Roku, Inc. v. Int’l Trade Comm’n
Authored by: Jeremy J. Gustrowsky
A recent decision from the Federal Circuit highlights the importance of clear patent ownership and substantial domestic investment when enforcing intellectual property rights at the International Trade Commission (ITC). The case centered on U.S. Patent No. 10,593,196, which covers a technology that allows smart TVs and other media devices to communicate seamlessly, even when they use different connection protocols like HDMI, Wi-Fi, or infrared. Universal Electronics, Inc. developed this technology, known as “QuickSet,” and claimed that Roku, Inc. was importing products that infringed on their patent.
Roku challenged Universal’s right to bring the case, arguing that Universal did not actually own the patent at the time the complaint was filed. The court, however, found that a 2012 agreement between Universal and the inventor clearly assigned all rights in the relevant invention to Universal. This agreement used language that constituted an immediate transfer of rights, which is crucial for establishing ownership in patent disputes.
Another key issue was whether Universal had made a “substantial investment” in exploiting the patent within the United States, as required by law for ITC proceedings. Roku argued that Universal needed to show investment in entire products, like TVs, rather than just the QuickSet technology. The court disagreed, clarifying that the law allows a company to satisfy this requirement by investing in a specific patented technology, even if it is just a part of a larger product. Universal’s significant research and development efforts related to QuickSet were enough to meet this standard.
Finally, Roku tried to invalidate the patent by arguing it was obvious in light of earlier inventions, but the court found that Roku did not provide convincing evidence. The court also agreed with the ITC that Universal’s technology addressed a long-standing need in the industry, supporting the patent’s validity. In the end, Universal’s careful documentation of patent ownership and domestic investment paid off, as the court affirmed all of the ITC’s findings in its favor.