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Roku, Inc. v. Universal Electronics, Inc.

Docket IPR2021-00455, Patent Trial and Appeal Board (Feb. 11, 2021)
Amber Hagy, Minn Chung, Patrick Boucher, Russell Cass, Sharon Fenick, presiding
Case TypeInter Partes Review
Patent10325486
Patent Owner Universal Electronics, Inc.
Petitioner Roku, Inc.
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55 Final Written Decision On remand from the CAFC: Final Written Decision On remand from the CAFC

Document IPR2021-00455, No. 55 Final Written Decision On remand from the CAFC - Final Written Decision On remand from the CAFC (P.T.A.B. Mar. 10, 2025)
Patent Owner also identifies Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, Inv. No. 337-TA- 1200 (U.S.I.T.C. 2020), as a related matter before the International Trade Commission.
“Moreover,” Patent Owner argues, “Chardon discloses a complete solution for providing command signals to an external device, thereby eliminating any motivation to search for alternative mechanisms for achieving the very same result.” PO Resp. 37–38 (citing Ex. 2003 ¶¶ 119, 120, 126, 127; Ex. 2005, 64).
Specifically, Patent Owner argues that Dr. Turnbull “provided uncontroverted evidence that the prior art does not use a ‘Deck Status’ message to identify a controllable appliance’s ‘capabilities’ (i.e., the functions the appliance is potentially capable of executing, irrespective of time or configuration).” Id. at 4.
Finally, we disagree with Patent Owner’s argument that one of ordinary skill would not have looked to HDMI 1.3a to modify Chardon’s command control methodologies, and find that Petitioner has presented sufficient evidence of a motivation to combine the references as proposed.
Patent Owner, in turn, responds that the Petition did not raise the argument that “Chardon teaches using a received ‘Deck Status’ message indicating a ‘Stop’ status to automatically display and highlight a ‘Play’ icon in the control selection bar 340 of Chardon’s Figure 3.” PO Amended Sur- reply 18 (citing Pet. 43–47; Pet.
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44 Order Other: Order Conduct of the Proceeding 37 CFR sec 425 37 CFR sec 4220d

Document IPR2021-00455, No. 44 Order Other - Order Conduct of the Proceeding 37 CFR sec 425 37 CFR sec 4220d (P.T.A.B. Oct. 22, 2024)
... § 42.5; 37 C.F.R. § 42.20(d) IPR2021-00455 Patent 10,325,486 B2 Roku, Inc. (Petitioner) filed a Petition for inter partes review in this proceeding and, on August 11, 2022, the Board issued a final written decision determining that none ...
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40 Order Other: ORDER Conduct of the Proceeding

Document IPR2021-00455, No. 40 Order Other - ORDER Conduct of the Proceeding (P.T.A.B. Sep. 11, 2024)
... § 42.5; 37 C.F.R. § 42.20(d) IPR2021-00455 Patent 10,325,486 B2 Roku, Inc. (Petitioner) filed a Petition for inter partes review in the above case and, on August 11, 2022, the Board issued a final written decision determining that none ...
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39 Order Other: ORDER Granting Petitioner’s Unopposed Motion to Withdraw and Substitute Counsel

Document IPR2021-00455, No. 39 Order Other - ORDER Granting Petitioner’s Unopposed Motion to Withdraw and Substitute Counsel (P.T.A.B. Aug. 26, 2024)
Before AMBER L. HAGY, SHARON FENICK, and RUSSELL E. CASS, Administrative Patent Judges.
Granting Petitioner’s Unopposed Motion to Withdraw and Substitute Counsel
The Motion requests authorization to withdraw lead counsel Jon E. Wright.
Petitioner also requests leave to substitute Lestin L. Kenton as lead counsel.
It is, therefore: ORDERED that Petitioner’s Motion to withdraw Jon E. Wright as lead counsel from the above-listed proceeding is granted; and FURTHER ORDERED that Lestin L. Kenton is substituted as lead counsel.
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38 Order on Motion: ORDER Granting Patent Owner’s Unopposed Motion to Withdraw and Substitute Counsel 37 CFR § 4210

Document IPR2021-00455, No. 38 Order on Motion - ORDER Granting Patent Owner’s Unopposed Motion to Withdraw and Substitute Counsel 37 CFR § 4210 (P.T.A.B. Aug. 22, 2024)
Before AMBER L. HAGY, SHARON FENICK, and RUSSELL E. CASS, Administrative Patent Judges.
The Motion requests authorization to withdraw lead counsel S. Benjamin Pleune and back-up counsel Stephen R. Lareau, Nicholas T. Tsui, Michael C. Deane, Katherine G. Rubschlager, Daniel J. O’Connor, Ryan W. Koppelman, and Thomas W. Davison of Alston & Bird LLP. Id. at 2.
Patent Owner also requests leave to substitute James J. Lukas, Jr. of Greenberg Traurig, LLP, as lead counsel, and Gary Jarosik, Benjamin Gilford, and Patrick Owens of Greenberg Traurig, LLP, as back-up counsel.
Patent Owner filed updated Mandatory Notices and Powers of Attorney listing James J. Lukas, Jr. (Reg. No. 59,114) as lead counsel, and Gary Jarosik (Reg. No. 35,906), Benjamin P. Gilford (Reg. No. 72,072), and Patrick J. Owens (Reg. No. 80,250) as back-up counsel.
It is, therefore, ORDERED that Patent Owner’s Motion to Withdraw S. Benjamin Pleune as lead counsel and Stephen R. Lareau, Nicholas T. Tsui, Michael C. Deane, Katherine G. Rubschlager, Daniel J. O’Connor, Ryan W. Koppelman, and Thomas W. Davison as back-up counsel in the above-listed proceeding is granted; and
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31 Order Other: Panel Change Order

Document IPR2021-00455, No. 31 Order Other - Panel Change Order (P.T.A.B. Aug. 1, 2024)
Before MICHAEL W. KIM, Acting Deputy Chief Administrative Patent Judge.
The parties are notified that the panel has changed in the above- referenced proceeding.
Due to unavailability, Administrative Patent Judges Amber L. Hagy and Sharon Fenick replace Administrative Patent Judges Patrick M. Boucher, and Minn Chung on the panel.
Thus, Administrative Patent Judges Amber L. Hagy, Sharon Fenick, and Russell E. Cass now constitute the panel for consideration of all matters in this proceeding.
Patent 10,325,486 B2 For PETITIONER: Jon E. Wright Lestin L. Kenton Daniel S. Block
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29 Other Fed Circuit mandate: Other Fed Circuit mandate

Document IPR2021-00455, No. 29 Other Fed Circuit mandate - Other Fed Circuit mandate (P.T.A.B. Jul. 30, 2024)
United States Court of Appeals for the Federal Circuit
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2021- 00455.
In accordance with the judgment of this Court, entered June 18, 2024, and pursuant to Rule 41 of the Federal Rules of Appellate Procedure, the formal mandate is hereby issued.
Costs are awarded to appellant Roku, Inc. in the amount of $973.92 and taxed against the appellee.
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