Case: 22-1058 Document: 40 Page: 1 Filed: 03/31/2023
`
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ROKU, INC.,
`Appellant
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Appellee
`______________________
`
`2022-1058
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2019-
`01615.
`
`______________________
`
`Decided: March 31, 2023
`______________________
`
`WILLIAM MILLIKEN, Sterne Kessler Goldstein & Fox,
`PLLC, Washington, DC, argued for appellant. Also repre-
`sented by JON WRIGHT; JONATHAN DANIEL BAKER, Dickin-
`son Wright PLLC, Mountain View, CA; MICHAEL DAVID
`SAUNDERS, Austin, TX.
`
` MICHAEL ANTHONY NICODEMA, Greenberg Traurig
`LLP, West Palm Beach, FL, argued for appellee. Also rep-
`resented by BENJAMIN GILFORD, JAMES J. LUKAS, JR., Chi-
`cago, IL.
` ______________________
`
`
`

`

`Case: 22-1058 Document: 40 Page: 2 Filed: 03/31/2023
`
`2
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`Before NEWMAN, REYNA, and STOLL, Circuit Judges.
`Opinion for the court filed by Circuit Judge STOLL.
`Dissenting opinion filed by Circuit Judge NEWMAN.
`STOLL, Circuit Judge.
`Roku, Inc. appeals the Patent Trial and Appeal Board’s
`final written decision holding that claims 1, 3, 5, and 7 of
`U.S. Patent No. 9,716,853 had not been proven unpatenta-
`ble as obvious. This case turns on a single question—
`whether a person of ordinary skill in the art would have
`understood the prior art’s disclosure of a listing of remote
`command codes formatted for transmission via two differ-
`ent communication methods to be a listing comprised of at
`least a first communication method and a second commu-
`nication method different than the first communication
`method. Because the question presented involved the
`scope and content of the prior art, the Board resolved this
`dispute as a purely factual question, which we review for
`substantial evidence. The Board thoroughly considered the
`evidence of record and found in its final written decision
`that the skilled artisan would not have understood the
`prior patent’s listing of remote command codes to corre-
`spond to the claim limitation at issue. Because the Board’s
`finding in this close factual dispute is supported by sub-
`stantial evidence, we affirm the Board’s final written deci-
`sion.
`
`BACKGROUND
`The ’853 patent relates to universal remotes and, more
`specifically, to a universal control engine (UCE) that facil-
`itates communication between a controlling device (i.e., a
`remote) and intended target appliances (e.g., a TV, a DVD
`player, a sound system, etc.). ’853 patent col. 1 l. 63–col. 2
`l. 45. Although the specification of the ’853 patent
`acknowledges that universal remotes were known at the
`time of the invention, it states that the proliferation of new
`communication methods raises the potential for “confusion,
`
`

`

`Case: 22-1058 Document: 40 Page: 3 Filed: 03/31/2023
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`3
`
`misoperation, or other problems,” id. at col. 1 ll. 40–59, par-
`ticularly because the preferred communication method for
`transmitting commands “may vary by both appliance and
`by the function to be performed,” id. at col. 6 ll. 62–64. For
`example, a user can “power on and select inputs on a TV”
`using Consumer Electronic Control (CEC) commands while
`“control[ling] the volume on the same TV” using infrared
`(IR) commands. Id. at col. 2 ll. 21–45. The ’853 patent’s
`purported invention is the ability to reliably use different
`communication methods that enable a single remote con-
`trol to provide commands to a variety of target appliances,
`according to the optimal method of communication for each
`target appliance and command. Id. at col. 2 ll. 16–20.
`The ’853 patent’s UCE can “receive commands from a
`controlling device” and “apply the optimum methodology to
`propagate the command function(s) to each intended target
`appliance,” id. at col. 2 ll. 20–37, according to a “preferred
`command matrix,” id. at col. 7 ll. 19–29. The preferred
`command matrix, an example of which is shown below, can
`be, for example, a list or a table with entries that corre-
`spond to a specific command and “comprise identification
`of [(1)] a form of command/transmission to be used and
`[(2)] a pointer to the required data value and formatting
`information for the specific command.” Id. at col. 7
`ll. 19–29.
`
`

