Case 8:20-cv-00701-JLWS Document 8 Filed 04/14/20 elof2 Page ID #:157
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`AO 440 (Rev. 06/12) Summons in a Civil Action
`
`UUNITED STATES DISTRICT COURT
`for the
`Central District of California
`
`UNIVERSAL ELECTRONICS INC.,
`a Delaware Company,
`
`Plaintiff(s)
`V.
`
`ROKU, INC., a Delaware Company
`Defendant (s)
`
`Civil Action No. 8:20-cv-00701.1LS (KESx)
`
`SUMMONS IN A CIVIL ACTION
`
`TO: (Defendant's name and address)
`ROKU, Inc.
`C/O Agent for Service - Corporation Service Company
`2710 Gateway Oaks Drive, # 150N
`Sacramento, CA 95833
`
`A lawsuit has been filed against you.
`
`Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
`are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
`P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
`the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff's attorney,
`whose name and address are:
`Ryan W. Koppelman (State Bar No. 290704
`Alston & Bird LLP
`950 Page Mill Road
`Palo Alto, CA 94304
`
`If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
`You also must file your answer or motion with the court.
`
`Date: April 14, 2020
`
`CLERK OF COURT
`
`Whfr
`
`
`Signature of Clerk or Deptrty Clerk
`
`Americmi LegalNel, Inc.
`www. Fo rms W o rk PI o w. co m
`
`±.,
`
`Roku EX1053
`Roku v. UEI
`IPR2021-00455
`
`0001
`
`

`

`Case 8:20-cv-00701-JOES Document 8 Filed 04/14/20 a 2 of 2 Page ID #:158
`
`AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)
`
`Civil Action No.
`
`PROOF OF SERVICE
`(This section should not be filed with the court unless required by Fed. R. Civ, P. 4(l))
`
`This summons for (name of individual and title, if any)
`
`was received by me on (date)
`
`q I personally served the summons on the individual at (place)
`
`q I left the summons at the individual's residence or usual place of abode with (name)
`
`on (date)
`
`, and mailed a copy to the individual's last known address; or
`
`, a person of suitable age and discretion who resides there,
`
`on (date)
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`; or
`
`q I served the summons on (name oftndividual)
`
`designated by law to accept service of process on behalf of (name oforgantZatton)
`
`on (date)
`
`; or
`
`q I returned the summons unexecuted because
`
`q Other (spectfy):
`
`who is
`
`or
`
`My fees are $
`
`for travel and $
`
`for services, for a total of $ 0.00
`
`I declare under penalty of perjury that this information is true.
`
`Date:
`
`Additional information regarding attempted service, etc:
`
`Server's signature
`
`Printed name and title
`
`Server's address
`
`Amcrican LegnlNc~, Inc.
`wwwFormsWorkFlAyy,QQm 0
`
`0002
`
`

`

`Case 8:20-cv-000 Document 1 Filed 04/09/20 Pagof 41 Page ID #:1
`
`Thomas W. Davison (pro hac forthcoming)
`Ryan W Koppelman (SBN 290704)
`ALSTON & BIRD LLP
`Michael J. Newton (SBN 156225)
`Katherine G. Rubschlager (SBN 328100) 950 F Street NW
`ALSTON & BIRD LLP
`Washington, DC 20004
`Telephone: (202) 239-3300
`950 Page Mill Road
`Facsimile:
`(202) 239-3333
`Palo Alto, CA 94304
`tom.davison@alston.com
`Telephone: (650) 838-2000
`Facsimile:
`(650) 838-2001
`ryan.koppelman@alston.com
`mike.newton@alston.com
`katherine.rubschlager@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
`UniveNsal 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. 5:20-cv-00701
`
`COMPLAINT FOR PATENT
`INFRINGEMENT
`
`DEMAND FOR JURY TRIAL
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`COMPLAINT FOR PATENT INFRINGEMENT
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`0003
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`

