Roku, Inc. v. Universal Electronics, Inc., Appeal No. 2022-1058 (Fed. Cir. Mar. 31, 2023)
In this week’s Case of the Week, the Federal Circuit affirmed the U.S. Patent Trial and Appeal Board’s (PTAB’s) final written decision finding various claims had not been proven unpatentable as obvious. Appellee Universal Electronics’ U.S. Patent No. 9,716,853 (the ’853 patent) “relates to universal remotes and, more specifically, to a universal control engine (UCE) that facilitates communication between a controlling device (i.e., a remote) and intended target applications (e.g., a TV, a DVD player, a sounds system, etc.).”
Roku filed a petition for inter partes review of several claims of the ’853 patent, asserting the same would have been obvious in light of prior art references including a patent application to Chardon. The case turned on the narrow issue of whether Chardon discloses “a listing comprised of at least a first communication method and a second communication method different than the first communication method” as recited in each challenged claim. Roku argued that Chardon creates a database of command codes, “some of which are formatted for transmission according to a first communication method and some of which are formatted for transmission according to a second communication method.” As such, Roku argued Chardon meets the claimed limitations because it describes a listing of at least a first and a second communication method: “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 equated a first communication method with CEC command codes and a second communication method different from the first communication method with IR command codes, it failed to show that one of ordinary skill would have understood that these were the same things.” In reaching this conclusion, the Board emphasized Roku’s failure to cite an analysis or expert testimony, and relied on Universal’s expert testimony and the fact that the ’853 patent expressly distinguishes between command codes and the communications methods. The Board thus found 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 appealed.
On appeal, the Court affirmed the Board’s final written decision, finding its factual findings were supported by substantial evidence. The Court acknowledged that, on appeal, Roku advanced a reasonable argument for why “Chardon’s protocol-specific listing unambiguously indicat[ed] both the command code and communications protocol (i.e., communication method) to be used in transmission.” However, the Court found that Universal persuasively argued that Roku failed to show that the Board’s factual finding was unsupported by substantial evidence. Specifically, the evidence established that (i) Roku’s argument contradicts the fact that the ’853 patent expressly distinguishes between command codes and communication methods; (ii) Universal’s expert testimony was persuasive, especially in comparison to Roku’s “vague and unexplained testimony”; and (iii) Roku neglected to dispute the basic fact that a command code is different than a communication method. Thus, the Court explained that “[t]he Board, in its role as factfinder in the first instance, was entitled to weigh the evidence in the record, including [the above evidence] against Roku.” And while the Court “could well have decided the factual dispute at hand differently than the Board did, it is not the province of [the Court] to do so.” Because the Board’s factual finding was supported by substantial evidence, the Court affirmed the Board’s decision that Roku did not establish that the challenged claims would have been obvious.
Circuit Judge Newman dissented, arguing that the majority opinion was procedurally flawed. Specifically, Newman explained that “[c]laim construction and obviousness are questions of law, whose underlying factual components may or may not be disputed.” Newman further explained that “[w]hen disputed, factual findings of the PTAB are reviewed for support by substantial evidence . . . whereas the ultimate questions of law remain for de novo determination on appeal.” Thus, Newman took issue with the fact that the majority “declined to review the ultimate legal question of validity [of the ’853 patent] and instead review[ed] solely the Board’s specific fact-finding discussed therein.”
The opinion can be found here.
By Annie White
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Philip Morris Products S.A. v. International Trade Commission, Appeal No. 2022-1227 (Fed. Cir. Mar. 31, 2023)
The Federal Circuit affirmed a Section 337 decision by the International Trade Commission (“ITC”) barring the importation and sale of Philip Morris’s IQOS line of “heat-not-burn” tobacco products as infringing complainant R.J. Reynolds’ U.S. Patent Nos. 9,901,123 and 9,930,915. Of note were Philip Morris’s arguments concerning the Food and Drug Administration’s grant of pre-market and “modified-risk” tobacco product applications for the IQOS products, which implicated a determination that the products promoted public welfare insofar as they provided an aid in ceasing use of combustible cigarettes. The Federal Circuit rejected Philip Morris’s arguments that the ITC’s orders were against the public interest, finding that the ITC reasonably reviewed public interest evidence including FDA statements that the products still would be expected to cause some harm to individual consumers. The Court also found that the ITC satisfied its duty under 19 U.S.C. § 1337(b)(2) to “consult with” the Department of Health and Human Services (including FDA) by publishing a Notice of Investigation in the Federal Register, serving letters enclosing the Notice on HHS personnel, and considering information originating with FDA. The Court found that Philip Morris had forfeited any argument that the ITC should have done more by failing to raise it prior to a motion to stay the ITC’s orders pending the instant appeal.
The Court also rejected Philip Morris’s argument that R.J. Reynolds’ own VUSE and Solo products could not support the “domestic industry” requirement because they had not received FDA authorization at the time the complaint was filed with ITC; affirmed ITC’s determination that Philip Morris had not shown the asserted claims of the ’123 patent to be obvious; affirmed ITC’s determination that the ’915 patent was infringed; and affirmed ITC’s determination that evidence of an allegedly invalidating public use of the invention claimed in the ’915 patent was insufficiently corroborated. The Court thus affirmed the ITC’s decision in its entirety.
The opinion can be found here.
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This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.
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