Case 8:18-cv-01580-JVS-ADS Document 64 Filed 03/14/19 Page 1 of 9 Page ID #:1825
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 18-1580 JVS (ADx)
`Universal Electronics Inc. v. Roku Inc.
`Title
`
`Date March 14, 2019
`
`Present: The
`Honorable
`
`James V. Selna
`
`Lisa Bredahl
`Deputy Clerk
`Attorneys Present for Plaintiffs:
`Not Present
`
`Not Present
`Court Reporter
`Attorneys Present for Defendants:
`Not Present
`
`Proceedings:
`
`(IN CHAMBERS) Order Regarding Motion to Limit Number of
`Asserted Claims
`
`Defendant Roku, Inc. (“Roku”) filed a motion to limit the number of patent claims
`asserted by Plaintiff Universal Electronics Inc. (“UEI”). Mot., Docket No. 41. UEI filed
`an opposition. Opp’n, Docket No. 50. Roku replied. Reply, Docket No. 52.
`
`For the following reasons, the Court grants in part the motion.
`
`I. BACKGROUND
`
`UEI sued Roku on September 5, 2018. Docket No. 1. UEI’s First Amended
`Complaint (“FAC”) alleges that Roku infringes nine UEI patents1 by selling certain Roku
`streaming players with remote controls, and by making the Roku Mobile App available
`for use in connection with certain of its streaming players. FAC, Docket No. 28 ¶¶ 28,
`47, 67, 93, 113, 136, 158, 180, 199. On December 24, 2018, UEI served its Disclosure of
`Asserted Claims and Infringement Contentions (“Infringement Contentions”).
`Infringement Contentions, Docket No. 41-1.
`
`UEI’s Infringement Contentions assert 106 claims from nine patents. Id. at 2–3.
`Roku now moves to limit the number of asserted claims to 20 claims on the grounds that
`(1) the current volume of claims will impose an undue burden on the parties and the
`
`1 UEI alleges that Roku infringes U.S. Patent Nos. 7,589,642 (“the ‘642 Patent”); 8,004,389
`(“the ‘389 Patent”); 9,911,325 (“the ‘325 Patent”); 9,716,853 (“the ‘853 Patent”); 7,782,309 (“the ‘309
`Patent”); 7,821,504 (“the ‘504 Patent”); 7,821,505 (“the ‘505 Patent”); 7,895,532 (“the ‘532 Patent”);
`and 8,015,446 (“the ‘446 Patent”). Infringement Contentions, Docket No. 41-1 at 2.
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`Page 1 of 9
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`Universal Electronics Inc., Exhibit 2010
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

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`Case 8:18-cv-01580-JVS-ADS Document 64 Filed 03/14/19 Page 2 of 9 Page ID #:1826
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 18-1580 JVS (ADx)
`Universal Electronics Inc. v. Roku Inc.
`Title
`
`Date March 14, 2019
`
`Court; (2) courts routinely limit the number of claims asserted prior to claim
`construction; and (3) UEI will not suffer any prejudice if required to limit its asserted
`claims. See generally, Mot., Docket No. 41.
`
`II. LEGAL STANDARD
`
`District courts may limit the number of patent claims asserted in an action for
`patent infringement for the sake of judicial economy and management of a court’s
`docket. In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1313 (Fed.
`Cir. 2011); see also Stamps.com Inc. v. Endicia, Inc., 437 Fed.Appx. 897, 902 (Fed. Cir.
`2011); Medtronic Minimed Inc. v. Animas Corp., No. CV 12-04471 RSWL RZX, 2013
`WL 3322248, at *1 (C.D. Cal. Apr. 5, 2013) (collecting cases). “In determining whether
`to require parties [to] limit the number of claims asserted, courts look to the number of
`patents and claims at issue and the feasibility of trying the claims to a jury. Courts should
`also look to whether the patents at issue have common genealogy, whether the patents
`contain terminal disclaimers, and whether the asserted claims are duplicative.” Thought,
`Inc. v. Oracle Corp., No. 12-CV-05601-WHO, 2013 WL 5587559, at *2 (N.D. Cal. Oct.
