Roku has filed a lawsuit against television remote manufacturer Universal Electronics (UEI), alleging patent infringement.
The two patents at the heart of the suit are “Method of Programming a Universal Remote Control” (U.S. Patent No. 8,378,875) and “System for Remote Control of Identical Devices” (U.S. Patent No. 7,388,511). The complaint relates to the set-up process for Universal Electronics’ remotes used by companies including LG, Samsung, Charter and WideOpenWest.
“UEI has engaged in serial patent litigation against Roku since September 2018, and Roku believes that their patent claims are meritless. Roku has vigorously defended these cases and has successfully challenged the validity of several UEI patents. UEI’s incessant pursuit of patent litigation against Roku and its partners has led Roku to file this countersuit in the ITC against UEI," said Joe Hollinger, vice president of litigation and intellectual property at Roku, in a statement.
Roku is alleging direct, induced, and contributory infringement of its patents by Universal Electronics. The company is asking for relief in the form of compensatory damages, part of Universal Electronics’ profits and a permanent injunction.
Last month, UEI said it expanded availability of its QuickSet technology to LG webOS smart TVs. The company said QuickSet now runs on more than 500 Million devices globally.
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The lawsuit – which was filed last week with the United States District Court for the Central District of California – is not the first time in the past year that Roku and Universal Electronics have fought over patents. In May 2020, Universal Electronics said the International Trade Commission had taken up an investigation of its patent infringement claim against Roku.
UEI accused Roku and some of its smart TV partners including TCL, Hisense and Funai of engaging in unfair trade practices by importing products into the U.S. that infringe on its patents. The company asked the ITC to issue an exclusion order that would prevent further importation of the allegedly infringing products and a cease-and-desist order to bar further sales and other domestic commercial activities.
“To protect our assets, we have amassed over 500 patents that we use in our solutions and license to software and technology manufacturers. When other companies use our technology without permission, we first endeavor to form mutually beneficial business arrangements and it is only when such arrangements cannot be achieved that we take action to vigorously protect our valuable IP,” said UEI CEO Paul Arling in a statement.