Case: 21-1992 Document: 43 Page: 1 Filed: 08/18/2023
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`UNIVERSAL ELECTRONICS, INC.,
`Appellant
`
`v.
`
`ROKU, INC.,
`Appellee
`______________________
`
`2021-1992, 2021-1993, 2021-1994
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2019-
`01612, IPR2019-01613, IPR2019-01614.
`______________________
`
`Decided: August 18, 2023
`______________________
`
`MICHAEL ANTHONY NICODEMA, Greenberg Traurig
`LLP, West Palm Beach, FL, argued for appellant. Also rep-
`resented by BENJAMIN GILFORD, JAMES J. LUKAS, JR., Chi-
`cago, IL.
`
` JON WRIGHT, Sterne Kessler Goldstein & Fox, PLLC,
`Washington, DC, argued for appellee. Also represented by
`RICHARD CRUDO, LESTIN KENTON; JONATHAN DANIEL
`BAKER, Dickinson Wright PLLC, Mountain View, CA;
`MICHAEL DAVID SAUNDERS, Austin, TX.
`
`

`

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`UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
`
` ______________________
`
`Before NEWMAN, REYNA, and STOLL, Circuit Judges.
`NEWMAN, Circuit Judge.
`This is a consolidated appeal of three Inter Partes Re-
`view (“IPR”) petitions filed by Roku, Inc., for three patents
`derived from the same parent application and owned by
`Universal Electronics, Inc. (“UEI”). The Patent Trial and
`Appeal Board (“Board”) held that claims 1–4, 6, 8, 9, and
`22–25 of U.S. Patent No. 7,589,642 (“the ’642 patent”);
`claims 2–5, 7–13, and 15 of U.S. Patent No. 8,004,389 (“the
`’389 patent”); and claims 1–5 of U.S. Patent No. 9,911,325
`(“the ’325 patent”) are unpatentable on the ground of obvi-
`ousness.1 The Board upheld challenged claim 14 of the ’389
`and claim 7 of the ’325 patent; Roku does not cross-appeal
`those rulings.
`For the reasons we discuss, we affirm the Board’s deci-
`sions in all three IPRs.
`BACKGROUND
`The Patented Inventions
`The three UEI patents are entitled “Relaying Key Code
`Signals Through a Remote Control Device,” and state that
`they relate “generally to remote control devices and, more
`specifically, to relaying key code signals through a remote
`control device to operate an electronic consumer device . . .
`
`
`1 Roku, Inc. v. Universal Elecs., Inc., No. IPR2019-
`01612, 2021 WL 1192127 (P.T.A.B. Mar. 29, 2021); No.
`IPR2019-01613, 2021 WL 1192128 (P.T.A.B. Mar. 29,
`2021); No. IPR2019-01614, 2021 WL 1395255 (P.T.A.B.
`Apr. 13, 2021). The Board issued analogous opinions for all
`three reviews. Citations to “Board Op.” are to IPR2019-
`01612 unless otherwise noted.
`
`

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`such as televisions, stereo radios, digital video disk players,
`video cassette recorders, set-top cable television boxes and
`set-top satellite boxes.” ’642 patent, col. 1, ll. 6–16.2
`The patents discuss problems accompanying the provi-
`sion and use of electronic remote control technology:
`A remote control device typically controls a selected
`electronic consumer device by transmitting infra-
`red key code signals to the selected electronic con-
`sumer device. The infrared signals contain key
`codes of a codeset associated with the selected elec-
`tronic consumer device. Each key code corresponds
`to a function of the selected electronic device, such
`as power on, power off, volume up, volume down,
`play, stop, select, channel up, channel down, etc. In
`order to avoid the situation where a remote control
`device unintentionally operates an electronic con-
`sumer device that is associated with a different re-
`mote control device, manufacturers sometimes use
`distinct codesets for the communication between
`various electronic consumer devices and their asso-
`ciated remote control devices.
`Id., col. 1, ll. 21–34. The patents’ written descriptions elab-
`orate on these problems and describe a method to relay a
`key code through a “remote control device to control a se-
`lected one of multiple different electronic consumer devices
`without requiring the codeset associated with the selected
`electronic consumer device to be stored on the remote con-
`trol device.” Id., col. 1, ll. 51–55.