`10, 2013) (citing In re Katz, 639 F.3d at 1311). “Even after requiring parties to limit the
`number of claims at issue for claim construction or trial, courts should allow patent
`holders to bring back in non[-]selected claims upon a showing of ‘good cause’ that the
`non-selected claims present unique issues of infringement or invalidity.” Id. (citing
`Masimo Corp. v. Philips Elecs. N. Am. Corp., 918 F. Supp. 2d 277, 284 (D. Del. 2013)).
`
`A.
`
`Additional Discovery Is Not Necessary
`
`III. DISCUSSION
`
`UEI argues first that additional discovery is necessary for it to discern which
`claims it will assert at trial. Opp’n, Docket No. 50 at 5–8. The Court disagrees. Limiting
`the number of asserted claims at this stage will not “unfairly prejudice[] the claimant’s
`opportunity to present its claims.” In re Katz, 639 F.3d at 1311. Infringement
`contentions, invalidity contentions, and core technical documents have been exchanged.
`Declaration of Jonathan Baker (“Baker Decl.”), Docket No. 52-1 ¶¶ 4, 5. Roku has
`completed much of its document production in response to UEI’s requests for production,
`and produced source code for the accused products. Id. ¶¶ 4, 6. UEI conducted source
`code inspections on February 22, and at the time this motion was filed, had source code
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`Universal Electronics Inc., Exhibit 2010
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

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`Case 8:18-cv-01580-JVS-ADS Document 64 Filed 03/14/19 Page 3 of 9 Page ID #:1827
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 18-1580 JVS (ADx)
`Universal Electronics Inc. v. Roku Inc.
`Title
`
`Date March 14, 2019
`
`inspections planned for February 28, and March 1.2 Id. ¶ 6. As Roku points out, by the
`hearing on this motion, UEI will have had Roku’s confidential technical information for
`four weeks, Roku’s invalidity contentions for more than three weeks, and will have spent
`at least three days examining Roku’s source code. Thus, the circumstances of this case
`do not comport with UEI’s contention that it has not had “a sufficient opportunity to
`obtain and consider discovery.” Opp’n, Docket No. 50 at 5. For instance, UEI cites
`Arctic Cat v. Polaris Indus. Inc., No. 13-3579 (JRT/FLN), 2015 WL 3756409 (D. Minn.
`June 12, 2015), to support the contention that claim limitation is premature. However,
`the defendant in Arctic Cat had not yet provided its invalidity and non-infringement
`defenses, unlike Roku. Furthermore, other district courts have limited claims at similar
`stages of discovery. See, e.g., Univ. of Va. Patent Foundation v. General Elec. Co., No.
`3:13cv51, 2015 WL 6958073, at *6 (W.D. Va. Nov. 10, 2015) (“[T]he Court finds that
`the parties’ exchange of infringement and invalidity contentions and GE’s provision of
`core technical documents provide the appropriate foundation for an initial claim
`reduction.”); Thought, 2013 WL 5587559, at *3. Therefore, the Court rejects UEI’s
`argument that in the “normal course” of patent infringement litigation, courts limit the
`number of asserted claims only after claim construction and the completion of fact
`discovery. See Opp’n, Docket No. 50 at 9.
`
`To the extent UEI argues that it is deprived of due process by claim limitation at
`this stage, its concerns are addressed by the procedure approved by the Federal Circuit in
`In re Katz – after the Court limits the number of asserted claims, UEI will have the
`opportunity to add additional claims upon showing that they present unique issues. In re
`Katz, 639 F.3d at 1311 (“We reject Katz’s due process argument. Katz has not shown
`that the claim selection procedure the district court employed was inadequate to protect
`Katz’s rights with respect to the unasserted claims.”); see also Masimo Corp., 918 F.
`Supp. 2d at 283–84 (“[S]ignificant to the In re Katz and Stamps.com decisions were the
`safety valve provisions of the lower courts, which did not make the limitation on the
`number of claims immutable.”).
`
`B.
`
`Limiting the Number of Asserted Claims Is Proper Prior to Claim
`Construction
`
`2 The parties are directed to advise the Court at the hearing on this motion as to whether the
`February 28 and March 1 inspections occurred as planned.
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`Page 3 of 9
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`Universal Electronics Inc., Exhibit 2010
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

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`Case 8:18-cv-01580-JVS-ADS Document 64 Filed 03/14/19 Page 4 of 9 Page ID #:1828
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 18-1580 JVS (ADx)
`Universal Electronics Inc. v. Roku Inc.