`

`Case 8:20-cv-000 Document 1 Filed 04/09/20 Pagof 41 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:
`
`PARTIES
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`1.
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`Plaintiff UEI is a Delaware corporation that has a principal place of business
`
`located at 15147 N. Scottsdale Road, Suite H300, Scottsdale, Arizona 85254. UEI has
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`offices in this judicial district at 201 E. Sandpointe Ave., Santa Ana, CA 92707.
`
`2.
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`Defendant Roku is a Delaware corporation with a principal place of business
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`located at 150 Winchester Circle, Los Gatos, CA 95032. It has offices in the judicial
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`district at 2450 Colorado Ave., Santa Monica, CA 90404.
`
`3.
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`Roku manufactures and sells streaming players and components therefor,
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`enabling users to stream free or paid programming services. Roku's infringing products
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`are Roku's streaming players, including, but not limited to the following Roku products
`
`and models: Rolcu Ultra, Roku Ultra LT, Roku Express, Roku Express+, Roku Premier,
`
`Roku Prernier+, RGku Streamlrig stick, Roku Streaming Stick+, Roku Streaming Stick+
`
`HE, Rolcu Smart Soundbar, Roku 1, Roku 2, Roku 3, Rolcu 4, Model Nos.: 4670X,
`
`4662X, 4661X, 4660X, 4640X, 4630X, 4620X, 4400X, 4230X, 4210X, 4200X, 3931X,
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`3930X, 3921X, 3920X, 3910X, 3900X, 3811X, 3810X, 3800X, 3710X, 3700X, 3600X,
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`3500X, 2720X, 2710X, 2700X, 2500X, 2450X, 2400X, and/or 9101R (the "Roku
`
`Streaming Players"). The Roku Voice Remote and Roku Enhanced Voice Remote
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`("Roku Remotes") infringe claims of one of the asserted patents.
`
`4.
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`Roku also incorporates its technology into Roku TVs, including TCL
`
`branded Roku TVs. Infringing Roku TVs include but are not limited to TCL's 8, 6, 5, 4,
`
`and 3 series Roku TVs. Together the Roku Streaming Players, Roku Remotes, and Roku
`
`TVs are the "Accused Products."
`
`PATENTS IN-SUIT
`
`5.
`
`UEI owns and has standing to sue for infringement of U.S. Patent No.
`
`7,969,514 (the "514 Patent"), entitled "Relaying Key Code Signals Through a Remote
`
`Control Device," which was duly and lawfully issued on June 28, 2011. A true and
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`1
`COMPLAINT FOR PATENT INFRINGEMENT
`
`0004
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`

`

`Case 8:20-cv-000 Document 1 Filed 04/09/20 Pagof 41 Page ID #:3
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`1 correct copy of the 514 Patent is attached to this Complaint as Exhibit A.
`
`2
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`6.
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`UEI owns and has standing to sue for infringement of U. S. Patent No.
`
`3 9,641,785 (the "785 Patent"), entitled "System and Method for Configuring Controlling
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`4 Device Functionality," which was duly and lawfully issued on May 2, 2017. A true and
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`5 correct copy of the 785 Patent is attached to this Complaint as Exhibit B
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`6
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`7.
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`UEI owns and has standing to sue for infringement of U.S. Patent No.
`
`7 10,325,486 (the "486 Patent"), entitled "System and Method for Optimized Appliance
`
`8 Control," which was duly and lawfully issued on June 18, 2019. A true and correct copy
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`9 of the 509 Patent is attached to this Complaint as Exhibit C.
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`10
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`8.
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`UEI owns and has standing to sue for infringement of U.S. Patent No.
`
`11' 10,593,196 (the "196 Patent"), entitled "System and Method for Optimized Appliance
`
`12 Control," which was duly and lawfully issued on March 17, 2020. A true and correct
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`13 copy of the 196 Patent is attached to this Complaint as Exhibit D.
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`14
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`9.
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`UEI owns and has standing to sue for infringement of U.S. Patent No.
`
`15 10,600,317 (the "317 Patent"), entitled "System and Method for Simplified Setup of a
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`16 Universal Remote Control" which was duly and lawfully issued on March 24, 2020. A
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`17
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`18
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`true and correct copy of the 317 Patent is attached to this Complaint as Exhibit E.
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`10.
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`The 514, 785, 486, 196, and 317 Patents are collectively referred to as the
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`19 Asserted Patents.
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`20
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`21
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`JURISDICTION AND VENUE
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`11. This Court has jurisdiction over the subject matter of this action under 28
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`22 I U.S.C. §§ 1331 and 1338(a).
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`23
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`12. This Court has personal jurisdiction over Roku pursuant to the laws of the
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`24 State of California, including California's Long Arm Statute, California Code of Civil
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`25 Procedure § 410.10. Rolcu's principal place of business is in the state of California, and,
`26 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,
`
`27
`28 Roku is subject to specific jurisdiction here. In particular, Roku sells and offers to sell
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`2
`COMPLAINT FOR PATENT INFRINGEMENT
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`0005
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`

