Customs Ruling HQ H323308 - Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1200; Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remotes Controllers, and Components Thereof

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HQ H323308
Feb 08, 2022

Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :

OT:RR:BSTC:EOE H323308 FKM

Mr. Johnathan D. Baker
Dickinson Wright PLLC
800 W. California Avenue Suite 110
Sunnyvale, California 94086

VIA EMAIL: [email protected]

RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1200; Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remotes Controllers, and Components Thereof

Dear Mr. Baker:

Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch (“EOE Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter. We find that Roku, Inc. (“Roku”) has met its burden to show that certain Roku “Box” and “Stick” streaming players (“articles at issue”) do not infringe claim 1 of U.S. Patent No. 10,593,196 (“the ’196 patent”). Thus, CBP’s position is that the articles at issue are not subject to the limited exclusion order issued by the U.S. International Trade Commission (“Commission” or “ITC”) in Investigation No. 337-TA-1200 (“the underlying investigation” or “the 1200 investigation”), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”). We further note that determinations of the Commission resulting from the underlying investigation or a related proceeding under 19 C.F.R. Part 210 are binding authority on CBP and, in the case of conflict, will by operation of law modify or revoke any contrary CBP ruling or decision pertaining to section 337 exclusion orders. This ruling letter is the result of a request for an administrative ruling from CBP under 19 C.F.R. Part 177, which was conducted on an inter partes basis. The process involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, Roku, the ruling requester and respondent in the 1200 investigation; and (2) Universal Electronics, Inc. (“UEI”), complainant in the 1200 investigation. See, e.g., 19 C.F.R. § 177.1(c).

The parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying investigation, with [[red brackets]] in all of their submissions to CBP. See 19 C.F.R. §§ 177.2, 177.8. If there is additional information in this ruling letter not currently bracketed in red [[ ]] that either party believes constitutes confidential information, and should be redacted from the published ruling, then the parties are asked to contact CBP within ten (10) working days of the date of this ruling letter. See, e.g., 19 C.F.R. § 177.8(a)(3).

Please note that disclosure of information related to administrative rulings under 19 C.F.R. Part 177 is governed by, for example, 6 C.F.R. Part 5, 31 C.F.R. Part 1, 19 C.F.R. Part 103, and 19 C.F.R. § 177.8(a)(3). See, e.g., 19 C.F.R. § 177.10(a). In addition, CBP is guided by the laws relating to confidentiality and disclosure, such as the Freedom of Information Act (“FOIA”), as amended (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974, as amended (5 U.S.C. § 552a). A request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. Part 177 faces a strong presumption in favor of disclosure. See, e.g., 19 C.F.R. § 177.8(a)(3). The person seeking this treatment must overcome that presumption with a request that is appropriately tailored and supported by evidence establishing that: the information in question is customarily kept private or closely-held and either that the government provided an express or implied assurance of confidentiality when the information was shared with the government or there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See, e.g., U.S. Department of Justice, Office of Information Policy: Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (updated 10/7/2019).

BACKGROUND

ITC Investigation No. 337-TA-1200

Procedural History at the ITC

The Commission instituted Investigation No. 337-TA-1200 on May 22, 2020, based on a complaint filed by Universal Electronics, Inc. of Scottsdale, Arizona. Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, Inv. No. 337-TA-1200, EDIS Doc. ID 757848, Public Commission Opinion (Dec. 3, 2021) (“Comm’n Op.”) at 1 (citing 85 Fed. Reg. 31211-212 (May. 22, 2020)). The complaint, as supplemented, alleged a violation of section 337 by reason of infringement of certain claims of U.S. Patent Nos. 10,593,196 (“the ’196 patent”); 10,600,317 (“the ’317 patent”); 7,589,642 (“the ’642 patent”); and other patents that were originally asserted but later withdrawn and terminated from the 1200 investigation. Comm’n Op. at 1-2. The notice of investigation named Roku, Inc. of Los Gatos, California, among other parties that were later terminated from the investigation, as a respondent. Id. at 2. The Commission’s Office of Unfair Import Investigations (“OUII”) was not named as a party in the investigation. Id.

On July 9, 2021, the Administrative Law Judge (“ALJ”) issued his final initial determination (“FID”) finding a violation of section 337. Id. at 3. Specifically, the ALJ determined that a violation of section 337 occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation, of the accused Roku Ultra and Soundbar products that infringed the ’196 patent, though Roku’s redesigned Ultra and Soundbar products were found not to infringe. Id. The ALJ also found no violation with respect to the ’642 and ’317 patents because, although infringed, their asserted claims were found to be invalid. Id.

On September 9, 2021, the Commission issued a notice in which it determined to review in part the FID and requested submissions responding to the Commission’s questions on review and remedy, the public interest, and bonding. Id. at 3 (citing 86 Fed. Reg. 51381, 51382-82 (Sept. 15, 2021). The Commission, in its review of the FID, found a violation of section 337 as to the ’196 patent and determined that the appropriate remedy was a limited exclusion order and cease and desist order. Id. at 43.

In the limited exclusion order, the Commission ordered that “electronic devices, including streaming players televisions, set top boxes, remote controllers, and components thereof that infringe one or more of claims 1, 3, 11, and 13-15 of the Asserted Patent and are manufactured abroad by, or on behalf of, or imported by or on behalf of Respondent or any of its affiliated companies, parents, subsidiaries, agents, or other related business entities, or its successors or assigns, are excluded from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, for the remaining terms of the Asserted Patent, except under license from, or with the permission of, the patent owner or as provided by law.” Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, Inv. No. 337-TA-1200, EDIS Doc. ID 756327, Limited Exclusion Order (Dec. 3, 2021) at 2 (“1200 LEO”). The Commission further defined the articles covered by the limited exclusion order as “televisions, set-top boxes, remote control devices, streaming devices, and sound bars that incorporate the infringing technology. Covered articles shall not include the Roku products that were adjudicated in this investigation and found to be non-infringing (i.e., Roku Ultra (Bryan 2) and Roku Soundbar (Fruitland)).” Id. (emphasis added).

