DCT
8:20-cv-00700
Universal Electronics Inc v. Funai Electric Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Universal Electronics Inc. (Delaware)
- Defendant: Funai Electric Company, Ltd. (Japan); Funai Corporation, Inc. (New Jersey); Funai (Thailand) Co., Ltd. (Thailand)
- Plaintiff’s Counsel: Alston & Bird LLP
- Case Identification: 8:20-cv-00700, C.D. Cal., 04/09/2020
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant Funai Corporation, Inc. maintains a regular and established place of business in the district and has committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s televisions, which incorporate the Roku operating system, infringe six U.S. patents related to remote control setup, signal relaying, and user interface configuration for controlling consumer electronics.
- Technical Context: The patents address technologies designed to simplify the control of complex home entertainment systems, moving beyond traditional single-device remotes to unified and interactive control solutions.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patents-in-suit due to a prior lawsuit Plaintiff filed against Roku, Inc. involving the same patents. Plaintiff allegedly served infringement contentions in the Roku case in December 2018 and a subpoena on Defendant Funai in October 2019, both identifying the asserted patents and accusing similar Roku-based televisions.
Case Timeline
| Date | Event |
|---|---|
| 2003-12-16 | Priority Date for ’642, ’325, and ’389 Patents |
| 2005-09-08 | Priority Date for ’514 and ’317 Patents |
| 2009-09-15 | ’642 Patent Issued |
| 2011-06-28 | ’514 Patent Issued |
| 2011-08-23 | ’389 Patent Issued |
| 2011-10-28 | Priority Date for ’486 Patent |
| 2018-03-06 | ’325 Patent Issued |
| 2018-12-24 | Plaintiff allegedly served Infringement Contentions in UEI v. Roku |
| 2019-06-18 | ’486 Patent Issued |
| 2019-10-22 | Plaintiff allegedly served subpoena on Funai in UEI v. Roku |
| 2020-03-24 | ’317 Patent Issued |
| 2020-04-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,589,642 - Relaying Key Code Signals Through a Remote Control Device, Issued Sep. 15, 2009
The Invention Explained
- Problem Addressed: The patent addresses the memory limitations of universal remote controls, which are often insufficient to store the thousands of different command "codesets" required to operate the vast array of consumer electronic devices on the market (Compl. ¶20; ’642 Patent, col. 1:40-51).
- The Patented Solution: The invention proposes a system where a remote control does not need to permanently store the codeset for a target device. Instead, a "key code generator device" (e.g., a set-top box) receives a simple signal from the remote indicating a key was pressed. The generator device identifies the correct command, creates the full "key code signal," and transmits it back to the remote control (e.g., via radio frequency), which then relays the signal to the target electronic device (e.g., via infrared) (’642 Patent, Abstract; col. 3:1-14).
- Technical Importance: This approach decouples the remote's functionality from its onboard memory, allowing a simple, low-cost remote to control a virtually unlimited number of devices by leveraging the processing power and database access of a connected hub device.
Key Claims at a Glance
- The complaint asserts independent claim 1 (via dependent claim 2) (Compl. ¶22).
- Essential elements of independent claim 1 include:
- Receiving a keystroke indicator signal from a remote control device.
- Generating a key code within a key code generator device using the signal.
- Modulating the key code onto a carrier signal, generating a key code signal.
- Transmitting the key code signal from the generator device to the remote control device.
- The complaint reserves the right to assert other claims (Compl. ¶22).
U.S. Patent No. 7,969,514 - System and Method for Simplified Setup of a Universal Remote Control, Issued June 28, 2011
The Invention Explained
- Problem Addressed: The patent’s background describes the setup process for universal remote controls as "demanding, exacting, and generally frustrating for many users," noting that setup codes are often lost or become obsolete as device models evolve (Compl. ¶39; ’514 Patent, col. 1:16-21).
- The Patented Solution: The invention provides a method where a primary device (like a TV or set-top box) displays an interactive, on-screen guide to configure a remote control for a secondary device (e.g., an AVR or soundbar). The user interacts with the on-screen menu using the remote, and the primary device's programming accesses the necessary instruction data and configures the remote to command the secondary appliance (’514 Patent, Abstract; col. 4:21-44).
- Technical Importance: This method centralizes the setup intelligence in a network-connected appliance, replacing paper manuals and manual code entry with a guided, interactive user experience.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶41).
- Essential elements of independent claim 1 include:
- Providing, on a first controllable appliance, programming to display instructions for setting up a controlling device.
- Receiving input from the user via the controlling device indicating it is to be set up for a second controllable appliance.
- Accessing instruction data associated with the second appliance.
- Displaying the instruction data via the programming on the first appliance for the user's use in setting up the controlling device.
- The complaint reserves the right to assert other claims (Compl. ¶41).
Multi-Patent Capsule: U.S. Patent No. 9,911,325
- Patent Identification: U.S. Patent No. 9,911,325, Relaying Key Code Signals Through a Remote Control Device, Issued Mar. 6, 2018.