`Title
`
`Date March 14, 2019
`
`UEI argues that the Court should defer limiting the asserted claims until after claim
`construction. Opp’n, Docket No. 50 at 8–15. The Court disagrees. The weight of
`authority holds that claim limitation is proper prior to claim construction, particularly
`where defendants have already served invalidity contentions. See, e.g., Arctic Cat, 2015
`WL 3756409, at *4 (“the vast majority of courts that have ordered claim reduction have
`done so prior to claim construction”); Memory Integrity LLC v. Intel Corp., No. 3:15-cv-
`00262-SI, 2015 WL 6659674, at *3 (D. Or. Oct. 30, 2015) (collecting cases). The cases
`on which UEI relies are distinguishable from this action. For instance, in four of the
`cases UEI cites for the proposition that courts should defer limiting asserted claims until
`after claim construction, the defendants did not file their motions to limit until after the
`completion of claim construction. See Quest Integrity USA, LLC v. Clean Harbors
`Indus. Servs., Civ. No. 14-1482-SLR, 2016 U.S. Dist. LEXIS 151588, at *4 (D. Del.
`Nov. 1, 2016); Fujifilm Corp. v. Motorola Mobility LLC, No. 12-cv-03587-WHO, 2015
`WL 757575, at *4 (N.D. Cal. Feb. 20, 2015); Gen-Probe Inc. v. Becton Dickinson & Co.,
`No. 09-cv-2319 BEN (NLS), 2012 WL 579490, at *1 (S.D. Cal. Feb. 21, 2012); Havco
`Wood Prods., LLC v. Indus. Hardwood Prods., No. 10-cv-565-WMC, 2011 WL
`5513214, at *1 (W.D. Wis. Nov. 10, 2011). Furthermore, in Fleming v. Cobra Elecs.
`Corp., No. 1:12-cv-392-BLW, 2013 WL1760273, *2-*3 (D. Idaho Apr. 24, 2013), and
`Certusview Techs., LLC v. S&N Locating Servs., LLC, No. 2:13cv346, 2014 WL
`4930803, *5 (E.D. Va. Oct. 1, 2014), the courts denied motions to limit the number of
`asserted claims before service of defendant’s invalidity contentions. Therefore, those
`authorities are distinguishable as well. As Roku points out, despite citing 12 cases in
`support of its argument that claim limitation should be deferred, UEI doesn’t cite a single
`post-Katz case in which a district court denied a motion to limit the number of asserted
`claims after delivery of defendant’s invalidity contentions, but prior to claim
`construction.
`
`UEI also argues that limiting asserted claims is inappropriate because the Court has
`already limited the total number of claims to be construed to 10 terms. Declaration of
`Evan Woolley (“Wooley Decl.”), Ex. B, Docket No. 50-3. However, “[i]t would be a
`waste of time and resources to conduct a claim construction hearing for a multitude of
`claims that Plaintiff may later elect not to pursue during the claim selection process.”
`Joao Control and Monitoring Systems, LLC v. Ford Motor Co., Nos. 13-cv-13615, 13-cv-
`13957, 2014 WL 106926, at *4 (E.D. Mich. Jan. 10, 2014). Accordingly, limiting claims
`at this stage is efficient despite the fact that there will be only 10 terms construed because
`it increases the likelihood that the Court will construe the correct 10 terms, i.e., the terms
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`Universal Electronics Inc., Exhibit 2010
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case 8:18-cv-01580-JVS-ADS Document 64 Filed 03/14/19 Page 5 of 9 Page ID #:1829
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 18-1580 JVS (ADx)
`Universal Electronics Inc. v. Roku Inc.
`Title
`
`Date March 14, 2019
`
`relevant to the claims that UEI will actually assert at trial. And UEI concedes that if the
`Court limits the number of asserted claims by granting this motion, Roku will be in a
`better position to select the terms it wants construed. Opp’n, Docket No. 50 at 8.
`
`Furthermore, where courts have limited asserted claims prior to claim construction,
`it was not only a reduction in the number of terms for construction which motivated the
`courts’ limitation of claims. For instance, in Broadcom Corp. v. Emulex Corp., No. CV
`10-03963-JVS (ANx), at *5 (C.D. Cal. June 30, 2010), the Court found it “untenable” to
`maintain 178 asserted claims from eleven patents through claim construction, summary
`judgment motions, and trial. As Roku points out, UEI doesn’t cite any cases holding that
`limiting the number of terms for construction is a sufficient proxy for limiting the number
`of asserted claims. On the contrary, multiple courts have limited the number of asserted
`claims in addition to limiting the number of terms to be construed, which would be
`redundant if the two limitations led to the same practical result. See, e.g., Univ. of Va.
