Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 1 of 50 Page ID #:1
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`Michael J. Newton (SBN 156225)
`ALSTON & BIRD LLP
`2828 North Harwood Street, 18th Floor
`Dallas, Texas 75201
`Telephone:
`(214) 922-3400
`Facsimile:
`(214) 922-3899
`mike.newton@alston.com
`
`Ryan W. Koppelman (SBN 290704)
`Timothy R. Watson (SBN 293774)
`ALSTON & BIRD LLP
`1950 University Avenue, 5th Floor
`East Palo Alto, CA 94303
`Telephone: (650) 838-2000
`Facsimile:
`(650) 838-2001
`ryan.koppelman@alston.com
`tim.watson@alston.com
`Evan W. Woolley (SBN 286385)
`ALSTON & BIRD LLP
`333 South Hope Street, 16th Floor
`Los Angeles, CA 90071
`Telephone: (213) 576-1000
`Facsimile:
`(213) 576-1100
`evan.woolley@alston.com
`Attorneys for Plaintiff
`Universal Electronics Inc.
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`UNIVERSAL ELECTRONICS INC.,
`a Delaware Company,
`Plaintiff,
`
`v.
`ROKU, INC., a Delaware Company,
`Defendant.
`
`Case No. 8:18-cv-01580
`COMPLAINT FOR PATENT
`INFRINGMENT
`DEMAND FOR JURY TRIAL
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`

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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 2 of 50 Page ID #:2
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`Plaintiff Universal Electronics Inc. (“UEI”) hereby brings its Complaint for patent
`infringement against Defendant Roku, Inc. (“Roku”) and alleges as follows:
`NATURE OF CASE
`UEI is a 30-year old public company based in Santa Ana, California. It is the
`1.
`technology leader in home entertainment and home automation control, winning
`numerous awards related to universal entertainment control processes and technology.
`Throughout its 30-year history, UEI has consistently prioritized investments in research
`and development and technology acquisitions that have allowed it to pioneer, patent, and
`perfect key technologies in the area of entertainment interaction and control. As a result,
`UEI holds over 350 U.S. patents related to TV, home entertainment, and home control
`technologies and has many additional patent applications pending in the United States
`and jurisdictions throughout the world. Many of the world’s leading consumer electronics
`OEM brands and subscription broadcasting operators purchase or license UEI’s control
`technologies.
`Roku is a relative newcomer to home entertainment control. Despite a
`2.
`mutually successful previous business relationship with UEI, Roku decided to forgo
`licensing key UEI technologies that are prevalent in a number of Roku’s home
`entertainment products. After failing to reach an acceptable business solution, UEI
`brings this suit to secure appropriate relief and ensure adequate compensation for Roku’s
`use of UEI technology.
`3.
`In this Complaint, UEI asserts nine counts of patent infringement against
`Roku. The nine patents are in four patent families and two general technology categories:
`remote control set-up and touchscreen remotes.
`PARTIES
`Plaintiff UEI is a Delaware corporation that has a principal place of business
`4.
`located at 201 E. Sandpointe Ave., Santa Ana, CA 92707.
`5.
`Defendant Roku is a Delaware corporation with a principal place of business
`located at 150 Winchester Circle, Los Gatos, CA 95032. It has offices in the judicial
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 3 of 50 Page ID #:3
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`district at 2450 Colorado Ave., Santa Monica, CA 90404.
`6.
`Roku manufactures and sells streaming players and components therefor,
`enabling users to stream free or paid programming services. Roku offers a Roku App for
`download to a smartphone or tablet to access streaming content. The Roku App works
`with the devices at issue in this action, like the Roku TV, Roku Ultra, Roku Express,
`Roku Streaming Stick, and Roku Streaming Stick + and others.
`PATENTS IN-SUIT
`UEI owns and has standing to sue for infringement of U.S. Patent No.
`7.