`The representative claim for each patent is as follows:
`
`
`2 The ’325 patent is a continuation of the ’389 patent,
`which is a continuation of the ’642 patent. The specifica-
`tions are the same. Unless otherwise noted the citations
`are to the ’642 patent.
`
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`UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
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`[’642 patent] Claim 1. A method comprising:
`(a) receiving a keystroke indicator signal from
`a remote control device, wherein the key-
`stroke indicator signal indicates a key on
`said remote control device that a user has
`selected;
`(b) generating a key code within a key code gen-
`erator device using the keystroke indictor
`signal;
`(c) modulating said key code onto a carrier sig-
`nal, thereby generating a key code signal;
`and
`(d) transmitting said key code signal from said
`key code generator device to said remote
`control device.
`[’389 patent] Claim 2. A method comprising:
`(a) receiving a keystroke indicator signal from
`a remote control device, wherein the key-
`stroke indicator signal indicates a key on
`said remote control device that a user has
`selected;
`(b) generating a key code within a key code gen-
`erator device using the keystroke indicator
`signal, wherein said key code is part of a
`codeset that controls an electronic con-
`sumer device;
`(c) modulating said key code onto a carrier sig-
`nal, thereby generating a key code signal;
`(d) transmitting said key code signal from said
`key code generator device; and
`(e) identifying said codeset using input from a
`user of said remote control device, wherein
`said codeset is identified when said user
`
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`UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
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`stops pressing a key on said remote control
`device.
`[’325 patent] Claim 1. A first device for transmit-
`ting a command to control a functional operation
`of a second device, the first device comprising:
`a receiver;
`a transmitter;
`a processing device coupled to the receiver and
`the transmitter; and
`a memory storing instructions executable by
`the processing device, the instructions
`causing the processing device to:
`generate a key code using a keystroke indicator
`received from a third device in communica-
`tion with first device via use of the receiver,
`the keystroke indicator having data that
`indicates an input element of the third de-
`vice that has been activated;
`format the key code for transmission to the sec-
`ond device; and
`transmit the formatted key code to the second
`device in a key code signal via use of the
`transmitter;
`wherein the generated key code comprises a
`one of a plurality of key code data stored in
`a codeset, wherein the one of the plurality
`of key code data is selected from the codeset
`as a function of the keystroke indicator re-
`ceived from the third device, wherein each
`of the plurality of key code data stored in
`the codeset comprises a series of digital
`ones and/or digital zeros, and wherein the
`codeset further comprises time information
`
`

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`UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
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`that describes how a digital one and/or a
`digital zero within the selected one of the
`plurality of key code data is to be repre-
`sented in the key code signal to be trans-
`mitted to the second device.
`UEI appeals as to all the invalidated claims, arguing
`that the Board erred in holding that a skilled artisan would
`have been motivated to combine known wireless transmis-
`sion technology with known modulation techniques.
`The Cited References
`Roku filed separate petitions for IPR of the three pa-
`tents, citing Mishra, Rye, and Caris as primary references
`for relevant wireless transmission technology, combined
`with Dubil and Skerlos as references regarding relevant
`modulation techniques. UEI argues that the Board misun-
`derstood and misconstrued the references, that the Board
`erred in finding a motivation to combine the references,
`and that the combination of references does not teach the
`inventions claimed in the UEI patents.
`A
`Wireless transmission of key codes
`The Mishra, Rye, and Caris references relate to the
`wireless transmission of key codes:
`Mishra, U.S. Patent Pub. No. 2001/0005197
`The Mishra reference is titled, “Remotely Controlling
`Electronic Devices,” and describes “a way to program a re-
`mote control unit to handle a variety of electronic devices
`in a fashion which is easy and quick for the user.” Id. at ¶
`5. The Mishra Abstract summarizes:
`A control system enables telephone calls to be an-
`swered remotely using a remote control unit also
`adapted to remotely control an electronic device
`such as VCR. A processor based station may
`
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`UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
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`communicate with a remote control unit using both
`infrared and radio frequency protocols to enable re-
`mote telephone communications and remote con-
`trol of electronic devices.