`Patent Foundation, 2015 WL 6958073, at *7; High Point Sarl v. Sprint Nextel Corp., No.
`09-2269-CM-DJW, 2010 WL 9497168, at *3 (D. Kan. Aug. 18, 2010). The difference
`between limiting terms to be construed and limiting asserted claims is demonstrated by
`the prejudice Roku would experience without any claim limitation even though the Court
`has already limited terms for construction. Roku would be required to develop its non-
`infringement defenses, invalidity defenses, and damages theories on all the asserted
`claims, and to work with experts in preparing expert reports on those issues as to all the
`asserted claims, even though only a fraction of the 100-plus asserted claims will proceed
`to trial. Therefore, the fact that the Court has already limited the number of terms to be
`construed does not foreclose the limitation of asserted claims here.
`
`C.
`
`Limiting the Number of Asserted Claims to 25 Claims Is Appropriate Based
`on the Facts of this Case
`
`Roku argues that limiting the asserted claims to 20 is appropriate because it has
`made an initial showing that the asserted claims are duplicative. Reply, Docket No. 52 at
`16–17. As an initial matter, the Court agrees with other district courts holding that a
`defendant is not required to make a prima facie showing that the claims are duplicative in
`order to justify a limitation on the number of asserted claims. See Masimo Corp., 918 F.
`Supp. 2d at 284 (rejecting argument that “duplicativeness of the claims” is the only
`standard for limiting claims); Memory Integrity, 2015 WL 6659674, at *3 (rejecting
`argument that district court should not limit the number of asserted claims because the
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`Universal Electronics Inc., Exhibit 2010
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

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`Case 8:18-cv-01580-JVS-ADS Document 64 Filed 03/14/19 Page 6 of 9 Page ID #:1830
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 18-1580 JVS (ADx)
`Universal Electronics Inc. v. Roku Inc.
`Title
`
`Date March 14, 2019
`
`defendant had “failed to show that the asserted claims are duplicative”); Thought, 2013
`WL 5587559, at *3 (“[T]he Court does not agree that In re Katz requires defendants to
`make a prima facie showing of duplication in order to require a reduction in the number
`of asserted claims from a demonstrably unmanageable amount, here 102, to a manageable
`one.”).
`
`Roku argues that the ‘309, ‘504, and ‘505 Patents (“the Janik Patents”) are part of
`the same patent family and have numerous virtually identical claims, which is supported
`by the fact that UEI describes each of the three patents as being directed to the same
`technological improvement in the FAC. Mot., Docket No. 41 at 6 (citing FAC, Docket
`No. 28 ¶¶ 111, 134, 156). Roku makes similar arguments regarding the ‘642, ‘389, and
`‘325 Patents (“the Mui Patents”) and the ‘532 and ‘446 Patents (“the Scott Patents”).
`Reply, Docket No. 52 at 16. Roku also identifies specific claims from the Janik Patents
`and Mui Patents which it argues are duplicative. See Mot., Docket No. 41 at 16.
`Moreover, Roku points out that UEI filed terminal disclaimers for the Janik Patents and
`the Mui Patents to overcome the Patent Office’s ability to reject claims which are not
`patentably distinct from the other patents in the same family. Id. (citing Docket No. 28-6
`at cover page and Docket No. 28-2 at cover page). These arguments are sufficient to
`justify a reduction in the number of asserted claims from an unmanageable number, to a
`manageable number. See In re Katz, 639 F.3d at 1312; Thought, 2013 WL 5587559, at
`*3 (limiting claims where defendant identified “some of the 102 asserted claims that it
`contends demonstrate duplication” and “three of the patents [had] terminal disclaimers
`tied to other patents in this case”); Memory Integrity, 2015 WL 6659674, at *3 (limiting
`claims where defendant showed that the “asserted claims overlap” by showing that two
`sets of patents shared specifications, and all the patents shared at least one common
`inventor and detailed methods or mechanisms for the same functionality). Furthermore,
`the cases upon which UEI relies are distinguishable because the defendants did not even
`attempt to identify duplicative claims or had not yet produced information to give the
`plaintiff the ability to determine how to limit its asserted claims, e.g., by producing
`confidential or internal technical documents. See Carl Zeiss AG v. Nikon Corp., No.