`7,589,642 (the “642 Patent”), entitled “Relaying Key Code Signals Through a Remote
`Control Device,” which was duly and lawfully issued on September 15, 2009. A true and
`correct copy of the 642 Patent is attached to this Complaint as Exhibit A.
`8.
`UEI owns and has standing to sue for infringement of U.S. Patent No.
`8,004,389 (the “389 Patent”), entitled “Relaying Key Code Signals Through a Remote
`Control Device,” which was duly and lawfully issued on August 23, 2011. A true and
`correct copy of the 389 Patent is attached to this Complaint as Exhibit B.
`9.
`UEI owns and has standing to sue for infringement of U.S. Patent No.
`9,911,325 (the “325 Patent”), entitled “Relaying Key Code Signals Through a Remote
`Control Device,” which was duly and lawfully issued on March 6, 2018. A true and
`correct copy of the 325 Patent is attached to this Complaint as Exhibit C.
`10. UEI owns and has standing to sue for infringement of U.S. Patent No.
`9,716,853 (the “853 Patent”), entitled “System and Method for Optimized Appliance
`Control,” which was duly and lawfully issued on July 25, 2017. A true and correct copy
`of the 853 Patent is attached to this Complaint as Exhibit D.
`11. UEI owns and has standing to sue for infringement of U.S. Patent No.
`7,782,309 (the “309 Patent”), entitled “Controlling Device with Dual-Mode, Touch-
`Sensitive Display,” which was duly and lawfully issued on August 24, 2010. A true and
`correct copy of the 309 Patent is attached to this Complaint as Exhibit E.
`12. UEI owns and has standing to sue for infringement of U.S. Patent No.
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 4 of 50 Page ID #:4
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`7,821,504 (the “504 Patent”), entitled “Controlling Device with Dual-Mode, Touch-
`Sensitive Display,” which was duly and lawfully issued on October 26, 2010. A true and
`correct copy of the 504 Patent is attached to this Complaint as Exhibit F.
`13. UEI owns and has standing to sue for infringement of U.S. Patent No.
`7,821,505 (the “505 Patent”), entitled “Controlling Device with Dual-Mode, Touch-
`Sensitive Display,” which was duly and lawfully issued on October 26, 2010. A true and
`correct copy of the 505 Patent is attached to this Complaint as Exhibit G.
`14. UEI owns and has standing to sue for infringement of U.S. Patent No.
`7,895,532 (the “532 Patent”), entitled “User Interface for a Remote Control Application,”
`which was duly and lawfully issued on February 22, 2011. A true and correct copy of the
`532 Patent is attached to this Complaint as Exhibit H.
`15. UEI owns and has standing to sue for infringement of U.S. Patent No.
`8,015,446 (the “446 Patent”), entitled “User Interface for a Remote Control Application,”
`which was duly and lawfully issued on September 6, 2011. A true and correct copy of
`the 446 Patent is attached to this Complaint as Exhibit I.
`JURISDICTION AND VENUE
`This Court has jurisdiction over the subject matter of this action under 28
`16.
`U.S.C. §§ 1331 and 1338(a).
`17.
`This Court has personal jurisdiction over Roku pursuant to the laws of the
`State of California, including California’s Long Arm Statute, California Code of Civil
`Procedure § 410.10. Roku’s principal place of business is in the state of California, and,
`as a result, Roku is subject to general jurisdiction here. Roku has committed acts of
`infringement in California infringing UEI’s asserted patents in California, and, as a result,
`Roku is subject to specific jurisdiction here. In particular, Roku sells and offers to sell
`hardware and software relating to remote control devices that infringe UEI’s patents in
`California, and specifically in this judicial district. Roku does business in this judicial
`district relating to Roku’s accused products, and has an office located in this district at
`2450 Colorado Ave., Santa Monica, CA 90404. Roku is subject to personal jurisdiction
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 5 of 50 Page ID #:5
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`because it has a regular and established place in this district and it sells, distributes, and
`licenses its products in this District, such that it should reasonably and fairly anticipate
`being brought into this Court.
