Case: 21-2128 Document: 37 Page: 1 Filed: 08/28/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
UNIVERSAL ELECTRONICS, INC.,
Appellant
v.
ROKU, INC.,
Appellee
______________________
2021-2128, 2021-2129
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
01620, IPR2019-01621.
______________________
Decided: August 28, 2023
______________________
MICHAEL ANTHONY NICODEMA, Greenberg Traurig
LLP, West Palm Beach, FL, argued for appellant. Also rep-
resented by BENJAMIN GILFORD, JAMES J. LUKAS, JR., Chi-
cago, IL.
DEBRA JANECE MCCOMAS, Haynes & Boone, LLP, Dal-
las, TX, argued for appellee. Also represented by RAGHAV
BAJAJ, DAVID W. O'BRIEN, Austin, TX; JONATHAN R.
BOWSER, ANGELA M. OLIVER, Washington, DC.
______________________
Case: 21-2128 Document: 37 Page: 2 Filed: 08/28/2023
2 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
Before NEWMAN, REYNA, and STOLL, Circuit Judges.
NEWMAN, Circuit Judge.
This is a consolidated appeal of two inter partes review
(IPR) decisions, on petitions filed by Roku, Inc. seeking in-
validation of certain claims of U.S. Patent No. 7,821,504
(“’504 patent”) and U.S. Patent No. 7,821,505 (“’505 pa-
tent”), owned by Universal Electronics, Inc. (“UEI”). The
Patent Trial and Appeal Board (“PTAB” or “Board”) held
all the challenged claims invalid on the ground of obvious-
ness; viz., claims 1 and 5 of the ’504 patent and claims 5–7,
9, 10, 12, 49, and 51 of the ’505 patent. We affirm the
Board’s decisions. 1
BACKGROUND
The Patented Inventions
The ’504 and ’505 patents are continuations of U.S. Pa-
tent No. 7,782,309, which in turn is a continuation of U.S.
Patent No. 7,432,916. The patents are titled “Controlling
Device with Dual-Mode, Touch-Sensitive Display” and
have substantially the same specifications. The patents
state that they are directed to improvements in “remote,
cursor control functionality,” ’504 patent, col. 2, ll. 3–8, as
“may be utilized to command functional operations of mul-
tiple appliances such as those typically found in a home en-
tertainment center,” for example televisions, VCRs, and
DVD players. Id., col. 4, ll. 15–17. The Abstract summa-
rizes:
A processing device of a universal controlling de-
vice is programmed to distinguish between a first
1 Roku, Inc. v. Universal Elecs., Inc., No. IPR2019-
01621, 2021 WL 1920983 (P.T.A.B. May 12, 2021) (“Board
’504 Op.”); No. IPR2019-01620, 2021 WL 1923108 (P.T.A.B.
May 12, 2021) (“Board ’505 Op.”).
Case: 21-2128 Document: 37 Page: 3 Filed: 08/28/2023
UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 3
input type provided to a touch-sensitive surface
and a second input type provided to the touch-sen-
sitive surface. In response to the touch-sensitive
surface being provided the first input type which is
indicative of a static touch made upon the touch-
sensitive surface the processing device causes a
transmitter to transmit first data representative of
the static touch made upon the touch-sensitive sur-
face. In response to the touch-sensitive surface be-
ing provided the second input type which is
indicative of a moving touch made across the touch-
sensitive surface, the processing device causes the
transmitter to transmit second data being repre-
sentative of the moving touch made across the
touch-sensitive surface.
’504 patent, p. 1.
Roku requested IPR of claims 1 and 5 of the ’504 patent
and claims 5–7, 9, 10, 12, 49, and 51 of the ’505 patent,
stating that these claims are unpatentable on the ground
of obviousness in view of references authored by Herz,
Zetts, and Finkelstein. Patentability of the challenged
claims had previously been confirmed on inter partes reex-
amination. Board ’505 Op. at *1, Board ’504 Op. at *1.
