS and its communication protocol with Roku remotes. A key question is what precise information is transmitted from the player to the remote and what processing occurs on the remote itself before it generates an IR signal.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

  • Term 1 (from ’389 Patent, Claim 6): "a receiver configured to receive a first key code signal"

    • Context and Importance: The construction of this term appears central to the infringement analysis for the relay-focused patents. The dispute may turn on whether the data sent from the Roku player to the remote (e.g., over Wi-Fi Direct) is a "key code signal" in the manner contemplated by the patent, or a different type of instruction. Practitioners may focus on this term because it defines the nature of the information that the claimed remote control apparatus is designed to process.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification of a related patent describes the generator device creating a "first key code signal" by generating and modulating a key code onto a carrier signal (U.S. Patent 7,589,642, col. 2:5-7). This may support an interpretation where any signal carrying the modulated key code data, regardless of the specific protocol, meets the definition.
      • Evidence for a Narrower Interpretation: The figures in the related patent depict the "first key code signal" as a distinct, discrete transmission (U.S. Patent 7,589,642, Fig. 1). This could support an argument that the term requires a specific type of modulated signal rather than, for example, a data packet containing a high-level command within a complex network protocol.

  • Term 2 (from ’325 Patent, Claim 7): "the generated key code controls at least one of a power on, power off, volume up, and volume down functional operation"

    • Context and Importance: This term specifies the purpose of the claimed invention. While the individual terms ("power on," "volume up") are facially simple, their importance lies in how they limit the scope of the claim to these essential functions. Practitioners may focus on this term because it narrows the invention from a general relay system to one specifically directed at solving the universal control problem for these core operations.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent specification likely treats these as conventional terms of art, suggesting they should be given their plain and ordinary meaning, which would encompass any standard method of controlling power or volume on a consumer electronic device.
      • Evidence for a Narrower Interpretation: A defendant could argue that this limitation, when read in context with the entire claim, requires the entire claimed relay process to be performed for these specific functions. Evidence showing the accused device uses a different method for power/volume control versus other functions might be used to argue for a narrower application of the claim.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. The inducement allegations are based on Defendant’s creation and dissemination of promotional materials, instruction guides, on-screen prompts, and website instructions that allegedly teach and encourage end users to use the accused products in an infringing manner (Compl. ¶¶35, 49, 64, 82, 99, 113, 128). Contributory infringement is alleged on the basis that the accused software and features are especially made or adapted for infringing uses and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶¶36, 50, 65, 114, 129).
  • Willful Infringement: Willfulness is alleged for all asserted patents, based on both pre- and post-suit knowledge. The complaint alleges pre-suit knowledge stemming from a September 2017 written notice from Plaintiff regarding its patent portfolio, Defendant's own patents citing Plaintiff’s patents, and an alleged history of copying after a prior business relationship where Defendant had access to Plaintiff's technical specifications and software developer kits (Compl. ¶¶26, 34, 63). Post-suit knowledge is based on the filing of the original complaints in 2018 and 2020, as well as the prior ITC litigation involving the ’196 Patent (Compl. ¶¶34, 112).

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

  • A central issue will be one of "architectural mapping": for the ’389 and ’325 "relay" patents, does the communication between the Roku player and the Roku remote constitute a "key code signal" that is merely received and re-transmitted by the remote, as the apparatus claims may require, or is it a higher-level command that directs the remote to generate the IR signal independently?
  • A key evidentiary question will be one of "technical implementation": for the ’196 "optimized control" patent, what is the specific logic within the Roku OS that governs the decision to fall back from an HDMI-CEC command to an IR command, and does that logic meet the multi-step process recited in the claims previously found to be infringed at the ITC?
  • Given the extensive history alleged, including a prior business relationship and multiple legal proceedings, a significant factual dispute will likely concern "intent and independent development": can Plaintiff substantiate its allegations that Defendant copied its technology after being given access to technical details, which would be central to the claims of willful infringement, or will Defendant be able to demonstrate that the accused functionalities were developed independently?