Roku, Inc. v. Universal Electronics, Inc., Gemstar Technology (qinzhou) Co. Ltd., Gemstar…

N OTE : This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ROKU, INC.,
Appellant
v.
UNIVERSAL ELECTRONICS, INC., GEMSTAR
TECHNOLOGY (QINZHOU) CO. LTD., GEMSTAR
TECHNOLOGY (YANGZHOU) CO. LTD., C.G.
DEVELOPMENT LTD., UNIVERSAL
ELECTRONICS BV, CG MEXICO REMOTE
CONTROLS, S. DE R.L. DE C.V., UEI BRASIL
CONTROLES REMOTOS LTDA,
Cross-Appellants
______________________
2024-1188, 2024-1241
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No.
IPR2022-00818.
______________________
Decided: June 17, 2025
______________________
J ONATHAN DANIEL B AKER , Dickinson Wright PLLC,
Mountain View, CA, argued for appellant. Also repre-
sented by DINO HADZIBEGOVIC , MARK HOWARD ROGGE ;
C RAIG Y. A LLISON, Nashville, TN; R ICHARD CRUDO, LESTIN
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ROKU, INC. v. UNIVERSAL ELECTRONICS , INC. 2
L. KENTON, JR ., Sterne Kessler Goldstein & Fox PLLC,
Washington, DC.
THOMAS WILLIAM DAVISON, Alston & Bird LLP, Wash-
ington, DC, argued for cross-appellants. Also represented
by KIRK T. B RADLEY, N ICHOLAS C HRISTOPHER MARAIS,
SCOTT B ENJAMIN P LEUNE , Charlotte, NC; N ICHOLAS TANG
T SUI, Atlanta, GA.
______________________
Before L OURIE , DYK, and C UNNINGHAM , Circuit Judges.
L OURIE , Circuit Judge.
Roku, Inc. owns U.S. Patent 8,378,875 (“the ’875 pa-
tent”), which is directed to methods of programming a uni-
versal remote control. Universal Electronics, Inc., Gemstar
Technology (Qinzhou) Co. Ltd., Gemstar Technology
(Yangzhou) Co. Ltd., C.G. Development Ltd., Universal
Electronics BV, CG México Remote Controls, S. de R.L. de
C.V., and UEI Brasil Controles Remotos Ltda. (collectively,
“UEI”) petitioned for inter partes review of the ’875 patent,
arguing that claims 1–5, 8–10, and 14 would have been ob-
vious over the Radio Shack Phone Up 4 Remote Control
Owner’s Manual (“RadioShack”) and that claim 11 would
have been obvious over International Patent Application
Publication 2003/083801 (“Wouters”) and International Pa-
tent Application Publication 2000/070577 (“Verzulli”).
The Board instituted review of all challenged claims
and concluded that: (1) UEI had shown, by a preponder-
ance of the evidence, that RadioShack was publicly acces-
sible prior to the ’875 patent’s critical date and was
therefore available as prior art; (2) UEI had shown that de-
pendent claims 1–5, 8–10, and 14 would have been obvious
over RadioShack; and (3) UEI had not shown that inde-
pendent claim 11 would have been obvious over Wouters
and Verzulli. Universal Elecs., Inc. v. Roku, Inc., No.
IPR2022-00818, 2023 WL 6976666 (P.T.A.B. Oct. 23, 2023)
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ROKU, INC. v. UNIVERSAL ELECTRONICS , INC. 3
(“Decision”). Roku timely appealed, and UEI timely cross-
appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
For the following reasons, we affirm-in-part, vacate-in-
part, and remand.
DISCUSSION
We review the Board’s legal conclusions de novo and its
factual findings for substantial evidence. Acceleration Bay,
LLC v. Activision Blizzard Inc., 908 F.3d 765, 769 (Fed.
Cir. 2018). A finding is supported by substantial evidence
if a reasonable mind might accept the evidence as adequate
to support the finding. Consol. Edison Co. v. NLRB,
305 U.S. 197, 229 (1938).
I
We begin with Roku’s appeal. Roku argues that the
Board erred in its determination that RadioShack was pub-
licly accessible prior to the critical date of the ’875 patent,
and therefore a printed publication available as prior art
under 35 U.S.C. § 102. Roku further argues that the
Board’s constructions of various terms in each of dependent
claims 2, 4, 8, and 10 were erroneous. We address those
arguments in turn.