`

`Case 8:20-cv-000 Document 1 Filed 04/09/20 Pagof 41 Page ID #:4
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`1I hardware and software relating to remote control devices that infringe UEI's patents in
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`2 California, and specifically in this judicial district. Roku does business in this judicial
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`3 district relating to Roku's accused products, and has an office located in this district at
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`4 2450 Colorado Ave., Santa Monica, CA 90404. Roku is subject to personal jurisdiction
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`5 because it has a regular and established place in this district and it sells, distributes, and
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`6
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`licenses its products in this District, such that it should reasonably and fairly anticipate
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`7 being brought into this Court.
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`8
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`13. Venue is proper in this District under 28 U.S.C. §§ 1391(b)-(d) and 1400(b).
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`9 Roku has committed acts of infringement in this judicial district and has a regular and
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`10 established place of business in this judicial district at 2450 Colorado Ave., Santa
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`11 Monica, CA 90404. It occupies commercial office space at that address and employs
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`12 I numerous employees at this address, including its General Counsel.
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`13
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`14
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`15
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`COUNT ONE
`INFRINGEMENT OF U.S. PATENT 7,969,514
`14. UEI incorporates the previous paragraphs of this Complaint as if fully set
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`16 I forth herein.
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`17
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`15. UEI is the owner of all rights, title, and interest in the 514 Patent, including
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`18 I the right to bring this suit for injunctive relief and damages.
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`19
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`16. The 514 Patent generally relates to methods for setting up a universal remote
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`20 I control using interactive instructions. Manufacturers typically provide a remote control
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`21 with an appliance, such as a television, or DVR, and, as such, different appliance types oi
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`Wa different manufacturers are often commanded with different remote controls. To
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`23 minimize the number of individual remote controls a user requires, universal remote
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`24 controls have been developed. Prior art methods of setting up and configuring universal
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`25
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`remote controls were demanding, exacting, and generally frustrating for many users. For
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`26 example, documents containing the setup instructions and setup codes are often be lost,
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`27 misplaced, or may be superseded as brand and/or model names evolve. The 514 Patent
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`28 solves this problem by providing a system and method for enabling set up of a controllini
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`3
`COMPLAINT FOR PATENT INFRINGEMENT
`
`0006
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`

