Universal Electronics, Inc. v. Roku, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
UNIVERSAL ELECTRONICS, INC.,
Appellant
v.
ROKU, INC.,
Appellee
______________________
2024-1426
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
00943.
______________________
Decided: April 10, 2026
______________________
J AMES J. L UKAS , J R., Greenberg Traurig LLP, Chicago,
IL, argued for appellant. Also represented by BENJAMIN
G ILFORD; MICHAEL N ICODEMA , West Palm Beach, FL.
SCOTT ANTHONY MCK EOWN, Wolf, Greenfield & Sacks,
PC, Washington, DC, argued for appellee. Also repre-
sented by ELIZABETH D IMARCO.
______________________
Before CUNNINGHAM , L INN, and STARK, Circuit Judges.
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 2
CUNNINGHAM , Circuit Judge.
Universal Electronics Inc. (“UEI”) appeals a final writ-
ten decision of the Patent Trial and Appeal Board (“Board”)
in an inter partes review brought by Roku, Inc. (“Roku”).
The Board determined that claims 1–7, 9–13, 15, and 16 of
U.S. Patent No. 10,930,276 (“the ’276 patent”) are un-
patentable as obvious.1 Roku, Inc. v. Universal Elecs., Inc.,
No. IPR2022-00943, 2023 WL 8242606, at *17 (P.T.A.B.
Nov. 28, 2023) (“Decision”). For the reasons below, we af-
firm.
I. BACKGROUND
Because the parties are familiar with the general back-
ground facts of this case, we do not repeat them here.
Claim 1 of the ’276 patent recites:
1. A method for controlling a controllable appli-
ance resident in an environment which includes a
device adapted to receive speech input, comprising:
using a first sound data captured from the
environment in which the device is operat-
ing to establish a noise threshold;
receiving at the device a speech input;
using a second sound data captured from
the environment in which the device is op-
erating at the time the speech input is re-
ceived by the device to determine a noise
level;
1 The Board also determined that claims 8 and 14 of
the ’276 patent are not unpatentable as obvious. Decision
at *17. Those claims are not at issue in this appeal. See
ECF No. 1-2, at 2; Appellant’s Br. 19 (“This [c]ourt should
reverse the Board’s obviousness conclusion for each of the
claims 1–7, 9–13, and 15–16 of the ’276 patent.”).
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 3
determining if the determined noise level is
greater than the established noise thresh-
old; and
in direct response to it being determined
that the determined noise level is greater
than the established noise threshold, caus-
ing one or more commands to be automati-
cally issued to the controllable appliance to
thereby cause the controllable appliance to
transition from a first state having a first
volume level to a second state having a sec-
ond volume level that is less than the first
volume level.
’276 patent col. 22 ll. 36–56.
In its final written decision, the Board determined that
Roku demonstrated by a preponderance of the evidence
that claims 1–7, 9–11, 13, 15, and 16 are unpatentable as
obvious over Hart-787,2 Fu,3 and Rosenberg,4 and claim 12
is unpatentable as obvious over Hart-787, Fu, Rosenberg,
and Hart-286.5 Decision at *17.
UEI timely appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
II. STANDARD OF REVIEW
“We review the Board’s legal conclusions de novo and
its fact findings for substantial evidence.” Game & Tech.
Co. v. Wargaming Grp. Ltd., 942 F.3d 1343, 1348 (Fed. Cir.
2019). “Whether a claimed invention is unpatentable as
obvious is a question of law that is reviewed de novo, based
on underlying findings of fact reviewed for substantial
2 U.S. Patent No. 9,251,787 (“Hart-787”).
3 U.S. Patent App. Pub. No. 2017/0126192 (“Fu”).
4 U.S. Patent No. 9,509,269 (“Rosenberg”).
5 U.S. Patent No. 9,466,286 (“Hart-286”).
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 4
evidence.” Redline Detection, LLC v. Star Envirotech, Inc.,
811 F.3d 435, 449 (Fed. Cir. 2015). Whether a person of
ordinary skill in the art would have been motivated to com-
bine prior art references is a factual question that we re-
view for substantial evidence. Intel Corp. v. PACT XPP
Schweiz AG, 61 F.4th 1373, 1378 (Fed. Cir. 2023).
