In Re ROKU, INC.

Opinion

Case: 22-116 Document: 18 Page: 1 Filed: 05/11/2022

NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

In re: ROKU, INC., Petitioner ______________________

2022-116, 2022-117, 2022-118 ______________________

On Petitions for Writ of Mandamus to the United States Patent and Trademark Office in Nos. IPR2021- 00263, IPR2021-00264, and IPR2021-00299. ---------------------------------------------------

ROKU, INC., Appellant

v.

UNIVERSAL ELECTRONICS, INC., Appellee ______________________

2022-1216, 2022-1217, 2022-1218 ______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2021- 00263, IPR2021-00264, and IPR2021-00299. ______________________

ON PETITIONS Case: 22-116 Document: 18 Page: 2 Filed: 05/11/2022

2 IN RE: ROKU, INC.

______________________

Before DYK, REYNA, and CHEN, Circuit Judges. DYK, Circuit Judge. ORDER Roku, Inc. directly appeals the Patent Trial and Appeal Board’s decisions declining institution of inter partes re- view of two patents owned by Universal Electronics, Inc. In reaching that determination, the Board relied on the ad- vanced stage of co-pending parallel proceedings before the International Trade Commission (ITC) involving the same patents and overlapping invalidity arguments. Roku has also filed related petitions for writs of mandamus seeking review of those same non-institution decisions. We reaffirmed in Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1378–79 (Fed. Cir. 2021) that the Board’s discretionary decision to decline in- stitution of inter partes review, including decisions based on the Board’s multi-factor standard for evaluating whether to institute in view of parallel civil litigation, is “final and nonappealable.” (quoting 35 U.S.C. § 314(d)). We also made clear that, given the fact that the decision to institute inter partes review is committed to the discretion of the agency, “there is no reviewability of the Director’s exercise of his discretion to deny institution [by way of a petition for a writ of mandamus] except for colorable con- stitutional claims.” Id. at 1382. Roku has not provided a sufficient justification for dis- tinguishing Mylan here. Roku argues that the ITC, unlike a district court, cannot issue a decision on patent validity with preclusive effect in other forums, but that does not mean the Board’s non-institution decisions are any less “fi- nal and nonappealable” under section 314(d). Regardless of parallel proceedings, “no statute confers jurisdiction over appeals from decisions denying institution,” and “[w]ithout Case: 22-116 Document: 18 Page: 3 Filed: 05/11/2022

IN RE: ROKU, INC. 3

such a statute, we lack jurisdiction over those appeals.” Id. at 1379 (citation omitted). And Roku has not presented a colorable constitutional claim. As in Mylan, Roku’s peti- tions merely challenge the Board’s exercise of discretion not to institute review proceedings. Pet. 3–4. Under such circumstances, we must dismiss Roku’s direct appeals, and we deny its requests for mandamus relief. Accordingly, IT IS ORDERED THAT: (1) Appeal Nos. 2022-1216, -1217, -1218 are dismissed. (2) The mandamus petitions are denied. (3) Costs in Appeal Nos. 2022-1216, -1217, -1218 to Universal Electronics, Inc. FOR THE COURT

May 11, 2022 /s/ Peter R. Marksteiner Date Peter R. Marksteiner Clerk of Court