DCT

8:20-cv-00696

Universal Electronics Inc v. Hisense Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:20-cv-00696, C.D. Cal., 04/09/2020
  • Venue Allegations: Venue is based on Defendant Hisense Electronics Manufacturing Company of America Corp. allegedly having a regular and established place of business in the Central District of California.
  • Core Dispute: Plaintiff alleges that Defendant’s Roku-based smart televisions infringe six patents related to universal remote control technology, including methods for relaying command signals and for providing interactive on-screen setup of peripheral devices.
  • Technical Context: The patents address technologies designed to simplify the control of complex home entertainment systems, a market where ease-of-use and interoperability are significant drivers of consumer choice.
  • Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patents and infringement based on Plaintiff’s prior litigation against Roku, Inc., in which Plaintiff served infringement contentions accusing Roku TVs of infringing the patents-in-suit and served a subpoena on Hisense. The complaint also notes that the Patent Trial and Appeal Board (PTAB) previously denied institution of an inter partes review (IPR) proceeding against the ’642 Patent, a fact that may be raised to suggest the patent’s resilience to validity challenges.

Case Timeline

Date Event
2003-12-16 ’642, ’389, ’325 Patents Priority Date
2005-09-08 ’514, ’317 Patents Priority Date
2009-09-15 ’642 Patent Issue Date
2011-06-28 ’514 Patent Issue Date
2011-08-23 ’389 Patent Issue Date
2011-10-28 ’486 Patent Priority Date
2018-03-06 ’325 Patent Issue Date
2018-12-24 UEI serves Infringement Contentions on Roku in prior litigation
2019-06-18 ’486 Patent Issue Date
2019-10-22 UEI serves subpoena on Hisense in prior litigation
2020-03-24 ’317 Patent Issue Date
2020-04-09 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: U.S. Patent No. 7,589,642, "Relaying Key Code Signals Through a Remote Control Device," issued September 15, 2009 (the "’642 Patent").

The Invention Explained

  • Problem Addressed: The patent addresses the problem of universal remote controls having insufficient memory to store the thousands of different command code sets required to operate the vast array of consumer electronics on the market (Compl. ¶23).
  • The Patented Solution: The invention proposes a system where the remote control acts as a "thin client," offloading the memory-intensive task of code storage to a "key code generator device" (e.g., a set-top box) (Compl. ¶23). The remote sends a simple "keystroke indicator signal" to the generator, which then looks up the appropriate full command code and transmits a corresponding "key code signal" for controlling a target appliance ('642 Patent, Abstract; col. 2:4-16). This architecture allows a simple remote to control many devices without storing their specific code sets (Compl. ¶27).
  • Technical Importance: This approach enables the design of low-cost universal remote controls that can support a potentially unlimited and updatable library of devices by centralizing command code storage in a more powerful, often network-connected, hub device (Compl. ¶23).

Key Claims at a Glance

  • The complaint asserts infringement of claim 2, which depends on independent claim 1 (Compl. ¶26).
  • Independent Claim 1 recites a method with the following essential elements:
    • receiving a keystroke indicator signal from a remote control device...
    • generating a key code within a key code generator device using the keystroke indictor 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.
  • Claim 2 adds the limitation that the transmission in the final step is directed from the key code generator device back to the remote control device, establishing a relay architecture.

U.S. Patent No. 7,969,514 - "Relaying Key Code Signals Through a Remote Control Device"

  • Patent Identification: U.S. Patent No. 7,969,514, "Relaying Key Code Signals Through a Remote Control Device," issued June 28, 2011 (the "’514 Patent").

