Roku, Inc. v. Universal Electronics, Inc.

63 F.4th 1319

• Court: Court of Appeals for the Federal Circuit
• Decided: March 31, 2023
• Docket: 22-1058
• Status: Published

Opinion

Case: 22-1058 Document: 40 Page: 1 Filed: 03/31/2023

United States Court of Appeals for the Federal Circuit ______________________

ROKU, INC., Appellant

v.

UNIVERSAL ELECTRONICS, INC., Appellee ______________________

2022-1058 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019- 01615. ______________________

Decided: March 31, 2023 ______________________

WILLIAM MILLIKEN, Sterne Kessler Goldstein & Fox, PLLC, Washington, DC, argued for appellant. Also repre- sented by JON WRIGHT; JONATHAN DANIEL BAKER, Dickin- son Wright PLLC, Mountain View, CA; MICHAEL DAVID SAUNDERS, Austin, TX.

MICHAEL ANTHONY NICODEMA, Greenberg Traurig LLP, West Palm Beach, FL, argued for appellee. Also rep- resented by BENJAMIN GILFORD, JAMES J. LUKAS, JR., Chi- cago, IL. ______________________ Case: 22-1058 Document: 40 Page: 2 Filed: 03/31/2023

Before NEWMAN, REYNA, and STOLL, Circuit Judges. Opinion for the court filed by Circuit Judge STOLL. Dissenting opinion filed by Circuit Judge NEWMAN. STOLL, Circuit Judge. Roku, Inc. appeals the Patent Trial and Appeal Board’s final written decision holding that claims 1, 3, 5, and 7 of U.S. Patent No. 9,716,853 had not been proven unpatenta- ble as obvious. This case turns on a single question— whether a person of ordinary skill in the art would have understood the prior art’s disclosure of a listing of remote command codes formatted for transmission via two differ- ent communication methods to be a listing comprised of at least a first communication method and a second commu- nication method different than the first communication method. Because the question presented involved the scope and content of the prior art, the Board resolved this dispute as a purely factual question, which we review for substantial evidence. The Board thoroughly considered the evidence of record and found in its final written decision that the skilled artisan would not have understood the prior patent’s listing of remote command codes to corre- spond to the claim limitation at issue. Because the Board’s finding in this close factual dispute is supported by sub- stantial evidence, we affirm the Board’s final written deci- sion. BACKGROUND The ’853 patent relates to universal remotes and, more specifically, to a universal control engine (UCE) that facil- itates communication between a controlling device (i.e., a remote) and intended target appliances (e.g., a TV, a DVD player, a sound system, etc.). ’853 patent col. 1 l. 63–col. 2 l. 45. Although the specification of the ’853 patent acknowledges that universal remotes were known at the time of the invention, it states that the proliferation of new communication methods raises the potential for “confusion, Case: 22-1058 Document: 40 Page: 3 Filed: 03/31/2023

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misoperation, or other problems,” id. at col. 1 ll. 40–59, par- ticularly because the preferred communication method for transmitting commands “may vary by both appliance and by the function to be performed,” id. at col. 6 ll. 62–64. For example, a user can “power on and select inputs on a TV” using Consumer Electronic Control (CEC) commands while “control[ling] the volume on the same TV” using infrared (IR) commands. Id. at col. 2 ll. 21–45. The ’853 patent’s purported invention is the ability to reliably use different communication methods that enable a single remote con- trol to provide commands to a variety of target appliances, according to the optimal method of communication for each target appliance and command. Id. at col. 2 ll. 16–20. The ’853 patent’s UCE can “receive commands from a controlling device” and “apply the optimum methodology to propagate the command function(s) to each intended target appliance,” id. at col. 2 ll. 20–37, according to a “preferred command matrix,” id. at col. 7 ll. 19–29. The preferred command matrix, an example of which is shown below, can be, for example, a list or a table with entries that corre- spond to a specific command and “comprise identification of [(1)] a form of command/transmission to be used and [(2)] a pointer to the required data value and formatting information for the specific command.” Id. at col. 7 ll. 19–29. Case: 22-1058 Document: 40 Page: 4 Filed: 03/31/2023