The Products from the Underlying Investigation

The legacy products in the underlying investigation consisted of Roku Streaming Boxes, Roku Streaming Sticks, and Roku Soundbars. Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, Inv. No. 337-TA-1200, EDIS Doc. ID 747669, Public Final Initial Determination (July 9, 2021) (“FID”) at 6. With regard to the ’196 patent, UEI accused the Roku Ultra Streaming Box and the Roku Soundbar. Id. Although UEI initially accused the Roku Streaming Sticks of infringing the ’196 patent, the accusation was dropped before the FID issued. Id. at 91; see also Ruling Request, Exhibit. J (Email from T. Davison to Dino Hadzibeovic) (Apr. 10, 2021). The ALJ determined, inter alia, that—and the parties stipulated to—the Roku Ultra, Platform: Bryan 2 (Launch Date Oct. 2019) with Roku OS version 9.3.0 or 9.4.0 was representative of the Roku Streaming Boxes; the Roku Streaming Stick +, Platform: Amarillo (Launch Date Oct. 2019) with Roku OS version 9.3.0 or 9.4.0 was representative of the Roku Streaming Sticks; and the Roku Smart Soundbar, Platform: Fruitland (Launch Date October 2019) with Roku OS version 9.3.0 or 9.4.0 was representative of the Roku Streaming Soundbars. FID at 6-7 (citation omitted).

Roku also introduced revised products for adjudication during the underlying investigation. The ALJ found, and the Commission affirmed, that the revised products, specifically the Roku Ultra (Bryan 2) and the Roku Soundbar (Fruitland) were non-infringing because they did not satisfy the requirements of claim 1 of the ’196 patent. FID at 101; Comm’n Op. at 14 n.7.

The Patent and Claims in the 1200 LEO

The 1200 LEO prohibits the unlicensed entry for consumption of electronic devices, including streaming players, televisions, set top boxes, remote controllers, and components thereof that infringe one or more of claims 1, 3, 11, and 13-15 of the ’196 patent and manufactured abroad by, or on behalf of, or imported by or on behalf of, Roku, or any of its affiliated companies, parents, subsidiaries, agents, or other related business entities, or its successor or assigns. See 1200 LEO at 1.

Claim 1 of the ’196 Patent

The ’196 patent is titled “‘System And Method For Optimized Appliance Control’ . . . [and] relates generally to enhanced methods for appliance control via use of a controlling device, such as a remote control, smart phone, tablet computer, etc., and in particular to methods for taking advantage of improved appliance control communication methods and/or command formats in a reliable manner that is largely transparent to a user and/or seamlessly integrated with legacy appliance control technology.” FID at 5-6 (citing ’196 patent at 1:66-3:6). The remaining claims at issue depend directly from claim 1. FID at 36. Claim 1 of the ’196 patent is reproduced below:

1. A first media device, comprising: a processing device; a high-definition multimedia interface communications port, coupled to the processing device, for communicatively connecting the first media device to a second media device; a transmitter, coupled to the processing device, for communicatively coupling the first media device to a remote control device; and a memory device, coupled to the processing device, having stored thereon processor executable instruction; wherein the instructions, when executed by the processing device, cause the first media device to be configured to transmit a first command directly to the second media device, via use of the high-definition multimedia communications port, to control an operational function of the second media device when a first data provided to the first media device indicates that the second media device when the first data provided to the first media device indicates that the second media device will be responsive to the first command, and cause the first media device to be configured to transmit a second data to a remote control device, via use of the transmitter, for use in configuring the remote control device to transmit a second command directly to the second media device, via use of a communicative connection between the remote control device and the second media device, to control the operational function of the second media device when the first data provided to the first media device indicates that the second media device will be unresponsive to the first command.

FID at 84-85; ’196 patent at 17:1-32.

The only disputed limitation in claim 1 of the ’196 patent during the underlying investigation related to the “wherein” clause; specifically: “. . . wherein the instructions, when executed by the processing device, cause the first media device to be configured to transmit a first command directly to the second media device, via use of the high-definition multimedia communications port, to control an operational function of the second media device when a first data provided to the first media device indicates that the second media device will be responsive to the first command, and cause the first media device to be configured to transmit a second data to a remote control device, via use of the transmitter, for use in configuring the remote control device to transmit a second command directly to the second media device, via use of a communicative connection between the remote control device and the second media device, to control the operational function of the second media device when the first data provided to the first media device indicates that the second media device will be unresponsive to the first command.”

See FID at 92; ’196 patent at 17:1-32.

19 C.F.R. Part 177 Ruling Request

Procedural History

On November 19, 2021, Roku submitted a letter to CBP requesting an administrative ruling pursuant to 19 C.F.R. Part 177, which included Exhibits A to K and two expert declarations (collectively, “Ruling Request”). Roku Email to EOE Branch, dated November 19, 2021. Roku requested “an administrative ruling that certain Roku “Box” and “Stick” streaming players are not subject to the limited exclusion order (“LEO”) issued by the ITC because they do not infringe U.S. Patent No. 10,593,196[.]” Ruling Request at 1. In the same e-mail, Roku also confirmed that Roku entered into a non-disclosure agreement with UEI and provided an unredacted copy of the Ruling Request and supporting documents to UEI. Roku Email to EOE Branch, dated November 19, 2021.

On November 26, 2021, the EOE Branch had an initial conference call with Roku and UEI, on which both parties agreed to conduct the ruling request process on an inter partes basis administered by the EOE Branch. Also during this initial call, the EOE Branch and the parties discussed scheduling for the inter parties ruling, and after failing to reach agreement on a proposed procedural schedule, the parties submitted proposals to the EOE Branch. See Roku Email, dated November 26, 2021; UEI Email, dated November 26, 2021. On December 1, 2021, after considering the party submissions, the EOE Branch established the procedural schedule for the inter partes ruling process. See EOE Branch email to Parties, dated December 1, 2021. On December 30, 2021, UEI provided its response to the Ruling Request, which included Exhibits 1 to 4 (collectively, “UEI Response”). On January 10, 2022, Roku provided its reply to UEI’s Response, which included Exhibits 1 to 8 (collectively, “Roku Reply”). On January 18, 2022, UEI provided its sur-reply (“UEI Sur-Reply”) to Roku’s Reply.