The following claims of the ’504 patent and the ’505 pa-
tent are the focus of this appeal:
The ’504 patent
1. A method for using a universal controlling de-
vice comprised of a touch-sensitive surface to com-
mand functional operations of one or more
appliances located remotely from the controlling
device, comprising:
accepting via the touch-sensitive surface of the
universal controlling device a first input
type indicative of a static touch made upon
the touch-sensitive surface;
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4 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
causing the universal controlling device to
transmit first data used to command at
least a first functional operation of the one
or more appliances, the first data being
representative of the static touch made
upon the touch-sensitive surface;
accepting via the touch-sensitive surface of the
universal controlling device a second input
type indicative of a moving touch made
across the touch-sensitive surface;
causing the universal controlling device to
transmit second data used to command at
least a second functional operation of the
one or more appliances, the second data be-
ing representative of the moving touch
made across the touch-sensitive surface;
and
causing the universal controlling device to dis-
tinguish the first input type received via
the touch-sensitive surface from the second
input type received via the touch-sensitive
surface.
Claim 5 of the ’504 patent elaborates the second data move-
ment of the cursor:
5. The method as recited in claim 1, wherein the
second data comprises data for commanding move-
ment of a displayed cursor associated with the one
or more appliances.
The ’504 patent claims are directed to the method, and the
’505 patent claims are for the device.
The ’505 patent
For the ’505 patent, UEI focuses on the cursor limita-
tion in dependent claim 10, which depends from claim 5
(and intervening claims) as follows:
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 5
5. A non-transitory computer-readable media em-
bodied in a physical memory device having stored
thereon instructions for causing a universal con-
trolling device comprised of a display having a
touch-sensitive surface and adapted to transmit
data to one or more appliances located remotely
from the controlling device to perform steps com-
prising:
displaying in the display of the universal control-
ling device one or more graphical user inter-
faces comprised of graphical user interface
icons;
accepting via the touch-sensitive surface of the uni-
versal controlling device a first input type in-
dicative of a selection of a displayed graphical
user interface icon;
initiating a transmission by the universal control-
ling device to the one or more appliances first
data representative of the displayed graphical
user interface icon selected by the first input
type;
accepting via the touch-sensitive surface of the uni-
versal controlling device a second input type in-
dicative of a motion made across the touch-
sensitive surface;
initiating a transmission by the universal control-
ling device to the one or more appliances second
data representative of the motion made across
the touch-sensitive surface provided by the sec-
ond input type; and
allowing the universal controlling device to distin-
guish the first input type received via the
touch-sensitive surface from the second input
type received via the touch-sensitive surface.
Claim 10 recites the displayed cursor commanded by the
second data:
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6 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
10. The non-transitory computer-readable media
as recited in claim 9, wherein the second data com-
prises data for commanding movement of a dis-
played cursor associated with the one or more
appliances.
UEI states that the second data and cursor limitations in
claim 10 are principal distinctions from the prior art.
The Cited References
U.S. Patent No. 6,407,779 B1 (“Herz”)
The Herz reference teaches “a remote control system
for remotely controlling various electronic devices such as
television and audio visual systems using a single remote
control.” Id., col. 1, ll. 6–9. Herz Figure 5 shows a remote
control system that “comprises a display screen for inter-
facing with the user; a plurality of buttons . . . for issuing
commands and/or entering data into the remote control;
[and] a stylus for writing onto the screen.” Id., col. 4, ll. 49–
54. Herz also shows a touch-screen display “provided with
pressure sensing ability for sensing different handwriting
stroke pressures exerted on the screen.” Id., col. 5, ll. 8–10.
A user interface is shown for the remote control, having a
“soft graphical user interface [which] can provide maxi-
mum flexibility for the user to interface with the remote
control.” Id., col. 9, ll. 49–54.
The Board applied Herz to all of the challenged claims
of both the ’504 and ’505 patents, finding obviousness based
on Herz in combination with other references.
Eur. Pat. Appl. Pub. No. 0536554 A1 (“Zetts”)
The Zetts reference teaches a “method and apparatus
for efficiently distinguishing between different types of in-
put signals simulated by a pointing device coupled to a
multi-tasking computer system. The pointing device may
be a stylus, finger or other device that moves across the
surface of a touch screen or the like to generate positional
Case: 21-2128 Document: 37 Page: 7 Filed: 08/28/2023
UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 7
information.” Id., p. 1 (Abstract). Zetts describes a “touch
input device (e.g., a touch workpad) for a data processing
system, where a touch sensor is disposed over a viewing
surface of a display, input signals generated from a point-
ing device, such as a stylus or finger, can be categorized
either as a mouse input signal or as a gesture or handwrit-
ing input signal.” Id., p. 2, ll. 28–31.