`2:17-cv-03221-RGK-MRW, 2018 WL 1858183, at *1 (C.D. Cal. Mar. 1, 2018); Lincoln
`Elec. Co. v. Soluciones, No. 1:15-cv-1575, 2016 WL 6909075, at *1 (N.D. Ohio Aug. 29,
`2016); Redmond Corp. v. Rose Electronics, No. C06-1711RSL, 2012 WL 4903270, at *1
`(W.D. Wash. May 29, 2012).
`
`UEI argues that the motion should be denied because the asserted patents “contain
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`Universal Electronics Inc., Exhibit 2010
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

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`Case 8:18-cv-01580-JVS-ADS Document 64 Filed 03/14/19 Page 7 of 9 Page ID #:1831
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 18-1580 JVS (ADx)
`Universal Electronics Inc. v. Roku Inc.
`Title
`
`Date March 14, 2019
`
`many unique issues of infringement such that requiring UEI to narrow its claims to 20 at
`this stage would violate its due process rights.” Opp’n, Docket No. 50 at 15. However,
`as noted previously, UEI’s due process rights are not violated by the limitation of
`asserted claims at this stage because it will have the opportunity to add unselected claims
`upon showing that the claims raise unique issues of infringement or validity. See In re
`Katz, 639 F.3d at 1311.
`
`UEI also argues that 20 claims are insufficient to cover all unique issues. UEI
`points to several examples of what it argues are unique issues of infringement. Opp’n,
`Docket No. 50 at 15–17. For example, UEI argues that the ‘642 Patent claims at least
`three unique issues of infringement because Claims 1, 3-4, and 6 contain a limitation
`requiring a signal sent from a device to a remote, Claims 2, 5, and 22-25 require a signal
`sent from a device to another device (such as a TV), and Claim 19 claims a remote
`control device, rather than a method. Id. at 15–16. UEI also argues that the two of the
`Mui Patents, the ‘389 and ‘325 Patents, claim unique limitations because some of their
`claims are apparatus claims, unlike the method claims in the ‘642 Patent, which is the
`third Mui Patent. Id. at 16. Furthermore, UEI argues that the patent family of the Janik
`Patents contain unique issues of infringement and validity because some claims are
`directed to computer readable media, while others are directed to methods or apparatuses.
`Id. at 16–17. Finally, UEI argues that the claims in the Janik Patent family could be
`divided into several groups of claims with unique issues: the “operational mode” group,
`the “cursor” group, the “WiFi” group, and the “input/output” group. Id. at 17.
`
`UEI fails to demonstrate that 20 claims are insufficient to cover all unique issues of
`infringement and invalidity, even assuming that all of the claim limitations identified
`above do in fact present unique issues. Furthermore, UEI does not adequately explain
`how the different limitations it identifies raise unique questions of infringement or
`invalidity. As stated by the Federal Circuit, “[w]hile different claims are presumed to be
`of different scope, that does not mean that they necessarily present different questions of
`validity or infringement.” In re Katz, 639 F.3d at 1313. UEI acknowledges that it must
`reduce asserted claims at some point in these proceedings, and fails to sufficiently justify
`why the limitation cannot occur at this juncture. Again, the Court notes that if UEI
`ultimately discovers that non-selected claims raise separate and distinct legal issues from
`those raised by the already-selected claims, UEI may ask the Court for leave to reassert
`unselected claims. Accordingly, the Court grants Roku’s motion to limit asserted claims.
`
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`Universal Electronics Inc., Exhibit 2010
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`

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`Case 8:18-cv-01580-JVS-ADS Document 64 Filed 03/14/19 Page 8 of 9 Page ID #:1832
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 18-1580 JVS (ADx)
`Universal Electronics Inc. v. Roku Inc.