`

`Case 8:20-cv-000 Document 1 Filed 04/09/20 Pagof 41 Page ID #:5
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`1 I device capable of controlling a plurality of appliances, via an interactive instruction set
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`2 I and associated programming.
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`3
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`17. The 514 Patent is valid and enforceable. The claims of the 514 Patent are
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`4 I directed to an inventive application in the field of remote control of consumer electronic
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`5 I devices. The combination of claim elements was not well-understood, routine, or
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`6 I conventional to those in the field at the time of invention. In particular, it was not well-
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`7 I understood, routine or conventional at the time of invention to provide on a controllable
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`8 appliance programming to display interactive instructions to a user for setting up a
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`9 universal remote control. Typically, the setup process involved referencing paper
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`10 I manuals and tables of codes.
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`11
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`18. Roku has infringed and continues to infringe literally and/or through the
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`12 I doctrine of equivalents, one or more claims of the 514 Patent, including but not limited to
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`13 claim 1, by using, making, offering to sell, and/or selling without authority in the United
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`14 States certain universal control devices, including but not limited to the Roku Streaming
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`15 Players and the Roku TVs. Roku directly infringes one or more claims of the 514 Patent
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`16 when Roku or those acting upon Roku's behalf, such as employees, officers, directors,
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`17 principals, agents, consultants, and/or representatives, use the Roku Streaming Players or
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`18 Roku TVs in the United States. Further, UEI contends that Roku's customers and/or end
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`19 I users directly infringe the method claims listed below when using the Roku Streaming
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`20 Players or Roku TVs in the United States and Roku therefore indirectly infringes by way
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`21 of inducement and/or contributory infringement.
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`22
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`19. For purposes of example only, and without limitation, the Roku Streaming
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`23 I Players perform every element of claim 1 of the 514 Patent when used as intended by
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`24 Roku. Roku also has infringed and continues to infringe at least one other claim of the
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`25 1 514 Patent.
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`26
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`20. In particular, the method of claim 1 is "[a] method for providing interactive
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`27 instructions to a user to set up a controlling device used to command a plurality of
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`28 controllable appliances." involves "receiving a keystrolce indicator signal from a remote
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`n ~
`COMPLAINT FOR PATENT INFRINGEMENT
`
`0007
`
`

`

`Case 8:20-cv-000 Document 1 Filed 04/09/20 Pagof 41 Page ID #:6
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`control device, wherein the keystroke indicator signal indicates a key on said remote
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`2 control device that a user has selected." The Roku Streaming Players perform a method
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`for providing interactive instructions to a user to set up a controlling device used to
`3
`4 I command a plurality of controllable appliances. For example, the Roku Streaming
`5 Players are each sold for importation, imported, or sold after importation with a remote
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`6 controller (e.g., controlling device). The Roku remote controller can be used to control a
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`7 plurality of controllable appliances such as the Roku streaming devices and/or a TV. See
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`8 https://support.roku.com/artiele/1 15013019828-how-do-i-set-up-my-roku-enhanced-
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`9
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`10
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`remote-to-control-my-tv- ("Rolcu enhanced remotes incorporate both wireless and
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`infrared (IR) technologies to seamlessly control your Roku streaming player and aspects
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`11 of your TV.").
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`12
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`13
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`21. The Roku TVs also perform a method for providing interactive instructions
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`to a user to set up a controlling device used to command a plurality of controllable
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`14 appliances. For example, the TCL Roku TVs are each sold for importation, imported, or
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`15 sold after importation with a remote controller (e.g., controlling device). The remote
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`16 controller provided with the TCL Roku TVs can be used to control a plurality of
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`17 controllable appliances. For example, the remote controller can be used to control the
`18 I TCL Roku TVs as well as a soundbar and AVRs. See
`19 https://support.tclusa.com/televisions-setup-configurations/connecting-a-sound-bar-to-
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`20 your-tv-using-arc ("Using HDMI© ARC reduces the number of cables required, and
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`21 optionally lets you control the volume and mute state of the receiver by enabling system
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`22 audio control.")
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`23
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`22. The method of claim 1 further involves "providing on a first controllable
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`24 appliance programming for the display of instructions to the user in response to input
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`25
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`from the user via the controlling device." The Roku Streaming Players perform the step
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`26 of providing on a first controllable appliance programming for the display of instructions
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`27
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`to the user in response to input from the user via the controlling device. For example, the
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`28 Roku OS on the Roku Streaming Players (e.g., first controllable appliance) contains
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`5
`COMPLAINT FOR PATENT INFRINGEMENT
`
`0008
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`