`Rye, U.S. Patent Pub. No. US2004/0080428
`The Rye reference is titled, “RF Audiovisual Compo-
`nent Remote Control System,” and states that the object is
`“to provide a remote control system for use in controlling
`the operation of a multi-brand audiovisual component sys-
`tem that is cost effective and reliable.” Id. at ¶ 12. Its Ab-
`stract summarizes:
`A handheld remote control unit transmits binary
`coded rf address and control signals to an address-
`able transceiver where those signals are detected,
`decoded and processed to derive binary coded con-
`trol signals that are coded in accordance with the
`brands or manufacturers of the audiovisual compo-
`nents that are to be controlled along with the func-
`tion that is to be thus controlled for the addressed
`components.
`Caris, U.S. Patent No. 7,562,128 B1
`The Caris reference is titled, “STB Connects Remote to
`Web Site for Customized Code Downloads,” and “addresses
`perceived disadvantages in conventional programming of a
`remote control to be used with consumer electronics equip-
`ment.” Board Op. at *13. Caris discusses the need for sim-
`plifying the process of configuring a remote for use with
`different pieces of equipment. ’128 patent, col. 3, ll. 37–42.
`The Abstract summarizes:
`A set top box (STB) is marketed together with a
`programmable remote. The remote has a dedicated
`button to connect the STB to a specific server on
`the Internet. The consumer can notify the server
`of his/her other CE equipment, which he/she de-
`sires to be controllable through the same remote as
`
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`UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
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`the one that came with the STB. The server down-
`loads to the STB data representative of the rele-
`vant control codes. The STB is provided with
`means to program the remote with these codes. In
`return the server has obtained detailed and accu-
`rate information about this consumer’s equipment.
`A reliable customer base can thus be built for
`streamlining Help Desk operations.
`B
`Modulation techniques
`Dubil and Skerlos describe the transmission of control
`codes using known modulation techniques.
`Dubil, U.S. Patent No. 8,132,105 B1
`The Dubil reference is titled, “Control Codes for Pro-
`grammable Remote Supplied in XML Format” and “relates
`to remote control devices and to a service for enabling the
`programming of remote controls to be used with consumer
`electronics (“CE”) equipment.” Id., col. 1, ll. 6–8. The Ab-
`stract describes the subject matter:
`An Internet service makes available control codes
`for use on a programmable universal remote. The
`remote controls CE equipment through IR or RF
`commands. A server supplies the control codes as
`XML data that gets processed at the receiver’s set
`top box or PC, or the remote itself, for being
`properly installed on the remote.
`The Board found that Dubil teaches “different modula-
`tion schemes that may be used in transmitting control
`codes having different bit patterns, including frequency-
`shift keying (“FSK”), binary phase-shift keying (“BPSK”),
`and pulse-width modulation (“PWM”).” Board Op. at *13.
`Dubil states that “[t]he invention covers both the usage of
`XML for IR or RF codes and for the GUI. The codes can be
`described using a number of parameters defined by XML
`
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`tags. Examples have been mentioned above: carrier fre-
`quency, duty cycle, protocol type (FSK, biphase, PWM,
`etc.), repetition time, on/off[.]” Dubil, col. 4, ll. 33–37.
`Skerlos, U.S. Patent No. 4,426,662
`The Skerlos reference is titled, “IR Remote Control De-
`tector/Decoder,” and “relates to remote control receivers
`and more specifically is directed to an infrared (IR) remote
`control detector/decoder providing improved noise immun-
`ity particularly adapted for use with a television receiver.”
`Id., col. 1, ll. 5–9. The Abstract describes the subject mat-
`ter:
`A pulse code modulated (PCM) infrared (IR) remote
`control detector/decoder with improved noise im-
`munity particularly adapted for use with a televi-
`sion receiver is disclosed. The IR pulses are
`modulated by means of a high frequency dock sig-
`nal in translating the transmitted signal to a
`higher frequency, more noise immune portion of
`the IR spectrum. After receipt of the transmitted
`signal by a signal detector, the high frequency mod-
`ulation is removed from the pulses which are then
`decoded. Under the control of a microcomputer, the
`decoder looks for the start data bit and, if received,
`the subsequent control instructions. When the
`data transmission has been decoded, the microcom-
`puter activates the appropriate control outputs to
`the television receiver’s tuner system to achieve
`the desired control function.