`

`Case: 22-1058 Document: 40 Page: 4 Filed: 03/31/2023
`
`4
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`
`
`’853 patent Fig. 7.
`Representative claim 1 recites:
`1. A universal control engine, comprising:
`a processing device; and
`a memory device having stored thereon instruc-
`tions executable by the processing device, the in-
`structions, when executed by the processing device,
`causing the universal control engine
`to respond to a detected presence of an intended
`target appliance within a logical topography of con-
`trollable appliances which includes the universal
`control engine by
`using an identity associated with the intended tar-
`get appliance to create a listing comprised of at
`least a first communication method and a second
`
`

`

`Case: 22-1058 Document: 40 Page: 5 Filed: 03/31/2023
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`5
`
`communication method different than the first com-
`munication method for use in controlling each of at
`least a first functional operation and a second func-
`tional operation of the intended target appliance
`and
`to respond to a received request from a controlling
`device intended to cause the intended target appli-
`ance to perform a one of the first and second func-
`tional operations by
`causing a one of the first and second communica-
`tion methods in the listing of communication meth-
`ods that has been associated with the requested
`one of the first and second functional operations to
`be used to transmit to the intended target appli-
`ance a command for controlling the requested one
`of the first and second functional operations of the
`intended target appliance.
`Id. at col. 14 l. 41–col. 15 l. 7 (emphasis added to key limi-
`tation).
`Roku filed a petition for inter partes review of claims 1,
`3, 5, and 7 of the ’853 patent, asserting that the challenged
`claims would have been obvious in view of U.S. Patent Pub.
`No. 2012/0249890 (“Chardon”) and other asserted prior art
`references. Disposition of the case before us rests, as it did
`before the Board, on a single, narrow issue: whether Char-
`don discloses “a listing comprised of at least a first commu-
`nication method and a second communication method
`different than the first communication method” as recited
`in each challenged claim.
`Like the patent-in-suit, Chardon describes a remote
`control system configured to control various target devices
`(e.g., TVs, DVD players, stereo equipment, etc.). Chardon
`uses target device identification data to generate a linked
`database (e.g., a linked list) including sets of command
`codes (i.e., instructions to perform a command) associated
`
`

`

`Case: 22-1058 Document: 40 Page: 6 Filed: 03/31/2023
`
`6
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
` Chardon,
`with specific communication protocols.
`¶¶ [0006]–[0008]. This linked database includes at least
`two different sets of command codes—specifically, a set of
`CEC command codes and a set of IR command codes. Char-
`don’s system receives a command to perform a specific ac-
`tion (i.e., volume up) on a target appliance (i.e., a TV) and
`first relays the command to the TV using a CEC command
`code. Id. at ¶ [0058]. If the system doesn’t receive a re-
`sponse from the TV indicating receipt of the command, the
`system then “determine[s] an IR command code . . . to per-
`form the same set of functions as the CEC command code”
`and transmits that IR command code to the TV. Id. Alter-
`natively, the system can determine in advance that a tar-
`get device “is not configured to receive CEC command
`codes” and “send IR command codes . . . instead.” Id. at
`¶ [0058]; see also id. at ¶ [0068].
`Roku argued that Chardon disclosed the disputed
`claim limitation to a skilled artisan, devoting much of its
`petition to explaining how Chardon “creates a database of
`IR and CEC command codes.” J.A. 116. In other words,
`Roku established in its petition that Chardon describes a
`process for creating a database of command codes, at least
`some of which are formatted for transmission according to
`a first communication method and some of which are for-
`matted for transmission according to a second communica-
`tion method. “In this way,” Roku asserted, without further
`explanation, “Chardon meets the claimed limitation” of a
`listing of “at least a first (e.g., CEC) and second (e.g., IR)
`communication method.” Id.
`Roku’s petition did not explain how a list of command
`codes is a list of communication methods. Nor did it sug-
`gest that Chardon’s list of command codes would render
`the claimed list of communication methods obvious. For
`example, it did not state that Chardon’s list of command
`codes is inherently a list of communication methods, or ex-
`plain that a skilled artisan would have been motivated to
`derive a list of communication methods from the command
`
`