The Articles at Issue

The articles at issue in the Ruling Request are certain Roku “Stick” and “Box” streaming players. Ruling Request at 1. Specifically, the products for which Roku requested a ruling are Roku Express; Roku LE; Roku Express 4K; Roku Express 4K+; Roku Ultra; Roku Ultra LT; Roku Streaming Stick 4K; Roku Streaming Sick 4K+; and Roku Streaming Stick + Headphone Edition. Ruling Request at 7-10. Roku also requested “…that CBP issue a ruling permitting the importation of any future Roku Boxes implementing the same design-around algorithm” and “… that CBP issue a ruling permitting the importation of any future Roku Sticks.” Ruling Request at 7, 10. According to the Ruling Request, the articles at issue “implement a design-around algorithm that the ITC found does not infringe the ’196 patent[.] [T]hat algorithm [[ ]], and therefore, as the ITC found, such devices do not have ‘executable instruction[s]’ that cause for the first media device ‘to be configured to transmit a second data to a remote control device’ ‘for use in configuring the remote control device to transmit a second command directly to the second media device’ ‘when the first data . . . indicates that the second media device will be unresponsive to the first command.’” Ruling Request at 1-2 (quoting FID at 99 (depicting algorithm in flowchart)).

Roku Sticks

During the underlying investigation, UEI originally accused the Roku Sticks of infringing the ’196 patent, however, UEI withdrew the infringement allegations with respect to the Stick products. Comm’n Op. at 6. In its Ruling Request, Roku argues that the Roku Sticks are not within the scope of the exclusion order because of UEI’s withdrawal of infringement allegations. Ruling Request at 13-15. Nevertheless, Roku argues that, should CBP determine that, notwithstanding the withdrawal during the underlying investigation, Roku Sticks are a type of product that may fall within the scope of the LEO, the design-around Roku Stick, using the same source code and algorithm as the Boxes discussed below, do not satisfy the requirements of claim 1 of the ’196 patent. Id. at 15.

Specifically, Roku argues that its Sticks at issue in this ruling request do not constitute a first media device that includes “instructions that cause it to: (a) be configured to transmit ‘second data’ to a remote control device for use in configuring the remote control device to transmit a second command directly to the second media device when “first data” indicates that the second media device will be unresponsive to the first command; and (b) configure itself to transmit a ‘first command’ directly to the second media device when ‘first data’ indicates that the device will be responsive to the first command.” Ruling Request at 16 (emphasis in original). Roku provides the following regarding these products: [[

]] Ruling Request at 16.

Roku Boxes

The legacy Roku Boxes were capable of programing a remote control, through the use of infrared (“IR”) codes or consumer electronics control (“CEC”) signals, through a high-definition multimedia interface (“HDMI”) connection, to control a television in response to signals sent from the remote control. FID at 93; Comm’n Op. at 15-16. These legacy Boxes configured themselves and the Roku remote control, included with the Roku Box, to control operations of the television, including powering the television on and off, and adjusting the volume up, down, or to be muted. Id. To configure the remote control to operate the television in this manner, a Box would complete a setup process for the remote control, which would [[ ]] FID at 44. Programming the remote control would begin with a user selecting “Set up remote for TV control” in the Remote Settings menu, prompting directions to appear on the screen, such as “[p]lease point your Roku remote at this TV.” FID at 44 (citation omitted). The television would then show the question “is music playing” to which the user could select “[y]es, music is playing” or “no.” Id. If a user selected the affirmative option, then a mute command was transmitted to the television with a CEC signal through the HDMI connection. Id. at 45. Next, the television would display the question “[h]as the music stopped playing?” Id. If the user answered affirmatively, then the Roku Box was set up to issue CEC commands when a user pressed the power, volume, or mute buttons on the Roku remote control. Id. at 45-46. Alternatively, if the user originally selected “no,” when asked whether music was playing, then the Roku Box configured its remote to control the television through IR. Id. at 46.

The design-around version of Roku Boxes adjudicated at the Commission, which were found not to infringe the ’196 patent, used an alternative algorithm from the infringing legacy Boxes. Id. at 99. Specifically, the design-around Boxes [[ ]] Id. Further, the FID found that:

[c]laim 1 requires that the “executable instruction[s]” cause the first media device “to be configured to transmit” either a “first command” or a “second data,” depending on the content of the “first data.” JX-0005 (196 patent) at cl. 1. More precisely, “when the first data . . . indicates that the second media device will be unresponsive to the fist command” (i.e., the user response to the [[ ]] is “No”), the “executable instruction[s]” must cause the first media device “to be configured to transmit a second data to a remote control device” for configuring the remote control device. Id.; RDX-0007C.31. But that is not how the executable instructions cause the accused first media devices (i.e., Roku Revised Products) to be configured; instead, the Roku Revised Products are configured to transmit a prompt to the user to select either “Give Up” or “Try Again.” RDX-0007C.31.

Id. at 99-100.

The design-around products were described using the following block diagram:

[[ ]]

The design-around Boxes transmit [[ ]] Id. at 100-101. The ALJ found that the “first data” did not cause the transmission of the “second data,” through the executable instructions, to the remote control for a second time, as required by claim 1. Id. The user’s request that the design-around Box [[ ]] was not found to be the same “first data” sent [[ ]] Id. at 101. Therefore, the design-around Boxes did not satisfy the limitations of claim 1, and thus, the products were found not to infringe the ’196 patent. Id.

The Commission found the legacy products to infringe the ’196 patent based on the algorithm discussed above, which existed in the [[ ]]. Ruling Request at 11 (citing FID at 93-98; Comm’n Op. at 16-21). The design-around version, which was found not to infringe at the Commission, was implemented in [[ ]]. Ruling Request at 11 (citing FID at 98-101; Comm’n Op. at 14 n.7). According to the Ruling Request, [[

]] Ruling Request at 12-13 (citing Lipoff Decl. ¶¶ 74-76; Mendenhall Decl. ¶¶ 9, 16).

ISSUE

Whether Roku has met its burden to show that the articles at issue do not infringe the ’196 patent, and thus are not subject to the limited exclusion order issued in the 1200 investigation. See Ruling Request at 1.

LEGAL FRAMEWORK

Section 337 Exclusion Order Administration

The Commission shall investigate any alleged violation of section 337 to determine, with respect to each investigation conducted by it under this section, whether there is a violation of this section. See 19 U.S.C. § 1337(b)(1) and (c). If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States unless the Commission finds based on consideration of the public interest that such articles should not be excluded from entry. See 19 U.S.C. § 1337(d)(1).