`Skerlos explains that “[t]he present invention is utilized
`with a remote control system in which pulse code modu-
`lated (PCM) output signals are generated in response to
`user operated controls.” Id., col. 2, l. 67–col. 3, l. 2.
`DISCUSSION
`Obviousness is a question of law, based on underlying
`factual findings. In re NTP, Inc., 654 F.3d 1279, 1297 (Fed.
`
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`UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
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`Cir. 2011). On appeal from the Board, we review factual
`findings for support by substantial evidence and review le-
`gal conclusions de novo. Gen. Elec. Co. v. Raytheon Techs.
`Corp., 983 F.3d 1334, 1345 (Fed. Cir. 2020). Substantial
`evidence is “such relevant evidence as a reasonable mind
`might accept as adequate to support a conclusion.” Consol.
`Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
`Patent claim construction is a question of law that the
`court reviews de novo. Trs. Of Columbia Univ. v. Symantec
`Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016) (citing Teva
`Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015))
`(“The construction of claim terms based on the claim lan-
`guage, the specification, and the prosecution history are le-
`gal determinations.”). When claim construction involves
`underlying factual findings, these findings are reviewed for
`support by substantial evidence. Knowles Elecs. LLC v.
`Cirrus Logic, Inc., 883 F.3d 1358, 1361–62, 1364 (Fed. Cir.
`2018).
`
`Claim Construction
`The Board invalidated various claims based on its con-
`struction of certain claim terms. UEI argues that the
`Board erred in construing and applying four terms: (A) the
`“generating” term relating to the key code of the ’642 pa-
`tent and the ’389 patent (“generating a key code within a
`key code generator device using the keystroke indicator
`signal”); (B) the “means” term in the ’389 patent (“means
`for receiving a key code from said RF receiver and for send-
`ing said key code to said IR transmitter such that said key
`code is modulated onto an IR carrier signal”); (C) the “pro-
`cessing device” term in the ’325 patent (“causing the pro-
`cessing device to: generate a key code . . . format the key
`code . . . and transmit the formatted key code”); and (D) the
`“timing information” term in the ’642 and ’325 patents
`(“codeset further comprises time information”).
`
`

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`A
`The term “generating a key code”
`The Board held claims 1–4, 6, 8, 9, and 22–25 of the
`’642 patent and claims 2–3 of the ’389 patent obvious over
`Mishra or Rye in combination with Dubil. UEI states that
`the Board erroneously construed “generating a key code
`within a key code generator device using the keystroke in-
`dicator signal” and that the Board’s construction is incon-
`sistent with the plain language of the claims and with the
`undisputed construction of the “key code generator device.”
`UEI Br. 2–3.
`UEI argues that the specifications and prosecution his-
`tories of the ’642 and ’389 patents state the correct con-
`struction and that “[t]he Board’s finding that Mishra and
`Rye disclose ‘generating a key code within a key code gen-
`erator device using the keystroke indicator signal’ is based
`on a construction of that limitation that includes ‘receiving
`an appliance control code and merely translating or con-
`verting the code into another format, such as an infrared
`signal.’” Id. at 44.
`UEI argues that under the correct construction “[n]ei-
`ther Mishra nor Rye discloses ’generating a key code within
`a key code generator device using the keystroke indicator
`signal.’” Id. at 50. UEI states that the Board found that
`“Mishra and Rye disclose merely ‘translating’ or ‘convert-
`ing’ a received key code into another format.” Id. UEI em-
`phasizes that “the correct construction of the limitation
`‘generating a key code within a key code generator device
`using the keystroke indicator signal’ excludes ‘translating’
`or ‘converting’ a received key code into another format.” Id.
