IP Law Daily, PATENT—Fed. Cir.: Multiple claims of Roku's universal remote programming patent properly invalidated; validity finding for the surviving claim remanded, (Jun 17, 2025)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

PTAB correctly found several claims obvious over prior art but erred by failing to address the petitioner’s obviousness argument for the sole surviving claim.

The U.S. Court of Appeals for the Federal Circuit affirmed in part, vacated in part, and remanded a Patent Trial and Appeal Board (PTAB) decision that invalidated most claims of Roku, Inc.’s universal remote programming patent. The Federal Circuit upheld the PTAB’s determination that multiple claims of Roku’s remote programming patent were unpatentable as obvious over the RadioShack Phone Up 4 Remote Control Owner’s Manual (“RadioShack”). Additionally, the appellate court vacated and remanded the PTAB’s validity finding on one claim for failure to address an argument raised by the IPR petitioner regarding a key feature disclosed in one of the prior art references (Roku, Inc. v. Universal Electronics, Inc., Nos. 24-1188, 24-1241 (Fed. Cir. Jun. 17, 2025)).

Background. The appellant, Roku, Inc., is a leading provider of streaming devices and smart TV platforms known for integrating content delivery with user-friendly device management. The cross-appellant, Universal Electronics, Inc. (UEI), along with its affiliated companies across Mexico, Brazil, the Netherlands, and China, manufactures and distributes universal remote controls and related technologies.

The patent at issue, U.S. Patent No. 8,378,875 (the ’875 patent), is directed to simplified programming methods for universal remotes. It covers techniques for entering a configuration mode using a keyboard, scanning through code sets stored in memory, and testing them iteratively until a working set is found.

UEI filed the IPR petition asserting that dependent claims 1–5, 8–10, and 14 of the ’875 patent were obvious over the RadioShack user manual. It separately alleged that independent claim 11 was obvious over a combination of Wouters (WO 2003/083801) and Verzulli (WO 2000/070577). The PTAB found that the RadioShack manual was publicly accessible and held that claims 1–5, 8–10, and 14 were unpatentable as obvious in light of it. The Board concluded that the claimed setup methods lacked inventive distinction over the prior art. However, the PTAB upheld claim 11, finding that UEI had not shown it would have been obvious over the combination of Wouters and Verzulli. Roku appealed the Board’s reliance on RadioShack as prior art and its claim constructions. UEI cross-appealed the validity finding on claim 11.

Public accessibility of RadioShack. The Federal Circuit agreed with the PTAB that the RadioShack manual qualified as a printed publication under 35 U.S.C. § 102. Citing Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765 (Fed. Cir. 2018), the court held that the manual, posted on RemoteCentral.com, a known resource for remote control information, was accessible to persons skilled in the art who exercised reasonable diligence. The site was widely recognized, cited by major publications, and structured by remote control brands. The court distinguished Acceleration Bay and Samsung Elecs. Co. v. Infobridge Ptd. Ltd., 929 F.3d 1363 (Fed. Cir. 2019), noting that unlike the undifferentiated repositories in those cases, RemoteCentral.com provided subject matter-specific organization.

Claim construction for dependent claims. Roku challenged the Board’s constructions of claims 2, 4, 8, and 10, arguing that they improperly allowed for user input during code scanning or deviated from the claim language.

On claim 2, which describes iteration until user approval or exhaustion of code sets, Roku asserted that any user input should end the iteration. The court disagreed, affirming the Board's finding that user input signals approval but does not conflict with iteration. On claim 4, which describes testing remote control code sets and checking for user reaction, the court rejected Roku's view that the "additional testing" step had to occur within the main iteration loop. It found no such limitation in the claim language.

Claim 8 recites a “numbering convention” used to distinguish identifiers. The court affirmed that the term did not require a prefix-based distinction, as Roku argued, and upheld the Board’s broader interpretation. Finally, with regard to claim 10, which relates to software instructions stored on a non-transitory medium, the court rejected Roku’s assertion that the processor alone must execute all steps. The Board reasonably interpreted the claim as encompassing user input, given the processor’s limited capability to perform the full setup procedure independently.

Obviousness findings affirmed. Having found that RadioShack qualified as prior art and upholding the Board's claim constructions, the court affirmed the PTAB's conclusion that claims 1–5, 8–10, and 14 were unpatentable as obvious.

Remand on claim 11. The Federal Circuit vacated the Board's ruling that UEI failed to prove claim 11 obvious over Wouters and Verzulli. Claim 11 describes combining correct working codes into a custom configuration and installing it for use. UEI argued that Wouters disclosed the reinstallation of previously selected code sets via a "fixer" function, which supported obviousness. However, the PTAB's decision was silent on this argument.

Although UEI had not quoted the relevant portion of Wouters in its initial petition, it raised the issue in later briefings and at oral argument without objection. The court held that this silence precluded judicial review. Citing Timken U.S. Corp. v. United States, 421 F.3d 1350 (Fed. Cir. 2005), it remanded the matter for the Board to address UEI’s argument and determine whether reinstallation functionality renders claim 11 unpatentable.

Related ITC appeal dismissed. In a companion appeal involving the same patent, the Federal Circuit dismissed as moot Roku’s challenge to an International Trade Commission (ITC) ruling under Section 337 of the Tariff Act of 1930. The ITC had determined that Roku failed to meet the domestic industry requirement and that claim 10 of the ’875 patent was invalid. Roku acknowledged that if the PTAB’s invalidity ruling was affirmed, the ITC appeal would no longer be live. Because the Federal Circuit affirmed the PTAB’s decision on claim 10 in the present appeal, it held that the ITC appeal was moot and dismissed it accordingly (Roku, Inc. v. Int’l Trade Comm’n, No. 23-1317 (Fed. Cir. June 17, 2025)).

The Cases are Nos. 24-1188, 24-1241 and No. 23-1317.

Judge: Lourie, A.

Attorneys: Jonathan D. Baker (Dickinson Wright PLLC) for Roku, Inc. Thomas W. Davison (Alston & Bird LLP) for Universal Electronics, Inc., Gemstar Technology (Qinzhou) Co. Ltd., Gemstar Technology [Yangzhou] Co. Ltd., C.G. Development Ltd., Universal Electronics BV, CG México Remote Controls, S. de R.L. de C.V., and UEI Brasil Controles Remotos Ltda. Houda Morad, U.S. Attorney's Office, for International Trade Commission.

Companies: Roku, Inc.; Universal Electronics, Inc.; Gemstar Technology (Qinzhou) Co. Ltd.; Gemstar Technology [Yangzhou] Co. Ltd.; C.G. Development Ltd.; Universal Electronics BV; CG México Remote Controls, S. de R.L. de C.V.; UEI Brasil Controles Remotos Ltda

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