The Board applied Zetts in combination with Herz and
Finkelstein as grounds for obviousness of claims in both
the ’504 and ’505 patents.
U.S. Patent No. 6,025,841 A1 (“Finkelstein”)
Finkelstein describes use of a cursor for managing the
display of multiple windows in a graphical user interface,
and states:
Specific types of user interaction events, often in-
volving the cursor, comprise triggering events in
the invention. Those skilled in the art will under-
stand that operations with the cursor include crea-
tion of a selection rectangle, clicking on objects,
activating menus and/or control objects in menus,
double clicking on objects to activate them, clicking
and holding an object to “drag” the object or selec-
tion to a different location, etc. These and other
types of user interactions can be triggering events.
Id., col. 7, ll. 27–35.
The Board found that Finkelstein is “analogous art” to
Herz and Zetts, providing motivation for combination with
Herz and Zetts.
The Board Decisions
The Board’s findings as to the ’504 and ’505 patents are
substantially the same as to all aspects presented on ap-
peal. The Board held all of the challenged claims of the
’504 and ’505 patents invalid on the ground of obviousness.
The Board held that the combination of Herz and Zetts
Case: 21-2128 Document: 37 Page: 8 Filed: 08/28/2023
8 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
renders obvious the ’504 patent’s claim 1 limitations “sec-
ond input type indicative of a moving touch made across
the touch-sensitive surface” and “second data being repre-
sentative of the moving touch made across the touch-sensi-
tive surface.” Board ’504 Op. at *17, *21. The Board found
that Zetts and Finkelstein are analogous art in that they
are in the same field of endeavor or reasonably pertinent to
one or more of the same problems as are subject of the chal-
lenged patents. Board ’504 Op. at *13, *26.
Applying the cited references to claim 5 of the ’504 pa-
tent, the Board agreed with petitioner Roku that it would
have been obvious to “combin[e] Finkelstein’s teaching of
using a cursor to perform windows management functions
. . . with the teachings of Herz and Zetts regarding the con-
trol of the size and location of the PIP [picture-in-picture]
window on the remote control and the television set.” Board
’504 Op. at *24. The Board held: “In consideration of the
foregoing and based on the complete record, we are per-
suaded by Petitioner’s arguments and evidence, notwith-
standing Patent Owner’s arguments, addressed above.
Accordingly, we determine that Petitioner has demon-
strated by a preponderance of the evidence that claim 5 is
unpatentable under 35 U.S.C. § 103(a) over the combina-
tion of Herz, Zetts, and Finkelstein.” Id. at *26.
For the ’505 patent’s claim 5, the Board held that the
combination of Herz and Zetts renders obvious the clause
“second input type indicative of a motion made across the
touch-sensitive surface” and the clause “second data repre-
sentative of the motion made across the touch-sensitive
surface.” Board ’505 Op. at *17, *20–22, *24. For claims 6,
7, 9, 12, and 51 of the ’505 patent, the Board also held these
claims obvious over the combination of Herz and Zetts. Id.
at *25.
For claim 10 of the ’505 patent, the Board held this
claim obvious over the combination of Herz, Zetts, and
Finkelstein. Id. at *28. The Board also held claim 49 of
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 9
the ’505 patent obvious over the combination of Herz, Zetts,
and a reference to Kushiro, but claim 49 is not presented
for review. Id. at *29.
UEI disputes the Board’s findings and conclusions.
UEI argues that the Board erred in finding that Herz
teaches the “second data” limitation as used in the ’504 and
’505 patents, and argues that if “second data” were cor-
rectly construed, the ’504 and ’505 claims are not invalid
for obviousness. UEI also argues that the Board erred in
finding that Finkelstein is analogous art, and in finding
that a person of ordinary skill would have been motivated
to combine Herz with Finkelstein. Roku responds that sub-
stantial evidence and correct applications of law support
the Board’s determinations of unpatentability on the
ground of obviousness.
