Roku hit with import ban in patent battle with Universal Electronics

TV remote maker Universal Electronics (UEI) claimed the United States International Trade Commission (ITC) has sided with it in its patent infringement case against Roku, which now faces an import and sales ban on certain products.

UEI last year 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.

Today, the ITC concluded some Roku products infringe on UEI patents and it barred the importation and sale of those products, an order that will become final on January 9, 2022, according to UEI.

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“The Commission’s ban on Roku imports and sales is an important step in the process of preventing Roku from continuing its unlawful use of UEI technology. Even now, we believe that Roku continues to infringe the very patent it was found to infringe despite its attempts to ‘design around’ its infringement with recent software updates,” said UEI General Counsel Richard A. Firehammer, Jr. in a statement. “These updates coincide with degraded Roku product performance, as evidenced by recent media reports and consumer outcry. We look forward to working with U.S. Customs and Border Protection to ensure the Commission’s orders banning imports of infringing Roku products are appropriately enforced. UEI will continue to take all actions necessary to put an end to Roku’s unlawful activities.”

However, Roku refuted UEI's claims and said that there have been no new developments in the case.

“On November 10, 2021, the ITC’s Final Determination fully absolved Roku from liability in this proceeding by confirming the Administrative Law Judge’s Initial Determination findings that two of the three patents asserted by UEI are invalid and that Roku has already successfully implemented technical design changes that eliminate any infringement of the one remaining UEI patent. Based on the ITC’s ruling, we do not anticipate any disruption in Roku’s ability to continue to import products," said Joe Hollinger, vice president of litigation and intellectual property at Roku, in a statement.

The patents at the heart of the complaint cover relaying key code signals through remote control devices; systems and methods for accessing a user interface via a secondary device; and systems and methods of optimized appliance control. The ITC found that Roku violated U.S. Patent No. 10,593,196 but not U.S. Patent Nos. 7,589,642 or 10,600,317.

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At the same time, Roku is pursuing its own patent suit against UEI and claiming the remote maker infringed on two patents related 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 Hollinger earlier this year.