“Substantial evidence means such relevant evidence as
a reasonable mind might accept as adequate to support a
conclusion.” FanDuel, Inc. v. Interactive Games LLC,
966 F.3d 1334, 1343 (Fed. Cir. 2020) (internal quotation
marks and citation omitted). “The substantial evidence
standard . . . involves examination of the record as a whole,
taking into account evidence that both justifies and de-
tracts from an agency’s decision.” OSI Pharms., LLC
v. Apotex Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019) (inter-
nal quotation marks and citation omitted).
III. D ISCUSSION
UEI argues that: (1) the Board improperly adopted
Roku’s proposed modification to Hart-787 in view of Fu and
Rosenberg that was advanced for the first time in Roku’s
reply, Appellant’s Br. 27–34; (2) the Board’s finding that a
person of ordinary skill in the art would have been moti-
vated to modify Hart-787 and Fu in view of Rosenberg is
legally erroneous and not supported by substantial evi-
dence, id. at 34–37; and (3) the Board’s finding that a per-
son of ordinary skill in the art would have been motivated
to modify Hart-787 in view of Fu is legally erroneous and
not supported by substantial evidence, id. at 37–43. We
address each argument in turn.
A.
First, UEI argues that Roku’s proposed modification to
Hart-787 in view of Fu and Rosenberg “was not included in
Roku’s Petition and [was] advanced for the first time in
Roku’s Reply,” and the Board’s adoption of that modifica-
tion “is not supported by substantial evidence and is in
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 5
violation of the APA and 35 U.S.C. § 312.” Appellant’s
Br. 27–28. Specifically, UEI argues that Roku’s petition
“did not propose using a predetermined/preset threshold in
Hart-787 as modified by F[u] and Rosenberg.” Id. at 28–
29. We disagree.
The Board did not adopt a theory that was raised for
the first time in Roku’s reply brief before the Board. Roku’s
petition proposed modifying Hart-787 with Fu’s predeter-
mined threshold, J.A. 136–37, and then further modifying
the Hart-787 and Fu combination such that the threshold
is established using environmental noise level as taught in
Rosenberg, J.A. 137–38. Specifically, Roku argued that,
although Hart-787 discloses an audio modification engine
that “may alter output audio in many ways,” “Hart-787
leaves it to a [person of ordinary skill in the art] to imple-
ment an appropriate method of determining when and how
to attenuate audio,” J.A. 143–44, and “in the same field of
endeavor, F[u] and Rosenberg teach specifically advanta-
geous methods for voice-activated environments.”
J.A. 135. In its petition, Roku explained that Fu discloses
a “voice-controlled device,” “wherein the device adjusts the
audio output of a linked audio-producing device if the cap-
tured environmental sounds exceed[ ] a predetermined
threshold.” J.A. 135–36. Roku’s petition further argued
that a person of ordinary skill in the art would have found
it obvious to modify Hart-787 with Fu’s teaching of adjust-
ing volume based on comparison of a noise level to a prede-
termined threshold. J.A. 136; J.A. 144. The petition then
proposed “further modify[ing] the combination of Hart-787
and F[u] to apply a threshold determined according to an
environmental noise level, as disclosed by Rosenberg.”
J.A. 137–38 (emphasis added). The Board adopted the
same reasoning in its decision: “The Petition relies upon a
combination of elements of Hart-787 with the predeter-
mined threshold as taught in Fu and with establishing
such a threshold based on the operating environment of a
device as in Rosenberg.” Decision at *11. Accordingly, we
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 6
reject UEI’s argument that the Board adopted a modifica-
tion that was advanced for the first time in Roku’s reply.
Additionally, UEI argues that “Hart-787 as modified by
F[u] and Rosenberg fails to disclose, teach, or suggest claim
1 of the ’276 patent . . . under the theory actually advanced
in the Petition” because “the proposed combination fails to
perform the claimed method steps in order.” Appellant’s
Br. 32–33. Specifically, UEI argues that Rosenberg’s vol-
ume threshold is established after the device receives and
processes the user’s speech input, not before, as claimed.