`

`Case 8:20-cv-00* Document 1 Filed 04/09/20 Pagof 41 Page ID #:7
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`programming that displays instructions to the user in response to input from the user via
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`2 I the Roku remote controller (e.g., controlling device). Further, the Roku Streaming
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`3 Players contain RAM and ROM for storing programming that is executed by a processor
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`4 I to display instructions to the user in response to input from the user via the controlling
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`5
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`6
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`7
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`I device. During the initial setup and when using the "Set up a remote for TV control"
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`I feature, the aforementioned programming enables Roku Streaming Players to display to
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`I the user instructions in the form of inenus that are navigated via input through the Rolcu
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`8 I remote controller.
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`9
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`23. The Roku TVs also perform the step of providing on a first controllable
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`10 appliance programming for the display of instructions to the user in response to input
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`11
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`from the user via the controlling device. For example, the TCL Roku TVs (e.g., first
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`12 I controllable appliance) contain programming that displays instructions to the user in
`response to input from the user via the remote controller (e.g., a controlling device). The
`
`13
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`14 user navigates to the "Control Other Devices (CEC)" menu by providing input via the
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`15 Rolcu remote controller.
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`16
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`17
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`24. The method of claim 1 further involves "providing input by the user to the
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`I first controllable appliance via the controlling device indicating that the controlling
`
`18 device is to be set up to command a second controllable appliance." The Roku Streaming
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`19 Players perform the step of providing input by the user to the first controllable appliance
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`20 via the controlling device indicating that the controlling device is to be set up to
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`21 command a second controllable appliance. For example, when setting up the Roku
`
`WA remote controller for TV control, the user provides input to the Roku Streaming Product
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`23
`
`(e.g., a first controllable appliance) via the Roku remote controller (e.g., the controlling
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`24 device) indicating that the Roku remote is to be set up to control a second controllable
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`25 appliance (e.g., a TV). User input to the Roku remote controller (e.g., clicking the "OK"
`
`26
`
`I button) navigates the "Control Your TV" menus and indicates that the Roku remote
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`27 controller is to be set up to control the TV.
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`28
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`25. The Roku TVs also perform the step of providing input by the user to the
`
`0
`COMPLAINT FOR PATENT INFRINGEMENT
`
`0009
`
`

`

`Case 8:20-cv-000 Document 1 Filed 04/09/20 Pagof 41 Page ID #:8
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`first controllable appliance via the controlling device indicating that the controlling
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`2 device is to be set up to command a second controllable appliance. For example, the
`
`3 Roku OS on the TCL Roku TVs (e.g., first controllable appliance) contains programming
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`4
`
`5
`
`that displays instructions to the user in response to input from the user via the Roku
`
`remote controller (e.g., controlling device). Further, the TCL Roku TVs contain RAM
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`6 and ROM for storing programming that is executed by a processor to display instructions
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`7 I to the user in response to input from the user via the controlling device. For example,
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`8 within the "Control Other Devices (CEC)" menu, the user may provide input indicating
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`9
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`that the remote control is to be set up to command an appliance connected via HDMI by
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`10 selecting the option to "Search for CEC Devices" and pressing the "OK" button on the
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`11 Roku remote controller.
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`12
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`26. The method of claim 1 further involves "accessing instruction data
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`13 associated with the second controllable appliance by the programming provided on the
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`14
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`15
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`first controllable appliance." The Roku Streaming Players perform the step of accessing
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`instruction data associated with the second controllable appliance by the programming
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`16 provided on the first controllable appliance. For example, setting up the Roku remote
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`17 controller to control a TV connected to a Roku Streaming Player includes accessing
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`18
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`instruction data associated with the second controllable appliance (e.g., the TV) by the
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`19 programming provided on the first controllable appliance (e.g., Roku Streaming Player).
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`20 The instruction data associated with the second controllable appliance (e.g., the TV)
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`21
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`22
`
`include the data for guiding the user to set up the Roku remote controller for controlling
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`the TV. For some TVs, the Roku Streaming Player will have information about the TV
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`23 such that the user is immediately taken directly to screens asking "Is music playing?"
`
`24 and/or "Has the music stopped playing?" For other TVs, the Roku Streaming Player will
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`25
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`26
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`request that the user enter a brand name.
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`27. The Roku TVs also perform the step of accessing instruction data associated
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`27 with the second controllable appliance by the programming provided on the first
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`28 controllable appliance. For example, the TCL Roku TV may access instruction associated
`
`7
`COMPLAINT FOR PATENT INFRINGEMENT
`
`0010
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`