The Invention Explained

  • Problem Addressed: The patent describes the traditional process of setting up universal remote controls as "demanding, exacting, and generally frustrating," requiring users to consult paper manuals and enter numerical codes which are often lost or outdated (Compl. ¶42; ’514 Patent, col. 1:15-22).
  • The Patented Solution: The invention is a method for simplifying this process by using a "first controllable appliance" (e.g., a smart TV) to display interactive setup instructions on its screen ('514 Patent, Abstract). A user interacts with these on-screen instructions via a "controlling device" (the remote) to configure it to command a "second controllable appliance" (e.g., a soundbar). The TV contains the programming that accesses and displays the necessary "instruction data" to guide the user through the setup (Compl. ¶¶42, 47).
  • Technical Importance: This innovation shifts the complexity of remote control setup from paper manuals or the remote itself to the television's graphical user interface, leveraging a more user-friendly and powerful platform to improve the user experience (Compl. ¶42).

Key Claims at a Glance

  • The complaint asserts infringement of independent claim 1 (Compl. ¶45).
  • Independent Claim 1 recites a method with the following essential elements:
    • providing on a first controllable appliance programming for the display of instructions to the user in response to input from the user via the controlling device;
    • providing input by the user to the first controllable appliance... indicating that the controlling device is to be set up to command a second controllable appliance;
    • accessing instruction data associated with the second controllable appliance by the programming provided on the first controllable appliance; and
    • in response to input by the user... displaying the instruction data... for use by the user in setting up the controlling device to command the second controllable appliance.

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

  • Patent Identification: U.S. Patent No. 9,911,325, "Relaying Key Code Signals Through a Remote Control Device," issued March 6, 2018 (the "’325 Patent").
  • Technology Synopsis: Arising from the same patent family as the ’642 Patent, this patent claims an apparatus (a "first device") that performs the command relay function (Compl. ¶¶62-63). It receives a keystroke indicator from a remote ("third device"), generates a key code from a codeset that includes specific "time information" describing the digital signal's structure, formats the code, and transmits it to a target ("second device") (Compl. ¶¶71, 77).
  • Asserted Claims: Independent apparatus claim 1 (Compl. ¶65).
  • Accused Features: The Hisense Roku TV is accused of being the "first device" that receives signals from the remote, generates HDMI CEC commands, and transmits them to a connected soundbar or AVR (Compl. ¶¶66-73).

U.S. Patent No. 10,325,486 - "System and Method for Optimized Appliance Control"

  • Patent Identification: U.S. Patent No. 10,325,486, "System and Method for Optimized Appliance Control," issued June 18, 2019 (the "’486 Patent").
  • Technology Synopsis: This patent describes a method for dynamically configuring a user interface on a "home theater device" like a TV ('486 Patent, col. 18:8-12). Upon receiving connection data from a peripheral appliance (e.g., an AVR via HDMI CEC), the TV automatically adds an icon representing a function of that appliance (e.g., volume control) to its display. When the user selects this icon, the TV commands the peripheral to perform the function (Compl. ¶¶88, 94-96).
  • Asserted Claims: Independent method claim 1 (Compl. ¶91).
  • Accused Features: The Hisense TV allegedly receives CEC data from a connected AVR, automatically changes the on-screen volume icon, and, in response to volume commands from the remote, issues corresponding commands to the AVR (Compl. ¶¶93-96).

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

  • Patent Identification: U.S. Patent No. 10,600,317, "System and Method for Simplified Setup of a Universal Remote Control," issued March 24, 2020 (the "’317 Patent").
  • Technology Synopsis: Similar to the ’514 Patent, this patent claims a "controlled device" (e.g., a TV or set-top box) that provides an interactive, on-screen setup process for a remote control (’317 Patent, Abstract). The device automatically guides a user through setup steps, displays instructions, and selects a likely command code set for a target device based on its identified type and brand (Compl. ¶¶108, 117-119).
  • Asserted Claims: Independent device claim 1 (Compl. ¶111).
  • Accused Features: The Hisense TV is accused of being the "controlled device" that, when setting up an external AVR, automatically progresses through on-screen menus and selects a CEC codeset to control the identified AVR (Compl. ¶¶117-119).

