Universal Electronics, Inc. v. Roku, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
UNIVERSAL ELECTRONICS, INC.,
Appellant
v.
ROKU, INC.,
Appellee
______________________
2024-1856
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
01289.
______________________
Decided: May 13, 2026
______________________
BENJAMIN G ILFORD , Greenberg Traurig LLP, Chicago,
IL, argued for appellant. Also represented by G ARY R.
JAROSIK , J AMES J. LUKAS , JR.
SCOTT ANTHONY M CK EOWN , Wolf, Greenfield & Sacks,
PC, Washington, DC, argued for cross-appellant. Also rep-
resented by ELIZABETH D IM ARCO ; JOHN W. CUSTER, Bos-
ton, MA.
______________________
Case: 24-1856 Document: 59 Page: 1 Filed: 05/13/2026

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UNIVERSAL ELECTRONICS , INC. v. ROKU, INC. 2
Before PROST, SCHALL, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
Universal Electronics, Inc. appeals the final written de-
cision of the Patent Trial and Appeal Board determining
that claims 1–6, 12, and 15–18 of U.S. Patent No. 9,847,083
are unpatentable under 35 U.S.C. § 103 in view of prior art
asserted in an inter partes review petition filed by Roku,
Inc. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
On appeal, UEI challenges the Board’s determination that
the challenged claims of the ’083 patent would have been
obvious based on the construction of the term “the provi-
sioned codeset record comprising protocol and formatting
information.” For the following reasons, we affirm the
Board’s decision.
I
The sole issue on appeal is whether the Board erred in
its construction of the term “the provisioned codeset record
comprising protocol and formatting information.”1 Claim
construction is ultimately a question of law reviewed de
novo. Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 808
(Fed. Cir. 2021). “When construing claim terms, we first
look to, and primarily rely on, the intrinsic evidence, in-
cluding the claims themselves, the specification, and the
prosecution history of the patent . . . .” Sunovion Pharms.,
Inc. v. Teva Pharms. USA, Inc., 731 F.3d 1271, 1276
(Fed. Cir. 2013) (first citing Phillips v. AWH Corp.,
415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc); and then
citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)). “We review any determinations in-
volving extrinsic evidence for substantial evidence . . . .” In
1 Roku originally filed a cross-appeal, Roku, Inc.
v. Universal Electronics, Inc., No. 24-1916, but withdrew it
after we issued an order asking the parties to address
whether Roku had Article III standing. ECF Nos. 55, 56.
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UNIVERSAL ELECTRONICS , INC. v. ROKU, INC. 3
re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1340 (Fed. Cir. 2016)
(citation omitted).
UEI argues that the proper construction of “the provi-
sioned codeset record comprising protocol and formatting
information” requires all the protocol and formatting infor-
mation to be “contained and stored in the provisioned
codeset record itself” and “used for transmitting a com-
mand communication.” Appellant’s Br. 17–19, 27. UEI
also argues that the proper construction of the term “infor-
mation” in “protocol and formatting information” is “a set
of procedures.” Appellant’s Br. 19. UEI contends that un-
der the proper construction of the term, the asserted prior
art does not disclose this claim limitation because the as-
serted prior art discloses a codeset record that contains a
signal type (e.g., IR signal), which UEI contends is not “pro-
tocol and formatting information.” Appellant’s Br. 27–34.
The Board considered and rejected UEI’s proposed con-
struction. In its analysis, the Board determined that there
was “no basis to replace the term ‘information’ in ‘protocol
and formatting information’ with ‘a set of procedures.’”
J.A. 20. Based on the intrinsic and extrinsic evidence, the
Board construed “protocol and formatting information” to
mean “information needed to transmit a signal from one
device to another in a way that the receiving device can
make sense of and use the signal.” J.A. 21. After reviewing
the parties’ arguments and the intrinsic and extrinsic evi-
dence, we agree with the Board’s construction for the fol-
lowing reasons.
First, the claim language is broad, stating only that
some but not all “protocol and formatting information” be
contained in the codeset record. Claim 1 of the ’083 patent
is representative, and the relevant limitation states: “the
provisioned codeset record comprising protocol and format-
ting information.” U.S. Patent No. 9,847,083 col. 11 ll. 59–
60. The claim limitation only states that the provisioned
codeset record comprises the protocol and formatting
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UNIVERSAL ELECTRONICS , INC. v. ROKU, INC. 4
information. Nothing in the claim language requires that
all the protocol and formatting information be contained in
the codeset record. Additionally, the claim language does
not define or limit the protocol and formatting information
to a “set of procedures.”
Nor does the specification suggest that all of the proto-
col and formatting information must be in the codeset rec-
ord. The specification states:
[E]ach [codeset] record . . . may comprise a unique
codeset identity number, a block of protocol and for-
matting information . . . which may describe the
physical protocol requirements for transmitting
the command data elements which comprise this
codeset, including for example items such as car-
rier frequency, bit encoding, data frame size and
structure, appliance address, parity or CRC re-
quirements, etc.
Id. at col. 10 ll. 47–54. The language in the paragraph
above only states that the codeset record “may comprise . . .
protocol and formatting information,” indicating that some
protocol and formatting information may be stored else-
where. However, there is no language in the paragraph
above or elsewhere in the specification that requires that
all the protocol and formatting information be stored in the
codeset record. Additionally, like the claim language, the
specification does not limit “protocol and formatting infor-
mation” to a “set of procedures.” The specification only
states that the “protocol and formatting information . . .
may describe the physical protocol requirements for trans-
mitting the command data elements which comprise this
codeset.” Id. at col. 10 ll. 49–51 (emphasis added). The
specification lists exemplary “protocol and formatting in-
formation”—including carrier frequency, bit encoding,
etc.—but these examples likewise do not limit the term to
a “set of procedures.”
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UNIVERSAL ELECTRONICS , INC. v. ROKU, INC. 5
Turning to the extrinsic evidence, UEI argues that the
Board’s construction is inconsistent with the testimony of
Roku’s expert, Mr. McNair. Appellant’s Br. 23–24. But
Mr. McNair simply testified that the phrase “protocol and
formatting information” may include “physical protocol re-
quirements for transmitting the command data.”
J.A. 2423–24 (McNair Dep. 32:8–33:21). Additionally,
while Mr. McNair testified that the standard meaning of
“protocol” is “a set of procedures,” Mr. McNair did not sug-
gest or admit that “protocol and formatting information” as
recited in the claim refers to a “set of procedures.”
J.A. 2427 (McNair Dep. 36:10–21). We see no error in the
Board’s finding that Mr. McNair’s testimony did not sup-
port UEI’s proposed construction.
We therefore adopt the Board’s construction of “the
provisioned codeset record comprising protocol and format-
ting information.” Because we adopt the Board’s construc-
tion, we affirm the Board’s determination that the
challenged claims of the ’083 patent would have been obvi-
ous at the time of the invention.
II
We have considered UEI’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we af-
firm the Board’s decision that the challenged claims of the
’083 patent would have been obvious.
AFFIRMED
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