`

`Case 8:20-cv-000 Document 1 Filed 04/09/20 Pagof 41 Page ID #:9
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`1 with a connected CEC device such as an AVR when the user selects the "Search for CEC
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`2 I Devices" option in the "Control Other Devices (CEC)" menu. The TCL Roku TV may
`
`3
`
`I also access instruction data associated with a connected CEC device such as an AVR by
`
`4 I automatically detecting the presence of the device when it is first connected via HDMI.
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`5
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`28. The method of claim 1 further involves "in response to input by the user via
`
`6 I the controlling device, displaying the instruction data by the programming provided on
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`7 I the first controllable appliance for use by the user in setting up the controlling device to
`
`8 command the second controllable appliance." The Roku Streaming Players perform the
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`9 step of in response to input by the user via the controlling device, displaying the
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`10
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`instruction data by the programming provided on the first controllable appliance for use
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`11 by'the user in setting up the controlling device to command the second controllable
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`12 appliance. For example, setting up the Roku remote controller to control a TV connected
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`13
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`to a Rolcu Streaming Player includes displaying the instruction data by the programming
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`14 provided on the first controllable appliance (e.g., the Roku Streaming Player) for use by
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`15
`
`the user in setting up the controlling device to command the second controllable
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`16 appliance (e.g., the TV). The instruction data associated with the second controllable
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`17 appliance (e.g., the TV) include the data guiding the user to set up the Roku remote
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`18 controller for controlling the TV. The Roku Streaming Players display interactive menus
`I on the TV screen. The user inputs selections via the remote controller to navigate the
`20 menus for setting up TV control. In response to user input, the Roku Streaming Players
`
`19 I
`
`21 displays various types of instruction data. The instruction data further includes screens
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`22 guiding the user to set up the remote controller to control the TV. For example, in some
`
`23
`
`instances, the Rolcu Streaming Player display screens asking "Is music playing?" and/or
`
`24 "Has the music stopped playing?" In other instances, the Roku Streaming Player will
`
`25
`
`26
`
`request that the user enter a brand name.
`
`29. The Roku TVs also perform the step of in response to input by the user via
`
`27 I I the controlling device, displaying the instruction data by the programming provided on
`
`28
`
`the first controllable appliance for use by the user in setting up the controlling device to
`
`8
`COMPLAINT FOR PATENT INFRINGEMENT
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`0011
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`Case 8:20-cv-0070ocument 1 Filed 04/09/20 Pageof 41 Page ID #:10
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`command the second controllable appliance. For example, the.user may provide input via
`
`2 I the Roku remote controller (e.g., controlling device) by pressing the "OK" button when
`
`3
`
`I the option "Search for CEC Devices" is selected in the "Control Other Devices (CEC)"
`4 I menu. The user may also provide input by selecting the type of device connected to the
`I FIDMI (ARC) port when the TCL Roku TV automatically detects the presence of a
`5
`
`6 I connected device lilce an AVR. Once the TCL Roku TV detects a connected device like
`
`7 I an AVR, the user may select certain options in the "Control Other Devices (CEC)" menu
`
`8
`
`9
`
`I to configure the Roku remote controller to control the AVR
`
`30. Roku has infringed and continues to infringe claims of the 514 Patent within
`
`10 I the meaning of 35 U.S.C. § 271(a) through the foregoing activities, including at least
`
`11 malcing, using, selling, offering for sale, and/or importing the Roku Streaming Players or
`
`12 Roku TVs.
`
`13
`
`31. Rolcu has performed each and every element of claim 1 of the 514 Patent
`
`14 I
`
`I during at least its own product development and testing of the Roku Streaming Pla_yers or
`
`15 Roku TVs.
`
`16
`
`32. Roku has indirectly infringed and continues to indirectly infringe at least
`
`17 I claim 1 of the 514 Patent under § 271(b) by knowingly and actively inducing
`
`18
`
`19
`
`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
`
`20 customers, users, and retailers that offer for sale, sell, and use the Roku Streaming
`
`21 Players or Roku TVs.
`
`22
`
`33. Roku is on notice of the 514 Patent at least as of the filing of this Complaint.
`
`23 I In addition, Roku has had actual or constructive knowledge of the 514 Patent and its
`
`24
`
`infringement prior to the filing of this Complaint. Further, at least as of September 2017,
`