`Roku responds that the “generating” limitation as con-
`strued by the Board does not exclude translating or con-
`verting a key code into another format, and that “[t]he
`Board properly construed this limitation consistent with its
`plain and ordinary meaning to encompass scenarios where
`
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`the set-top box (1) translates a keystroke indicator signal
`received from a remote control into a format appropriate
`for controlling a consumer device, as disclosed in Mishra;
`and (2) uses the received keystroke indicator signal to ob-
`tain the corresponding key code from a look-up table and
`converts the signal to the appropriate code, as disclosed in
`Rye and Caris.” Roku Br. 38–39. We discern no error in
`the Board’s statement:
`We are not persuaded that there is sufficient basis
`for construing the “generating” limitation so
`broadly as to capture the identification of a key
`code from a codeset while simultaneously excluding
`translation of a received code. By forgoing a
`straightforward recitation of “identifying” in the
`claims in favor of a broader recitation of “generat-
`ing,” the patentee clearly meant for the term not to
`be limited to mere identification of a key code but
`also to include other forms of generation of the key
`code.
`Board Op. at *11.
`Substantial evidence supports the Board’s finding that
`each of Mishra, Rye, and Caris discloses the “generating”
`limitation under the Board’s construction. Mishra gener-
`ates a key code signal by translating a command signal re-
`ceived from the remote control into a format suitable for
`controlling a device. The Board explained for claim 1 of the
`’642 patent:
`Independent claim 1 recites “generating a key code
`within a key code generator device using the key-
`stroke indicator signal.” Petitioner contends that
`this limitation is disclosed by Mishra’s determina-
`tion of a corresponding control code through trans-
`lation of the command signal received from the
`RCU into a format appropriate for controlling an
`appliance . . . . In accordance with our adopted con-
`struction of the limitation, we agree that such
`
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`translation qualifies as “generating a key code,”
`and that Mishra therefore meets the limitation.
`Board Op. at *15 (internal citations omitted).
`Rye describes converting an input control signal to be
`compatible with the operating binary code for the selected
`audiovisual component. The Board applied Rye to claim 2
`of the ’642 patent:
`Like independent claim l, independent claim 2 re-
`cites “generating a key code within a key code gen-
`erator device using the keystroke indicator signal.”
`Petitioner contends that this limitation is disclosed
`by Rye’s procedure of “convert[ing] the input con-
`trol signal so that it is compatible with the operat-
`ing binary code for the selected audiovisual
`component whose IR remote control code is ob-
`tained from the look-up table 46.”
`Board Op. at *21 (internal citations omitted).
`UEI argued to the Board that “Rye’s converting of a re-
`ceived control code was expressly disclaimed from ‘gener-
`ating a key code’ during prosecution.” Id. (quoting UEI
`Board Br. 40) The Board stated that “we disagree that
`there was an effective prosecution history disclaimer that
`limits the scope of the ‘generating’ limitation as Patent
`Owner proposes.” Id. Roku states that “UEI makes a sim-
`ilar argument on appeal. While UEI tries to disguise its
`true argument by not using the word ‘disclaimer’ in its
`brief, its invitation for the Court to depart from the ordi-
`nary meaning of ‘generating’ is obviously premised on a
`disclaimer theory.” Roku Br. 43. However, we are not di-
`rected to a disclaimer, and none is cited. A disclaimer of a
`legal right should be clear and explicit. See Trivascular,
`Inc. v. Samuels, 812 F.3d 1056, 1063–64 (Fed. Cir. 2016)
`(“The party seeking to invoke prosecution history dis-
`claimer bears the burden of proving the existence of a ‘clear
`
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`UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
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`and unmistakable’ disclaimer that would have been evi-
`dent to one skilled in the art.”).
`The Board found that both Mishra and Rye disclose the
`“generating” limitation, Board Op. at *15, *21, and that
`Caris generates a key code signal by identifying the corre-
`sponding code from a look-up table, id. at *27. Substantial
`evidence supports the Board’s findings that Mishra, Rye,
`and Caris disclose generating a key code by converting or
`translating a received signal, as the term is used in claims
`1–4, 6, 8, 9, and 22–25 of the ’642 patent and claims 2 and
`3 of the ’389 patent. We conclude that the Board correctly
`applied these references to the claim term “generating a
`key code.”