`

`Case: 22-1058 Document: 40 Page: 7 Filed: 03/31/2023
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`7
`
`codes, or provide evidence that a skilled artisan would have
`known that Chardon’s list of command codes was also a list
`of communication methods. In its petition, Roku thus as-
`sumed that, because Chardon’s command codes are format-
`ted for transmission via different communication methods,
`its list of command codes is necessarily a list of communi-
`cation methods. But Roku neither articulated this assump-
`tion nor explained how the record evidence supported it.
`Further, Roku advanced no claim constructions for the
`disputed limitation, asserting instead that the relevant
`claim language “should simply receive [its] plain and ordi-
`nary meaning, as informed by the ’853 patent specifica-
`tion.” J.A. 83.
`To support its assertions, Roku’s petition did rely on
`the expert testimony of Dr. Samuel Russ. Dr. Russ ex-
`plained that Chardon’s linked database discloses “a listing
`comprised of at least a first communication method (e.g.,
`CEC command codes) and a second communication method
`(e.g., IR command codes).” J.A. 905 (Russ Decl. ¶ 203).
`This testimony seemingly equates CEC command codes
`with a first communication method and IR command codes
`with a second communication method. Dr. Russ later elab-
`orated, however, that Chardon used its linked database “to
`send a CEC command code over HDMI to an HDMI appli-
`ance using a first communication method (i.e., HDMI-CEC
`over a HDMI cable),” seemingly acknowledging a distinc-
`tion between command codes and the communication
`methods over which the command codes are transmitted.
`J.A. 906 (Russ Decl. ¶ 205). Dr. Russ did not testify that a
`skilled artisan would have understood Chardon’s linked
`database of command codes to teach or suggest a list of
`communication methods.
`Universal did not dispute that Chardon discloses a pro-
`cess for creating a listing of CEC command codes and IR
`command codes. Universal asserted instead that Roku had
`failed to establish that this disclosure teaches or renders
`
`

`

`Case: 22-1058 Document: 40 Page: 8 Filed: 03/31/2023
`
`8
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`obvious creating a listing of two different communication
`methods. J.A. 300–02. Universal rebutted Roku’s posi-
`tions and Dr. Russ’s testimony with that of Dr. Don Turn-
`bull. Dr. Turnbull opined that one of ordinary skill in the
`art would “not have understood a ‘command code’ to be a
`‘communication method.’”
` J.A. 3034 (Turnbull Decl.
`¶¶ 69–70). He explained that a command code is “an in-
`struction to perform a function,” whereas a communication
`method is “a medium or protocol for transmitting or receiv-
`ing information.” Id. Dr. Turnbull explained that the
`’853 patent specification itself “expressly distinguishes be-
`tween a listing of communication methods and a database
`of command codes.” J.A. 3034–35 (Turnbull Decl. ¶ 71). As
`support, Dr. Turnbull cited Figure 7 of the ’853 patent,
`which shows a matrix with cells comprising “identification
`of a form of command/transmission to be used,” such as
`CEC and IR. Id. He explained that the matrix “expressly
`distinguishes between command codes and the communi-
`cation methods (e.g., CEC and IR) that are used to com-
`municate the command codes.” J.A. 3035 (Turnbull Decl.
`¶ 72) (citing ’853 patent col. 7 ll. 30–42). Dr. Turnbull em-
`phasized that the ’853 patent clearly differentiates be-
`tween the “form of command/transmission to be used” and
`the data value and formatting information for the specific
`command, which
`is “stored elsewhere”
`in memory.
`J.A. 3034–35 (Turnbull Decl. ¶¶ 71–72); see also ’853 pa-
`tent col. 7 ll. 26–29. Thus, he explained, the ’853 patent
`makes “clear that a listing of communication methods is
`not the same thing as a database of command codes.” Id.
`In its final written decision, the Board determined that
`Roku had not shown that the challenged claims would have
`been obvious. The Board explained that although Roku
`“specifically equate[d] ‘a first communication method’ with
`‘CEC command codes’ and ‘a second communication
`method different from the first communication method’
`with ‘IR command codes,’” J.A. 20 (citing J.A. 119–20,
`126–27), it failed to show that one of ordinary skill would
`
`