Id. at 33–34. But, as the Board explained, the proposed
combination is “Fu’s teaching of an adjustment unit that
compares the volume of the ambient noise received to a pre-
determined threshold with Rosenberg’s teaching that such
a threshold may be determined based on the volume of an
ambient audio signal.” Decision at *11 (cleaned up). Thus,
the combination only uses Rosenberg’s teaching that a
threshold may be set based on volume, while relying on
teachings of other prior art for the usage of that threshold.
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (“Non-obviousness cannot be established by attack-
ing references individually where the rejection is based
upon the teachings of a combination of references.”). Ac-
cordingly, we see no reversible error in the Board’s finding
that UEI’s argument does not address the proposed combi-
nation. Decision at *11; see also J.A. 1609 at 57:8–13.
B.
Second, UEI argues that “the Board’s finding that a
[person of ordinary skill in the art] would have been moti-
vated to modify Hart-787 and F[u] in view of Rosenberg is
legally erroneous and is not supported by substantial evi-
dence because the Board’s sole identified rationale for mod-
ifying Hart-787 and F[u] in view of Rosenberg has no
bearing on, and is inconsistent with, Roku’s new, untimely
proposed modification to Hart-787 in view of F[u] and
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 7
Rosenberg which the Board improperly adopted in the De-
cision.” Appellant’s Br. 35. We disagree.
Substantial evidence supports the Board’s finding that
a person of ordinary skill in the art would have been moti-
vated to combine Rosenberg with Hart-787 and Fu. The
Board found that “the record supports a determination that
the Rosenberg technique is at least a suitable option for
providing [the advantage of adjusting to changing environ-
mental noise levels], and in fact, provides a threshold based
on the dynamic operating environment, unlike the preset
threshold of Hart-787 and Fu.” Decision at *13 (citing
J.A. 137–38, J.A. 148 (Roku’s petition); J.A. 831–32 ¶ 91,
J.A. 847 ¶ 108 (declaration from Roku’s expert)). The tes-
timony from Roku’s expert and disclosures of the refer-
ences support the Board’s finding. Specifically, Roku’s
expert opined that “Hart-787 left it to a user to deploy
known audio output volume adjustment techniques based
upon ambient noise volumes detected in real-time. J.A.
828 ¶ 88. “In the same field of endeavor, F[u] discloses a
voice-controlled device . . . with a microphone capturing
environmental sounds, wherein the device adjusts the au-
dio output of a wirelessly-linked audio-producing device if
the captured environmental sounds exceed[ ] a predeter-
mined threshold.” J.A. 828–29 ¶89 (citing J.A. 935–36
¶¶ 3, 24, 32; J.A. 938 ¶ 54). Roku’s expert further ex-
plained that “[a]djusting output audio when ambient noise
is greater (or less) than a predetermined threshold was
well-known in the art, and a person of ordinary skill in the
art would have understood that such a method of determin-
ing when to attenuate the volume of output audio advanta-
geously allows a user to set a threshold at a preferable
point . . . according to what the user desires, or a threshold
advantageous for the environment in which the device is
operating.” J.A. 830 ¶ 90. Accordingly, Roku’s expert
opined that a “person of ordinary skill in the art would have
been motivated to further modify the combination of
Hart-787 and F[u] to apply a threshold determined
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 8
according to an environmental noise level . . . as disclosed
by Rosenberg.” J.A. 831 ¶ 91; see also J.A. 958 col. 14 ll.
28–30 (Rosenberg teaching a method “wherein the volume
threshold is determined based on the volume of the ambi-
ent auto signal.”). Therefore, the Board’s motivation to
modify Hart-787 and Fu in view of Rosenberg is supported
by substantial evidence.
C.
Third, UEI argues that the Board legally erred with re-
spect to the motivation to modify Hart-787 in view of Fu
because the Board did not explain why a person of ordinary
skill in the art would have picked out Fu’s technique to im-
prove the signal-to-noise ratio (“SNR”) to replace
Hart-787’s techniques, Appellant’s Br. 40. Moreover, UEI
contends that the Board’s finding that a person of ordinary
skill in the art would have been motivated to modify Hart-
787 in view of Fu is not supported by substantial evidence
because Fu’s technique actually decreases the SNR. Id.
at 42.