DISCUSSION
I
Obviousness
“Obviousness ‘is a question of law based on underlying
findings of fact.’” SIPCO, LLC v. Emerson Elec. Co., 980
F.3d 865, 870 (Fed. Cir. 2020) (quoting In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000)). The Board’s factual find-
ings are reviewed for support by substantial evidence, and
its legal conclusions are reviewed de novo. In re Van Os,
844 F.3d 1359, 1360 (Fed. Cir. 2017). Substantial evidence
is “such relevant evidence as a reasonable mind might ac-
cept as adequate to support a conclusion.” Consol. Edison
Co. v. NLRB, 305 U.S. 197, 229 (1938).
Claim construction is a question of law and receives de
novo review. Trs. Of Columbia Univ. v. Symantec Corp.,
811 F.3d 1359, 1362 (Fed. Cir. 2016) (“The construction of
claim terms based on the claim language, the specification,
and the prosecution history are legal determinations.”).
The Board’s factual findings relevant to claim construction
are reviewed for support by substantial evidence. Id.
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10 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
Claim construction
UEI states that the “second data” limitations distin-
guish the ’504 and ’505 patent claims from the prior art.
The Board construed this term as it is used in both patents.
Claim 5 of the ’505 patent recites “second data repre-
sentative of the motion made across the touch-sensitive
surface.” The Board construed this to mean: “second data
representative of the continuous contact from the first lo-
cation to the second location on the touch-sensitive sur-
face.” Board ’505 Op. at *6. UEI agrees with this claim
construction, but states that the Board “implicitly adopted
a different construction” in its analysis. UEI Br. 26. UEI
states that “in the Board’s analysis of the alleged obvious-
ness of the Challenged Claims over Herz, the Board implic-
itly adopted a different construction of the Second Data
Limitations where the ‘second data’ need only be data that
is ‘transmitted in response to the continuous contact from
the first location to the second location on the touch sensi-
tive surface.’” Id. (emphasis original).
UEI argues that “[t]he Board’s new construction of the
Second Data Limitations is erroneous because it is incon-
sistent with the plain language of the claims and the
Board’s express and proper construction of the Second Data
Limitations.” Id. at *27. UEI states that “there is no evi-
dence that Herz teaches the Second Data Limitations un-
der the proper construction of those terms (i.e., that the
claimed ‘second data’ must be ‘representative of the contin-
uous contact from the first location to the second location
on the touch sensitive surface’).” Id. at *29. UEI further
states that the Board’s explicit construction of “second
data” does not refer merely to the data “transmitted in re-
sponse to the continuous contact from the first location to
the second location on the touch sensitive surface,” id. at
*26 (emphasis original), and that, according to the experts,
“second data” means the data representative of continuous
contact, not a “single, static location where the user
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 11
terminates his or her dragging gesture on Herz’s touch
screen display.” Id. at *18, 30.
Roku responds that “the Board did not implicitly adopt
a further construction of the Second Data Limitations,
much less one suggesting that being ‘representative of’ is
‘independent of what is in the data.’” Roku Br. 46. Roku
cites its expert Dr. Polish, who disagreed with UEI’s ex-
pert, stating:
Mr. Bear appears to contend that the only data
transmitted by Herz’ remote control is “the data in-
dicating the new location and/or size of the PIP
[picture-in-picture] window.” [Appx6733], ¶ 92. I
do not agree with Mr. Bear’s conclusion, because it
omits what a POSITA would have understood Herz
to teach. While the “data indicating the new loca-
tion and/or size of the PIP window” is part of what
is transmitted, a POSITA would have understood
that Herz also transmits to the appliance (e.g., a
television) an indication of what is to be moved or
resized. In other words, if the only thing the re-
mote control transmitted to the television was the
new location and/or size of the PIP window, Herz
would not function as it describes. Rather, a
POSITA would have understood that, to implement
movement or resizing of the PIP window as Herz
describes, the remote control also transmits an in-
dication to the appliance that the PIP window is to
be moved or resized. . . . Thus, in response to the
user’s stylus movement, a POSITA would have un-
derstood the remote control to transmit at least an
indication to the appliance (e.g., the television) to
move the PIP window, and the position to which
the PIP window is to be moved (e.g., an x/y coordi-
nate).
Polish Reply Decl. ¶ 26 (emphases original). Dr. Polish ex-
plained that Zetts teaches that the motion or gesture
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12 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
inputs on a touch screen are “representative of ‘continuous
contact from a first location to a second location on the
touch sensitive surface’ because [Zetts’ system] recognizes
a gesture when the user makes a ‘touchdown’ at a first
touch input point on the touch screen and continues to
move through other points on the screen in a certain time
frame without lifting off the screen.” Polish Decl. ¶ 108.