A. Public Accessibility of RadioShack
“Whether a reference qualifies as a printed publication
under § 102 is a legal conclusion based on underlying fact
findings.” Acceleration Bay, 908 F.3d at 772 (citations
omitted). One such fact finding is the public accessibility
of the reference. Id. “A reference is considered publicly
accessible if it was ‘disseminated or otherwise made avail-
able to the extent that persons interested and ordinarily
skilled in the subject matter or art, exercising reasonable
diligence, can locate it.’” Id. (quoting Jazz Pharm., Inc. v.
Amneal Pharm., LLC, 895 F.3d 1347, 1355 (Fed. Cir.
2018)).
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In its final written decision, the Board concluded that
UEI had shown, by a preponderance of the evidence, that
RadioShack was publicly accessible before the critical date
of the ’875 patent and therefore that it was available as
prior art. See Decision, at *14. The Board reached that
conclusion in a three-step inquiry.
First, the Board found that a person of ordinary skill in
the art could have reasonably found the website hosting
RadioShack, RemoteCentral.com, which was founded in
1998 and grew to be “the internet’s preeminent source for
universal remote control information.” Id. at *9 (quoting
J.A. 1862); see id. at *11. That finding, which Roku does
not dispute, see Oral Arg. at 1:06–1:11, available at
https://oralarguments.cafc.uscourts.gov/default.aspx?fl=24
-1188_05082025.mp3 (“[W]e’re not disputing that the web-
site was known.”), was supported by substantial evidence.
The website had been cited in various news publications,
including the New York Times, USA Today, Wall Street
Journal, and Kiplinger’s, as well as in at least a dozen U.S.
patents prior to the ’875 patent’s critical date. Decision, at
*11.
Second, the Board found that, upon arriving at Remote-
Central.com, a person of ordinary skill in the art could have
reasonably located RadioShack on that website. Again,
that finding was supported by substantial evidence. Spe-
cifically, the Board found that RemoteCentral.com’s Uni-
versal Remote Control Manuals index page was organized
by brand and that, at the time RadioShack was posted,
there were 28 brands from which the public could select.
Id. at *12; see J.A. 2896. Within the “Radio Shack” brand,
there were 40 specific manuals, with a link to RadioShack
being the third entry on the first page. Decision, at *12;
J.A. 2896.
Third, the Board concluded that UEI “present[ed] spe-
cific, uncontroverted evidence that a person of ordinary
skill in the art could have easily navigated to the index for
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ROKU, INC. v. UNIVERSAL ELECTRONICS , INC. 5
universal remote-control manuals on RemoteCentral.com,
and that the number of manuals on the site at the relevant
time was relatively modest.” Decision, at *13. Because
those findings were supported by substantial evidence, we
agree that RadioShack is available as prior art under § 102.
Roku nevertheless argues that the Board’s conclusion
constituted legal error because it is an undisputed fact that
RemoteCentral.com’s Universal Remote Control Manuals
page “contained several hundred user manuals” and was
not searchable by full text or subject matter keywords.
Roku Br. 27–28. Analogizing to Acceleration Bay, Roku ar-
gues that our precedent indicates that a reference is not
publicly accessible when a person of ordinary skill in the
art would have to “look through hundreds of documents to
find it, unaided by any subject matter indexing or subject
matter keyword search capabilities.” Id. at 28; see id. at
32–34. As Roku’s argument goes, because it is undisputed
that RemoteCentral.com did not have subject matter or
keyword searching, a person of ordinary skill could not
have found RadioShack without a priori knowledge of its
contents. We disagree.
The “several hundred user manuals” Roku refers to as
being hosted on RemoteCentral.com were all located on the
website’s “Universal Remote Control Manuals” page.
Those documents were therefore sorted by subject mat-
ter—universal remote controls—the same subject matter
as the invention. Given that Roku does not dispute that a
person of ordinary skill in the art could have arrived at Re-
moteCentral.com and presents no argument that the per-
son of ordinary skill in the art could not have navigated,
using reasonable diligence, to the “Universal Remote Con-
trol Manuals” page on that website, Roku’s argument boils
down to the 329 manuals posted on that page (all of which
relate to the subject matter of the invention but are not fur-
ther categorized or searchable by functionality) being
simply too many for any one of them to be publicly accessi-
ble. See Oral Arg. at 12:10–12:23 (Roku’s counsel arguing
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ROKU, INC. v. UNIVERSAL ELECTRONICS , INC. 6
that “if there’s a very small number of documents, then I
don’t think there would need to be some search aid”
(cleaned up)). Roku’s argument demands more of the pub-
lic-accessibility inquiry than is required.
