Universal Electronics v. Roku — Federal Circuit Affirms PTAB Finding That Remote Control Patent Claims Are Obvious

Background

Universal Electronics, Inc. (UEI) owns U.S. Patent No. 9,847,083, which covers technology for universal remote controls — specifically, a system where a remote control device stores “codeset records” containing protocol and formatting information used to communicate with various consumer electronics devices. Roku filed an inter partes review (IPR) petition challenging claims 1–6, 12, and 15–18 of the patent.

The central dispute was the meaning of “the provisioned codeset record comprising protocol and formatting information.” UEI argued for a narrow construction: the term “information” should mean “a set of procedures,” and all protocol and formatting information must be contained within the codeset record itself. Roku and the Patent Trial and Appeal Board adopted a broader reading.

UEI had previously been before the Federal Circuit in a related case involving a different patent against Roku (see Universal Electronics v. Roku — Federal Circuit Affirms PTAB Invalidation of Voice-Input Remote Control Patent).

The Court’s Holding

The Federal Circuit affirmed the PTAB’s decision, adopting the Board’s construction of “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.” Under this construction, the prior art rendered the challenged claims obvious.

Judge Stoll, writing for the panel, found that neither the claim language nor the specification supported UEI’s proposed narrow construction. The claims use open-ended “comprising” language, which only requires that some protocol and formatting information be in the codeset record — not that all of it must be. The specification similarly uses permissive language (“may comprise”) and lists examples such as “carrier frequency, bit encoding, data frame size and structure” that are types of information, not “procedures.”

UEI’s reliance on testimony from Roku’s own expert was also unavailing. While Mr. McNair testified that the standard meaning of “protocol” alone could be “a set of procedures,” he did not agree that the full phrase “protocol and formatting information” as used in the claims meant “a set of procedures.” The court found no error in the Board’s evaluation of this testimony.

Key Takeaways

• “Comprising” language works both ways. While “comprising” is open-ended and does not exclude additional elements, it also means a patent holder cannot later insist that a claim requires all of a particular type of information to be stored in a single location when the claim only says the location “comprises” that information.
• Expert testimony about isolated words is insufficient. Testimony that a single word in a multi-word claim term has a specific dictionary meaning does not dictate the construction of the full phrase in context. Courts look at how the complete term is used in the claims and specification.
• Specification examples illustrate, not limit. When a specification provides examples of what a claim term “may” include, those examples inform the term’s scope without narrowing it to a specific subset.

Why It Matters

This decision continues the Federal Circuit’s pattern of upholding PTAB invalidity findings in the consumer electronics space, where broad claim language in remote control and device communication patents is increasingly vulnerable to prior art challenges. For companies in the smart home and streaming device market, this ruling provides further clarity that codeset-related patent claims with open-ended “comprising” language will be construed broadly — making them both harder to enforce against competitors and more susceptible to IPR challenges based on prior art that discloses similar signal-transmission information, even if stored differently.