`

`Case: 22-1058 Document: 40 Page: 9 Filed: 03/31/2023
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`9
`
`have understood that these were the same things. The
`Board emphasized that Roku cited “no analysis or expert
`testimony” to show that Chardon’s linked database of com-
`mand codes and the transmission of those command codes
`over two different communication methods taught or sug-
`gested “the claimed listing that is comprised of at least two
`different communication methods.” J.A. 22. Acknowledg-
`ing that there was “no requirement that literal names of
`different command transmission mediums . . . appear in
`the text of the listing,” the Board nevertheless found that
`the record fell “short of providing evidence that one of ordi-
`nary skill in the art would have understood stored com-
`mand codes” to identify communication methods rather
`than act as a “reference for codes to be used once the com-
`munication method to be used is determined in some other
`way.” Id. (cleaned up). Thus, the Board concluded that
`Roku had not shown by a preponderance of the evidence
`that the challenged claims would have been obvious over
`Chardon alone, or in combination with other cited prior art
`references.
`Roku requested rehearing, alleging among other things
`that the Board “erred by implicitly construing,” J.A. 525,
`the term “communication method” as “the ‘method of trans-
`mission’ or the ‘transmission medium’ through which the
`selected command is sent,” J.A. 528. The Board denied
`Roku’s petition, explaining that it did not so construe the
`claims. J.A. 29. Furthermore, the Board explained that,
`even if it had construed the claim term as averred by Roku,
`“the outcome . . . would have been no different.” Id. Spe-
`cifically, the Board emphasized that the question of
`“whether a command code teaches a communication
`method” presents a factual question that the Board had al-
`ready considered and “decided in favor of Patent Owner”
`Universal, and Roku’s attempt to characterize the Board’s
`analysis as including an implicit construction was both in-
`correct and unpersuasive. J.A. 31.
`
`

`

`Case: 22-1058 Document: 40 Page: 10 Filed: 03/31/2023
`
`10
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`Roku appeals. We have jurisdiction under 28 U.S.C.
`§ 1295(a)(4)(A).
`
`DISCUSSION
`The ultimate question of obviousness is a legal ques-
`tion that we review de novo with underlying factual find-
`ings that we review for substantial evidence. Fleming
`v. Cirrus Design Corp., 28 F.4th 1214, 1221 (Fed. Cir.
`2022). Those underlying findings of fact, as enumerated by
`the Supreme Court nearly six decades ago, include the Gra-
`ham factors—“basic factual inquiries,” the answers to
`which provide a foundation for the ultimate determination
`of obviousness or nonobviousness. Graham v John Deere
`Co. of Kan. City, 383 U.S. 1, 17–18 (1966). The Graham
`factors include: “(1) the scope and content of the prior art,
`(2) differences between the prior art and the claims at is-
`sue, (3) the level of ordinary skill in the pertinent art, and
`(4) the presence of objective indicia of nonobviousness such
`as commercial success, long felt but unsolved needs, failure
`of others, and unexpected results.” Elbit Sys. of Am., LLC
`v. Thales Visionix, Inc., 881 F.3d 1354 (Fed. Cir. 2018) (in-
`ternal quotation marks omitted) (citing Graham, 383 U.S.
`at 17–18). Substantial evidence is evidence such that a
`“reasonable fact finder could have arrived at the agency’s
`decision.” OSI Pharms., LLC v. Apotex Inc., 939 F.3d 1375,
`1381 (Fed. Cir. 2019) (quoting In re Gartside, 203 F.3d
`1305, 1312 (Fed. Cir. 2000)). “[T]he possibility of drawing
`two inconsistent conclusions from the evidence does not
`prevent an administrative agency’s finding from being sup-
`ported by substantial evidence.” Consolo v. Fed. Mar.
`Comm’n, 383 U.S. 607, 620 (1966).
`As explained above, the question considered by the
`Board and raised on appeal is whether Chardon’s list of
`command codes formatted to be transmitted via different
`communication methods is, itself, a list of different
`
`

