On February 2, 2021, ALJ Cameron R. Elliot issued the public version of his January 25, 2021 initial determination in Order No. 40 granting Respondent Roku, Inc.'s ("Roku") motion for summary determination that Complainant Universal Electronics, Inc. ("UEI") lacks standing to assert U.S. Patent No. 10,593,196 ("the '196 patent") in Certain Electronic Devices Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof (Inv. No. 337-TA-1200).
By way of background, this investigation is based on an April 16, 2020 complaint filed by UEI alleging violations of section 337 by Respondents Roku, Inc.; TCL Multimedia Holdings Ltd.; Shenzen TCL New Technology Co. Ltd.; TCL King Electrical Appliances (Huizhou) Co. Ltd; TTE Technology Inc. d/b/a TCL USA and TCL North America; TCL Corp.; TCL Moka, Int'l Ltd.; TCL Overseas Marketing Ltd.; TCL Industries Holdings Co., Ltd.; TCL Smart Device (Vietnam) Co., Ltd.; Hisense Co. Ltd.; Hisense Electronics Manufacturing Co. of America Corp. d/b/a Hisense USA; Hisense Import & Export Co. Ltd.; Qingdao Hisense Electric Co., Ltd.; Hisense International (HK) Co., Ltd.; Funai Electric Co., Ltd.; Funai Corporation Inc.; and Funai (Thailand) Co., Ltd. through the importation and/or sale of certain electronic devices, including streaming players, televisions, set top boxes, remote controllers, and components thereof that infringe one or more claims of the '196 patent and U.S. Patent Nos. 9,911,325; 7,589,642; 7,969,514; 10,600,317; and 9,716,853.
According to the Order, approximately five months after the complaint was filed, the parties became aware that Mr. Brian Barnett, a UEI employee, was a joint inventor of the '196 patent, but was not originally named as an inventor, and thus, he also did not assign his rights to the patent to UEI. Upon learning of the omission, UEI filed a petition with the U.S. Patent and Trademark Office ("USPTO") to correct the inventorship of the '196 patent and at the same time, Mr. Barnett executed an assignment to his rights in the '196 patent to UEI. On December 15, 2020, the USPTO issued a Certificate of Correction adding Mr. Barnett as an inventor to the '196 patent.
The '196 patent claims priority to a pair of provisional applications that name both Mr. Arling and Mr. Barnett as inventors. The parties agreed that Mr. Barnett and Mr. Arling were the inventors of the original provisional applications to which the '196 application claims priority, and that they both executed assignments to UEI that were timely filed with the USPTO. For each of the original provisional applications, the assignment agreements assigned Mr. Barnett's and Mr. Arling's "entire right, title, and interest in and to the invention" and "all original and reissued patents granted therefor, and all divisions and continuations thereof." On November 21, 2019, Application No. 16 /197,748—which later became the '196 patent—was filed, incorrectly identifying Mr. Arling as the only inventor. However, the '196 patent claims priority to the original provisional applications through a series continuation and continuation-in-part applications, some of which name both Mr. Arling and Mr. Barnett as inventors, while others name only Mr. Arling.
As a result, on December 30, 2020, Roku moved for summary determination, arguing that UEI lacks standing to assert the '196 patent because UEI did not hold all substantial rights in the '196 patent when it filed the complaint. In response to Roku's motion, UEI argued that it had owned all right, title, and interest in the '196 patent since the day it had issued (1) through Mr. Barnett's employee agreement; and (2) by Mr. Barnett's prior assignments of the original provisional applications, to which the '196 patent claims priority. ALJ Elliot did not find either of UEI's arguments persuasive.
Regarding Mr. Barnett's employment agreement, ALJ Elliot found that the language in the agreement only amounted to "an agreement to assign." ALJ Elliot noted that in order to qualify as an automatic conveyance of property, Mr. Barnett's employment agreement would have required language such as "hereby conveys, transfers, and assigns." However, because Mr. Barnett's employment agreement only contemplated the mere possibility of a future assignment of rights, UEI did not automatically obtain all right, title, and interest in the '196 patent until Mr. Barnett executed an assignment of his rights.
As to Mr. Barnett's prior executed assignments of the original provisional applications to which the '196 patent claims priority, ALJ Elliot noted that there are a number of intervening patent applications to which the '196 patent claims priority—and a number of them are continuation-in-part applications that either do not name Mr. Barnett as an inventor or for which he never executed an assignment. ALJ Elliot noted that because the '196 patent claims priority to the original provisional applications through a number of continuation-in-part applications, and continuation-in-part applications include "new matter" not present in the earlier application, Mr. Barnett's assignments for the original provisional applications do not give UEI ownership of the '196 patent. Additionally, ALJ Elliot looked to the language of Mr. Barnett's assignments relating to the original provisional applications and noted that because they lacked language regarding an assignment of rights to improvements, they were limited to only divisional and continuation applications, and did not cover continuation-in-part applications.
Accordingly, because UEI did not own all right, title, and interest in the '196 patent when it filed its complaint on April 16, 2020, ALJ Elliot concluded that UEI lacks standing to assert the '196 patent and granted Roku's motion for summary determination.
Originally Published by Oblon, February 2021
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