`18. Venue is proper in this District under 28 U.S.C. §§ 1391(b)-(d) and 1400(b).
`Roku has committed acts of infringement in this judicial district and has a regular and
`established place of business in this judicial district at 2450 Colorado Ave., Santa
`Monica, CA 90404. It occupies commercial office space at that address and employs
`numerous employees at this address, including its General Counsel.
`FACTUAL BACKGROUND
`19. UEI is a pioneer in the TV industry, particularly in the realm of remote
`controls. UEI is the owner of hundreds of patents in this technology area ranging from
`remote controls to software to systems of networked devices. UEI was the first to create
`the pre-programmed universal remote control, which allows one remote control to
`command numerous devices. Back when infrared (IR) technology was the dominant
`method of controlling televisions and accessories, UEI invested significant time and
`resources to develop a device control database that correlated certain IR control codes
`with certain brands and devices. As other forms of communication and control were
`implemented with TVs and accessories, such as HDMI and WiFi, UEI continued to
`innovate and improve how remote controls could interface with a range of devices.
`20. One of UEI’s flagship technologies is QuickSet®, a product family
`dedicated to simplifying and automating the configuration and control of remote controls
`and home entertainment devices. QuickSet® is a widely deployed technology already in
`over 250 million devices around the world including set-top boxes, televisions, game
`consoles, smartphones, and tablets to enable effortless configuration and control of nearly
`any connected home entertainment device. The 642, 389, 325, and 853 Patents relate to
`features incorporated into versions of UEI’s QuickSet® product family. Roku has
`incorporated these patented technologies into its products and services without
`authorization.
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 6 of 50 Page ID #:6
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`21. UEI was also a pioneer in using touch screens and graphical user interfaces
`(“GUIs”) in remote control applications. Well before smartphones made touchscreen
`technology ubiquitous, UEI patented devices and methods for using touchscreens and
`GUIs for remote control applications. The 309, 504, 505, 446, and 532 Patents relate to
`UEI’s touchscreen GUI technology. Roku also has incorporated these additional patented
`technologies into its products and services without authorization.
`COUNT ONE
`INFRINGEMENT OF U.S. PATENT 7,582,642
`22. UEI incorporates the previous paragraphs of this Complaint as if fully set
`forth herein.
`23. UEI is the owner of all rights, title, and interest in the 642 Patent, including
`the right to bring this suit for injunctive relief and damages.
`24.
`The 642 Patent generally relates to methods and devices allowing remote
`control devices to control one or more electronic consumer devices. At the time of the
`642 Patent, existing consumer electronic devices would often be packaged with their own
`remote control device which were dedicated to operating only the particular device with
`which they were packaged, requiring owners of multiple devices to own multiple remote
`control devices. Each such remote control device would contain data relating only to the
`functions of its associated consumer electronic device. Memory limitations in these
`remote control devices would limit the amount of consumer electronic devices that a
`single remote control could control. The invention of the 642 Patent overcame these
`limitations in several ways including with a method and system for relaying a key code
`through a remote control device to an electronic consumer device allowing the electronic
`consumer device to be controlled without storing the associated code set on the remote
`control device.
`25.
`The 642 Patent is valid and enforceable. The claims of the 642 Patent are
`directed to an inventive application in the field of remote control of consumer electronic
`devices. The combination of claim elements was not well-understood, routine, or
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 7 of 50 Page ID #:7
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`conventional to those in the field at the time of invention. In particular, it was not well-
`understood, routine or conventional at the time of invention for a system to receive a
`keystroke indicator signal from a remote control device based on a user selecting a key
`on a remote control, generate a key code within a key code generator device using the
`keystroke indicator signal, modulate the key code onto a carrier signal, thereby
`generating a key code signal, and transmitting said key code signal from said key code
`generator device to an electronic consumer device. This was previously recognized by the
`Patent Trademark and Appeals Board (PTAB) in its denial of an institution of an IPR
`proceeding related to the 642 Patent. In particular, the PTAB determined that none of the
`20+ cited combinations of references included at least the step of modulating the key
`code onto a carrier signal of claim 2.