’853 patent Fig. 7. Representative claim 1 recites: 1. A universal control engine, comprising: a processing device; and a memory device having stored thereon instruc- tions executable by the processing device, the in- structions, when executed by the processing device, causing the universal control engine to respond to a detected presence of an intended target appliance within a logical topography of con- trollable appliances which includes the universal control engine by using an identity associated with the intended tar- get appliance to create a listing comprised of at least a first communication method and a second Case: 22-1058 Document: 40 Page: 5 Filed: 03/31/2023

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communication method different than the first com- munication method for use in controlling each of at least a first functional operation and a second func- tional operation of the intended target appliance and to respond to a received request from a controlling device intended to cause the intended target appli- ance to perform a one of the first and second func- tional operations by causing a one of the first and second communica- tion methods in the listing of communication meth- ods that has been associated with the requested one of the first and second functional operations to be used to transmit to the intended target appli- ance a command for controlling the requested one of the first and second functional operations of the intended target appliance. Id. at col. 14 l. 41–col. 15 l. 7 (emphasis added to key limi- tation). Roku filed a petition for inter partes review of claims 1, 3, 5, and 7 of the ’853 patent, asserting that the challenged claims would have been obvious in view of U.S. Patent Pub. No. 2012/0249890 (“Chardon”) and other asserted prior art references. Disposition of the case before us rests, as it did before the Board, on a single, narrow issue: whether Char- don discloses “a listing comprised of at least a first commu- nication method and a second communication method different than the first communication method” as recited in each challenged claim. Like the patent-in-suit, Chardon describes a remote control system configured to control various target devices (e.g., TVs, DVD players, stereo equipment, etc.). Chardon uses target device identification data to generate a linked database (e.g., a linked list) including sets of command codes (i.e., instructions to perform a command) associated Case: 22-1058 Document: 40 Page: 6 Filed: 03/31/2023

with specific communication protocols. Chardon, ¶¶ [0006]–[0008]. This linked database includes at least two different sets of command codes—specifically, a set of CEC command codes and a set of IR command codes. Char- don’s system receives a command to perform a specific ac- tion (i.e., volume up) on a target appliance (i.e., a TV) and first relays the command to the TV using a CEC command code. Id. at ¶ [0058]. If the system doesn’t receive a re- sponse from the TV indicating receipt of the command, the system then “determine[s] an IR command code . . . to per- form the same set of functions as the CEC command code” and transmits that IR command code to the TV. Id. Alter- natively, the system can determine in advance that a tar- get device “is not configured to receive CEC command codes” and “send IR command codes . . . instead.” Id. at ¶ [0058]; see also id. at ¶ [0068]. Roku argued that Chardon disclosed the disputed claim limitation to a skilled artisan, devoting much of its petition to explaining how Chardon “creates a database of IR and CEC command codes.” J.A. 116. In other words, Roku established in its petition that Chardon describes a process for creating a database of command codes, at least some of which are formatted for transmission according to a first communication method and some of which are for- matted for transmission according to a second communica- tion method. “In this way,” Roku asserted, without further explanation, “Chardon meets the claimed limitation” of a listing of “at least a first (e.g., CEC) and second (e.g., IR) communication method.” Id. Roku’s petition did not explain how a list of command codes is a list of communication methods. Nor did it sug- gest that Chardon’s list of command codes would render the claimed list of communication methods obvious. For example, it did not state that Chardon’s list of command codes is inherently a list of communication methods, or ex- plain that a skilled artisan would have been motivated to derive a list of communication methods from the command Case: 22-1058 Document: 40 Page: 7 Filed: 03/31/2023