`25 UEI informed Roku in writing that it had over 30 issued and pending patents covering its
`
`26 control solutions. It is believed that Roku investigated UEI's patents as a result and
`
`27 I gained actual knowledge of the 514 Patent. If it did not investigate UEI's patents as a
`
`28
`
`result, it was acting in willful blindness of a reasonable likelihood of infringement.
`
`0
`COMPLAINT FOR PATENT INFRINGEMENT
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`0012
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`Case 8:20-cv-007*ocument 1 Filed 04/09/20 Pageof 41 Page ID #:11
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`1 Roku's own patents also have cited documents referring to UEI's patents over 290 times,
`
`2 I which made Roku aware of UEI's patents. Roku is a large public company that annually
`
`I generates hundreds of millions of dollars of revenue, has ready access to the capital
`
`3
`4 I markets and has the ability to pay licensing fees or royalties to UEI. As a result, Rolcu at
`I least engaged in willful blindness by taking deliberate actions to avoid confirming a high
`5
`
`6 I probability of infringement of the 514 Patent. As such, Roku either knew or should have
`
`7 I known about the existence of the 514 Patent and that creating features in its devices to
`
`8 practice that patent would induce infringement. Roku has not talcen any steps of remedial
`
`9 action to mitigate its infringement. Roku has induced and continue to induce end users of
`
`10
`
`the Rolcu Streaming Players or Roku TVs to infringe at least claim 1 of the 514 Patent
`
`11 within the meaning of 35 U.S.C. § 271(b).
`
`12
`
`34. Roku's acts of inducement include making, using, selling, and offering to
`
`13
`
`I sell the Roku Streaming Players or Rolcu TVs, as well as Roku's creation and
`14 dissemination of promotional materials, marketing materials, and instruction guides that
`
`15
`
`16
`
`teach and encourage end users to use the Roku Streaming Players or Rolcu TVs in an
`
`infringing manner. For example, the Roku Streaming Players and Roku TVs provide
`
`17 step-by-step instructions on how an end user should use these products in a manner that
`
`18 directly infringes the 514 Patent, and Roku also provides further instructions in the
`
`19 "Setup and Troubleshooting" section of its website. Rolcu, has a webpage,
`
`20 I https://support.roku.com/en-gb/article/115013019828-how-to-set-up-your-roku-
`
`21 enhanced-remote-to-control-your-tv, dedicated to instructing users how to set up Roku
`
`22 Enhanced Remotes via wireless and infrared (IR) technologies to seamlessly control
`
`23 Roku streaming players and aspects of users' TVs. Examples include, without limitation,
`
`24 Roku's instructions on how to connect Roku devices to control other devices through
`
`25 HDMI and IR.
`
`26
`
`35. Additionally, Roku has contributed to the infringement of claims of the 514
`
`27 I Patent within the meaning of 35 U.S.C. § 271(c). Specifically, Roku has contributed to
`
`28
`
`the end users infringement of the 514 Patent by, among other things, making, selling,
`
`10
`COMPLAINT FOR PATENT INFRINGEMENT
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`0013
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`Case 8:20-cv-0070ocument 1 Filed 04/09/20 Pageof 41 Page ID #:12
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`aiding, assisting, authorizing, advertising, marketing, promoting, providing for, and/or
`
`2 I encouraging the offer for sale, sale, and use of the Roku Streaming Players or Roku TVs,
`I which Roku knew contain the software and features discussed above that are especially
`3
`4 I made or adapted by Roku for infringing uses of claims of the 514 Patent. The software
`I and features discussed above are not staple articles of commerce suitable for substantial
`5
`6 I non-infringing use. The direct infringers for Roku's contributory infringement include,
`7 I without limitation, its customers, users, and retailers that offer for sale, sell, and use the
`
`8
`
`9
`
`I Roku Streaming Players or Roku TVs.
`
`36. Rolcu's direct and indirect infringement of the 514 Patent has injured UEI,
`
`10 I and UEI is entitled to recover damages adequate to compensate it for such infringement.
`
`11
`
`37. Roku's infringement of the 514 Patent has been willful, wanton, malicious,
`
`12 I and/or deliberate and constitutes egregious behavior justifying an award of enhanced
`13 damages. More specifically, Roku knew or should have known about the 514 Patent and
`
`14 I its infringement of that patent, as discussed above, but continued to engage in the using,
`
`15 making, offering to sell, and/or selling of the Roku Streaming Players or Roku TVs
`
`16 despite an objectively high likelihood that this conduct would infringe the 514 Patent.
`
`17
`
`38. Roku's infringing activities will continue to injure UEI unless and until this
`
`18 I Court enters an injunction prohibiting further infringement and, specifically, enjoining
`
`19
`
`further direct and indirect infringement of the 514 Patent. If Roku's conduct is not
`
`20 stopped, UEI will continue to suffer competitive harm, irreparable injury, and significant
`
`21 damages. Because UEI has no adequate remedy at law, UEI seeks, in addition to
`
`22 damages, preliminary and permanent injunctive relief. UEI competes to supply remote
`
`23 control technology to companies like Roku and will continue suffering irreparable harm
`
`24 absent injunctive relief.
`
`25
`
`26
`
`27
`
`COUNT TWO
`
`INFRINGEMENT OF U.S. PATENT 9,641,785
`
`39. UEI incorporates the previous paragraphs of this Complaint as if fully set
`
`28 I forth herein.
`
`11
`COMPLAINT FOR PATENT INFRINGEMENT
`
`0014
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`