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

  • Patent Identification: U.S. Patent No. 8,004,389, "Relaying Key Code Signals Through a Remote Control Device," issued August 23, 2011 (the "’389 Patent").
  • Technology Synopsis: This patent, a continuation of the patent that led to the ’642 Patent, claims the remote control device itself within the relay architecture (Compl. ¶131). The claimed remote includes a receiver for a "first key code signal" (e.g., RF from a generator) and a transmitter for a "second key code signal" (e.g., IR to a target appliance), enabling it to act as a signal relay without storing the underlying command codeset (’389 Patent, col. 2:1-12).
  • Asserted Claims: Independent device claim 4 (Compl. ¶134).
  • Accused Features: The remote control provided with the Hisense TVs is accused of infringing by allegedly receiving wireless key codes from the TV during a setup process and transmitting corresponding IR signals to control external devices (Compl. ¶¶136-137).

III. The Accused Instrumentality

Product Identification

  • The "Hisense Accused Products" include, but are not limited to, Hisense's R6, R7, R8, R6270, R6290, R7050, R7070, H4030, and H4 series Roku TVs, as well as Sharp branded Roku TVs (Compl. ¶8).

Functionality and Market Context

  • The accused products are smart televisions running the Roku operating system (OS) and are sold with an accompanying remote control (Compl. ¶¶24, 46). The complaint focuses on two core functionalities: (1) the TV's ability to control connected peripheral devices (like soundbars or AVRs) using the HDMI Consumer Electronics Control (CEC) protocol in response to commands from its remote (Compl. ¶¶29-30), and (2) the TV's on-screen menus for discovering and setting up control of these peripheral devices (Compl. ¶¶47, 49). The complaint alleges that after connecting an audio device via HDMI, the Hisense TV automatically adds a new volume icon with a circular scrollbar to its home screen (Compl. ¶94).

IV. Analysis of Infringement Allegations

’642 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving a keystroke indicator signal from a remote control device... The Hisense Roku TV receives a signal from the Roku remote when a user presses a key. ¶27 col. 4:1-14
generating a key code within a key code generator device using the keystroke indictor signal The Hisense TV, acting as a key code generator, generates a code corresponding to the function of a connected device (e.g., soundbar). ¶28 col. 4:25-30
modulating said key code onto a carrier signal, thereby generating a key code signal The Hisense TV modulates the key code by formatting and sending it as an HDMI CEC signal over an HDMI connection. ¶29 col. 4:35-40
transmitting said key code signal from said key code generator device to an electronic consumer device The Hisense TV transmits the CEC signal to the connected consumer device, such as a soundbar. ¶30 col. 4:35-40
  • Identified Points of Contention:
    • Scope Questions: A primary question relates to the specific claim asserted. The complaint repeatedly asserts infringement of claim 2, which requires the generator (TV) to transmit a signal back to the remote for relay (Compl. ¶26). However, the factual allegations describe the TV transmitting the signal directly to the consumer device (a soundbar), which appears to map to the architecture of independent claim 1. This raises the question of whether the accused system practices the relay method of claim 2.
    • Technical Questions: The case may turn on whether sending a digital HDMI CEC command constitutes "modulating said key code onto a carrier signal." The patent’s examples focus on RF and IR carriers, raising the question of whether the term's scope can extend to a wired, baseband digital protocol like CEC.