In Acceleration Bay, on which Roku heavily relies, the
asserted reference, Lin, had been uploaded to a university
library’s website and assigned a “unique identi-
fier . . . based on the year it was uploaded and the relative
order it was uploaded in comparison to other papers.”
908 F.3d at 773 (citation omitted). The Board determined,
and we affirmed, that Lin was not publicly accessible be-
cause the website “allowed a user to view a list of technical
reports indexed only by author or year and that there was
no evidence as to how many reports were in the Library’s
database.” Id. That is, in Acceleration Bay, the reasonably
diligent person of ordinary skill in the art would have had
to “skim[] through potentially hundreds of titles in the
same year, with most containing unrelated subject matter,”
with no reliable way to search keywords for author, title,
or abstract fields. Id. (emphasis added) (citation omitted).
The same was true in Samsung Elecs. Co. v. Infobridge Ptd.
Ltd., 929 F.3d 1363, 1367, 1370–73 (Fed. Cir. 2019), where
we affirmed the Board’s decision that a reference posted on
a website organized only in a hierarchical manner and not
by subject matter was not publicly accessible. But this case
is unlike Acceleration Bay and Samsung. Here, the “sev-
eral hundred user manuals” Roku points to here were all
organized based on subject matter—universal remote con-
trol user manuals. Thus, a person of ordinary skill in the
art, exercising reasonable diligence, would have found Ra-
dioShack without the need of any further search aid.
We therefore conclude that the Board did not legally
err in determining that RadioShack was available as prior
art to the ’875 patent.
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ROKU, INC. v. UNIVERSAL ELECTRONICS , INC. 7
B. Dependent Claims
Roku further challenges the Board’s claim construc-
tions with respect to dependent claims 2, 4, 8, and 10. To
understand Roku’s arguments, we provide the relevant
portion of independent claim 1, from which each of those
claims depends, and address Roku’s arguments as to each
in turn.
1. A method for setting up a Remote Control that
includes a keyboard, a processor, a memory, and a
transmitter, the method comprising the steps of:
[a] entering, via the keyboard and proces-
sor, a configuration mode;
[b] accepting, via the keyboard and proces-
sor, an identifier-entry; and
[c] scanning, via the processor and
memory, th[r]ough remote control code-
sets in a database stored in the memory of
the Remote Control, wherein the step of
scanning comprises:
[c(1)] in case that the identifier-en-
try is a brand-identifier that iden-
tifies a brand, (i) iterating, via the
processor and memory, through the
remote control code-sets corre-
sponding to the brand and (ii) test-
ing said remote control code-sets by
sending, via the transmitter, to a
Consumer Electronic device for a
given iteration, one or more specific
control code functions of a corre-
sponding remote control code-
set . . . .
’875 patent, col. 9 ll. 24–42 (emphases and limitation des-
ignations added). Before the Board, Roku conceded that
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ROKU, INC. v. UNIVERSAL ELECTRONICS , INC. 8
claim 1 does not exclude user input during the “scanning”
and “iterating” steps. Decision, at *6.
1. Dependent Claim 2
Roku argues that the Board erroneously construed
claim 2 in a way that contradicts its plain language and the
specification. Dependent claim 2 recites:
2. The method according to claim 1, wherein the
iteration through remote control code-sets corre-
sponding to the brand continues (i) until a user ap-
proval of a remote control code-set is entered, via
the keyboard, or (ii) until all the remote control
code-sets corresponding to the brand have been
tested.
’875 patent, col. 9 ll. 51–55 (emphases added). Roku argues
that the Board erred in concluding that the “itera-
tion . . . continues until” language does not preclude user
input during the claimed iterating step. See Decision, at
*15. Specifically, Roku argues that, even though the iter-
ating step of claim 1 does not preclude user input, claim 2
recites additional limitations to further narrow that step,
to the exclusion of user input. See Roku Br. 42–43. We
disagree.