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codes, or provide evidence that a skilled artisan would have known that Chardon’s list of command codes was also a list of communication methods. In its petition, Roku thus as- sumed that, because Chardon’s command codes are format- ted for transmission via different communication methods, its list of command codes is necessarily a list of communi- cation methods. But Roku neither articulated this assump- tion nor explained how the record evidence supported it. Further, Roku advanced no claim constructions for the disputed limitation, asserting instead that the relevant claim language “should simply receive [its] plain and ordi- nary meaning, as informed by the ’853 patent specifica- tion.” J.A. 83. To support its assertions, Roku’s petition did rely on the expert testimony of Dr. Samuel Russ. Dr. Russ ex- plained that Chardon’s linked database discloses “a listing comprised of at least a first communication method (e.g., CEC command codes) and a second communication method (e.g., IR command codes).” J.A. 905 (Russ Decl. ¶ 203). This testimony seemingly equates CEC command codes with a first communication method and IR command codes with a second communication method. Dr. Russ later elab- orated, however, that Chardon used its linked database “to send a CEC command code over HDMI to an HDMI appli- ance using a first communication method (i.e., HDMI-CEC over a HDMI cable),” seemingly acknowledging a distinc- tion between command codes and the communication methods over which the command codes are transmitted. J.A. 906 (Russ Decl. ¶ 205). Dr. Russ did not testify that a skilled artisan would have understood Chardon’s linked database of command codes to teach or suggest a list of communication methods. Universal did not dispute that Chardon discloses a pro- cess for creating a listing of CEC command codes and IR command codes. Universal asserted instead that Roku had failed to establish that this disclosure teaches or renders Case: 22-1058 Document: 40 Page: 8 Filed: 03/31/2023

obvious creating a listing of two different communication methods. J.A. 300–02. Universal rebutted Roku’s posi- tions and Dr. Russ’s testimony with that of Dr. Don Turn- bull. Dr. Turnbull opined that one of ordinary skill in the art would “not have understood a ‘command code’ to be a ‘communication method.’” J.A. 3034 (Turnbull Decl. ¶¶ 69–70). He explained that a command code is “an in- struction to perform a function,” whereas a communication method is “a medium or protocol for transmitting or receiv- ing information.” Id. Dr. Turnbull explained that the ’853 patent specification itself “expressly distinguishes be- tween a listing of communication methods and a database of command codes.” J.A. 3034–35 (Turnbull Decl. ¶ 71). As support, Dr. Turnbull cited Figure 7 of the ’853 patent, which shows a matrix with cells comprising “identification of a form of command/transmission to be used,” such as CEC and IR. Id. He explained that the matrix “expressly distinguishes between command codes and the communi- cation methods (e.g., CEC and IR) that are used to com- municate the command codes.” J.A. 3035 (Turnbull Decl. ¶ 72) (citing ’853 patent col. 7 ll. 30–42). Dr. Turnbull em- phasized that the ’853 patent clearly differentiates be- tween the “form of command/transmission to be used” and the data value and formatting information for the specific command, which is “stored elsewhere” in memory. J.A. 3034–35 (Turnbull Decl. ¶¶ 71–72); see also ’853 pa- tent col. 7 ll. 26–29. Thus, he explained, the ’853 patent makes “clear that a listing of communication methods is not the same thing as a database of command codes.” Id. In its final written decision, the Board determined that Roku had not shown that the challenged claims would have been obvious. The Board explained that although Roku “specifically equate[d] ‘a first communication method’ with ‘CEC command codes’ and ‘a second communication method different from the first communication method’ with ‘IR command codes,’” J.A. 20 (citing J.A. 119–20, 126–27), it failed to show that one of ordinary skill would Case: 22-1058 Document: 40 Page: 9 Filed: 03/31/2023

