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Roku, Inc. v. Universal Electronics, Inc.

Docket IPR2020-00953, Patent Trial and Appeal Board (May 18, 2020)
Minn Chung, Patrick Boucher, Sharon Fenick, presiding
Case TypeInter Partes Review
Patent9911325
Patent Owner Universal Electronics, Inc.
Petitioner Roku, Inc.
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15 Notice refund approved: Notice refund approved

Document IPR2020-00953, No. 15 Notice refund approved - Notice refund approved (P.T.A.B. May. 15, 2023)
Petitioner’s request for a refund of certain post-institution fees paid on May 18, 2020 in the above proceeding is hereby granted.
The amount of $15,000.00 has been refunded to Petitioner’s deposit account.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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14 Other Refund request: Petitioners Request for Refund

Document IPR2020-00953, No. 14 Other Refund request - Petitioners Request for Refund (P.T.A.B. May. 12, 2023)
On May 18, 2020, Petitioner filed a Petition for Inter Partes Review seeking review of claims 9, 11-15 of U.S. Patent No. 9,911,325 (assigned case number IPR2020-00953) (Paper 4).
On November 10, 2020, the Board issued a Decision Denying Institution of Inter Partes Review and Denying Motion for Joinder (Paper 13).
Payment of the $15,000.00 post-institution fee under 37 C.F.R. § 42.15(a)(2) in this proceeding was processed through PTAB E2E on May 18, 2020.
Accordingly, Petitioner requests a refund in the amount of $15,000.00 for the post-institution fee that it has paid to the USPTO in connection with this proceeding.
Lestin L. Kenton Registration No. 72,314 Counsel for Petitioner Date: May 12, 2023 1100 New York Avenue, N.W.
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13 Decision Denying Institution: Decision Denying Institution of Inter Partes Review Denying Motion for Joinder

Document IPR2020-00953, No. 13 Decision Denying Institution - Decision Denying Institution of Inter Partes Review Denying Motion for Joinder (P.T.A.B. Nov. 10, 2020)
A. Related Matters According to Petitioner, the ’325 patent is the subject of the following district court litigation: Universal Electronics, Inc. v. Roku, Inc., No. 8:18- cv-01580 (C.D.
); and (5) Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, Inv. No. 337-3450 (ITC).
For example, system 10 may, in this way, identify the appropriate codeset to enable remote control device 11 to communicate with VCR 13 and television set 14.
The ’325 patent explains that, in some instances, key code generator device 12 is capable of communicating with remotely maintained database of codesets 39 over network 38, which may be the Internet.
The parties agree that the Petition was filed more than one year after the date on which Petitioner was served in the related litigation with a complaint alleging infringement of the ’325 patent.
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9 Order: ORDERConduct of the Proceeding

Document IPR2020-00953, No. 9 Order - ORDERConduct of the Proceeding (P.T.A.B. Jul. 1, 2020)
Petitioner’s joinder motions seek to add additional grounds and claims to Petitioner’s challenges in the already instituted proceedings.
Specifically, Petitioner asks that we accelerate Patent Owner’s deadlines for filing preliminary responses in the newly filed proceedings, and that we delay the due dates for Patent Owner’s responses in the already instituted proceedings.
Patent Owner opposes, identifying the complexity introduced in formulating its positions as a result of the additional issues sought to be added by Petitioner through joinder.
We think it ill-advised to deprive Patent Owner of its full opportunity to formulate its positions, particularly when both statute and regulation provide us with flexibility regarding the ultimate deadlines for these proceedings in the case of joinder.
It is ORDERED that Petitioner’s request to adjust the deadlines and schedules in these proceedings is denied.
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5 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2020-00953, No. 5 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. May. 28, 2020)
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2020-00953 Patent No. 9,911,325 B2 mediation, etc.) was used and the general result.
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10 Reply: Petitioners Reply to Patent Owners Opposition to Petitioners Motion for Joinder

Document IPR2020-00953, No. 10 Reply - Petitioners Reply to Patent Owners Opposition to Petitioners Motion for Joinder (P.T.A.B. Jul. 20, 2020)
Case IPR2020-00953 U.S. Patent 9,911,325 The Board maintains discretion to grant same-party joinder based on the abrogation of Windy City by the Supreme Court’s decision in Thryv v. Click-to- Call Techs., 140 S. Ct. 1367 (2020), and the Board’s precedential opinion in Proppant Express Invs.
Case IPR2020-00953 U.S. Patent 9,911,325 Not only are UEI’s arguments misinformed and inaccurate, UEI blatantly ignores the positions advocated by the USPTO in its supplemental brief in Facebook v. Windy City.
However, UEI mischaracterizes Roku’s alleged “omissions.” UEI’s inaccurate representations of Roku’s omissions in the First Petition are insufficient to negate the fairness concerns raised by UEI’s calculated actions to insulate their claims from an IPR challenge.
In light of the USPTO’s position Case IPR2020-00953 U.S. Patent 9,911,325 that it could entertain same-party joinder, Roku reached out to UEI and proposed minor changes in the schedule of Roku’s First Petition.
Rather than working to maximize efficiency and prevent wasting the Board’s time and resources, UEI seeks to exacerbate potential scheduling differences to increase the likelihood that Roku’s Motion for Joinder will be denied.
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7 Opposition: Opposition to Petitioners Motion for Joinder

Document IPR2020-00953, No. 7 Opposition - Opposition to Petitioners Motion for Joinder (P.T.A.B. Jun. 18, 2020)
Rather than seek to add discrete additional issues, Roku is requesting that the Board expand the originally-filed IPR in a way that is wholly without precedent and that would undeniably result in significant prejudice to UEI.
The Federal Circuit presented a reasoned and thorough analysis of the AIA’s statutory Case IPR2020-00951 and IPR2020-00953 Patent 9,911,325 C. Even If the Board Were To Follow Proppant Express, Roku’s Motion For Joinder Is Improper Under The Fairness And Prejudice Standard According to the Board’s decision in Proppant Express Investments, LLC v. Oren Technologies, IPR2018-00914, Paper 38 at 4 (PTAB March 13, 2019), the Board may join a time-barred petition to an already-instituted proceeding only where fairness requires it and to avoid undue prejudice to a party.
Circumstances leading to this narrow exercise of discretion to permit such joinder may include, for example, certain actions taken by a patent owner in a co-pending litigation such as certain late additions of newly asserted claims.
Here, granting Roku’s motion for joinder would significantly disrupt the existing trial schedule and would result in a substantial duplication of efforts to address the new claims and issues raised for the first time in Roku’s belated petitions.
If Roku’s motion for joinder is granted, the depositions of the parties’ experts would have to be repeated, UEI would have to draft another Patent Owner’s Response, and all of the relevant dates set for later this year would undoubtedly need to be pushed back.
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