When the Commission determines that there is a violation of section 337, it generally issues one of two types of exclusion orders: (1) a limited exclusion order or (2) a general exclusion order. See Fuji Photo Film Co., Ltd. v. ITC, 474 F.3d 1281, 1286 (Fed. Cir. 2007). Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. ITC, 535 F.3d 1322, 1330 (Fed Cir. 2008). “A limited exclusion order is ‘limited’ in that it only applies to the specific parties before the Commission in the investigation. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission's investigation.” Id. A general exclusion order is appropriate only if two exceptional circumstances apply. See Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO [general exclusion order] by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”).

In addition to the action taken above, the Commission may issue an order under 19 U.S.C. § 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion order if their owner, importer, or consignee previously had articles denied entry on the basis of that exclusion order and received notice that seizure and forfeiture would result from any future attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are operative against articles presented for customs examination or articles conditionally released from customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. §§ 1337(d)(1) (“The Commission shall notify the Secretary of the Treasury of its action under this subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through the proper officers, refuse such entry.”); id., at (i)(3) (“Upon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).”) (emphasis added).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that violate section 337 of the Tariff Act of 1930 without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order. See Vastfame Camera, Ltd. v. ITC, 386 F.3d 1108, 1114 (Fed. Cir. 2004). The Commission also has recognized that even limited exclusion orders have broader applicability beyond just the parties found to infringe during an investigation. See Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Comm’n Op. at 17, n.6, Doc ID 317981 (Jan. 2009) (“We do not view the Court’s opinion in Kyocera as affecting the issuance of LEOs [limited exclusion orders] that exclude infringing products made by respondents found to be violating Section 337, but imported by another entity. The exclusionary language in this regard that is traditionally included in LEOs is consistent with 19 U.S.C. § 1337(a)(1)(B)-(D) and 19 U.S.C. § 1337(d)(1).”).

Moreover, “[t]he Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist.” See Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (emphasis added). “[W]hile individual models may be evaluated to determine importation and [violation], the Commission's jurisdiction extends to all models of [violative] products that are imported at the time of the Commission’s determination and to all such products that will be imported during the life of the remedial orders.” See Certain Optical Disk Controller Chips and Chipsets, Inv. No. 337-TA-506, Comm’n Op. at 56-57, USITC Pub. 3935, Doc ID 287263 (July 2007).

Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee [or plaintiff],” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (2014), the Commission has held that Medtronic is not controlling precedent and does not overturn its longstanding practice of placing the burden of proof on the party who, in light of the issued exclusion order, is seeking to have an article entered for consumption. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-879, Advisory Opinion at 6-11. In particular, the Commission has noted that “[t]he Federal Circuit has upheld a Commission remedy which effectively shifted the burden of proof on infringement issues to require a company seeking to import goods to prove that its product does not infringe, despite the fact that, in general, the burden of proof is on the patent to prove, by a preponderance of the evidence, that a given article does infringe. . . .” Certain Integrated Circuit Telecommunication Chips, Inv. No. 337-TA-337, Comm’n Op. at 21, n.14, USITC Pub. 2670, Doc ID 217024 (Aug. 1993), (emphasis in original) (citing Sealed Air Corp. v. ITC, 645 F.2d 976, 988-89 (C.C.P.A. 1981)).

This approach is supported by Federal Circuit precedent. See Hyundai Elecs. Indus. Co. v. ITC, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (“Indeed, we have recognized, and Hyundai does not dispute, that in an appropriate case the Commission can impose a general exclusion order that binds parties and non-parties alike and effectively shifts to would-be importers of potentially infringing articles, as a condition of entry, the burden of establishing noninfringement. The rationale underlying the issuance of general exclusion orders—placing the risk of unfairness associated with a prophylactic order upon potential importers rather than American manufacturers that, vis-a-vis at least some foreign manufacturers and importers, have demonstrated their entitlement to protection from unfair trade practices—applies here [in regard to a limited exclusion order] with increased force.”) (emphasis added) (internal citation omitted).

Patent Infringement

Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. To establish literal infringement, every limitation recited in a claim must be found in the accused product whereas, under the doctrine of equivalents, infringement occurs when there is equivalence between the elements of the accused product and the claimed elements of the patented invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). One way to establish equivalence is by showing, on an element-by-element basis, that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented invention, which is often referred to as the function-way-result test. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir. 2016).

As for the first step above, “claim construction is a matter of law.” SIMO Holdings, Inc. v. H.K. uCloudlink Network Tech., Ltd., 983 F.3d 1367, 1374 (Fed. Cir. 2021). Moreover, the ultimate construction of a claim limitation is a legal conclusion, as are interpretations of the patent’s intrinsic evidence (the patent claims, specifications, and prosecution history). UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841, 190 L. Ed. 2d 719 (2015).

“Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges.” Id. at 1314. In others, courts look to public sources such as “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.

“To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). The context in which a claim term is used also includes the full chain of dependence as well as the remaining suite of claims and the written description. See Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) (“Since the specification explicitly mentions the ‘alternative’ . . . there can be no debate concerning the application of the doctrine of claim differentiation.”).

The second step to establish infringement involves a comparison of the claims, as properly construed, to the accused product, which is a question of fact. Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc).

LAW AND ANALYSIS

Roku argues that the Roku Stick and Box streaming players at issue in this Ruling Request do not infringe the ’196 patent because they do not include the features that the Commission found to infringe, as they implement the design-around algorithm the Commission adjudicated as non-infringing. Ruling Request at 1. Additionally, Roku states that, for its Stick products, UEI dropped its allegations of infringement during the underlying investigation and, therefore, the Sticks are not within the scope of the exclusion order. Ruling Request at 2. Roku further argues that “even on the merits there is no reasonable basis to conclude that the Sicks infringe … because they are designed [[ ]]. Id. For its Box products, according to Roku, the algorithm likewise [[ ]], and thus, the articles do not have “executable instruction[s]” that cause the first media device “to be configured to transmit a second data to a remote control device” “for use in configuring the remote control device to transmit a second command directly to the second media device” “when the first data . . . indicates that the second media device will be unresponsive to the first command.” Ruling Request at 1-2 (quoting FID at 99) (depicting algorithm in flowchart). In response, UEI argues that the Roku products “re-implement[] infringing functionality in a modified, but still infringing, manner.” UEI Response at 5. We will address these respective arguments in turn below.

