IP Law Daily, PATENT—Fed. Cir.: PTAB’s invalidation of remote control technology patent claims affirmed, (May 15, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

Patent Trial and Appeal Board (PTAB) did not err in its construction of the term “the provisioned codeset record comprising protocol and formatting information.”

In a non-precedential disposition, the U.S. Court of Appeals for the Federal Circuit affirmed the PTAB’s decision that invalidated key claims of a patent covering remote control technology in an inter partes review (IPR) brought by Roku, Inc. The Federal Circuit agreed with the PTAB’s construction of the term “the provisioned codeset record comprising protocol and formatting information” and concluded that the challenged claims of the patent were unpatentable as obvious (Universal Electronics, Inc. v. Roku, Inc., No. 24-1856 (Fed. Cir. May 13, 2026)).

Universal Electronics, Inc. (UEI) owns U.S. Patent No. 9,847,083 (’083 patent) titled “System and method for voice actuated configuration of a controlling device,” which relates to technology for configuring universal remotes or controlling devices using voice commands. Roku, Inc. (Roku) filed an IPR petition before the PTAB challenging the ’083 patent. In its final written decision of the PTAB determined that claims 1–6, 12, and 15–18 of the ’083 patent were unpatentable under 35 U.S.C. § 103 in view of prior art asserted in an IPR petition filed by Roku, Inc. On appeal, UEI challenged the PTAB’s determination that the challenged claims of the ’083 patent would have been obvious based on the construction of the term “the provisioned codeset record comprising protocol and formatting information.”

UEI argued that the proper construction of “the provisioned codeset record comprising protocol and formatting information” required all the protocol and formatting information to be “contained and stored in the provisioned codeset record itself” and “used for transmitting a command communication.” UEI also argued that the proper construction of the term “information” in “protocol and formatting information” is “a set of procedures.” UEI contended that, under the proper construction of the term, the asserted prior art does not disclose this claim limitation because the asserted prior art discloses a codeset record that contains a signal type (e.g., IR signal), which UEI contends is not “protocol and formatting information.”

The Federal Circuit noted that the PTAB considered and rejected UEI’s proposed construction. In its analysis, the PTAB determined that there was “no basis to replace the term ‘information’ in ‘protocol and formatting information’ with ‘a set of procedures.’” Based on the intrinsic and extrinsic evidence, the PTAB 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.”

The Federal Circuit noted that Claim 1 of the ’083 patent is representative, and the relevant limitation states: “the provisioned codeset record comprising protocol and formatting information.” The claim limitation only states that the provisioned codeset record comprises the protocol and formatting 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.” Therefore, the Federal Circuit concluded that the claim language is broad, stating only that some but not all “protocol and formatting information” be contained in the codeset record.

Next, the Federal Circuit noted that the specification does suggest that all of the protocol and formatting information must be in the codeset record. Additionally, like the claim language, the specification does not limit “protocol and formatting information” to a “set of procedures.” The specification only states that the protocol and formatting information may describe the physical protocol requirements for transmitting the command data elements, which comprise this codeset. The specification lists exemplary “protocol and formatting information”—including carrier frequency, bit encoding, etc.—but these examples likewise do not limit the term to a “set of procedures.”

Lastly, UEI argued that the PTAB’s construction is inconsistent with the testimony of Roku’s expert. However, the Federal Circuit found that Roku’s expert simply testified that the phrase “protocol and formatting information” may include “physical protocol requirements for transmitting the command data.” Additionally, while Roku’s expert testified that the standard meaning of “protocol” is “a set of procedures,” the expert did not suggest or admit that “protocol and formatting information” as recited in the claim refers to a “set of procedures.” Therefore, the Federal Circuit found no error in the PTAB’s finding that Roku’s expert’s testimony did not support UEI’s proposed construction.

Thus, the Federal Circuit agreed with the PTAB’s construction of the term “the provisioned codeset record comprising protocol and formatting information.” Accordingly, the PTAB’s determination that the challenged claims of the ’083 patent would have been obvious at the time of the invention was affirmed.

The Case is No. 24-1856.

Judge: Stoll, K.

Attorneys: James J. Lukas (Greenberg Traurig LLP) for Universal Electronics, Inc. Scott Anthony Mckeown (Wolf, Greenfield & Sacks, PC) for Roku, Inc.

Companies: Universal Electronics, Inc.; Roku, Inc.

Cases: Patent FedCirNews USPTO