`26. UEI has provided notice to the public of the 642 Patent via marking the
`patent number on UEI’s NevoSmart App on its “About” screen.
`27. Roku has infringed and continues to infringe literally and/or through the
`doctrine of equivalents, one or more claims of the 642 Patent, including but not limited to
`claim 2, by using, making, offering to sell, and/or selling without authority in the United
`States certain universal control devices, including but not limited to the “Roku Ultra,” the
`“Roku Streaming Stick,” the “Roku Streaming Stick+,” the “Roku Express,” the “Roku
`Express+,” the “Roku Premiere,” the “Roku Premiere+,” the “Roku 4,” the “Roku 3,” the
`“Roku 2,” the “Roku TV,” the “Roku Enhanced Remote,” and any other Roku product
`that provides for the remote control of an external device such as a TV, audiovisual
`receiver, sound bar or “Roku TV Wireless Speakers” via a Roku remote through IR, RF
`and/or HDMI as directed by a Roku box or TV (the “642 Patent Accused Products”).
`28.
`For purposes of example only, and without limitation, the 642 Patent
`Accused Products perform every element of claim 2 of the 642 Patent when used as
`intended by Roku. Roku also has infringed and continues infringes at least one other
`claim of the 642 Patent.
`29.
`In particular, the method of claim 2 involves “receiving a keystroke
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 8 of 50 Page ID #:8
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`indicator signal from a remote control device, wherein the keystroke indicator signal
`indicates a key on said remote control device that a user has selected.” The 642 Patent
`Accused Products receive a keystroke indicator signal from Roku’s remote control,
`wherein the keystroke indicator signal indicates a key on Roku’s remote that a user has
`pressed.
`The method of claim 2 further involves “generating a key code within a key
`30.
`code generator device using the keystroke indictor signal.” The 642 Patent Accused
`Products generate a key code, during at least the set-up process, in response to a
`keystroke indicator signal to enable a Roku remote to control other devices, and also
`based on certain Roku menu settings which provide for the control of other devices.
`31.
`The method of claim 2 further involves “modulating said key code onto a
`carrier signal, thereby generating a key code signal.” The 642 Patent Accused Products
`generate key code signals onto a carrier signal, such as Bluetooth, IR, Wi-Fi and Wi-Fi
`Direct to communicate with a remote control and over HDMI cables or RF to
`communicate with a TV and/or other consumer electronic devices like an audiovisual
`receiver, sound bar or “Roku TV Wireless Speakers.”
`32.
`The method of claim 2 further involves “transmitting said key code signal
`from said key code generator device to an electronic consumer device.” The 642 Patent
`Accused Products transmit such key code signals to a consumer electronic device using
`various combinations of RF, IR and HDMI CEC signaling across the various 642 Patent
`Accused Products.
`33. Roku has infringed and continues to infringe claims of the 642 Patent within
`the meaning of 35 U.S.C. § 271(a) through the foregoing activities, including at least
`making, using, selling, offering for sale, and/or importing the 642 Patent Accused
`Products.
`34. Roku has performed each and every element of claim 2 of the 642 Patent
`during at least its own product development and testing of the 642 Patent Accused
`Products.
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 9 of 50 Page ID #:9
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`35. Roku has indirectly infringed and continues to indirectly infringe at least
`claim 2 of the 642 Patent under § 271(b) by knowingly and actively inducing
`infringement of those claims by its customers and end users of its products. The direct
`infringers that Roku has induced to infringe include, without limitation, Roku’s
`customers, users, and retailers that offer for sale, sell, and use the 642 Patent Accused
`Devices.
`36. Roku is on notice of the 642 Patent at least as of the filing of this complaint.