- Technology Synopsis: Arising from the same family as the ’642 Patent, this patent claims a physical apparatus (a "first device") rather than a method. The claims include limitations directed to the specific format of the command codeset, such as requiring "time information that describes how a digital one and/or digital zero... is to be represented in the key code signal" (Compl. ¶59, ¶74).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶61).
- Accused Features: The accused Roku TVs are alleged to be the "first device," containing a receiver, transmitter, processor, and memory that generate and transmit formatted key codes (via HDMI CEC) to a "second device" like an AVR or soundbar (Compl. ¶¶63-70).
Multi-Patent Capsule: U.S. Patent No. 10,325,486
- Patent Identification: U.S. Patent No. 10,325,486, System and Method for Optimized Appliance Control, Issued June 18, 2019.
- Technology Synopsis: This patent relates to a method for automatically configuring a user interface on a home theater device (e.g., a TV). When a new appliance is connected (e.g., via HDMI), the home theater device receives data identifying a function of that appliance and automatically adds a corresponding icon to its user interface, allowing the user to control the function by selecting the icon (Compl. ¶85).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶87).
- Accused Features: The accused TVs allegedly perform this method by receiving CEC data from a connected AVR, automatically adding a volume icon to the TV's home screen, and issuing commands to the AVR when the user interacts with the icon via the remote control (Compl. ¶¶90-93).
Multi-Patent Capsule: U.S. Patent No. 10,600,317
- Patent Identification: U.S. Patent No. 10,600,317, System and Method for Simplified Setup of a Universal Remote Control, Issued Mar. 24, 2020.
- Technology Synopsis: This patent claims a "controlled device" (e.g., a TV) that contains programming to simplify remote control setup. The device automatically progresses through on-screen setup steps and, based on the identified type and brand of a target device (e.g., a Denon AVR), selects a command code set that is "predetermined to be likely to be usable" to control it (Compl. ¶105, ¶116).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶107).
- Accused Features: The accused TVs allegedly embody the claimed controlled device, using their Roku OS to guide users through the setup for a connected CEC device, identify the device's type and brand, and select the appropriate CEC codeset to control it (Compl. ¶¶109, 114-116).
Multi-Patent Capsule: U.S. Patent No. 8,004,389
- Patent Identification: U.S. Patent No. 8,004,389, Relaying Key Code Signals Through a Remote Control Device, Issued Aug. 23, 2011.
- Technology Synopsis: This patent, a continuation of the application leading to the ’642 Patent, claims a remote control device itself. The claimed remote includes a receiver for a first key code signal in a first frequency band (e.g., radio frequency) and a transmitter for a second key code signal in a second frequency band (e.g., infrared), embodying the "relay" device described in the ’642 patent (Compl. ¶128, ¶133-134).
- Asserted Claims: Independent claim 4 is asserted (Compl. ¶130).
- Accused Features: The complaint alleges that the accused system includes a remote control that performs these functions, receiving wireless signals from the TV and transmitting IR signals to external devices (Compl. ¶¶132-136).
III. The Accused Instrumentality
Product Identification
- The "Funai Accused Products" are identified as televisions sold under the Philips, Magnavox, and Sanyo brands that use the Roku operating system (Compl. ¶5).
Functionality and Market Context
- The complaint focuses on the capability of the Accused Products to control other devices. This functionality is allegedly enabled through the Roku OS and its "Control Other Devices (CEC)" menu, which allows the television and its associated remote control to manage connected peripherals such as soundbars and audiovisual receivers ("AVRs") via protocols like HDMI CEC (Compl. ¶7, ¶23, ¶44). The products are alleged to constitute a "leading share of the North American market" for LCD TVs (Compl. ¶6, footnote 3).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’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 Accused Products receive a signal from the Roku remote when a user presses a key. | ¶24 | col. 3:1-4 |
| generating a key code within a key code generator device using the keystroke indictor signal. | The Accused Products (the alleged key code generator) generate a key code corresponding to a function of an electronic device connected via HDMI. | ¶25 | col. 3:5-7 |
| modulating said key code onto a carrier signal, thereby generating a key code signal. | The Accused Products modulate the key code onto a carrier signal by formatting and sending data via the HDMI CEC protocol. | ¶26 | col. 3:8-10 |
| transmitting said key code signal from said key code generator device to an electronic consumer device. | The Accused Products transmit the CEC signals to connected electronic consumer devices, such as soundbars. | ¶27 | col. 3:11-14 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges the Accused Product (the TV) is the "key code generator device" and that it transmits the key code signal directly to an "electronic consumer device" (e.g., a soundbar) via HDMI CEC (Compl. ¶25, ¶27). The patent's specification, however, appears to describe a system where the key code signal is transmitted from the generator back to the remote control, which then relays the command to the end device (’642 Patent, Abstract; col. 3:11-14). This raises the question of whether an architecture that bypasses the remote control for the final transmission falls within the scope of the claims.