Before addressing the respective infringement arguments of the parties concerning the Stick and Box products in this Ruling Request, the EOE Branch will address Roku’s position that these products implement the design-around algorithm that the Commission adjudicated not to infringe during the underlying investigation, such that they could not be subject to exclusion from entry in light of the Commission’s binding determination as to non-infringement. As a starting point, the parties do not disagree that the Roku products in this Ruling Request contain the design-around functionality, as adjudicated not to infringe at the Commission. Ruling Request at 13; UEI Response at 12.

However, UEI points out that the Roku products in this Ruling Request include changes and new functionality that was not part of the adjudication at the Commission. UEI Response at 15 (“Roku did not implement this new flavor of infringing functionality until after discovery closed in the ITC Investigation.”). Roku did not contest this assertion in its reply submission and concedes that the articles at issue do indeed have functionality that was not addressed during the underlying investigation. See Roku Reply at 15. Accordingly, on the basis of this functionality that differs from or is in addition to that which was adjudicated at the Commission, we find that the Commission’s non-infringement determination does not apply to the products in this Ruling Request, that the burden is on Roku to establish admissibility of these products, and that this inter partes proceeding under 19 CFR Part 177 is the proper means to reach that determination.

The Roku Sticks

Throughout its submissions, Roku appears to use the term “Roku Sticks” interchangeably to refer to two categories of products:

the “legacy” Roku Sticks, for which in the underlying investigation “[t]he Parties stipulated that the Roku Streaming Stick +, Platform: Amarillo (Launch Date Oct. 2019) with Roku OS version 9.3.0 or 9.4.0 is representative of the Roku Streaming Sticks” and that UEI originally accused of infringing the ‘196 patent but ultimately were “no longer accused of infringement.” See e.g., FID at 6, 91 (citations omitted). To alleviate any confusion, when specifically referring to these Sticks, we will use the term “legacy Roku Sticks”; and

the “redesigned” Roku Sticks, which appear to include the specific Sticks identified in the Ruling Request and “run[] OS 10.5.x (including 10.5.0 and 10.5.1).” See e.g., Ruling Request at 10, 15. To alleviate any confusion, when specifically referring to these Sticks, we will use the term “redesigned Roku Sticks.”

This distinction is important because, while Roku’s submissions implicate both categories of Roku Sticks, Roku’s arguments as to why the legacy Roku Sticks and redesigned Roku Sticks are not subject to the LEO appear to be different. We will address the legacy Roku Sticks and the redesigned Roku Sticks in turn below.

The Legacy Roku Sticks

With respect to the legacy Roku Sticks, Roku argues that “these non-accused Sticks are not within the scope of the LEO” because “UEI initially accused them of infringing the ‘196 patent – but after being presented with evidence of non-infringement, UEI dropped those allegations.” Ruling Request at 2. Thus, Roku asserts that “for that reason alone … CBP should issue a ruling confirming as such.” Id. We agree that should the legacy Roku Sticks, or any Roku Sticks, be non-infringing, they would be outside the scope of the LEO. However, as discussed in greater detail below, we disagree that UEI’s withdrawal of its ’196 patent infringement allegations in this investigation against the legacy Roku Sticks must automatically exempt them from the exclusion order in particular because the Commission addressed this issue in reaching its final determination.

During the underlying investigation, Roku requested that the Commission include an exemption in the exclusion order that would “explicitly exempt any Roku Streaming Sticks … no longer accused of infringing the ‘196 patent,” but the Commission declined to include such an exemption. Compare Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, Inv. No. 337-TA-1200, EDIS Doc No. 754087, Roku’s Reply Submission on the Issues Under Review, Remedy and Bonding and Public Interest, Exhibit A (Oct. 13, 2021) with 1200 LEO; see also e.g., UEI Response at 10. Rather, as evidenced by paragraphs 1 and 2 of the 1200 LEO, “streaming devices” that infringe the asserted claims of the ’196 patent (and meet the other requirements, e.g., entered for consumption) are subject to the 1200 LEO. The only Roku products explicitly exempted from the 1200 LEO were “the Roku products that were adjudicated in this investigation and found to be non-infringing (i.e., Roku Ultra (Bryan 2) and Roku Soundbar (Fruitland)).” 1200 LEO at ¶¶ 1, 2. All determinations of the Commission, including any conclusion of law or finding of fact, that arise from an investigation, or related proceeding, are binding authority on CBP, and applied by CBP with preclusive effect in the administration of exclusion orders issued under 19 U.S.C. § 1337. As this question was squarely presented during the briefing to the Commission, but not acted upon, the Commission did not expressly carve-out the products in question from the exclusion order.

Consistent with the above, we note that “the scope of the remedy is dependent upon the scope of the investigation, which is determined by the notice of investigation.” In re Certain Automated Mech. Transmission Sys., 2007 ITC LEXIS 1300, *5-6 (Int'l Trade Comm'n August 1, 2007); see also 19 C.F.R. § 210.10 (“The notice will define the scope of the investigation.”). The notice of investigation for the 1200 investigation defined the scope as “televisions, set-top boxes, remote control devices, streaming devices, and sound bars that incorporate the infringing technology.” 85 Fed. Reg. 31211-12 (May. 22, 2020). Roku does not dispute that the Roku Sticks (both the legacy and redesigned) are “streaming devices.” See e.g., Ruling Request at 1 (referring to Roku Sticks as “streaming players”). Thus, if any Roku Sticks incorporate the infringing technology, they may be subject to the LEO.

Roku further cites Certain MEMS Devices and Products Containing the Same, Inv. No. 337-TA-700 (“MEMS”) in support of its request for CBP to “issue a ruling permitting Roku to import these non-accused Sticks.” Ruling Request at 14. However, MEMS is distinguishable from the instant case. In MEMS, the Commission expressly permitted use of the certification provision to “allow[] importation of Respondents’ MEMS devices and products containing the same that are made using the non-accused anti-stiction processes.” Certain MEMS Devices and Products Containing the Same, Inv. No. 337-TA-700, Comm’n Op. at 27 (May 13, 2011). However, in stark contrast, the Commission made no such statement here. With respect to certification, the Commission only noted that “[t]he LEO … includes the standard certification provision.” Comm’n Op. at 36. The Commission previously explained that “[t]he standard [certification] provision does not allow an importer to simply certify that it is not violating the exclusion order[.]” Certain Network Devices, Related Software and Components Thereof (I), Inv. No. 337-TA-944, Comm’n Op. at 54 n.19 (June 23, 2016), USITC Pub. 4909 (June 2019). Thus, as the legacy Roku Sticks have not been determined by the Commission or CBP not to infringe the asserted patents, and especially given the functionality described above that was not present on the legacy Sticks initially accused of infringement, the appropriate basis to address the admissibility of Roku’s Stick products is an administrative ruling under 19 C.F.R. Part 177.