Contrary to UEI’s argument, the Board did not commit
reversible error in finding a motivation to combine
Hart-787 and Fu. “Our caselaw is clear. It’s not necessary
to show that a combination is ‘the best option, [but] only
that it be a suitable option.’” Intel Corp. v. Qualcomm Inc.,
21 F.4th 784, 800 (Fed. Cir. 2021) (emphasis omitted)
(quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d
1186, 1197–98 (Fed. Cir. 2014)). Specifically, the Board ex-
plained that Roku demonstrated by a preponderance of the
evidence that Fu’s “technique to improve the SNR by ad-
justing volume based on an environmental noise threshold”
was a “suitable option to replace the techniques in
Hart-787.” Decision at *13. In other words, the Board ar-
ticulated a reason why a person of ordinary skill in the art
would be motivated to combine these prior art references.
In addition, the Board did not err in relying on our
precedent in Intel Corp. v. PACT XPP Schweiz AG,
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 9
61 F.4th 1373 (Fed. Cir. 2023). See Decision at *12. UEI
argues that “[h]ere, unlike the petition in Intel, the Board’s
decision and Roku’s Petition contain no evidence or analy-
sis demonstrating that both Hart-787 and F[u] addressed
the same known problem.” Appellant’s Br. 41. UEI mis-
reads our precedent. Intel does not require that each piece
of prior art in an asserted combination must be directed to
the same known problem but acknowledges that there is a
motivation to combine when there is a known technique
addressing a known problem and using prior art elements
based on their established functions. Intel, 61 F.4th
at 1379. Intel further reiterates the well-known principle
that “any need or problem known in the field of endeavor
at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner
claimed.” Id. at 1379 (quoting KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 420 (2007)) (cleaned up).
Roku’s expert characterized the problem as “[e]nviron-
mental noise[, which] is . . . undesirable because it may in-
terfere with a user’s enjoyment of audio produced by a
device such as a television.” J.A. 776 ¶ 47. Roku’s expert
and Roku’s petition explained that Fu discloses this prob-
lem, and in view of Fu’s “teaching of adjusting the volume
of audio output based upon the volume level of environmen-
tal noise with thresholds, a [person of ordinary skill in the
art] would have been motivated and found it obvious to
modify Hart-787’s device to include automatically adjust-
ing the audio output volume of a wirelessly-linked audio
producing device” when the ambient noise level is above a
threshold. J.A. 136; J.A. 829 ¶ 89 (quoting J.A. 935 ¶ 3).
In other words, Roku’s expert and petition explained that
there was a known problem; Fu helped to address that
problem; and combining the teachings of Fu and Hart-787
was not beyond the skill of a person of ordinary skill in the
art. See Intel, 61 F.4th at 1381. Because the Board cor-
rectly relied on our precedent in Intel, we see no legal error
in the Board’s analysis. See Decision at *12 (“That [two
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 10
prior art references] address the same problem and that
[one of the references] was a known way to address that
problem is precisely the reason that there’s a motivation to
combine under KSR and our precedent.” (alteration in orig-
inal) (quoting Intel, 61 F.4th at 1380–81)).
Furthermore, substantial evidence supports the
Board’s finding that Fu’s technique to improve SNR is a
suitable option to replace the techniques in Hart-787. De-
cision at *13. The Board relied on Roku’s petition, where
Roku argued that “Hart-787 left it to a user to deploy
known audio output volume adjustment techniques based
upon ambient noise volumes detected in real-time,” and
that a person of ordinary skill in the art would have used
Fu, in the same field of endeavor, in order to “achieve
Hart-787’s goal of improving the SNR, while not lowering
the volume of the wirelessly-linked audio-producing device
in a situation where it may be unnecessary to do so.” Id.
(quoting J.A. 135–36). Roku’s expert declaration and the
disclosures in Fu support these findings. See, e.g., J.A. 814
¶ 81; J.A. 826–30 ¶¶ 88–89; J.A. 840–44 ¶¶ 101–06;
J.A. 935–36 ¶¶ 3, 24, 32; J.A. 938 ¶ 54. Therefore, the
Board’s finding that a person of ordinary skill in the art
would have been motivated to modify Hart-787 in view of
Fu is supported by substantial evidence.
IV. CONCLUSION
We have considered UEI’s remaining arguments and
find them unpersuasive. For the above reasons, we affirm.
AFFIRMED
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