Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
Roku, Inc. v. International Trade Commission, Appeal No. 2022-1386 (Fed. Cir. Jan. 19, 2024)
In an appeal from the International Trade Commission (the “Commission”), the Federal Circuit addressed a number of findings underlying the Commission’s order banning Roku, Inc. (“Roku”) from importing certain devices that infringe U.S. Patent No. 10,593,196, owned by intervener Universal Electronics, Inc. (“Universal”). The Federal Circuit found that the Commission did not err in making any of the findings at issue and affirmed the order.
The ’196 patent covers a universal controller for communicating with multiple electronic devices (such as smart TVs and DVD players) that are otherwise incompatible with each other. The universal control receives wireless signals from either a remote control or an app, then issues commands to the various electronic devices a user is attempting to operate. The patent’s teachings are incorporated into a technology called “QuickSet,” which Universal incorporated into multiple smart TVs. Roku creates various streaming TV technologies, including the Roku streaming channel and the Roku stick. Universal filed a complaint with the Commission against Roku for importing certain TV products that Universal claimed infringed the ’196 patent. An administrative law judge found that Roku was importing infringing articles and the Commission affirmed and found in relevant part that: (1) Universal had ownership rights to assert the ’196 patent; (2) Universal satisfied the economic prong of the domestic industry requirement under subparagraph (a)(3)(C) of 19 U.S.C. § 1337 (“Section 337”); and (3) the asserted claims were not invalid as obvious. Roku’s appeal centered on these three aspects of the Commission’s final determination.
ALSO THIS WEEK
CyWee Group Ltd. v. ZTE (USA), Inc. and LG Electronics Inc., Appeal No. 2021-1855 (Fed. Cir. Jan. 18, 2024)
In this case, the Federal Circuit addressed limitations on the role of an otherwise time-barred petitioner joined to an existing inter partes review, specifically within the context of opposing a patentee’s motion to amend its claims. On the facts presented, the Court found the Board had not erred in permitting such a secondary petitioner to oppose the patentee’s motion to amend.
Appellee ZTE initially challenged CyWee’s U.S. Patent No. 8,441,438 directed to a 3D pointer tool that could register its position in a virtual space. Appellee LG Electronics was time-barred from filing its own IPR petition against the ’438 patent, but was permitted to join ZTE’s IPR “as a passive ‘understudy,’” on the condition that it would “not assume an active role unless [ZTE] ceases to participate in the instated IPR.”
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.
Jason A. Wrubleski, Shareholder