’514 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
providing on a first controllable appliance programming for the display of instructions... The Hisense TV contains programming (the Roku OS) that displays the "Control Other Devices (CEC)" menu in response to user input from the remote. ¶47 col. 2:30-34
providing input by the user... indicating that the controlling device is to be set up to command a second controllable appliance A user provides input via the remote to navigate the CEC menu to configure control of a second appliance (e.g., an AVR). ¶48 col. 2:34-39
accessing instruction data associated with the second controllable appliance... The TV's programming accesses data associated with a connected CEC device when the user selects "Search for CEC Devices" or upon automatic detection. ¶49 col. 2:39-42
displaying the instruction data... for use by the user in setting up the controlling device to command the second controllable appliance In response to user input (e.g., pressing "OK"), the TV displays instructions from its programming to guide the user in setting up control of the second appliance. ¶50 col. 2:42-45
  • Identified Points of Contention:
    • Scope Questions: A central issue may be whether the accused process of enabling HDMI-CEC control constitutes "setting up the controlling device" (the remote) as required by the claim. The analysis may explore whether the Roku OS configures the TV's behavior or if it specifically alters the operational programming of the remote itself.
    • Technical Questions: An evidentiary question is what specific "instruction data" is accessed and displayed. The dispute may focus on whether the on-screen menus and prompts of the Roku OS provide the specific "instruction data... for setting up the controlling device" recited in the claim, or if they are merely generic system-level menus.

V. Key Claim Terms for Construction

  • The Term: "modulating said key code onto a carrier signal" (’642 Patent)

    • Context and Importance: This term is central to the infringement theory for the relay patents. Practitioners may focus on this term because its definition will determine if modern digital protocols like HDMI CEC fall within the scope of a claim drafted with reference to traditional RF and IR technology. The PTAB's prior focus on this term in an IPR denial further highlights its significance (Compl. ¶24).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification states the key code is modulated "onto a first carrier signal (for example, an RF signal)," which could be interpreted to mean RF is merely an example and not a limitation (’642 Patent, col. 3:102-103).
      • Evidence for a Narrower Interpretation: The patent’s detailed description and figures focus on wireless RF and IR carrier signals. An argument could be made that "carrier signal" in this context implies a high-frequency waveform used in broadcasting, not a baseband digital signal transmitted over a wire.

  • The Term: "instruction data... for use by the user in setting up the controlling device" (’514 Patent)

    • Context and Importance: The infringement theory for the on-screen setup patents depends on the accused TV displaying this type of data. The definition of this term will be critical to determining if the accused Roku OS menus perform the claimed function.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent aims to solve the general problem of frustrating setup processes, suggesting any on-screen guidance that simplifies the configuration could qualify as the claimed "instruction data" (Compl. ¶42).
      • Evidence for a Narrower Interpretation: The patent's background discusses replacing lost paper manuals and setup codes, which may suggest that "instruction data" requires the display of specific configuration information, such as numerical codes or explicit pairing steps for the remote, rather than just high-level system menus (’514 Patent, col. 1:15-22).

VI. Other Allegations

  • Indirect Infringement: For each asserted patent, the complaint alleges induced infringement, stating that Defendant provides instruction guides and promotional materials that teach and encourage users to operate the accused products in an infringing manner (e.g., Compl. ¶¶35, 55). It also pleads contributory infringement, alleging the accused software features are especially made or adapted for infringement and are not staple articles of commerce (e.g., Compl. ¶¶36, 56).
  • Willful Infringement: Willfulness is alleged for all asserted patents. The claims are based on alleged pre-suit knowledge stemming from prior litigation, Universal Electronics Inc v. Roku Inc, in which Plaintiff allegedly served infringement contentions on Roku identifying the accused technology and later served a subpoena directly on Hisense regarding its infringement (e.g., Compl. ¶¶34, 38).

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

  • A core issue will be one of architectural mapping: do the accused Hisense Roku TVs, which allegedly send commands directly to peripherals via HDMI-CEC, practice the "relay" architecture claimed in several patents (’642, ’325, ’389), which requires a generator to send a command signal back to the remote for re-transmission?
  • A second central issue will be one of definitional scope: can patent claim terms rooted in the context of wireless remote controls, such as "modulating said key code onto a carrier signal," be construed broadly enough to read on the transmission of data packets over modern, wired digital protocols like HDMI-CEC?
  • A key evidentiary question will be one of functional purpose: does the accused "Control Other Devices" feature in the Roku OS provide specific "instruction data" for the purpose of "setting up the controlling device" (the remote), as required by the setup patents (’514, ’317), or does it merely configure the TV’s own system-level behavior?