Roku, Inc. v. Universal Electronics, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ROKU, INC.,
Appellant
v.
UNIVERSAL ELECTRONICS, INC.,
Appellee
______________________
2023-1019
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00455.
______________________
Decided: June 18, 2024
______________________
RICHARD CRUDO, Sterne Kessler Goldstein & Fox
PLLC, Washington, DC, argued for appellant. Also repre-
sented by SASHA RAO; J ONATHAN D ANIEL BAKER, Dickinson
Wright RLLP, Mountain View, CA; MICHAEL D AVID
SAUNDERS , Dickinson Wright PLLC, Austin, TX.
MICHAEL N ICODEMA, Greenberg Traurig, P.A., West
Palm Beach, FL, argued for appellee. Also represented by
ERIK BOKAR, Orlando, FL; BENJAMIN G ILFORD, MATTHEW J.
L EVINSTEIN, J AMES J. L UKAS , J R., Chicago, IL.
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 2
______________________
Before T ARANTO, STOLL , and STARK, Circuit Judges.
S TARK, Circuit Judge.
Roku, Inc. (“Roku”) appeals the final written decision
of the Patent Trial and Appeal Board (“Board”) holding
that claims 1-9 of U.S. Patent No. 10,325,486 (“’486 pa-
tent”) are not unpatentable as obvious. Because the
Board’s holding is premised on an erroneous claim con-
struction, we vacate and remand.
I
The ’486 patent, entitled “System and Method for Op-
timized Appliance Control,” is owned by Universal Elec-
tronics Inc. (“UEI”). The ’486 patent discloses “enhanced
methods for appliance control via use of a controlling de-
vice, such as a remote control, smart phone, tablet com-
puter, etc., and in particular . . . methods for taking
advantage of improved appliance control communication
methods and/or command formats.” ’486 patent at 1:66-
2:4. Roku’s annotated version of Figure 1, reproduced be-
low, is illustrative and shows (in green) several “controlla-
ble appliances” connected to a user’s home theater,
including television 106, audio/video receiver 120, set-top
box 110, and DVD player 108. Id. at 3:44-49. The home
theater device (or the “Universal Control Engine” device)
100 (shown in blue) communicates with the controllable ap-
pliances using, for example, wireless infrared (IR) signals
114 and/or a wired HDMI connection 112 (shown in or-
ange). Id. at 3:61-66. A user wishing to operate one of the
controllable appliances uses a “controlling device” (shown
in red), such as a remote control 102 or smart device 104,
to select various icons displayed on a user interface associ-
ated with the home theater device. Id. at 11:40-55, 14:39-
63. The user interface may be displayed on the controlling
device’s screen or the home theater’s television screen.
Once the user makes a selection from the displayed icons,
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 3
the home theater device issues the appropriate command
to the target controllable appliance using a communication
method and protocol appropriate for that appliance.
Claim 1, the sole independent claim, recites:
A method for configuring a user interface that is
caused to be presented by a home theater device in
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 4
a display device associated with the home theater
device, comprising:
receiving at the home theater device from a
controllable appliance in communication with
the home theater device via use of a high def-
inition multimedia (“HDMI”) connection data
that functions to identify a controllable func-
tion of the controllable appliance;
automatically adding by the home theater de-
vice to the user interface an icon representa-
tive of the controllable function of the
controllable appliance that was identified by
the data received from the controllable appli-
ance;
in response to the home theater device receiv-
ing from a controlling device a command
transmission that is indicative of a selection
of the added icon from the user interface when
the user interface is displayed in the display
device associated with the home theater de-
vice,
causing the home theater device to issue a
command to at least the controllable appli-
ance to control at least the controllable func-
tion of the controllable appliance that was
identified by the data received from the con-
trollable appliance.
Id. at 17:2-24 (emphasis added).
After UEI sued Roku for patent infringement, Roku
filed a petition seeking inter partes review (“IPR”) of all
nine claims of the ’486 patent, contending the claims are
obvious in view of U.S. Patent No. 9,239,837 (“Chardon”)
and HDMI Licensing, LLC, High-Definition Multimedia
Interface, Specification Version 1.3a (November 10, 2006)
(“HDMI 1.3a”). The Board instituted the IPR and then, in
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 5
a final written decision, rejected Roku’s obviousness chal-
lenge. The Board’s conclusion was based largely on its con-
struction of a portion of what it labelled the “receiving
limitation.” Specifically, the Board construed the term
“data that functions to identify a controllable function” to
require that “the data itself identifies a controllable func-
tion of the controllable appliance from which the data is
received.” J.A. 18. The Board rejected Roku’s proposed,
broader construction, which was “data that can be used in
connection with other information, to identify a controlla-
ble function of the controllable appliance.” Id. Applying its
construction to the prior art, the Board found that Roku
“does not sufficiently establish that the ‘receiving’ limita-
tion of independent claim 1 is met by the combination of
Chardon and HDMI 1.3a.” J.A. 37.
The Board had jurisdiction under 35 U.S.C. § 316(c).