Roku further responds to UEI’s argument by pointing
to Herz’ teaching that “[i]n response to the command to re-
position the PIP window screen, the remote control issues
the corresponding repositioning control signals to the tele-
vision set by transmitting the new location and/or size of
the PIP window as entered by the user.” Herz, col. 11,
l. 64–col. 12, l. 1. Herz explains that “the PIP window on
the television screen is positioned by the user to a new lo-
cation when the emulated PIP window on the remote con-
trol is dragged to a different location.” Id., col. 11, ll. 61–63.
Herz illustrates that when a user touches a window on the
remote control and drags the picture to another point on
the screen, data representing that contact is transmitted to
the television set.
In view of this evidence, the Board found that Herz
teaches transmitting “second data representative of the
continuous contact from the first location to the second lo-
cation on the touch sensitive surface” in the form of the “re-
positioning control signals” issued by the remote control.
There is substantial evidence, in the text of the references
and as explained by the expert witnesses, supporting the
Board’s findings that Herz in combination with Zetts
teaches the “second data” limitation of the claims of the
’504 patent and ’505 patent. On review of UEI’s argu-
ments, we discern no reversible error in the Board’s deter-
mination of the meaning and role of the “second data”
limitations in the ’504 and ’505 patents.
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 13
Analogous art
“A reference qualifies as prior art for an obviousness
determination only when it is analogous to the claimed in-
vention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374,
1379 (Fed. Cir. 2019). “Whether a reference qualifies as
analogous prior art is a question of fact that we review for
substantial evidence.” Id. “Prior art is analogous if it is
from the same field of endeavor or if it is reasonably perti-
nent to the particular problem the inventor is trying to
solve.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335
(Fed. Cir. 2015). “A reference is reasonably pertinent if,
even though it may be in a different field from that of the
inventor’s endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself
to an inventor’s attention in considering his problem.” In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re
Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)).
The Board first considered whether Finkelstein is in
the same field of endeavor, and concluded that it is not.
The Board found that “the field of endeavor of the ’505 pa-
tent is a ‘controlling device with a touch-sensitive display,’
notwithstanding the patent’s disclosure of narrower em-
bodiments specific to universal remote control devices.”
Board ’505 Op. at *11. The Board concluded that “Finkel-
stein is not from the same field of endeavor because Finkel-
stein does not describe any device with a touch-sensitive
display.” Id. at *27. However, the Board found that
“Finkelstein is reasonably pertinent to one or more of the
problems of the ’505 patent” because it “describes using a
cursor to perform various windows management func-
tions[.]” Id. at *28.
The Board reasoned that “one of the particular prob-
lems with which the ’505 patent’s inventor was involved is
to provide remote, cursor control functionality because the
’505 patent describes a second operational mode of the con-
trolling device, which is a pointer control mode.” Board ’505
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14 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
Op. at *28. The ’505 patent states that all of the user in-
terface functions typically associated with mousing are in-
cluded through use of the pointer control mode of the
universal controlling device, such as: double-tapping to
stick the pointer to a window bar, dragging the window
across the desktop, and single tapping to release; double-
tapping to open a window or start an application; etc. ’505
patent, col. 6, ll. 3–9.
The Board reasoned that “Finkelstein describes using
a cursor to perform various windows management func-
tions” such as clicking on objects, double clicking on objects
to activate them, and clicking and dragging, “Finkelstein
logically would have commended itself to the ’505 patent’s
inventor dealing with the particular problem of creating a
controlling device with a pointer control mode that includes
various windows management functions.” Board ’505 Op.
at *12; Board ’504 Op. at *26. The Board concluded: “Thus,
we agree with Petitioner that Finkelstein is analogous art.”
Id.
UEI argues that the Board erroneously “asserted that
the Challenged Patents acknowledged a need for a univer-
sal controlling device that is adapted to provide remote,
cursor control functionality” and erroneously “concluded
that Finkelstein is reasonably pertinent to this alleged
problem because Finkelstein describes using a cursor to
perform various windows management functions.” UEI Br.