`Title
`
`Date March 14, 2019
`
`UEI points to multiple cases in which courts have expressly limited asserted claims
`to three or four claims per patent. E.g., Joao Control, 2014 WL 106926, at *4 (limiting
`claims to 15, “the equivalent of three asserted claims per patent”); Medtronic, 2013 WL
`3322248, at *3 (initial narrowing of four claims per patent). In light of this precedent, the
`Court’s experience with patent infringement litigation, and the fact that UEI currently
`asserts claims across nine patents, the Court therefore orders UEI to limit its asserted
`claims to 25 claims, rather than Roku’s requested reduction to 20 claims.
`
`D.
`
`Roku Is Limited to 35 Prior Art References
`
`Roku presently asserts 147 prior art patents, references, and products for the
`purposes of invalidity. Woolley Decl., ¶ 13, Ex. E, Docket No. 50-6 at 8–18. Many
`courts have required defendants to limit the number of prior art references while also
`ordering plaintiffs to limit the number of asserted claims because both limitations
`enhance judicial resources and streamline cases. Certusview, 2014 WL 4930803, at *6
`(citing cases); see also Straight Path IP Grp., Inc. v. Apple Inc., No. C 16-03582 WHA,
`2017 WL 1365124, at *2 (N.D. Cal. Apr. 13, 2017); Gentherm Canada, Ltd. v. IGB
`Automotive, Ltd., No. 13-11536, 2016 WL 1170801, at *2–3 (E.D. Mich. Mar. 25,
`2016); Select Comfort Corp. v. Temper Sealy Int’l, Inc., No. 14-245 (JNE/JSM), 2015
`WL 12781253, at *2 (D. Minn. Oct. 22, 2015); Thought, 2013 WL 5587559, at *4.
`
`The Court finds it appropriate to limit Roku to 35 prior art references. UEI argues
`that the number of prior art references should be limited to the number of asserted claims.
`Opp’n, Docket No. 50 at 20. The Court disagrees. Invalidity arguments based on
`obviousness for a single claim often require a combination of two, three, or more prior art
`references. See KSR Int’l v. Teleflex, 550 U.S. 398, 420 (2007) (“Often, it will be
`necessary for a court to look to interrelated teachings of multiple patents” to evaluate
`obviousness). UEI also argues that the limit on prior art references should include both
`single obviating references as well as combinations containing multiple references.
`Opp’n, Docket No. 50 at 20–21. The Court disagrees. Where courts have limited a
`similar ratio of prior art references to claims, courts have not limited the number of
`obviousness combinations. See, e.g., Certusview, 2014 WL 4930803, at *7 (limiting
`prior art references to 25 and claims to 15 without placing limit on number of
`obviousness combinations); Gentherm, 2016 WL 1170801, at *3 (limiting prior art
`references to 22 and claims to 14 without placing limit on number of obviousness
`combinations); Thought, 2013 WL 5587559, at *4 (limiting prior art references to 50 and
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`Universal Electronics Inc., Exhibit 2010
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

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`Case 8:18-cv-01580-JVS-ADS Document 64 Filed 03/14/19 Page 9 of 9 Page ID #:1833
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 18-1580 JVS (ADx)
`Universal Electronics Inc. v. Roku Inc.
`Title
`
`Date March 14, 2019
`
`claims to 32 without placing limit on number of obviousness combinations). Therefore,
`the Court takes the same approach here. Roku’s prior art references will not be “double-
`counted” towards the limit of prior art references if used more than once in obviousness
`combinations.
`
`Other district courts have found that defendants have the ability to limit prior art
`references within two to three weeks of the plaintiff limiting the claims at issue. E.g.,
`Memory Integrity, 2015 WL 6659674, at *4; Select Comfort Corp. v. Gentherm, Inc., No.
`13-CV-2314 (SRN/JJK), 2014 WL 4976586, at *2 (D. Minn. Oct. 3, 2014); Thought,
`2013 WL 5587559, at *4. Accordingly, Roku must limit its prior art references to 35
`within 21 days of UEI’s selection of asserted claims.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Roku’s motion is granted in part. The Court directs
`UEI to limit its asserted claims to no more than 25 within 21 days of this Order. The
`Court further directs Roku to limit its prior art references to no more than 35 within 21
`days after UEI selects its asserted claims.
`
`Finally, the Court continues the deadline for the parties to exchange proposed
`claim constructions pursuant to N.D. Patent L.R. 4-2 from March 21, 2019 to April 4,
`2019.
`
`IT IS SO ORDERED.
`
`Initials of Preparer
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`Universal Electronics Inc., Exhibit 2010
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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