`

`Case: 22-1058 Document: 40 Page: 11 Filed: 03/31/2023
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`11
`
`communication methods as recited in the claims. We can
`see both sides of this factual dispute.1
`On one hand, before this court, Roku advances the rea-
`sonable argument that because (1) CEC and IR are com-
`munication protocols—which neither party disputes
`qualify as communication methods—and (2) Chardon dis-
`closes “a protocol-specific list of CEC command codes” and
`“a protocol-specific list of IR command codes,” Chardon nec-
`essarily discloses creating a listing comprised of at least
`two different communication methods “as a matter of
`logic.” Appellant’s Br. 24–27. Although Roku does not dis-
`pute that a “command code” is not the same as a “commu-
`nication method,” it argues that Chardon’s protocol-specific
`“listing unambiguously indicates both the command code
`and the communication protocol (i.e., communication
`method) to be used in transmission.” Id. at 28–29.
`On the other hand, as Universal persuasively argues,
`Roku has failed to show that the Board’s fact finding—that
`Chardon’s command code formatted for transmission via a
`particular communication method was not proven to be a
`communication method—was unsupported by substantial
`evidence. Appellee’s Br. 23. First, Universal notes that
`Roku’s argument contradicts the disclosure of the ’853 pa-
`tent itself. Id. at 24. For example, the ’853 patent de-
`scribes its listing as a “command matrix,” comprising “a
`series of data cells” that include “identification of a form of
`command/transmission to be used” and “a pointer to the
`
`1 The dissent asserts that we should apply de novo
`review to this issue. But Roku expressly raises only a fac-
`tual question on appeal: whether Chardon teaches a par-
`ticular claim element. See Appellant’s Br. 21 (“That
`factual issue is the sole subject of this appeal.”). We thus
`view the issue on appeal as a Graham factor underlying
`obviousness—not as a question of the ultimate conclusion
`of obviousness.
`
`

`

`Case: 22-1058 Document: 40 Page: 12 Filed: 03/31/2023
`
`12
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`required data value and formatting information for the
`specific command,” which is stored in a separate location
`in memory. ’853 patent col. 7 ll. 19–29. In other words, the
`patent specification itself distinguishes a list of communi-
`cation methods from a separate list of command codes. Sec-
`ond, Universal argues that the Board’s decision is
`supported by Dr. Turnbull’s expert testimony. Appellee’s
`Br. 25–26. According to Universal, the Board was entitled
`to weigh Dr. Turnbull’s testimony that a skilled artisan
`“would not have understood a ‘command code’ to be a com-
`munication method,” J.A. 3034 (Turnbull Decl. ¶¶ 69–70),
`more heavily than Dr. Russ’s more vague and unexplained
`testimony that Chardon’s linked database discloses “a list-
`ing of at least a first communication method (e.g., CEC
`command codes) and a second communication method (e.g.,
`IR command codes),” J.A. 905 (Russ Decl. ¶ 203). Finally,
`Universal points out that Roku does not dispute the basic
`fact that a command code is different than a communica-
`tion method.
`Review of the record as a whole reveals that the factual
`dispute at hand was highly contested and closely decided.
`Most significantly for our purposes, the Board’s finding was
`supported by substantial evidence. Specifically, the
`Board’s finding flows from the ’853 patent specification it-
`self and Dr. Turnbull’s testimony. This evidence supported
`the Board’s finding that Roku had failed to meet its burden
`of proof. The Board, in its role as factfinder in the first
`instance, was entitled to weigh the evidence in the record,
`including this evidence against Roku.
`An appellate court “do[es] not and should not reweigh
`evidence or make factual findings.” Impax Lab’ys. Inc.
`v. Lannett Holdings Inc., 893 F.3d 1372, 1382 (Fed. Cir.
`2018). As an appellate court, our role is to review the
`Board’s findings for substantial evidence, not to step into
`its place and make those findings anew. Id. Indeed, alt-
`hough this court could well have decided the factual dis-
`pute at hand differently than the Board did, it is not the
`
`