`In addition, Roku has had actual or constructive knowledge of the 642 Patent and its
`infringement prior to the filing of this Complaint. As stated above, UEI marked the 642
`Patent via its NevoSmart App on its “About” screen. Further, at least as of September
`2017, UEI informed Roku that it had over 30 issued and pending patents covering its
`control solutions. It is believed that Roku investigated UEI’s patents as a result and
`gained actual knowledge of the 642 Patent. Roku’s own patents also have cited
`documents referring to UEI’s patents over 290 times, which made Roku aware of UEI’s
`patents. Furthermore, it is believed Roku copied various aspects of UEI’s patented
`technology, and Roku’s copying shows Roku knew or should have known of the 642
`Patent and intended to induce infringement. As a result, Roku at least engaged in willful
`blindness by taking deliberate actions to avoid confirming a high probability of
`infringement of the 642 Patent. As such, Roku either knew or should have known about
`the existence of the 642 Patent and that creating features in its devices to practice that
`patent would induce infringement. Roku has induced and continue to induce end users of
`the 642 Patent Accused Products to infringe at least claim 2 of the 642 Patent within the
`meaning of 35 U.S.C. § 271(b).
`37. Roku’s acts of inducement include making, using, selling, and offering to
`sell the 642 Patent Accused Products, as well as Roku’s creation and dissemination of
`promotional materials, marketing materials, and instruction guides that teach and
`encourage end users to use the 642 Patent Accused Products in an infringing manner. For
`example, the 642 Patent Accused Products provide step-by-step instruction on how an
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 10 of 50 Page ID #:10
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`end user should use these products in a manner that directly infringes the 642 Patent, and
`Roku also provides further instruction in the “Setup and Troubleshooting” section of its
`website. Roku, has a webpage, https://support.roku.com/en-gb/article/115013019828-
`how-to-set-up-your-roku-enhanced-remote-to-control-your-tv, dedicated to instructing
`users how to set up Roku Enhanced Remotes via wireless and infrared (IR) technologies
`to seamlessly control Roku streaming players and aspects of users’ TVs. Examples
`include, without limitation, Roku’s instructions on how to connect Roku devices to
`control other devices through HDMI and IR.
`38. Additionally, Roku has contributed to the infringement of claims of the 642
`Patent within the meaning of 35 U.S.C. § 271(c). Specifically, Roku has contributed to
`the end users infringement of the 642 Patent by, among other things, making, selling,
`aiding, assisting, authorizing, advertising, marketing, promoting, providing for, and/or
`encouraging the offer for sale, sale, and use of the 642 Patent Accused Products, which
`Roku knew contain the software and features discussed above that are especially made or
`adapted by Roku for infringing uses of claims of the 642 Patent. The software and
`features discussed above are not staple articles of commerce suitable for substantial non-
`infringing use. The direct infringers for Roku’s contributory infringement include,
`without limitation, its customers, users, and retailers that offer for sale, sell, and use the
`642 Patent Accused Products.
`39. Roku’s direct and indirect infringement of the 642 Patent has injured UEI,
`and UEI is entitled to recover damages adequate to compensate it for such infringement.
`40. Roku’s infringement of the 642 Patent has been willful, wanton, malicious,
`and/or deliberate and constitutes egregious behavior justifying an award of enhanced
`damages. More specifically, Roku knew or should have known about the 642 Patent and
`its infringement of that patent, as discussed above, but continued to engage in the using,
`making, offering to sell, and/or selling of the 642 Patent Accused Products despite an
`objectively high likelihood that this conduct would infringe the 642 Patent.
`41. Roku’s infringing activities will continue to injure UEI unless and until this
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 11 of 50 Page ID #:11
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`Court enters an injunction prohibiting further infringement and, specifically, enjoining
`further direct and indirect infringement of the 642 Patent. If Roku’s conduct is not
`stopped, UEI will continue to suffer competitive harm, irreparable injury, and significant
`damages. Because UEI has no adequate remedy at law, UEI seeks, in addition to
`damages, preliminary and permanent injunctive relief. UEI competes to supply remote
`control technology to companies like Roku and will continue suffering irreparable harm
`absent injunctive relief.
