CAFC-PTOMay 13, 2026·24-1856·Affirmed.
Universal Electronics, Inc. v. Roku, Inc.
Patent Trial and Appeal Board
Holding
The Federal Circuit agreed with the Board's construction of "the provisioned codeset record comprising protocol and formatting information." The construction does not require all protocol and formatting information to be stored in the record, and it does not limit that information to "a set of procedures." The court affirmed the Board's determination that claims 1–6, 12, and 15–18 of the '083 patent are unpatentable as obvious.
Why It Matters
The decision shows that "comprising" claim language and permissive specification language ("may comprise") will defeat attempts to narrow a term by requiring exclusivity or a procedural definition. It also shows that expert testimony about a term's ordinary meaning does not establish the meaning of the full claim phrase.
Full Summary
Universal Electronics, Inc. v. Roku, Inc.
The Federal Circuit agreed with the Board's construction of "the provisioned codeset record comprising protocol and formatting information." The construction does not require all protocol and formatting information to be stored in the record, and it does not limit that information to "a set of procedures." The court affirmed the Board's determination that claims 1–6, 12, and 15–18 of the '083 patent are unpatentable as obvious.
The decision shows that "comprising" claim language and permissive specification language ("may comprise") will defeat attempts to narrow a term by requiring exclusivity or a procedural definition. It also shows that expert testimony about a term's ordinary meaning does not establish the meaning of the full claim phrase.
Affirmed.
Roku petitioned for IPR. The Board held claims 1–6, 12, and 15–18 of the '083 patent unpatentable as obvious under § 103. UEI appealed, and the only issue was claim construction.
UEI argued that all protocol and formatting information must be stored in the codeset record itself and used to transmit a command. It also argued that "information" means "a set of procedures," so a signal type such as IR is not covered.
The Board construed "protocol and formatting information" as "information needed to transmit a signal from one device to another in a way that the receiving device can make sense of and use the signal." The court reviewed claim construction de novo and reviewed extrinsic evidence determinations for substantial evidence.
The claim language requires only that the record comprise protocol and formatting information, not all of it. The specification says a record "may comprise" such information, which suggests some may be stored elsewhere. Neither the claims nor the specification limits the term to a "set of procedures."
Roku's expert testified that the ordinary meaning of "protocol" is "a set of procedures," but he did not say the claim phrase means that. The court saw no error in the Board's finding that his testimony did not support UEI's construction. Roku's cross-appeal was withdrawn after the court asked about Article III standing.
claim construction § 103 standing / jurisdiction non-precedential
Key Points
- Roku petitioned for IPR. The Board held claims 1–6, 12, and 15–18 of the '083 patent unpatentable as obvious under § 103. UEI appealed, and the only issue was claim construction.
- UEI argued that all protocol and formatting information must be stored in the codeset record itself and used to transmit a command. It also argued that "information" means "a set of procedures," so a signal type such as IR is not covered.
- The Board construed "protocol and formatting information" as "information needed to transmit a signal from one device to another in a way that the receiving device can make sense of and use the signal." The court reviewed claim construction de novo and reviewed extrinsic evidence determinations for substantial evidence.
- The claim language requires only that the record comprise protocol and formatting information, not all of it. The specification says a record "may comprise" such information, which suggests some may be stored elsewhere. Neither the claims nor the specification limits the term to a "set of procedures."
- Roku's expert testified that the ordinary meaning of "protocol" is "a set of procedures," but he did not say the claim phrase means that. The court saw no error in the Board's finding that his testimony did not support UEI's construction. Roku's cross-appeal was withdrawn after the court asked about Article III standing.