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have understood that these were the same things. The Board emphasized that Roku cited “no analysis or expert testimony” to show that Chardon’s linked database of com- mand codes and the transmission of those command codes over two different communication methods taught or sug- gested “the claimed listing that is comprised of at least two different communication methods.” J.A. 22. Acknowledg- ing that there was “no requirement that literal names of different command transmission mediums . . . appear in the text of the listing,” the Board nevertheless found that the record fell “short of providing evidence that one of ordi- nary skill in the art would have understood stored com- mand codes” to identify communication methods rather than act as a “reference for codes to be used once the com- munication method to be used is determined in some other way.” Id. (cleaned up). Thus, the Board concluded that Roku had not shown by a preponderance of the evidence that the challenged claims would have been obvious over Chardon alone, or in combination with other cited prior art references. Roku requested rehearing, alleging among other things that the Board “erred by implicitly construing,” J.A. 525, the term “communication method” as “the ‘method of trans- mission’ or the ‘transmission medium’ through which the selected command is sent,” J.A. 528. The Board denied Roku’s petition, explaining that it did not so construe the claims. J.A. 29. Furthermore, the Board explained that, even if it had construed the claim term as averred by Roku, “the outcome . . . would have been no different.” Id. Spe- cifically, the Board emphasized that the question of “whether a command code teaches a communication method” presents a factual question that the Board had al- ready considered and “decided in favor of Patent Owner” Universal, and Roku’s attempt to characterize the Board’s analysis as including an implicit construction was both in- correct and unpersuasive. J.A. 31. Case: 22-1058 Document: 40 Page: 10 Filed: 03/31/2023

Roku appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). DISCUSSION The ultimate question of obviousness is a legal ques- tion that we review de novo with underlying factual find- ings that we review for substantial evidence. Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1221 (Fed. Cir. 2022). Those underlying findings of fact, as enumerated by the Supreme Court nearly six decades ago, include the Gra- ham factors—“basic factual inquiries,” the answers to which provide a foundation for the ultimate determination of obviousness or nonobviousness. Graham v John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). The Graham factors include: “(1) the scope and content of the prior art, (2) differences between the prior art and the claims at is- sue, (3) the level of ordinary skill in the pertinent art, and (4) the presence of objective indicia of nonobviousness such as commercial success, long felt but unsolved needs, failure of others, and unexpected results.” Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354 (Fed. Cir. 2018) (in- ternal quotation marks omitted) (citing Graham, 383 U.S. at 17–18). Substantial evidence is evidence such that a “reasonable fact finder could have arrived at the agency’s decision.” OSI Pharms., LLC v. Apotex Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019) (quoting In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)). “[T]he possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency’s finding from being sup- ported by substantial evidence.” Consolo v. Fed. Mar. Comm’n, 383 U.S. 607, 620 (1966). As explained above, the question considered by the Board and raised on appeal is whether Chardon’s list of command codes formatted to be transmitted via different communication methods is, itself, a list of different Case: 22-1058 Document: 40 Page: 11 Filed: 03/31/2023

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communication methods as recited in the claims. We can see both sides of this factual dispute. 1 On one hand, before this court, Roku advances the rea- sonable argument that because (1) CEC and IR are com- munication protocols—which neither party disputes qualify as communication methods—and (2) Chardon dis- closes “a protocol-specific list of CEC command codes” and “a protocol-specific list of IR command codes,” Chardon nec- essarily discloses creating a listing comprised of at least two different communication methods “as a matter of logic.” Appellant’s Br. 24–27. Although Roku does not dis- pute that a “command code” is not the same as a “commu- nication method,” it argues that Chardon’s protocol-specific “listing unambiguously indicates both the command code and the communication protocol (i.e., communication method) to be used in transmission.” Id. at 28–29. On the other hand, as Universal persuasively argues, Roku has failed to show that the Board’s fact finding—that Chardon’s command code formatted for transmission via a particular communication method was not proven to be a communication method—was unsupported by substantial evidence. Appellee’s Br. 23. First, Universal notes that Roku’s argument contradicts the disclosure of the ’853 pa- tent itself. Id. at 24. For example, the ’853 patent de- scribes its listing as a “command matrix,” comprising “a series of data cells” that include “identification of a form of command/transmission to be used” and “a pointer to the