`
`COUNT TWO
`INFRINGEMENT OF U.S. PATENT 8,004,389
`42. UEI incorporates the previous paragraphs of this Complaint as if fully set
`forth herein.
`43. UEI is the owner of all rights, title, and interest in the 389 Patent, including
`the right to bring this suit for injunctive relief and damages.
`44.
`The 389 Patent was filed as a continuation of the patent that issued as the
`642 Patent, and its claims are inventive for many of the same reasons as described with
`respect to the 642 Patent.
`45.
`The 389 Patent is valid and enforceable. The claims of the 389 Patent are
`directed to an inventive application in the field of remote control of consumer electronic
`devices. The combination of claim elements was not well-understood, routine, or
`conventional to those in the field at the time of invention. The 389 Patent’s claims share
`some similarities with the inventions claimed in the 642 Patent, but they include different
`or additional elements, each of which make the claims novel for the same or additional
`reasons as described above. For example, claim 2 of the 389 Patent includes the step of
`“identifying said codeset using input from a user of said remote control device, wherein
`said codeset is identified when said user stops pressing a key on said remote control
`device.” For this reason as well, the combination of claim elements was not well-
`understood, routine, or conventional to those in the field at the time of invention.
`46. Roku has infringed and continues to infringe literally and/or through the
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 12 of 50 Page ID #:12
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`doctrine of equivalents, one or more claims of the 389 Patent, including but not limited to
`claim 2, by using, making, offering to sell, and/or selling without authority in the United
`States certain universal control devices, including but not limited to the “Roku Ultra”, the
`“Roku Streaming Stick”, the “Roku Streaming Stick+,” the “Roku Premiere,” the “Roku
`Premiere+,” the “Roku 4,” the “Roku TV,” the “Roku Enhanced Remote,” and any other
`Roku product that provides for the onscreen set-up of a remote control to control an
`external device, such as a TV, audiovisual receiver, sound bar or “Roku TV Wireless
`Speakers”, where the Roku onscreen set-up process includes the step of the user
`indicating whether the sound on the target device was muted and stops pressing a key
`when it is muted (the “389 Patent Accused Products”).
`47.
`For purposes of example only, and without limitation, the 389 Patent
`Accused Products perform every element of claim 2 of the 389 Patent when used as
`intended by Roku. Roku also has infringed and continues infringes at least one other
`claim of the 389 Patent.
`48.
`The method of claim 2 involves “receiving a keystroke indicator signal from
`a remote control device, wherein the keystroke indicator signal indicates a key on said
`remote control device that a user has selected.” The 389 Patent Accused Products receive
`a keystroke indicator signal from Roku’s remote control, wherein the keystroke indicator
`signal indicates a key on Roku’s remote that a user has pressed.
`49.
`The method of claim 2 further involves “generating a key code within a key
`code generator device using the keystroke indicator signal, wherein said key code is part
`of a codeset that controls an electronic consumer device.” The 389 Patent Accused
`Products generate a key code during the set-up process, in response to keystroke indicator
`signal. This key code is part of a codeset that controls an electronic consumer device,
`such as the set of IR or CEC codes for control of a TV.
`50.
`The method of claim 2 further involves “modulating said key code onto a
`carrier signal, thereby generating a key code signal.” The 389 Patent Accused Products
`can generate key code signals onto a carrier signal, such as Bluetooth, Wi-Fi Direct, or IR
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 13 of 50 Page ID #:13
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`to communicate with a remote.
`51.
`The method of claim 2 further involves “transmitting said key code signal
`from said key code generator device.” The 389 Patent Accused Products can transmit
`such key code signals to the remote control device, using Bluetooth, Wi-Fi Direct, or IR
`transmissions depending on the model of the device, or to a consumer electronic device
`using HDMI CEC.
`52.