`

`Case: 22-1058 Document: 40 Page: 13 Filed: 03/31/2023
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`13
`
`province of this court to do so. Teva Pharms. USA, Inc.
`v. Sandoz, Inc., 574 U.S. 318, 327 (2015) (explaining that a
`lower tribunal, which has “presided over, and listened to,
`the entirety of a proceeding has a comparatively greater
`opportunity to gain that familiarity than an appeals court
`judge who must read a written transcript or perhaps just
`those portions to which the parties have referred”).
`Because the Board’s factual finding—that Chardon’s
`listing of command codes did not teach or suggest a listing
`of communication methods—was supported by substantial
`evidence, we affirm the Board’s decision that Roku has not
`shown that the challenged claims would have been obvious.
`CONCLUSION
`We have considered the parties’ remaining arguments
`and find them unpersuasive. For the foregoing reasons, we
`affirm the Board’s final written decision.
`AFFIRMED
`
`

`

`Case: 22-1058 Document: 40 Page: 14 Filed: 03/31/2023
`
`
`
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ROKU, INC.,
`Appellant
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Appellee
`______________________
`
`2022-1058
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2019-
`01615.
`
`______________________
`
`NEWMAN, Circuit Judge, dissenting.
`I respectfully dissent, for I have concerns as to both
`procedural and substantive aspects of the court’s ruling.
`I
`With respect to procedure, the court holds that because
`the parties did not dispute claim construction at the Patent
`Trial and Appeal Board (“PTAB” or “Board”), our appellate
`review is limited to whether substantial evidence supports
`the PTAB’s decision of non-obviousness. Claim construc-
`tion and obviousness are questions of law, whose underly-
`ing factual components may or may not be disputed. When
`disputed, factual findings of the PTAB are reviewed for
`support by substantial evidence, as the panel majority
`
`

`

`Case: 22-1058 Document: 40 Page: 15 Filed: 03/31/2023
`
`2
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`recognizes, see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
`1073 (Fed. Cir. 2015) (reciting the standard of review for
`PTAB findings of fact), whereas the ultimate questions of
`law remain for de novo determination on appeal, id.
`The panel majority states that because “the question
`presented involved the scope and content of the prior
`art, the Board resolved this dispute as a purely factual
`question, which we review for substantial evidence.” Maj.
`Op. at 2. The majority then finds that substantial evidence
`supports the PTAB’s finding that “Chardon’s listing of com-
`mand codes did not teach or suggest a listing of communi-
`cation methods.” Id. at 13. This is the focus of my dissent,
`for the majority declines to review the ultimate legal ques-
`tion of validity of U.S. Patent No. 9,716,853 (the “’853 pa-
`tent”) and instead reviews solely the Board’s specific fact-
`finding discussed therein.
`The decision on appeal is “that Petitioner has not es-
`tablished by a preponderance of the evidence that any of
`claims 1, 3, 5, or 7 of the ’853 patent are unpatentable.” J.A.
`24. My concern is with the majority’s implicit holding that
`if the underlying findings of fact are supported by substan-
`tial evidence, then we do not review the ultimate legal
`question of non-obviousness.
`I believe that de novo review is appropriate for the
`questions of law presented herein, along with review of any
`underlying facts for support by substantial evidence.1
`
`
`1 The panel majority misperceives my dissent. I do
`not “assert[] that we should apply de novo review to this
`[factual] issue.” Maj. Op. at 11 n.1. I do assert that we
`should apply de novo review to the issue on appeal, that is,
`the legal issue of obviousness. “It is emphatically the prov-
`ince and duty of the judicial department to say what the
`law is. Those who apply the rule to particular cases, must
`of necessity expound and interpret that rule.” Marbury v.
`
`

