This case was last updated from PACER on 06/07/2021 at 11:30:13 (UTC).

Roku, Inc. v. Universal Electronics, Inc. et al

Case Summary

On April 8, 2021, Roku, Inc. (“Roku” or “Plaintiff”), represented by Jonathan D. Baker of Dickinson Wright PLLC, filed an intellectual property lawsuit against Universal Electronics, Inc., Gemstar Technology (Qinzhou) Co. Ltd., Gemstar Technology (Yangzhou) Co. Ltd., C.G. Development Ltd., Universal Electronics BV and others (collectively, “UEI” or “Defendants”), seeking injunctive and compensatory relief, an accounting of damages along with treble damages, for allegedly infringing the U.S. Patent Nos. 8,378,875 (“the ’875 Patent”) and 7,388,511 (“the ’511 Patent”) (collectively, the “Patents-in-Suit”). This case was filed in the U.S. District Court for the Central District of California with Judges James V. Selna and Autumn D. Spaeth presiding. 

 

For the purposes of this complaint, ’875 patent is entitled for “Method of Programming a Universal Remote Control” and ’511 patent is entitled for “System for Remote Control of Identical Devices” owned by the Plaintiff. 

 

In its complaint, the Plaintiff alleged that “On information and belief, UEI directly infringes the apparatus claims by making, using, offering to sell, selling within the United States, and/or importing into the United States remote controls that perform the claimed setup method (“the ‘875 Accused Products”). UEI directly infringes the method claims by using the ‘875 Accused Products in an infringing manner within the United States, including in testing and demonstrating the UEI Accused Products.” Furthermore, “UEI has also contributorily infringed, and continues to contributorily infringe, the asserted claims by offering to sell, selling, and importing into the United States the ’875 Accused Products that perform the claimed methods for setting up a remote control, knowing that the ’875 Accused Products are especially made for use in infringing the ’875 patent, and are not staple articles of commerce suitable for a substantial non-infringing use. In particular, the ’875 Accused Products are remote controls that need to be set up by the user in order to be operable to control the target devices. The ’875 Accused Products contain components, including executable code that specifically implements the claimed methods for setting up the remote controls. Indeed, these components are especially built to perform the accused functionalities.”

 

The Plaintiff further alleged that “On information and belief, UEI directly infringes at least claim 5 of the ’511 patent when UEI or those acting on UEI’s behalf perform the claimed method during testing or demonstration of products, including LG and Samsung televisions, that incorporate UEI’s QuickSet technology (“the ’511 Accused Products”).” Also, “UEI also induces infringement of the ’511 Patent under 35 U.S.C. § 271(b) since at least the date of service of this Complaint by actively aiding and abetting others (including, for example, LG and Samsung, and their respective customers and end users) whose use of the ’511 Accused Products constitutes direct infringement. UEI has engaged in these actions with either the specific intent to cause infringement or with willful blindness to the infringement that it is causing.” 

 

There are two claims for relief laid down by the Plaintiff. The first claim is for the alleged infringement of ’875 patent, and the second claim is for alleged direct infringement of ’511 patent.

 

In its prayer for relief, the Plaintiff has requested the court to adjudicate that the Defendant has infringed the patents owned by Plaintiff; award compensatory damages in an amount no less than reasonable royalties, prejudgment interest, and/or any other available damages; award of UEI’s profits together with prejudgment interest and costs and reasonable attorney fees; grant permanent injunction or reasonable ongoing royalty; and award treble damages and costs of the suit.

 

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Case Details Parties Documents Dockets

 

Case Details

  • Case Number:

    8:21-CV-00658

  • Filing Date:

    04/08/2021

  • Case Status:

    Disposed - Other Disposed

  • Case Type:

    Intellectual Property - Patent

Judge Details

Presiding Judge

James V. Selna

Referral Judge

Autumn D. Spaeth

 

Party Details

Plaintiff

Roku, Inc.

Defendants

Gemstar Technology (Yangzhou) Co. Ltd.

Gemstar Technology (Qinzhou) Co. Ltd.

