By Alec Royka
On March 17, 2021, the ITC issued the public version of its opinion reversing ALJ Cameron R. Elliot’s initial determination (“ID”) that Complainant Universal Electronics, Inc. (“UEI”) lacked standing to assert U.S. Patent No. 10,593,196 (“the ’196 patent”) in Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof (Inv. No. 337-TA-1200).

By way of background, the Commission instituted this investigation on May 22, 2020 based on a complaint filed by UEI alleging violations of section 337 by Respondents Roku Inc. (“Roku”), TCL Multimedia Holdings Ltd.; Shenzen TCL New Technology Co.; TCL King Electrical Appliances; TTE Technology Inc. d/b/a TCL USA; TCL Corp.; TCL Moka, Int’l Ltd.; TCL Overseas Marketing Ltd.; TCL Industries Holdings Co., Ltd.; TCL Smart Device (Vietnam) Co., Ltd.; Hisense Co. Ltd.; Hisense Electronics Manufacturing Co. of America Corp. d/b/a Hisense USA; Hisense Import & Export Co. Ltd.; Qingdao Hisense Electric Co., Ltd.; Hisense International (HK) Co., Ltd.; Funai Electric Co., Ltd.; Funai Corporation Inc. ; and Funai (Thailand) Co., Ltd. through the importation and/or sale of certain electronic devices, including streaming players, televisions, set top boxes, remote controllers, and components thereof that infringe one or more claims of the ’196 patent and U.S. Patent Nos. 9,911,325; 7,589,642; 7,969,514; 10,600,317; and 9,716,853.

On January 25, 2021, ALJ Elliot issued the ID granting Roku’s motion for summary determination that UEI lacked standing to assert the ’196 patent in this investigation. See our February 10, 2021 post for more details regarding the ID. UEI filed a petition for review by the Commission on February 1, 2021.

According to the opinion, the Commission determined that Roku had not demonstrated as a matter of law that UEI was not the rightful owner of all substantial rights in the ’196 patent at the time the complaint was filed. Specifically, the Commission determined that the ID erred in finding that the initial assignments executed by Brian Barnett—a UEI employee and joint inventor of the ’196 patent—for the provisional applications to which the ’196 patent claims priority did not cover rights associated with subsequent continuation-in-part applications (“CIPs”) in the priority chain because CIPs contain new matter not disclosed in the priority applications. The Commission found that the ID was inconsistent with Federal Circuit precedent concerning the legal effect of assignment language similar to that used in the initial assignments executed by Mr. Barnett.

Starting with the language used in the previous assignments executed by Mr. Barnett, the Commission noted that the assignments “hereby s[old] and assign[ed]” Mr. Barnett’s “entire right, title, and interest” in the invention disclosed in the priority applications, and thereby expressly operated as a present conveyance. The Commission looked to previous Federal Circuit case law which had interpreted similar language of a grant of patent rights in an assignment, in which co-inventors agreed to “sell, assign, and transfer … all right, title and interest” in their inventions, any patents that may issue from those inventions, and “any and all divisions, reissues, continuations, and extensions thereof,” as being more than sufficient to cover all related patents and applications, including CIP applications, even though the assignment did not expressly mentions CIPs.

Accordingly, the Commission reversed the ID and remanded for further proceedings.

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