`
`B
`The term “means for receiving a key code”
`The “means” limitation, “means for receiving a key
`code from said RF receiver and for sending said key code to
`said IR transmitter such that said key code is modulated
`onto an IR carrier signal,” appears in claims 12–15 of the
`’389 patent. UEI argues that the Board erred in holding
`these claims obvious based on Mishra in combination with
`Dubil, and also based on Caris in combination with Skerlos
`and Yazolino (U.S. Patent No. 5,329,370). UEI Br. 3–4.
`UEI states that the Board’s construction of the “means”
`limitation is legally erroneous, and that Roku’s combina-
`tions of references does not disclose this limitation under
`the proper construction. Id.
`The means-plus-function provision of Title 35 (previ-
`ously § 112(6)) states:
`§ 112(f) Element in Claim for a Combina-
`tion.—
`An element in a claim for a combination may be ex-
`pressed as a means or step for performing a speci-
`fied function without the recital of structure,
`
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`material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding struc-
`ture, material, or acts described in the specification
`and equivalents thereof.
`This provision “allows a patentee to recite a function to be
`performed as a claim limitation rather than reciting struc-
`ture or materials for performing that function.” Omega
`Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1321 (Fed. Cir.
`2003). Analysis of a means-plus-function limitation follows
`an established protocol:
`The construction of a means-plus-function limita-
`tion follows a two-step approach. First, we must
`identify the claimed function, staying true to the
`claim language and the limitations expressly re-
`cited by the claims. Once the functions performed
`by the claimed means are identified, we must then
`ascertain the corresponding structures in the writ-
`ten description that perform those functions. A dis-
`closed structure is corresponding “only if the
`specification or the prosecution history clearly
`links or associates that structure to the function re-
`cited in the claim.” In other words, the structure
`must be necessary to perform the claimed function.
`Id. (internal citations omitted).
`The parties agree that the claimed function is “receiv-
`ing a key code from said RF receiver and for sending said
`key code to said IR transmitter such that said key code is
`modulated onto an IR carrier signal.” Board Op. (’389 pa-
`tent) at *12. Construing the recited means, the Board
`adopted Roku’s proposed construction: “a microcontroller
`that performs the algorithm of receiving a key code from an
`RF receiver that has received a first key code signal and
`translating the key code so that the key code is modulated
`onto an infrared carrier signal resulting in a second key
`code signal.” Id. at *14. This construction is consistent
`with the specification’s description of the remote control
`
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`UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
`
`that performs the receiving and sending functions. As §
`112(f) provides, the claim scope is limited to the structure
`in the specification and its equivalents. See Aristocrat
`Techs. Austl. Pty v. Int’l Game Tech., 521 F.3d 1328, 1333
`(Fed. Cir. 2008).
`The Board determined that the ’389 patent describes
`the algorithm for the claimed sending and receiving func-
`tions, stating that “Petitioner’s proposed structure goes be-
`yond a mere restatement of the function by including
`specific reference to key code signals and translation of the
`key code. Petitioner supports its proposal by citing to col-
`umn 5, lines 45–59, of the ’389 patent, which makes specific
`reference to the first and second key code signals, as well
`as to ‘translating the communicated key code.’” Board Op.
`(’389 patent) at *13. The specification of the ’389 patent
`illustrates:
`
`Next (step 104), an RF transmitter 20 of
`key code generator device 12 transmits first key
`code signal 19 in the form of an RF transmission to
`an RF receiver 21 on remote control device 11.
`Next (step 105), remote control device 11
`receives first key code signal 19 and relays the key
`code communicated by first key code signal 19 to
`VCR 13 in the form of a second key code signal 22.
`Remote control device 11 is a slave to key code gen-
`erator device 12. Remote control device 11 relays
`the key code by receiving first key code signal 19 in
`RF form and translating the communicated key
`code so that the key code is modulated onto a sec-
`ond carrier signal resulting in second key code sig-
`nal 22. In this example, the second carrier signal
`is an infrared signal with a frequency in the range
`between three hundred gigahertz and three hun-
`dred terahertz.
