Case: 22-116 Document: 18 Page: 1 Filed: 05/11/2022
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: ROKU, INC.,
Petitioner
______________________
2022-116, 2022-117, 2022-118
______________________
On Petitions for Writ of Mandamus to the United
States Patent and Trademark Office in Nos. IPR2021-
00263, IPR2021-00264, and IPR2021-00299.
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ROKU, INC.,
Appellant
v.
UNIVERSAL ELECTRONICS, INC.,
Appellee
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2022-1216, 2022-1217, 2022-1218
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Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2021-
00263, IPR2021-00264, and IPR2021-00299.
______________________
ON PETITIONS
Case: 22-116 Document: 18 Page: 2 Filed: 05/11/2022
2 IN RE: ROKU, INC.
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Before DYK, REYNA, and CHEN, Circuit Judges.
DYK, Circuit Judge.
ORDER
Roku, Inc. directly appeals the Patent Trial and Appeal
Board’s decisions declining institution of inter partes re-
view of two patents owned by Universal Electronics, Inc.
In reaching that determination, the Board relied on the ad-
vanced stage of co-pending parallel proceedings before the
International Trade Commission (ITC) involving the same
patents and overlapping invalidity arguments. Roku has
also filed related petitions for writs of mandamus seeking
review of those same non-institution decisions.
We reaffirmed in Mylan Laboratories Ltd. v. Janssen
Pharmaceutica, N.V., 989 F.3d 1375, 1378–79 (Fed. Cir.
2021) that the Board’s discretionary decision to decline in-
stitution of inter partes review, including decisions based
on the Board’s multi-factor standard for evaluating
whether to institute in view of parallel civil litigation, is
“final and nonappealable.” (quoting 35 U.S.C. § 314(d)).
We also made clear that, given the fact that the decision to
institute inter partes review is committed to the discretion
of the agency, “there is no reviewability of the Director’s
exercise of his discretion to deny institution [by way of a
petition for a writ of mandamus] except for colorable con-
stitutional claims.” Id. at 1382.
Roku has not provided a sufficient justification for dis-
tinguishing Mylan here. Roku argues that the ITC, unlike
a district court, cannot issue a decision on patent validity
with preclusive effect in other forums, but that does not
mean the Board’s non-institution decisions are any less “fi-
nal and nonappealable” under section 314(d). Regardless
of parallel proceedings, “no statute confers jurisdiction over
appeals from decisions denying institution,” and “[w]ithout
Case: 22-116 Document: 18 Page: 3 Filed: 05/11/2022
IN RE: ROKU, INC. 3
such a statute, we lack jurisdiction over those appeals.” Id.
at 1379 (citation omitted). And Roku has not presented a
colorable constitutional claim. As in Mylan, Roku’s peti-
tions merely challenge the Board’s exercise of discretion
not to institute review proceedings. Pet. 3–4. Under such
circumstances, we must dismiss Roku’s direct appeals, and
we deny its requests for mandamus relief.
Accordingly,
IT IS ORDERED THAT:
(1) Appeal Nos. 2022-1216, -1217, -1218 are dismissed.
(2) The mandamus petitions are denied.
(3) Costs in Appeal Nos. 2022-1216, -1217, -1218 to
Universal Electronics, Inc.
FOR THE COURT
May 11, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court