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and
35 U.S.C. §§ 141(c), 319.
II
We review the Board’s claim construction de novo and
any subsidiary factual findings based on extrinsic evidence
for substantial evidence. See Personalized Media
Commc’ns, LLC v. Apple Inc., 952 F.3d 1336, 1339 (Fed.
Cir. 2020). Claim terms “are generally given their ordinary
and customary meaning,” which is the meaning understood
by one of ordinary skill in the art when read in the context
of the claim, specification, and prosecution history. Phil-
lips v. AWH Corp., 415 F.3d 1303, 1313-14 (Fed. Cir. 2005)
(en banc).
III
The only issue on appeal is Roku’s challenge to the
Board’s construction of the term “data that functions to
identify a controllable function of the controllable appli-
ance.” Roku argues that the Board’s construction contra-
dicts the intrinsic evidence by precluding the use of other
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 6
information in connection with the claimed data to identify
the controllable function. We agree with Roku that the
Board’s construction is too narrow. Properly construed, the
limitation instead encompasses “data that can be used in
connection with other information or by itself, to identify a
controllable function of the controllable appliance.”
We agree with Roku that the claim language itself pro-
vides substantial support for Roku’s construction, which
understands the disputed term to be broad enough to cap-
ture other, additional data that contributes to identifying
a controllable function. Unlike the Board, we do not find
that “the presence of the words ‘functions to’ in the dis-
puted phrase creates a degree of ambiguity.” J.A. 19. The
phrase “X functions to identify Y” has a clear meaning that,
as noted by Roku, “is broad in scope.” Appellant’s Br. at
31. “Functions to identify” connotes a relationship between
X and Y in which X is used in some fashion in the process
of identifying Y. The phrase does not limit how the identi-
fication of Y is achieved beyond instructing that X plays
some role in doing so. Put another way, the plain and or-
dinary meaning of “X functions to identify Y” does not,
standing alone, limit the relationship between X and Y to
the use of only X, or the use of X in a particular manner.
Thus, the plain and ordinary meaning of “data that func-
tions to identify a controllable function” permits the indi-
rect use of such data as well as the use of additional data.
We disagree with the Board that other claim language
surrounding the disputed term supports a construction re-
quiring the claimed data, alone, to directly identify the con-
trollable function. Based on claim 1’s repeated reference to
“the controllable function of the controllable appliance that
was identified by the data received from the controllable
appliance,” as recited in the “automatically adding” and
“causing” limitations, the Board found that “the data” re-
fers back to the data from the contested “functions to” lim-
itation, and “there is no apparent room in the language
‘that was identified by the data’ for the introduction or
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 7
consideration of such ‘other information’ that Petitioner
would like to use ‘in connection with’ the recited ‘data’ to
‘identify the controllable function.’” J.A. 19. We disagree.
Instead, in our view, the “identified by the data” language
does not require that the controllable function be identified
by that data alone or by that data directly. “Identified by”
imparts the same broad scope as the “functions to” lan-
guage discussed above.
The Board also found support for its construction in the
other aspects of claim 1, which establish three require-
ments that, according to the Board, could only be satisfied
if the claimed data identifies the controllable function by
itself: “(1) the data must be received from the controllable
appliance; (2) the data is used to add an icon to the user
interface; and (3) selecting the icon sends a command to the
controllable appliance to control the controllable function
identified by the data.” J.A. 20-21 (internal quotation
marks omitted). Assuming claim 1 contains these three re-
quirements, they are all still met under Roku’s proposed
construction; the claimed data may still come from the con-
trollable appliance, and be used to add an icon to the user
interface (which, when selected, sends a command to con-
trol the controllable function identified by a combination of
the claimed and other data), even if (1) the additional data
may or may not itself come from the controllable appliance;
(2) “the data” is still used to add an icon to the user inter-
face, even if additional data is also used in these processes
along with the claimed data. Thus, these purported re-
quirements do not favor the Board’s construction.
The specification provides additional support for
Roku’s proposed construction. Although the Board found
the specification “of relatively little help in determining
which of the proposed constructions of ‘data that functions
to identify a controllable function’ is most compelling,” J.A.
21, both the Board and the parties recognize that the spec-
ification expressly describes an embodiment in which the
controllable function is identified by the claimed data in
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 8
conjunction with other information. In particular, the par-
ties agree that the “icon information” described in relation
to Figure 15 is an embodiment of the claimed “data that
functions to identify a controllable function,” J.A. 21, and
the specification explains that this icon information “may
be used in connection with information stored on the smart
device, stored in the internet cloud and/or at a remote
server” to identify the controllable function, ’486 patent at
14:46-49 (emphasis added). Thus, the parties have essen-
tially agreed that the specification teaches an embodiment
in which the claimed data is used “in connection with”
other data to identify the controllable function. Given our
“strong presumption against a claim construction that ex-
cludes a disclosed embodiment,” In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir.
2011), the parties’ agreement renders the Board’s construc-
tion unlikely to be correct.
Finally, we turn to the prosecution history. We find it
provides no clear basis for deviating from the disputed
term’s broad plain and ordinary meaning, and we disagree
with the Board’s findings to the contrary.