’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 to the user in response to input from the user via the controlling device. | The Accused Products (the alleged "first controllable appliance") contain programming (Roku OS) that displays instructions in response to input from the remote controller. | ¶44 | col. 4:21-25 |
| providing input by the user to the first controllable appliance via the controlling device indicating that the controlling device is to be set up to command a second controllable appliance. | The user navigates the "Control Other Devices (CEC)" menu on the TV and selects the option to "Search for CEC Devices" to set up the remote for an HDMI-connected appliance. | ¶45 | col. 4:26-31 |
| accessing instruction data associated with the second controllable appliance by the programming provided on the first controllable appliance. | The Accused Products access instruction data for a connected CEC device (e.g., an AVR) when the user initiates a search or when the device is automatically detected upon connection via HDMI. | ¶46 | col. 4:32-35 |
| in response to input by the user via the controlling device, displaying the instruction data by the programming provided on the first controllable appliance for use by the user in setting up the controlling device... | In response to user input (e.g., pressing "OK" on the search option), the Accused Product displays the instruction data for setting up the remote to control the second appliance. | ¶47 | col. 4:36-41 |
- Identified Points of Contention:
- Technical Questions: The complaint alleges the Accused Products "access instruction data associated with the second controllable appliance" (Compl. ¶46). The nature, source, and content of this "instruction data" are not specified in detail. The analysis may raise the question of what technical evidence demonstrates that the accused TVs access data meeting the requirements of this claim limitation, as opposed to simply enabling a pre-existing communication protocol like CEC.
V. Key Claim Terms for Construction
’642 Patent, Claim 1
- The Term: "transmitting said key code signal from said key code generator device to said remote control device"
- Context and Importance: This limitation is central to the patented architecture, defining the "relay" concept. The complaint's infringement theory maps this limitation to the TV transmitting a CEC signal directly to a soundbar, skipping the remote control entirely (Compl. ¶27). Practitioners may focus on whether this limitation requires the signal's destination to be the remote control itself, which would present a challenge to the Plaintiff's theory.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint's theory may require arguing that the final "transmitting" step alleged in paragraph 27 ("transmitting said key code signal from said key code generator device to an electronic consumer device") is a separate, unlisted step, and that the transmission to the remote is implicitly met earlier. However, the complaint does not allege a transmission from the TV back to the remote.
- Evidence for a Narrower Interpretation: The plain language of claim 1, element (d), specifies the destination of the key code signal is "said remote control device." The patent's abstract describes the remote control receiving the signal and then modulating it for a second transmission, reinforcing the remote's role as an intermediary relay (’642 Patent, Abstract).
’514 Patent, Claim 1
- The Term: "accessing instruction data"
- Context and Importance: This term is critical because it distinguishes the invention from merely activating a standard communication protocol. The strength of the infringement allegation may depend on whether the Accused Products are shown to access a specific set of commands, codes, or configuration parameters particular to the connected device, as implied by the term "instruction data."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers to "set up data, generally in the form of command library codes" (’514 Patent, Abstract), which could be interpreted broadly to include any information needed to establish control.
- Evidence for a Narrower Interpretation: The patent describes a system that retrieves and displays specific setup codes for entry and trial by the user, suggesting "instruction data" may refer to a discrete library of command codes rather than the automatic handshaking of a protocol like HDMI CEC (’514 Patent, Abstract; col. 2:48-53).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement across all asserted patents, stating that Funai provides "promotional materials, marketing materials, and instruction guides that teach and encourage end users" to use the accused features in an infringing manner (e.g., Compl. ¶32, ¶52). Contributory infringement is also alleged, on the basis that the accused software features are not staple articles of commerce suitable for substantial non-infringing use (e.g., Compl. ¶33, ¶53).
- Willful Infringement: Willfulness is alleged for all patents based on Funai’s alleged pre-suit knowledge. The complaint asserts that Funai gained actual knowledge of the patents and their relevance to Roku TVs no later than December 24, 2018, via infringement contentions in the UEI v. Roku litigation, and again on October 22, 2019, via a subpoena served directly on Funai in that case (e.g., Compl. ¶31, ¶51, ¶77, ¶97, ¶120, ¶140).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural scope: For the signal relaying patents (’642, ’325, ’389), can claims describing a system where a command is generated by a hub, sent to a remote, and then relayed by the remote to a target device be construed to cover the accused system, where the hub (the TV) appears to send the command directly to the target device via HDMI CEC?
- A key evidentiary question will be one of technical function: For the setup and UI patents (’514, ’486, ’317), what evidence will be presented to show that the accused TVs "access instruction data" and use it to configure the system, as opposed to merely enabling a standardized, self-configuring protocol inherent in the HDMI CEC standard?
- A third central issue will be pre-suit knowledge: The allegations of willfulness and indirect infringement rely heavily on notice allegedly provided through a prior lawsuit against a third party (Roku) and a subpoena. The case will likely examine the extent to which these events created an affirmative duty for Funai to investigate and avoid infringement.