Universal Electronics BV

C.G. Development Ltd.

UEI Brasil Controles Remotos Ltda.

Universal Electronics, Inc.

CG Mxico Remote Controls, S. de R.L. de C.V.

Gemstar Technology Yangzhou Co. Ltd.

Gemstar Technology Qinzhou Co. Ltd.

Attorney/Law Firm Details

Plaintiff Attorneys

Jonathan D Baker

Attorney at Dickinson Wright PLLC

800 West California Avenue Suite 110

Sunnyvale, CA 94086

Craig Y Allison

Attorney at Dickinson Wright RLLP

800 West California Avenue Suite 110

Sunnyvale, CA 94086

Dino Hadzibegovic

Attorney at Dickinson Wright RLLP

800 West California Avenue Suite 110

Sunnyvale, CA 94086

Steven Robert Daniels

Attorney at Dickinson Wright PLLC

607 W. 3Rd Street, Suite 2500

Austin, TX 78701

Michael D Saunders

Attorney at Dickinson Wright PLLC

607 West 3Rd Street Suite 2500

Austin, TX 78701

Defendant Attorneys

Ryan W Koppelman

Attorney at Alston and Bird LLP

333 South Hope Street 16Th Floor

Los Angeles, CA 90071

Thomas W. Davison

Attorney at Alston and Bird LLP

950 F Street Nw

Washington, DC 20004

Katherine Grayce Rubschlager

Attorney at Alston and Bird LLP

333 South Hope Street 16Th Floor

Los Angeles, CA 90071

 

Court Documents

#23

#22

#20

#19

#18

#16

#15

#9

#8

#7

#6

#5

#4

#3

#2

11 More Documents Available
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Docket Entries

  • 06/04/2021
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  • Docket(#23) REPORT ON THE DETERMINATION OF AN ACTION Regarding a Patent or Trademark. (Closing) (bm) (Entered: 06/04/2021)

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  • 06/03/2021
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  • Docket(#22) ORDER GRANTING JOINT STIPULATION TO EXTEND RESPONSE DEADLINES, ACCEPT SERVICE AND STAY CASE PENDING RESOLUTION OF U.S. INTERNATIONAL TRADE COMMISSION INVESTIGATION by Judge James V. Selna, re Stipulation to Stay Case #21 : Upon consideration of the parties' Joint Stipulation to Extend Response Deadlines, Accept Service and Stay Case Pending Resolution of U.S. International Trade Commission Investigation No. 337-TA-1263, the Stipulation is hereby GRANTED. The deadline for all Defendants to respond to the Complaint shall be extended and consolidated to be on June 9, 2021, to allow for entry of the Court Ordered stay in advance of this response deadline with the expectation that the actual responses will be filed after the eventual lifting of the stay. This case shall be STAYED until the determination of the Commission in ITC Investigation NO. 337-TA-1263 becomes final, including all appeals thereof. (Made JS-6. Case Terminated.) (bm) (Entered: 06/04/2021)

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  • 06/02/2021
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  • Docket(#21) Joint STIPULATION to Stay Case pending Resolution of International Trade Commission Investigation filed by Defendant Universal Electronics, Inc.. (Attachments: #1 Proposed Order)(Koppelman, Ryan) (Entered: 06/02/2021)

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  • 06/02/2021
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  • Docket(#20) PROOF OF SERVICE Executed by Plaintiff Roku, Inc., upon Defendant Service of the Summons and Complaint were executed upon Daisy Montenegro, Intake Specialist, CT Corporation, Registered Agent for Service in compliance with Federal Rules of Civil Procedure by service on a domestic corporation, unincorporated association, or public entity.Original Summons NOT returned. Proof of Service executed by Roku, Inc., upon Defendants C.G. Development Ltd. served on 5/10/2021, answer due 6/1/2021; C.G. Mexico Remote Controls, S. de R.L. de CV served on 5/10/2021, answer due 6/1/2021; Gemstar Technology Qinzhou Co. Ltd. served on 5/10/2021, answer due 6/1/2021; Gemstar Technology Yangzhou Co. Ltd., served on 5/10/2021, answer due 6/1/2021; UEI Brasil Controles Remotos Ltd. served on 5/10/2021, answer due 6/1/2021; Universal Electronics BV, served on 5/10/2021, answer due 6/1/2021. (Baker, Jonathan) (Entered: 06/02/2021)

