UEI wins patent infringement case against Roku

Wednesday, December 15th, 2021 
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International Trade Commission Bans Import and Sale of Roku Products

  • Ruling Covers Roku Streaming Devices, Soundbars and Other Products Infringing UEI Patent

SCOTTSDALE, Ariz. — Universal Electronics Inc. (“UEI”) (NASDAQ: UEIC), the global leader in wireless universal control solutions for home entertainment and smart home devices, today announced that the United States International Trade Commission (“ITC” or the “Commission”) publicly issued its favorable final determination in UEI’s patent infringement case against Roku, Inc. (“Roku”), concluding several Roku products infringe a UEI patent and barring the importation and sale of those products. The orders will become final on January 9, 2022, following the expiration of a Presidential review period.

“We brought this action to protect our highly innovative intellectual property from unauthorized use by Roku, and we are gratified that the ITC recognized Roku’s infringement and ordered it halted,” said Richard A. Firehammer, Jr. UEI’s SVP & General Counsel. “Now that the full Commission opinion is publicly available, UEI’s clear and decisive victory is plain for all to see. The Commission’s ban on Roku imports and sales is an important step in the process of preventing Roku from continuing its unlawful use of UEI technology. Even now, we believe that Roku continues to infringe the very patent it was found to infringe despite its attempts to ‘design around’ its infringement with recent software updates. These updates coincide with degraded Roku product performance, as evidenced by recent media reports and consumer outcry. We look forward to working with U.S. Customs and Border Protection to ensure the Commission’s orders banning imports of infringing Roku products are appropriately enforced. UEI will continue to take all actions necessary to put an end to Roku’s unlawful activities.”

The ITC’s opinion made clear that Roku’s products infringe six different claims of UEI’s U.S. Patent No. 10,593,196 and rejected Roku’s plea to avoid the ITC ban. Referring to UEI’s evidence as “substantial,” “impressive” and “dispositive,” the Commission issued a limited exclusion order precluding Roku from importing any infringing “televisions, set top boxes, remote control devices, streaming devices and sound bars.”

“Importantly, the Commission made clear that Roku would need to certify to Customs, at Customs’ discretion, that the products Roku wants to import are not infringing and therefore not excluded from entry. We do not believe Roku can meet this burden, and beginning January 9, 2022, any of Roku’s infringing products will be subject to exclusion from importation,” Mr. Firehammer said.

UEI also brought patent infringement cases against Roku in U.S. District Court for the District of Central California. Those cases (Case Nos.: 8:18-cv-01580 and 8-20-cv-00701) allege infringement of fourteen UEI patents across both cases and are currently stayed pending the final resolution of Roku’s Inter Partes Review (IPR) challenges filed against UEI’s patents and pending final resolution of the ITC investigation, including any appeals of the IPRs and of the ITC investigation. In the District Court cases, UEI contends that Roku began copying UEI’s intellectual property without permission or payment after engaging with UEI and gaining access to details related to UEI’s proprietary technology under a confidentiality agreement entered into years ago.

The world’s leading consumer electronic brands and entertainment service operators license UEI’s portfolio of QuickSet cloud, software and solutions technology. QuickSet Cloud is built on UEI’s comprehensive device knowledge base and enables automated device discovery, setup and control of home entertainment and smart home devices and services. UEI holds more than 600 issued or pending U.S. patents.

Links: Universal Electronics; Roku