`’389 patent, col. 5, ll. 45–59. The Board correctly concluded
`that the algorithm for performing the claimed “receiving”
`
`

`

`Case: 21-1992 Document: 43 Page: 17 Filed: 08/18/2023
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`UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
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`17
`
`and “sending” functions is disclosed, for this passage de-
`scribes the claimed means by which the remote control mi-
`crocontroller carries out the function of receiving a key code
`from the RF receiver and sending the code to the IR trans-
`mitter.
`Roku correctly states that “the Board’s articulation of
`the claimed structure, which includes only the particular
`algorithm required to perform the claimed function, is
`faithful to the specification’s own description and con-
`sistent with the extrinsic evidence of record.” Roku Br. 55.
`See Univ. of Pitt. of Commonwealth Sys. Of Higher Educ.
`v. Varian Med. Sys., Inc., 561 F. App’x 934, 941 (Fed. Cir.
`2014) (“The district court properly located the disclosure of
`an algorithm that covered what was necessary to perform
`the claimed function . . . and nothing more . . . . The algo-
`rithm need only include what is necessary to perform the
`claimed function.”).
`UEI argues that “[t]he Board’s finding that Mishra in
`combination with Dubil and Caris in combination with
`Skerlos and Yazolino disclose the Means Limitation should
`also be reversed because it is based on a legally erroneous
`construction of the structure of the Means Limitation as ‘a
`microcontroller that performs the algorithm of receiving a
`key code from an RF receiver that has received a first key
`code signal and translating the key code so that the key
`code is modulated onto an infrared carrier signal resulting
`in a second key code signal.’” UEI Br. 58.
`The Board found that the microcontroller of Mishra
`controls reception of a key code from an RF transceiver and
`transmits the key code with an IR transmitter. And, in
`light of Dubil’s modulating key code techniques, the Board
`concluded that Misha thus teaches the “means for receiv-
`ing a key code.” See Board Op. (’389 patent) at *27 (“For the
`‘means for receiving a key code,’ Petitioner identifies the
`microcontroller, discussed above in connection with de-
`pendent claim 10, which controls reception of a key code
`
`

`

`Case: 21-1992 Document: 43 Page: 18 Filed: 08/18/2023
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`18
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`UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
`
`from an RF transceiver, and transmits the key code with
`an IR transmitter. Because this identification is sufficient
`under our adopted construction of the ‘means for receiving
`a key code,’ and because Petitioner makes explicit refer-
`ence to its analysis of modulating key codes in light of Du-
`bil, we conclude that Petitioner makes a sufficient
`showing.” (internal citations omitted)).
`The Board made a similar finding regarding the micro-
`controller of the means limitations for Caris in combination
`with Skerlos and Yazolino, stating:
`In addition to Caris and Skerlos, Petitioner relies
`on Yazolino in addressing limitations of claims that
`recite a “microcontroller” in some form . . . . [Roku’s
`expert] testifies that, in Petitioner’s proposed com-
`bination of Caris and Skerlos, the modulation de-
`scribed in Skerlos “would be performed by a
`microcontroller in the remote control,” but that
`“Caris does not explicitly describe these opera-
`tional details.” Petitioner accordingly reasons that
`a person of ordinary skill in the art “would have
`known to look to references, such as Yazolino,
`which explicitly describes the circuitry of a remote
`control such as the one disclosed by Caris.” In light
`of Petitioner’s evidence, we find this reasoning,
`which is supported by rational underpinning, suffi-
`cient to effect the combination of those teachings
`with those of Caris and Skerlos.
`Board Op. (’389 patent) at *31 (internal citations omitted).
`These findings are supported by substantial evidence,
`particularly the disclosures in the cited references as dis-
`cussed above. These findings support the Board’s construc-
`tion. On this construction, UEI does not dispute that
`Mishra in combination with Dubil, and Caris in combina-
`tion with Skerlos and Yazolino, disclose the “means” limi-
`tation. We affirm the Board’s determinations regarding
`this term.
`
`

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`UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
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`19
`
`C
`The term “processing device”
`The Board