Nothing in the plain language of claim 2 precludes user
input during the iteration. Roku’s proposed construction
relies on the assumption that any user input during the it-
eration necessarily triggers an end to the iteration. See id.
at 41 (“The Board’s construction which allows the iteration
to stop before one of [the claimed] conditions is met directly
contradicts the plain meaning of the claim language.”). But
we see no reason, and Roku provides none, that that must
be the case. As the Board explained, UEI’s “more straight-
forward position that the iteration simply continues until
the user indicates approval is more consistent with the in-
trinsic evidence and is supported by [expert] testimony.”
Decision, at *16 (emphasis added); see also UEI Br. 50–51.
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ROKU, INC. v. UNIVERSAL ELECTRONICS , INC. 9
We therefore see no error in the Board’s construction of
claim 2. Roku does not otherwise challenge the Board’s de-
termination that RadioShack would have rendered obvious
claim 2.
2. Dependent Claim 4
Next, Roku argues that the Board erroneously con-
strued claim 4. Dependent claim 4 recites:
4. The method according to claim 1, wherein the
step of testing a remote control code-set comprises
the following steps:
[a] sending, via the transmitter, a remote
control signal of the remote control code-
set;
[b] checking, via the processor, memory,
and keyboard, for a user reaction; and
[c] in case of a user reaction, enabling, via
the processor, memory, and transmitter, to
test keys of the Remote Control for the re-
mote control code-set.
’875 patent, col. 9 l. 61–col. 10 l.3 (emphases and limitation
designations added). Roku argues that the Board erred by
concluding that the claimed “additional testing,” as recited
in limitation 4[c], need not be a part of the iterative testing
loop of claim 1. Roku Br. 49. It argues that “the language
of claims 1 and 4 imposes a structural relationship between
the iterative testing loop of claim 1 and the additional test-
ing in claim 4.” We disagree.
The step of “iterating” is wholly distinct from the step
of “testing” in claim 1. And claim 4 further limits the “test-
ing” step of claim 1. We therefore disagree that limitation
4[c] must be part of the “iterating” step of claim 1. The
Board therefore did not err in its construction of claim 4.
Roku does not otherwise challenge the Board’s
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ROKU, INC. v. UNIVERSAL ELECTRONICS , INC. 10
determination that RadioShack would have rendered obvi-
ous claim 4.
3. Dependent Claim 8
Roku next challenges the Board’s construction of claim
8. That claim recites:
8. The method according to claim 1, wherein a
numbering convention is used to distinguish be-
tween brand-identifiers and code-set-identifiers.
’875 patent, col. 10 ll. 16–18 (emphasis added). Roku ar-
gues that a “numbering convention” necessarily refers to
the way identifiers themselves are numbered, such as all
brand-identifiers beginning with an 8 or 9. Roku
Br. 51–52. Again, we disagree.
As the Board explained, “the claim does not require
that the recited ‘numbering convention’ be embodied by the
identifiers themselves.” Decision, at *18. Roku’s proposed
construction too narrowly reads the term “convention” and
attempts to import particular embodiments into the claim
language absent any evidence that the patentee intended
the claims to be so limited. See Hill-Rom Servs., Inc. v.
Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (“While
we read claims in view of the specification, of which they
are a part, we do not read limitations from the embodi-
ments in the specification into the claims.”). The Board
therefore did not err in its construction of dependent claim
8. Roku does not otherwise challenge the Board’s determi-
nation that RadioShack would have rendered obvious
claim 8.
4. Dependent Claim 10
Finally, Roku challenges the Board’s construction of
the term “processor” in claim 10. Dependent claim 10 re-
cites:
10. A non-transitory computer-readable medium
embodied with a computer program that comprises
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ROKU, INC. v. UNIVERSAL ELECTRONICS , INC. 11
computer program code executable by a processor to
perform the steps of setting up a Remote Control of
claim 1.
’875 patent, col. 10 ll. 24–27 (emphasis added). Roku ar-
gues that the Board erred in construing the claim to allow
a user to perform the claimed steps. Roku Br. 55. That is,
Roku again attempts to limit the claim to exclude user in-
put. We again disagree with Roku’s overly narrow claim
construction.
As the Board aptly explained, “[i]t is apparent that the
processor [in claim 10] alone is incapable of performing all
of ‘the steps of setting up a Remote Control of claim 1.” De-
cision, at *19. Claim 1 requires, in addition to the proces-
sor, a keyboard and a memory, and nothing in the intrinsic
record suggests that the processor can perform all of the
claimed steps without any user input. Accordingly, we see
no error in the Board’s construction. Roku does not other-
wise challenge the Board’s conclusion that RadioShack
would have rendered obvious claim 10.