During prosecution, the applicant attempted to distin-
guish a prior art reference that had been the basis for an
anticipation rejection, U.S. Patent Application Publication
No. 2007/0229465 (“Sakai”), by stating:
Thus, in Sakai, the user interface is determined
based upon a state of a device within the system,
e.g., determined based upon the state of the menu
that is displayed on the TV. Furthermore, while the
function buttons 130 that are caused to be displayed
in the user interface may be used to control various
individual functions, e.g., to control a navigation
function (¶ 0059), to control a rewind function, a
pause function, a fast forward function, etc. (¶ 0068),
in Sakai the controllable device, e.g., the TV, DVD
player, radio/amplifier, does not function to provide
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 9
to the server unit 330 data indicative of such control-
lable functions and, furthermore, the function but-
tons 130 are not used to transmit a command to
control the state of the device within the system that
was reported to/determined by the server unit 330,
i.e., in Sakai the server unit 330 does not issue a
command to at least the controllable appliance to
control at least the state of the controllable appliance
that may have been identified by data received from
the controllable appliance. In short, it is respectfully
submitted that the state data that is used in the sys-
tem of Sakai is not, and would not be considered by
one of skill in the art to be, the claimed data indica-
tive of a controllable function of a controllable appli-
ance.
J.A. 864 (emphasis in original).
Although the Board did not perform a prosecution dis-
claimer analysis, see J.A. 27 n.4, we may do so in the first
instance on de novo review. See In re Comiskey, 554 F.3d
967, 975 (Fed. Cir. 2009) (holding that Chenery permits res-
olution of legal issue which is not “‘a determination of pol-
icy or judgment which the agency alone is authorized to
make’”) (quoting SEC v. Chenery Corp., 318 U.S. 80, 88
(1943)). We find that the patent applicant’s statements
made during prosecution of the ’486 patent did not consti-
tute a clear and unmistakable disclaimer. As noted by the
Board, “[m]ultiple amendments were made simultaneously
during prosecution” and “there is a degree of intermingling
in the Applicant’s responsive remarks,” J.A. 26, resulting
in, as Roku states, a “file history . . . that . . . is ambiguous,”
Appellant’s Br. at 57.
We recognize that “[a]n applicant’s invocation of multi-
ple grounds for distinguishing a prior art reference does not
immunize each of them from being used to construe the
claim language.” Andersen Corp. v. Fiber Composites, LLC,
474 F.3d 1361, 1374 (Fed. Cir. 2007). Hence, just because,
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 10
as Roku puts it, the applicant’s “amendment and statement
seem to distinguish Sakai on two grounds,” Appellant’s Br.
at 54 – that is, based on both the lack of HDMI communi-
cation from Sakai’s server unit and Sakai’s “state data” –
does not automatically mean neither statement can be a
disclaimer. Nevertheless, the applicant’s statements,
which do not even include the disputed claim language, see
Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333
(Fed. Cir. 2004) (finding no disclaimer where applicant’s
statements distinguished on basis of terminology not found
in disputed claim term), are too ambiguous to constitute a
clear and unmistakable disclaimer, see CUPP Computing
AS v. Trend Micro Inc., 53 F.4th 1376, 1382 (Fed. Cir. 2022)
(“[W]here the alleged disavowal is ambiguous, or even ame-
nable to multiple reasonable interpretations, we have de-
clined to find prosecution disclaimer.”) (internal quotation
marks omitted).
Our conclusion that there is no clear and unmistakable
disclaimer does not end our analysis of the prosecution his-
tory, which can still “inform the meaning of the claim lan-
guage by demonstrating how the inventor understood the
invention.” Phillips, 415 F.3d at 1317. The meaning of a
claim term “must be considered in the context of all the in-
trinsic evidence, including . . . prosecution history.” Irides-
cent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345,
1350 (Fed. Cir. 2019) (emphasis added). However, where,
as here, the plain and ordinary meaning of a disputed claim
limitation is clear, the limitation generally “should be
granted its full scope,” absent an explicit redefinition or
disavowal. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
853 F.3d 1272, 1282 (Fed. Cir. 2017). Considering the pros-
ecution history from this perspective, we find it too ambig-
uous to narrow the clear, broader meaning of the disputed
limitation that we find to be strongly supported by the
claim language itself and the specification.
Thus, we find that the Board’s claim construction is er-
roneous. The proper construction of “data that functions to
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ROKU, INC. v. UNIVERSAL ELECTRONICS, INC. 11
identify a controllable function of the controllable appli-
ance,” as it appears in claim 1, is “data that can be used in
connection with other information, to identify a controlla-
ble function of the controllable appliance.” In view of the
Board’s incorrect claim construction, we vacate the Board’s
final written decision holding that claims 1-9 of the ’486
patent are not unpatentable as obvious. We remand for the
Board to re-evaluate the obviousness issue applying the
claim construction we have set out above.
IV
We have considered UEI’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we va-
cate the Board’s final written decision and remand for the
Board to determine whether the claims of the ’486 patent
are obvious under the correct claim construction.
VACATED AND REMANDED
COSTS
Costs to Appellant.
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