41 (citations omitted). UEI states that “Finkelstein indis-
putably has nothing to do with universal controlling de-
vices, remote controls, or software for remote controls” and
that “even under the Board’s characterization of the prob-
lem the inventor of the Challenged Patents was trying to
solve, there is no evidence that Finkelstein is reasonably
pertinent to this problem.” UEI Br. 41–42. Thus UEI ar-
gues that the Board erred in finding a motivation to com-
bine Finkelstein with Herz and Zetts because Finkelstein
is not analogous art.
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UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 15
UEI argues that, because “Herz does not disclose a ‘dis-
played cursor,’” the Board erred in finding a motivation to
combine Herz’ remote control with Finkelstein’s cursor.
UEI Br. 43–44. UEI argues that the Board based its con-
clusion solely on the fact that both Herz and Finkelstein
disclose the use of Microsoft windows, but Herz “says noth-
ing about a cursor.” Id. at *45. UEI argues that “[t]he
Board failed to explain (and could not explain) how a
POSITA would reasonably have expected to solve the al-
leged problem of creating ‘a universal controlling device
that is adapted to provide remote, cursor control function-
ality’ by considering a reference that indisputably has
nothing to do with universal controlling devices or remote
controls.” UEI Br. 42 (emphases original).
We conclude that there was substantial evidence sup-
porting the Board’s finding that Finkelstein is analogous
art. Roku’s expert Dr. Polish opined that “[a] POSITA, in
order to implement the system of Herz and Zetts, would
have looked to documentation in the field of GUI display
technology to supplement its teachings for how to imple-
ment this windows-based resizing and repositioning in
Herz. Finkelstein describes the technology for doing so.”
Polish Decl. ¶ 117 (Appx2696). Finkelstein uses a cursor,
and the ʼ504 and ʼ505 patents sought to add cursor func-
tionality to universal remote controls. Thus Finkelstein is
reasonably pertinent to cursor functionality, and in combi-
nation with the analogous art of Herz and Zetts, provides
substantial evidence in support of the Board’s conclusion of
obviousness of the challenged claims.
II
New argument in Roku’s Replies
UEI argues that “the Board’s finding that Finkelstein
is analogous art was improperly based on an argument that
was raised for the first time in Roku’s Replies.” UEI Br. 39.
Roku responds that its Replies “responded to UEI’s
Case: 21-2128 Document: 37 Page: 16 Filed: 08/28/2023
16 UNIVERSAL ELECTRONICS, INC. v. ROKU, INC.
counterarguments regarding analogous art that UEI pre-
sented in its Patent Owner Responses.” Roku Br. 60.
UEI also argues that “the Board’s finding that Herz
teaches the Second Data Limitations is based on an argu-
ment that was belatedly raised for the first time in Roku’s
Replies, and thus the Board’s finding is legally erroneous.”
UEI Br. 25. Roku responds:
The Board properly considered Roku’s arguments
and evidence in reply because Roku had already
raised those arguments in its Petitions, and Roku’s
reply arguments were directly responsive to the
claim-construction arguments raised in UEI’s Pa-
tent Owner Responses. In any event, UEI was al-
lowed a Sur-reply in each case to substantively
address the arguments and evidence in the replies,
as well as supplemental briefing to raise its argu-
ments that the arguments and evidence should not
have been considered by the Board. Moreover, UEI
declined the opportunity to take the deposition of
Roku’s expert witness regarding those arguments
and evidence in reply. UEI had every opportunity
to respond to any allegedly “new” arguments.
Roku Br. 33.
A party to litigation is not precluded from responding
with new arguments relevant to arguments made by the
opponent, provided that there is opportunity for additional
relevant response. See Skky, Inc. v. MindGeek, s.a.r.l., 859
F.3d 1014, 1023 (Fed. Cir. 2017) (reply arguments not im-
proper where patent owner had an opportunity to file a sur-
reply and made no assertion that “it lacked notice and the
ability to respond to any particular argument”). UEI does
not contend that it had no opportunity to respond to Roku’s
arguments presented in its replies. We discern no merit to
UEI’s objections.
Case: 21-2128 Document: 37 Page: 17 Filed: 08/28/2023
UNIVERSAL ELECTRONICS, INC. v. ROKU, INC. 17
CONCLUSION
We affirm the Board’s decisions that the challenged
claims of the ’504 and ’505 patents are unpatentable for ob-
viousness.
AFFIRMED