`

`Case: 22-1058 Document: 40 Page: 16 Filed: 03/31/2023
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`3
`
`II
`It is not disputed that universal “remotes” were known
`at the time of the invention described and claimed in the
`’853 patent. Communicating commands via both wireless
`and wired communication methods was well known: “a
`‘communication method’ is a medium or protocol for trans-
`mitting or receiving information (e.g., CEC [consumer elec-
`tronics control], IR [infrared], RF [radio frequency], etc.).”
`Universal Elecs. Br. 5 (citing the ’853 patent col. 2 ll. 4–16,
`col. 6 ll. 25–28, 62–67, col. 14 ll. 20–24). The Chardon ref-
`erence describes a “database of CEC and IR command
`codes.” Id. at 1.
`In this appeal it is not disputed that a person of ordi-
`nary skill in the field of this invention would understand
`that the CEC and IR command codes listed and disclosed
`by Chardon are the same as the CEC and IR command
`codes listed and communicated in the ’853 patent. Chardon
`shows a Universal Control Engine (“UCE”) receiving a com-
`mand code from a remote control device, and it shows the
`UCE employing the applicable communication method to
`transmit the command to the appliance. This is the subject
`matter of the ’853 patent. As the panel majority recites,
`“[t]he ’853 patent’s purported invention is the ability to re-
`liably use different communication methods that enable a
`single remote control to provide commands to a variety of
`target appliances, according to the optimal method of com-
`munication for each target appliance and command.” Maj.
`Op. at 3 (citing the ’853 patent col. 2 ll. 16–20).
`The panel majority also recites that “Chardon discloses
`a process for creating a listing of CEC command codes and
`IR command codes” for communication to remote appli-
`ances. Id. at 7. Chardon teaches “at least two different
`
`
`Madison, 5 U.S. 137, 177 (1803). This foundation of appel-
`late review applies whether or not any facts are disputed.
`
`

`

`Case: 22-1058 Document: 40 Page: 17 Filed: 03/31/2023
`
`4
`
`ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.
`
`communication methods,” namely CEC and IR, Roku Reply
`Br. 1, and “[a] skilled artisan would understand that Char-
`don’s listing of parallel sets of CEC and IR command codes
`and its description of algorithms for selecting which com-
`munication method to use reads precisely on the chal-
`lenged claims.” Id. at 11. Although the parties discuss
`differences between the details disclosed by Chardon and
`by the ’853 patent, and the majority recognizes some such
`differences, these details are unclaimed by the ’853 patent
`and cannot be used to support non-obviousness.
`An example is that for selecting the communications
`method, the ’853 patent shows use of a “matrix” in Figure
`7, and states that the matrix contains the “form of com-
`mand/transmission to be used and a pointer to the required
`data value and formatting information for the specific com-
`mand,” Roku Reply Br. 10 (quoting the ’853 patent col. 7 ll.
`26–29), while Chardon lists “both CEC-formatted com-
`mand codes and a parallel set of IR-formatted command
`codes.” Id. (citing Chardon, ¶¶ [0008], [0039], [0044]).
`However, any difference in the selection method does not
`appear in the claims.
`Applying the requisite analysis of law and fact, I con-
`clude that the ’853 patent claims at issue would have been
`obvious in view of Chardon, because the methods described
`in the claims and the prior art are substantially identical
`and serve the same purpose and use. I respectfully dissent
`from my colleagues’ contrary ruling.
`
`