1 The dissent asserts that we should apply de novo review to this issue. But Roku expressly raises only a fac- tual question on appeal: whether Chardon teaches a par- ticular claim element. See Appellant’s Br. 21 (“That factual issue is the sole subject of this appeal.”). We thus view the issue on appeal as a Graham factor underlying obviousness—not as a question of the ultimate conclusion of obviousness. Case: 22-1058 Document: 40 Page: 12 Filed: 03/31/2023

required data value and formatting information for the specific command,” which is stored in a separate location in memory. ’853 patent col. 7 ll. 19–29. In other words, the patent specification itself distinguishes a list of communi- cation methods from a separate list of command codes. Sec- ond, Universal argues that the Board’s decision is supported by Dr. Turnbull’s expert testimony. Appellee’s Br. 25–26. According to Universal, the Board was entitled to weigh Dr. Turnbull’s testimony that a skilled artisan “would not have understood a ‘command code’ to be a com- munication method,” J.A. 3034 (Turnbull Decl. ¶¶ 69–70), more heavily than Dr. Russ’s more vague and unexplained testimony that Chardon’s linked database discloses “a list- ing of at least a first communication method (e.g., CEC command codes) and a second communication method (e.g., IR command codes),” J.A. 905 (Russ Decl. ¶ 203). Finally, Universal points out that Roku does not dispute the basic fact that a command code is different than a communica- tion method. Review of the record as a whole reveals that the factual dispute at hand was highly contested and closely decided. Most significantly for our purposes, the Board’s finding was supported by substantial evidence. Specifically, the Board’s finding flows from the ’853 patent specification it- self and Dr. Turnbull’s testimony. This evidence supported the Board’s finding that Roku had failed to meet its burden of proof. The Board, in its role as factfinder in the first instance, was entitled to weigh the evidence in the record, including this evidence against Roku. An appellate court “do[es] not and should not reweigh evidence or make factual findings.” Impax Lab’ys. Inc. v. Lannett Holdings Inc., 893 F.3d 1372, 1382 (Fed. Cir. 2018). As an appellate court, our role is to review the Board’s findings for substantial evidence, not to step into its place and make those findings anew. Id. Indeed, alt- hough this court could well have decided the factual dis- pute at hand differently than the Board did, it is not the Case: 22-1058 Document: 40 Page: 13 Filed: 03/31/2023

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province of this court to do so. Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 327 (2015) (explaining that a lower tribunal, which has “presided over, and listened to, the entirety of a proceeding has a comparatively greater opportunity to gain that familiarity than an appeals court judge who must read a written transcript or perhaps just those portions to which the parties have referred”). Because the Board’s factual finding—that Chardon’s listing of command codes did not teach or suggest a listing of communication methods—was supported by substantial evidence, we affirm the Board’s decision that Roku has not shown that the challenged claims would have been obvious. CONCLUSION We have considered the parties’ remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm the Board’s final written decision. AFFIRMED Case: 22-1058 Document: 40 Page: 14 Filed: 03/31/2023

United States Court of Appeals for the Federal Circuit ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019- 01615. ______________________

NEWMAN, Circuit Judge, dissenting. I respectfully dissent, for I have concerns as to both procedural and substantive aspects of the court’s ruling. I With respect to procedure, the court holds that because the parties did not dispute claim construction at the Patent Trial and Appeal Board (“PTAB” or “Board”), our appellate review is limited to whether substantial evidence supports the PTAB’s decision of non-obviousness. Claim construc- tion and obviousness are questions of law, whose underly- ing factual components may or may not be disputed. When disputed, factual findings of the PTAB are reviewed for support by substantial evidence, as the panel majority Case: 22-1058 Document: 40 Page: 15 Filed: 03/31/2023

recognizes, see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (reciting the standard of review for PTAB findings of fact), whereas the ultimate questions of law remain for de novo determination on appeal, id. The panel majority states that because “the question presented involved the scope and content of the prior art, the Board resolved this dispute as a purely factual question, which we review for substantial evidence.” Maj. Op. at 2. The majority then finds that substantial evidence supports the PTAB’s finding that “Chardon’s listing of com- mand codes did not teach or suggest a listing of communi- cation methods.” Id. at 13. This is the focus of my dissent, for the majority declines to review the ultimate legal ques- tion of validity of U.S. Patent No. 9,716,853 (the “’853 pa- tent”) and instead reviews solely the Board’s specific fact- finding discussed therein. The decision on appeal is “that Petitioner has not es- tablished by a preponderance of the evidence that any of claims 1, 3, 5, or 7 of the ’853 patent are unpatentable.” J.A. 24. My concern is with the majority’s implicit holding that if the underlying findings of fact are supported by substan- tial evidence, then we do not review the ultimate legal question of non-obviousness. I believe that de novo review is appropriate for the questions of law presented herein, along with review of any underlying facts for support by substantial evidence. 1