* * *
For the foregoing reasons, we affirm the Board’s deter-
mination that claims 1–5, 8–10, and 14 of the ’875 patent
are unpatentable as obvious over RadioShack.1
II
We now turn to UEI’s cross-appeal. UEI argues that
the Board’s determination that UEI did not show that the
combination of Wouters and Verzulli would have rendered
1 Roku does not challenge the Board’s unpatentabil-
ity determinations with respect to claims 1, 3, 5, 9, and 14
assuming that RadioShack is prior art. Thus, because we
agree that RadioShack was publicly accessible, the Board’s
obviousness determinations as to those claims must be af-
firmed.
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ROKU, INC. v. UNIVERSAL ELECTRONICS , INC. 12
claim 11 obvious was not supported by substantial evi-
dence. Claim 11 recites, in relevant part:
11. A method for setting up a Remote Control that
includes a keyboard, a processor, a memory, and a
transmitter, the method comprising the steps of:
. . .
combining, via the processor and memory,
correct working codes from the scanned re-
mote control code-sets into a new custom
configuration code set and installing, via
the processor and memory, the combined
correct working codes of the new custom
configuration code set for use by the remote
control.
’875 patent, col. 10 ll. 28–48. On appeal, UEI argues that
the Board improperly overlooked the “reinstallation” func-
tionality of Wouters’s “fixer,” which can be used to reinstall
a custom code set when the remote control malfunctions
(e.g., when its batteries die). UEI Br. 67–68. That func-
tionality, UEI argues, would have rendered claim 11 obvi-
ous.
We agree with UEI to the extent that the Board’s deci-
sion is silent with respect to Wouters’s reinstallation func-
tionality. However, the four lines of Wouters on which UEI
relies for that functionality were never quoted or discussed
in UEI’s petition. Compare J.A. 249–50 (UEI’s petition
quoting Wouters, col. 10 ll. 14–20), with UEI Br. 67 (rely-
ing on Wouters, col. 10 ll. 20–24). That being said, UEI did
appear to expound upon that functionality at the oral hear-
ing before the Board, to which Roku did not object. See
J.A. 836 (UEI arguing that “[w]hen the remote control mal-
functions, . . . the user may easily reinstall the chosen code
set”); see also J.A. 556 (UEI arguing in its reply brief that
“Wouters clearly discloses that the chosen codeset is the
active codeset, and that if the remote control ever
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ROKU, INC. v. UNIVERSAL ELECTRONICS , INC. 13
malfunctions the codeset can be installed again” (emphasis
added)). Indeed, Roku appears to have addressed that ar-
gument on the merits in its oral-hearing rebuttal. See
J.A. 863–64.
Ordinarily, arguments not presented to the Board are
forfeited. In re Google Tech. Holdings LLC, 980 F.3d 858,
863 (Fed. Cir. 2020); Netflix, Inc. v. DivX, LLC, 84 F.4th
1371, 1377 (“[T]he Board should [] not have to decode a pe-
tition to locate additional arguments beyond the ones
clearly made.”). The problem here is that we are unable to
determine from the decision before us whether the Board
entirely overlooked UEI’s reinstallation argument,
whether the Board considered and rejected that argument
on the merits, or whether the Board deemed that argument
forfeited as untimely presented. The Board’s silence with
respect to that argument precludes judicial review. Tim-
ken U.S. Corp. v. United States, 421 F.3d 1350, 1355 (Fed.
Cir. 2005) (“[I]t is well settled that an agency must explain
its action with sufficient clarity to permit ‘effective judicial
review.’” (quoting Camp v. Pitts, 411 U.S. 138, 142–43
(1973))).
For that reason, we vacate the Board’s decision with
respect to claim 11 and remand for the Board to provide a
more thorough explanation regarding its treatment of
UEI’s reinstallation argument based on Wouters.
C ONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the reasons provided, we
affirm the Board’s decision holding unpatentable claims
1–5, 8–10, and 14 of the ’875 patent as obvious over Radi-
oShack. We vacate the decision holding that claim 11 was
not shown to be unpatentable over Wouters and Verzulli,
and remand to the Board for reconsideration of that claim
in light of this opinion.
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ROKU, INC. v. UNIVERSAL ELECTRONICS , INC. 14
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
C OSTS
The parties shall bear their own costs.
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