The Redesigned Roku Sticks

With respect to the redesigned Roku Sticks, the remaining focus of Roku’s arguments is on its non-infringement position concerning the ’196 patent.

Roku has met its burden to show that the redesigned Roku Sticks do not infringe claims 1, 3, 11, or 13-15 of the ’196 patent

The claims at issue are included in the 1200 LEO, i.e., claims 1, 3, 11, and 13-15 of the ’196 patent. See 1200 LEO. Claims 3, 11, and 13-15 of the ’196 patent all depend from claim 1. See FID at 91. Further, the question presented by the ruling request centers upon claim 1 of the ’196 patent. Ruling Request at 11.

As discussed in detail below, our position is that Roku has met its burden to establish that at least one limitation in claim 1 of the ’196 patent is not met by the redesigned Roku Sticks. Thus, we find that Roku has met its burden to establish that the redesigned Roku Sticks do not infringe the claims in the 1200 LEO. See, e.g., Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991) (“[T]he failure to meet a single limitation is sufficient to negate infringement of the claim[.]”); Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) (“One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim.”).

Claim 1 of the ’196 Patent

Roku alleges that the following limitation in claim 1 of the ’196 patent is not met by the redesigned Roku Sticks:

. . . wherein the instructions, when executed by the processing device, cause the first media device to be configured to transmit a first command directly to the second media device, via use of the high-definition multimedia communications port, to control an operational function of the second media device when a first data provided to the first media device indicates that the second media device will be responsive to the first command, and cause the first media device to be configured to transmit a second data to a remote control device, via use of the transmitter, for use in configuring the remote control device to transmit a second command directly to the second media device, via use of a communicative connection between the remote control device and the second media device, to control the operational function of the second media device when the first data provided to the first media device indicates that the second media device will be unresponsive to the first command.

Ruling Request at 6; Ruling Request Exhibit A.

During the underlying investigation, neither party sought construction of any of the claims of the ’196 patent, such that claim 1 was afforded its plain and ordinary meaning. See FID at 86. On review, the Commission affirmed the FID’s findings regarding application of the term “for use in configuring the remote control device to transmit” and the plain and ordinary meaning given. Comm’n Op. at 14. The Commission adopted the understanding that “‘second data’ must be used in the process of configuring the remote control, but it does not need to actually or directly change any settings in the remote control[.]” Id. Moreover, neither party in this inter partes proceeding has argued that any claim limitation requires a construction to reach the question of infringement. See, e.g., UEI Sur-Reply at 11 (“UEI is not seeking any new claim construction from CBP[.]”). Accordingly, consistent with the approach the Commission adopted, we apply the plain and ordinary meaning to the claim limitations at issue in this matter.

The parties do not dispute that the redesigned Roku Sticks include the redesigned functionality, as adjudicated as non-infringing at the Commission. Ruling Request at 13; UEI Response at 12 (“Roku OS 10.5.x is not simply an implementation of the Design-Around source code path that was adjudicated during the ITC Investigation[.]”) (emphasis added). UEI, however, argues that the redesigned Roku Sticks now include “over a year’s worth of revisions, additions, and alterations that were not part of the ITC proceedings.” UEI Response at 12. From these revisions, UEI alleges that Roku has implemented the same functionality that was found to infringe at the Commission. Id. at 15. Specifically, UEI contends that:

[a]fter a factory reset, the Submitted Products instruct the user to pair their Remote to begin the Roku device setup procedure. As the user progresses through this setup procedure the user is instructed to check their Roku remote’s settings. At this point in the setup procedure, the remote is configured such that it will cause the Roku box or stick to issue CEC commands to the attached TV for the “volume up,” volume down,” and “mute” buttons. If the TV supports CEC commands, it will execute those functions upon the user pressing the corresponding button on the Roku remote. The user is then given the choice to either (1) bypass further remote configuration (in the event their remote is working) and continue to use CEC or to (2) enter into the IR command configuration process. This “fork in the road” functionality that results in either CEC commands being issued from the Roku device (box or stick) or IR commands being issued from the Roku remote is precisely what the ITC has confirmed infringes Claim 1.

Id.

According to UEI, “the Submitted Product (the first media device) is configured to transmit a CEC volume command (the first command) directly to the TV (the second media device) via HDMI when the user indicates that the remote can control the TV (via CEC) by pressing the “Cancel” button (the first data).” UEI Response at 27. UEI argues that this functionality, as illustrated below, mirrors that which was found to infringe at the Commission.

UEI Response at 28.

With respect to the functionality raised by UEI as satisfying the limitation in question from the ’196 patent, we find that Roku has at least shown that this functionality does not contain “instructions, [that] when executed by the processing device, cause the first media device to be configured to transmit a first command directly to the second media device, via use of the high-definition multimedia communications port, to control an operational function of the second media device when a first data provided to the first media device indicates that the second media device will be responsive to the first command[.]” Roku has met its burden to show that the executed instructions, in response to the first data provided to the first media device indicating that the second media device will be responsive to the first command, do not cause the first media device to be configured at that time, as the device is already configured for such functionality prior to that time when the first data is provided to the first media device.

Claim 1 requires the first media device to be comprised of “instructions … [that] cause the first media device to be configured … when a first data provided to the first media device indicates that the second media device will be responsive[.]” ’196 patent at 17:1-32. For purposes of this ruling, the EOE Branch does not need to take a position whether the user’s selection of “Continue” or “Cancel” constitutes the claimed “first data” element and assumes, arguendo, as UEI alleges, that this selection on the factory reset startup screen satisfies this requirement. Even in that case, as described in detail below, the executed instructions do not cause the redesigned Roku Sticks to be configured at that time in response to the user’s selection. To start, when analyzing the term “for use in configuring,” the Commission contrasted its meaning from that of “cause … to be configured.” Comm’n Op. at 12-13 (emphasis in original). Specifically, the Commission found that:

[t]he term ‘for use in configuring’ is broader than ‘cause . . . to be configured’; the term ‘for use in configuring’ does not require the ‘second data’ to directly or immediately change any settings or configuration of the remote control.