1 The panel majority misperceives my dissent. I do not “assert[] that we should apply de novo review to this [factual] issue.” Maj. Op. at 11 n.1. I do assert that we should apply de novo review to the issue on appeal, that is, the legal issue of obviousness. “It is emphatically the prov- ince and duty of the judicial department to say what the law is. Those who apply the rule to particular cases, must of necessity expound and interpret that rule.” Marbury v. Case: 22-1058 Document: 40 Page: 16 Filed: 03/31/2023

II It is not disputed that universal “remotes” were known at the time of the invention described and claimed in the ’853 patent. Communicating commands via both wireless and wired communication methods was well known: “a ‘communication method’ is a medium or protocol for trans- mitting or receiving information (e.g., CEC [consumer elec- tronics control], IR [infrared], RF [radio frequency], etc.).” Universal Elecs. Br. 5 (citing the ’853 patent col. 2 ll. 4–16, col. 6 ll. 25–28, 62–67, col. 14 ll. 20–24). The Chardon ref- erence describes a “database of CEC and IR command codes.” Id. at 1. In this appeal it is not disputed that a person of ordi- nary skill in the field of this invention would understand that the CEC and IR command codes listed and disclosed by Chardon are the same as the CEC and IR command codes listed and communicated in the ’853 patent. Chardon shows a Universal Control Engine (“UCE”) receiving a com- mand code from a remote control device, and it shows the UCE employing the applicable communication method to transmit the command to the appliance. This is the subject matter of the ’853 patent. As the panel majority recites, “[t]he ’853 patent’s purported invention is the ability to re- liably use different communication methods that enable a single remote control to provide commands to a variety of target appliances, according to the optimal method of com- munication for each target appliance and command.” Maj. Op. at 3 (citing the ’853 patent col. 2 ll. 16–20). The panel majority also recites that “Chardon discloses a process for creating a listing of CEC command codes and IR command codes” for communication to remote appli- ances. Id. at 7. Chardon teaches “at least two different

Madison, 5 U.S. 137, 177 (1803). This foundation of appel- late review applies whether or not any facts are disputed. Case: 22-1058 Document: 40 Page: 17 Filed: 03/31/2023

communication methods,” namely CEC and IR, Roku Reply Br. 1, and “[a] skilled artisan would understand that Char- don’s listing of parallel sets of CEC and IR command codes and its description of algorithms for selecting which com- munication method to use reads precisely on the chal- lenged claims.” Id. at 11. Although the parties discuss differences between the details disclosed by Chardon and by the ’853 patent, and the majority recognizes some such differences, these details are unclaimed by the ’853 patent and cannot be used to support non-obviousness. An example is that for selecting the communications method, the ’853 patent shows use of a “matrix” in Figure 7, and states that the matrix contains the “form of com- mand/transmission to be used and a pointer to the required data value and formatting information for the specific com- mand,” Roku Reply Br. 10 (quoting the ’853 patent col. 7 ll. 26–29), while Chardon lists “both CEC-formatted com- mand codes and a parallel set of IR-formatted command codes.” Id. (citing Chardon, ¶¶ [0008], [0039], [0044]). However, any difference in the selection method does not appear in the claims. Applying the requisite analysis of law and fact, I con- clude that the ’853 patent claims at issue would have been obvious in view of Chardon, because the methods described in the claims and the prior art are substantially identical and serve the same purpose and use. I respectfully dissent from my colleagues’ contrary ruling.