`

`Case 8:20-cv-007*ocument 1 Filed 04/09/20 Pageof 41 Page ID #:13
`
`40. UEI is the owner of all rights, title, and interest in the 785 Patent, including
`
`2 I the right to bring this suit for injunctive relief and damages.
`
`3
`
`4
`
`5
`
`41. The 785 Patent generally relates to a system for configuring a remote control
`
`to issue commands directly to a target appliance (like a TV) or indirectly to the target
`
`I appliance (e.g., remote commands go to set-top box, then set-top box commands the TV)
`
`6 I depending on whether the target appliance is responsive to commands via these
`
`7 I communication paths. Digital interfaces such as HDMI connections facilitate the
`I exchange of identity information, commands, and capability data between devices. The
`8
`9 785 patent uses data sent in messages between the remote control and a media source
`
`10 device (such as an STB) indicating whether a media sink device (such as a TV) is
`
`responsive to commands sent directly from the remote to the sink device and whether it is
`
`12 responsive to commands sent indirectly from the remote to the source device, then to the
`
`13 sink device. Based on this data, the remote control is automatically configured to
`
`14 communicate either directly or indirectly (e.g., through the STB) to the sink device.
`
`15
`
`42. The 785 Patent is valid and enforceable. The claims of the 785 Patent are
`
`16 I directed to an inventive application in the field of remote control of consumer electronic
`
`17 devices. The combination of claim elements was not well-understood, routine, or
`18 I conventional to those in the field at