Id. (emphasis in original). Therefore, by analyzing the term “for use in configuring,” the Commission addressed the term “cause … to be configured,” recognizing by implication that it requires the executed instructions “to directly or immediately change the settings or configuration” of the first media device upon receiving the claimed “first data.” Id.; see also Comm’n Op. at 12 (citing ’196 patent at 17:14-16, 21-24) (“There is nothing in the claim language or specification that requires the ‘second data’ to change any settings or directly configure the remote control. In contrast, claim 1 states that the executed instructions must ‘cause the first media device to be configured to transmit’ a ‘first command’ or ‘second data,’ respectively, in the ‘responsive’ or ‘unresponsive case.’”) (emphasis in original).

The executed instructions in the products at issue in this Ruling Request, however, do not cause the first media device to be configured—through a direct or immediate change to the settings or configuration—to transmit a first command with the selection of “Cancel” as the claimed first data that is provided to the first media device. As shown below, the first data—the user selection of “Cancel” from UEI’s theory of infringement—discontinues the configuration process, retaining the previous CEC configuration, rather than directly or immediately changing the configuration.

As Roku notes, UEI’s expert, Dr. Rosenberg declared that, prior to clicking “Cancel,” he “confirmed that the volume up button, volume down button, and mute buttons on the Roku remote were able to control the corresponding functions of the TV via CEC commands issued by the Roku Ultra to the TV.” Rosenberg Declaration at ¶ 69. Dr. Rosenberg continued, stating that “I selected ‘Cancel’ because the Roku remote was already capable of controlling volume up, volume down, and mute functions of the attached TV via CEC.” Rosenberg Declaration at ¶ 70. Thus, the first media device is not configured based on the user’s selection, as the device is already set up for CEC control prior to that selection. As such, when the first media device receives the first data, in the form of the “Cancel” selection, there is no direct or immediate change to any settings or configuration of the first media device, as envisioned by the Commission with respect claim 1 of the ’196 patent and the “instructions” that “cause the first media device to be configured” at the time that first data is provided to it. This comports with the plain and ordinary meaning of the claim language that, as indicated above, will be applied in this inter partes proceeding. A different interpretation would deviate from this understanding and require a specific construction that neither party in this dispute has sought or offered.

In response to Roku’s non-infringement arguments, UEI alleges that the redesigned Roku Sticks are configured for CEC control due to the user selection of “Cancel,” and that but for this selection, the redesigned Roku Sticks would be configured for IR control instead. UEI Sur-Reply at 12. In support of this argument, UEI references the Commission’s findings related to U.S. Patent Application Publication No. 2021/0249890 (“Chardon”), specifically stating that the Commission found “that Chardon’s teaching of being preconfigured to send CEC commands and, upon some indication that a CEC command worked, continuing to issue CEC commands taught Limitation 1[e][i].” UEI Sur-Reply at 12 (citing FID at 112-13; Comm’n Op. at 25) (emphasis in original).

To the extent that Chardon is relevant to the present infringement analysis, UEI mischaracterizes the Commission’s findings. In finding that Chardon teaches a portion of the “wherein” clause in claim 1 of the ’196 patent, the ALJ noted that:

[a]lthough there does not appear to be an express disclosure that the remote control engine thereafter causes the multi-media gateway to be configured to transmit a first command if the HDMI appliance responds positively, it stands to reason that the remote control engine would cause the multi-media device to continue to control the HDMI appliance using CEC/HDMI…. [A]ny such command from the remote control engine would seemingly qualify as “configur[ing]” the multi-media gateway “to transmit a first command,” because it can include “storing in memory pass information for the CEC command code.”

FID at 113.

As raised by Roku, “the ID found that Chardon disclosed ‘configuring’ because ‘the remote control engine would cause the multi-media device to continue to control the HDMI appliance using CEC/HDMI’ by ‘storing in memory pass information for the CEC command code.’” Roku Reply at 14 (quoting FID at 113) (emphasis in original). Thus, for Chardon to teach claim 1 of the ’196 patent, such that “being preconfigured to send CEC commands and, upon some indication that a CEC command worked, continuing to issue CEC commands” as UEI claims, UEI Sur-Reply at 12 (emphasis in original), the indication would necessarily include “storing in memory pass information for the CEC command code” to “qualify as ‘configur[ing]’ the multi-media gateway ‘to transmit a first command.’” FID at 113. UEI’s expert, Dr. Hashmi stated that [[

]] Furthermore, Dr. Hashmi declared that [[

]] Therefore, the redesigned Roku Sticks lack a command from the remote control engine that configures the multi-media gateway to transmit a first command because the first data—the user selection of “Cancel,” as UEI alleges—does not store in memory pass information for the CEC command code. Instead, such a selection would discontinue the configuration process, retaining the previous CEC configuration.

Accordingly, we find that Roku has met its burden to show that at least one claim limitation in claim 1 of the ’196 patent is not met by the redesigned Roku Sticks because its functionality does not contain “instructions, [that] when executed by the processing device, cause the first media device to be configured to transmit a first command directly to the second media device, via use of the high-definition multimedia communications port, to control an operational function of the second media device when a first data provided to the first media device indicates that the second media device will be responsive to the first command” because the executed instructions do not cause a direct or immediate change to any settings or configuration of the first media device when it is provided with first data, as the first media device is already configured for such functionality prior to the first data being provided.

In light above the above, this determination does not address the parties’ other arguments, e.g., concerning whether the first data indicates that the second media device will be responsive or subjective intent, as those arguments are not separate claims, but instead represent additional grounds for determining whether the products at issue should be refused entry and therefore need not be addressed here. See Solomon Technologies, Inc. v. U.S. Int’l Trade Comm’n, 524 F.3d 1310, 1320 (Fed. Cir. 2008) (Where the court stated, “[i]f we uphold the Commission’s order, as we do in this case, we are not required to address every possible ground on which the Commission’s order might be sustained.”); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (“The Commission … is at perfect liberty to reach a ‘no violation’ determination on a single dispositive issue.”); Delorme Publ. Co. v. ITC, 805 F.3d 1328, 1336, n.4 (Fed. Cir. 2015) (“We leave this issue to a future case where its resolution is briefed and necessary to the outcome.”).

