Roku Inc v. Universal Electronics Inc

1. Case Identification

• Case #: IPR2021-00758
• Patent #: 9641785
• Filed: April 14, 2021
• Petitioner(s): Roku, Inc.
• Patent Owner(s): Universal Electronics, Inc.
• Challenged Claims: 1-13

2. Patent Overview

• Title: System and method for configuring controlling device functionality
• Brief Description: The ’785 patent relates to a system for automatically configuring a remote controlling device within a home theater environment. The system discovers the capabilities of interconnected appliances and dynamically adjusts control methods, for example by substituting direct wireless (e.g., IR) commands for bus-based digital commands when a target appliance is unresponsive to the latter.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chardon, HDMI Specification, and Mishra - Claims 1-13 are obvious over Chardon in view of the HDMI Specification and Mishra.

• Prior Art Relied Upon: Chardon (Application # 2012/0249890), High-Definition Multimedia Interface Specification Version 1.3a (HDMI Specification), and Mishra (Application # 2001/0005197).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the prior art combination discloses every element of the challenged claims. Chardon was presented as the primary reference, teaching a home entertainment system with a controlling device (remote), a media source device (e.g., DVD player), and a media sink device (e.g., HDMI display) interconnected via HDMI and Consumer Electronics Control (CEC) protocols. Petitioner asserted that Chardon teaches the core inventive concept: monitoring a communication from a source to a sink to determine responsiveness, and altering the control path based on the result. Specifically, Chardon describes monitoring a CEC bus for a response after a first HDMI appliance sends a command to a second HDMI appliance. If no response is detected, Chardon’s system determines a corresponding IR command and transmits it directly from the controlling device to the unresponsive appliance. This process, Petitioner contended, directly maps to the limitations of independent claim 1, which require the controlling device to automatically configure itself to issue a command directly to the sink device when it is unresponsive to a command from the source device. Conversely, if a CEC response is detected, Chardon teaches that no corresponding IR command is sent, satisfying the claim limitation for when the sink device is responsive.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Chardon with the HDMI Specification because Chardon’s system is explicitly based on HDMI-compliant devices and protocols; the specification provides the necessary, publicly available implementation details for features like device discovery, CEC messaging, and Extended Display Identification Data (EDID) that Chardon leverages. A POSITA would look to Mishra to supplement this combination because it demonstrates the well-known practice of remotely configuring a controlling device based on response data received via two-way communication links. Mishra thus establishes the background knowledge of a POSITA, confirming the obviousness of fully implementing the messaging and automatic configuration capabilities described in Chardon.
  • Expectation of Success: A POSITA would have a high expectation of success in combining the references. Chardon already teaches the fundamental concept of integrating HDMI features for device control and responsiveness checking, and the HDMI Specification provides a complete, standardized, and interoperable framework for its successful implementation.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution. It presented arguments under both 35 U.S.C. §325(d) and §314(a) (the Fintiv factors).
• Under §325(d), Petitioner asserted that the primary references for its ground (Chardon, HDMI Specification, and Mishra) were never presented to, considered by, or applied by the USPTO during prosecution of the ’785 patent or its parent applications. Petitioner further argued these references are not cumulative to the art of record.
• Under the Fintiv factors, Petitioner argued against denial based on a parallel district court proceeding. It contended that because the district court litigation was stayed at a very early stage, prior to any significant investment by the court or the parties, concerns of inefficiency and overlap were minimal. Petitioner also asserted that the merits of the invalidity ground presented in the petition are strong.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-13 of Patent 9,641,785 as unpatentable.