`The method of claim 2 further involves “identifying said codeset using input
`from a user of said remote control device, wherein said codeset is identified when said
`user stops pressing a key on said remote control device.” The 389 Patent Accused
`Products can identify a codeset for a consumer electronic device via user input on the
`Roku remote in response to screen stating “Music is currently playing. Do you hear it?”
`and “Did the music stop playing?” When the user stops pressing a key, the codeset is
`identified.
`53. Roku has infringed and continues to infringe claims of the 389 Patent within
`the meaning of 35 U.S.C. § 271(a) through the foregoing activities, including at least
`making, using, selling, offering for sale, and/or importing the 389 Patent Accused
`Products.
`54. Roku has performed each and every element of claim 2 of the 389 Patent
`during at least its own product development and testing of the 389 Patent Accused
`Products.
`55. Roku has indirectly infringed and continue to indirectly infringe at least
`claims of the 389 Patent under § 271(b) by knowingly and actively inducing infringement
`of those claims by its customers and end users of its products. The direct infringers that
`Roku has induced to infringe include, without limitation, Roku’s customers, users, and
`retailers that offer for sale, sell, and use the 389 Patent Accused Devices.
`56. Roku is on notice of the 389 Patent at least as of the filing of this complaint.
`In addition, Roku has had actual or constructive knowledge of the 389 Patent and its
`infringement prior to the filing of this Complaint. At least as of September 2017, UEI
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`

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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 14 of 50 Page ID #:14
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`informed Roku that it had over 30 issued and pending patents covering its control
`solutions. It is believed that Roku investigated UEI’s patents as a result and gained actual
`knowledge of the 389 Patent. Roku’s own patents also have cited documents referring to
`UEI’s patents over 290 times, which made Roku aware of UEI’s patents. As a result,
`Roku at least engaged in willful blindness by taking deliberate actions to avoid
`confirming a high probability of infringement of the 389 Patent. Furthermore, it is
`believed Roku copied various aspects of UEI’s patented technology, and Roku’s copying
`shows Roku knew or should have known of the 389 Patent and intended to induce
`infringement. As such, Roku either knew or should have known about the existence of
`the 389 Patent and that creating features in its devices to practice that patent would
`induce infringement. Roku has induced and continue to induce end users of the 389
`Patent Accused Products to infringe at least claim 2 of the 389 Patent within the meaning
`of 35 U.S.C. § 271(b).
`57. Roku’s acts of inducement include making, using, selling, and offering to
`sell the 389 Patent Accused Products, as well as Roku’s creation and dissemination of
`promotional materials, marketing materials, and instruction guides that teach and
`encourage end users to use the 389 Patent Accused Products in an infringing manner. For
`example, the 389 Patent Accused Products provide step-by-step instruction on how an
`end user should use these products in a manner that directly infringes the 389 Patent, and
`Roku also provides further instruction in the “Setup and Troubleshooting” section of its
`website. Roku, has a webpage, https://support.roku.com/en-gb/article/115013019828-
`how-to-set-up-your-roku-enhanced-remote-to-control-your-tv, dedicated to instructing
`users how to set up Roku Enhanced Remotes via wireless and infrared (IR) technologies
`to seamlessly control Roku streaming players and aspects of users’ TV. Examples
`include, without limitation, Roku’s instructions on how to connect Roku devices to
`control other devices through HDMI CEC or IR, including the “Did the music stop
`playing?” screen referenced above.
`58. Additionally, Roku has contributed to the infringement of claims of the 389
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`Universal Electronics Inc., Exhibit 2008
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

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`Case 8:18-cv-01580 Document 1 Filed 09/05/18 Page 15 of 50 Page ID #:15
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`Patent within the meaning of 35 U.S.C. § 271(c). Specifically, Roku has contributed to
`the end users infringement of the 389 Patent by, among other things, making, selling,
`aiding, assisting, authorizing, advertising, marketing, promoting, providing for, and/or
`e