The Roku Boxes

With respect to the Roku Boxes, the focus of Roku’s arguments is also on non-infringement.

Roku has met its burden to show that the Roku Boxes do not infringe claims 1, 3, 11, or 13-15 of the ’196 patent

The products at issue in the ruling request for which Roku is seeking an admissibility determination implement the identical Roku OS 10.5x. Ruling Request at 11, 15. Because the software at issue is the same in both articles, and in light of the discussion above, we find that Roku has met its burden to show that at least one claim limitation in claim 1 of the ’196 patent is not met by the Roku Boxes. Thus, we find that Roku has met its burden to show the Roku Boxes do not infringe the claims in the 1200 LEO. See, e.g., Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991) (“[T]he failure to meet a single limitation is sufficient to negate infringement of the claim. . . .”); Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) (“One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim.”).

Sufficiency of the Evidence

UEI argues that Roku’s Ruling Request fails to address the functionality discussed above that forms the basis of UEI’s infringement theory and, instead, narrowly focusing on the functionality that was adjudicated as non-infringing at the Commission. UEI Response at 32. According to UEI, because Roku did not address any changes to the Roku products between the adjudicated redesign and the products subject to this request for an administrative ruling, Roku has not carried its burden of proving admissibility, as established in Hyundai Elecs. Indus. V. U.S. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). Id. at 32-33.

In response, Roku argues that the intervening versions of the Roku OS are not at issue, the functionality at issue in this request for an administrative ruling is the design-around adjudicated at the Commission merged into a more recent iteration of the operating system, and inconsistent intervening changes have been overwritten. Roku Reply at 15. Roku also raises the fact that Roku produced the entire source code for the operating system at issue and that UEI’s expert was able to analyze and understand that source code. Id. Finally, Roku states that the Roku experts did not address UEI’s theory of infringement because “Roku had no reason to,” as it was not at issue in the underlying investigation, is unnecessary based on the claims of the ’196 Patent, and UEI had an opportunity “to identify any basis it had for opposing importation of the Ruling Request products, but UEI refused to do so.” Id. at 16.

A request for an administrative ruling must include a complete statement of all relevant facts relating to the transaction contemplated by the request. 19 C.F.R. § 177.2(b)(1). In its Ruling Request, Roku provided the product names, code names, model numbers, and exemplary box images for each of the products for which Roku is seeking an admissibility determination. Ruling Request at 7-10. Roku provided the ports of entry for transactions contemplated by the ruling request. Id. at 7. UEI, and its experts, had access to the source code for Roku OS 10.5.0, Roku OS 10.5.1, and the Roku RF remote controls, along with Roku Ultra (4800), Roku Streaming Stick 4K+ (3941), Roku Express (3930), and the Roku Voice Remote Pro. See e.g., Rosenberg Declaration at ¶ 20; Hashmi Declaration at ¶ 12. In light of the information submitted during this inter partes proceeding, we find that Roku has met the requirements of 19 C.F.R. Part 177 and that an administrative ruling on the question presented is appropriate.

UEI also argues that Roku fails to meet is burden of proving that the Submitted Products are admissible, under Hyundai Elecs. Indus. V. U.S. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990), because Roku failed to address the functionality discussed above. See UEI Response at 32. However, Roku did address the functionality in its Reply, and UEI was provided with the opportunity to respond to Roku’s assertions in its Sur-Reply. While UEI argues that Roku has offered “no actual evidence (e.g. fact or expert testimony, documentation) in support of its opposition to the issues of infringement[,]” see UEI Sur-Reply at 3, this ignores that Roku’s arguments in response to UEI’s theory of infringement relied on UEI’s own experts and evidence. Therefore, Roku does not dispute that UEI has accurately characterized the operation of the former’s products; only whether the operation of those products, as commonly understood among the parties and not subject to dispute in this inter partes proceeding, meets the relevant claim limitation. As Roku does not contest the description of its products by UEI’s experts, but rather whether, as a factual matter, the claim limitation reads onto the accused functionality, Roku has accepted the evidence UEI has submitted on the operation of the products while disputing that they satisfy the claim limitations at issue. Furthermore, Roku has cited the underlying Commission record in support of its non-infringement position. See e.g., Roku Reply at 13-15.

Future Products

In addition to the articles discussed above, Roku has requested an admissibility determination with respect to “any future Roku Boxes implementing the same design-around algorithm” and “any future Roku Sticks.” Ruling Request at 7, n.8; 10, n.9. We find that this request fails to establish a specifically described Customs transaction for which a ruling letter would be appropriate. See 19 C.F.R. § 177.8(a)(1). (“The Customs Service will endeavor to issue a ruling letter setting forth a determination with respect to a specifically described Customs transaction whenever a request for such a ruling is submitted in accordance with the provision of this part and it is in the sound administration of the Customs and related laws to do so.”). Furthermore, the Commission discussed a similar request by Roku during the underlying investigation, declining to extend a finding of non-infringement—and thus an exemption from the exclusion order—to “Roku products that allegedly ‘contain the same functionality’ as [] non-infringing products, because such a clause would be too broad and vague and thus complicate, rather than facilitate, enforcement.” Comm’n Op. at 37. Therefore, as provided in 19 C.F.R. Part 177 generally, any determination in this administrative ruling does not apply to future products if the articles in question differ in any material way from those described above.

V. HOLDING

We find that Roku has met its burden to establish that the redesigned Roku Sticks and the Roku Boxes do not infringe any of claims 1, 3, 11, or 11-15 of the ’196 patent. Accordingly, we find that the articles at issue are not subject to the LEO issued as result of Investigation No. 337-TA-1200.

The decision is limited to the specific facts set forth herein. If articles differ in any material way from the articles at issue described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. §§ 177.2(b)(1), (2), (4), and 177.9(b)(1) and (2).

Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch

CC: Mr. Adam D. Swain
Alston & Bird LLP
950 F Street, NW
Washington, D.C. 20004
[email protected]