By John Presper

On November 10, 2021, the ITC issued a notice of its final determination finding a violation of section 337 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, this investigation was instituted on May 22, 2020 based on a complaint filed by Universal Electronics, Inc. of Scottsdale, Arizona (“UEI”) against 18 respondents, including Roku Inc. (“Roku”), alleging violations of section 337 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 U.S. Patent Nos. 9,911,325 (“the ’325 patent”); 7,589,642 (“the ’642 patent”); 7,969,514 (“the ’514 patent”); 10,600,317 (“the ’317 patent”); 10,593,196 (“the ’196 patent”); and 9,716,853 (“the ’853 patent”).  Roku was the only remaining respondent when ALJ Cameron Elliot held an evidentiary hearing in April 2021.  Roku had previously moved for summary determination that UEI lacked standing to assert the ’196 patent.  ALJ Elliot granted Roku’s motion, but the Commission reversed his decision.  See our February 10, 2021 and March 25, 2021 posts for more details regarding these rulings. By the time the ALJ issued his final initial determination (“ID”) on July 9, 2021, the only asserted claims remaining in the investigation were claim 19 of the ’642 patent; claims 3, 6, 9, and 11 of the ’317 patent; and claims 1, 3, 11, and 13-15 of the ’196 patent.  The ID found a violation of section 337 as to the ʼ196 patent because: (i) UEI has standing to assert the ’196 patent; (ii) the accused Roku Ultra and Soundbar products infringe claims 1, 3, 11, and 13-15 of the ’196 patent, but Roku’s revised Ultra and Soundbar products do not infringe any asserted claims; (iii) the asserted claims are not invalid as obvious; and (iv) UEI satisfied the technical and economic prongs of the domestic industry requirement with respect to the ’196 patent. The ID, however, found no violation with respect to the ’642 patent or the ’317 patent because the asserted claims of those patents, though infringed, are invalid.  See our August 7, 2021 post for more details regarding the ID.

According to the notice, the Commission affirmed the ID’s finding that Roku violated section 337 with respect to its original Ultra and Soundbar products that infringe claims 1, 3, 11, and 13-15 of the ʼ196 patent, but that its updated models of these products do not infringe.  The Commission also affirmed the IDs finding of no violation with respect to the ʼ317 patent and ʼ642 patent.  Accordingly, the Commission issued a limited exclusion order and cease-and-desist order against Roku with respect to the products that infringe claims 1, 3, 11, and 13-15 of the ’196 patent.

We will post the public version of the Commission’s opinion when it becomes available.

UPDATE:  On December 3, 2021, the Commission issued the public version of its opinion.