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  • 06/01/2021
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  • Docket(#19) NOTICE of Errata to Plaintiff's Proof of Service (Dkt. No. 18) filed by Plaintiff Roku, Inc.. (Baker, Jonathan) (Entered: 06/01/2021)

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  • 05/30/2021
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  • Docket(#18) PROOF OF SERVICE Executed by Plaintiff Roku, Inc., upon Defendant C.G. Development Ltd. served on 5/28/2021, answer due 6/18/2021; CG Mxico Remote Controls, S. de R.L. de C.V. served on 5/28/2021, answer due 6/18/2021; Gemstar Technology Qinzhou Co. Ltd. served on 5/28/2021, answer due 6/18/2021; Gemstar Technology Yangzhou Co. Ltd. served on 5/28/2021, answer due 6/18/2021; UEI Brasil Controles Remotos Ltda. served on 5/28/2021, answer due 6/18/2021; Universal Electronics BV served on 5/28/2021, answer due 6/18/2021. Service of the Summons and Complaint were executed upon Daisy Montenegro, Intake Specialist, CT Corporation, Registered Agent for Service in compliance with Federal Rules of Civil Procedure by service on a domestic corporation, unincorporated association, or public entity.Original Summons NOT returned. (Baker, Jonathan) (Entered: 05/30/2021)

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  • 05/19/2021
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  • Docket(#17) APPLICATION of Non-Resident Attorney Thomas W. Davison to Appear Pro Hac Vice on behalf of Defendant Universal Electronics, Inc. (Pro Hac Vice Fee - $500 Fee Paid, Receipt No. ACACDC-31323693) filed by Defendant Universal Electronics, Inc.. (Attachments: #1 Exhibit DC Certificate of Good Standing, #2 Exhibit FL Certificate of Good Standing, #3 Exhibit VA Certificate of Good Standing, #4 Proposed Order) (Koppelman, Ryan) (Entered: 05/19/2021)

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  • 04/30/2021
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  • Docket(#16) Joint STIPULATION Extending Time to Answer the complaint as to Universal Electronics, Inc. answer now due 6/3/2021, re Complaint (Attorney Civil Case Opening), #1 filed by Defendant Universal Electronics, Inc..(Koppelman, Ryan) (Entered: 04/30/2021)

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  • 04/30/2021
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  • Docket(#15) NOTICE of Appearance filed by attorney Katherine Grayce Rubschlager on behalf of Defendant Universal Electronics, Inc. (Attorney Katherine Grayce Rubschlager added to party Universal Electronics, Inc.(pty:dft))(Rubschlager, Katherine) (Entered: 04/30/2021)

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  • 04/30/2021
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  • Docket(#14) NOTICE of Appearance filed by attorney Ryan W Koppelman on behalf of Defendant Universal Electronics, Inc. (Attorney Ryan W Koppelman added to party Universal Electronics, Inc.(pty:dft))(Koppelman, Ryan) (Entered: 04/30/2021)

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3 More Docket Entries
  • 04/12/2021
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  • Docket(#10) ORDER RE TRANSFER PURSUANT TO GENERAL ORDER 21-01-Related Case- filed. Related Case No: 8:18-cv-01580 JVS (ADSx). Case transferred from Magistrate Judge Douglas F. McCormick and Judge Josephine L. Staton to Judge James V. Selna and Magistrate Judge Autumn D. Spaeth for all further proceedings. The case number will now reflect the initials of the transferee Judge 8:21-cv-00658 JVS (ADSx). Signed by Judge James V. Selna (esa) (Entered: 04/12/2021)

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  • 04/09/2021
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  • Docket(#9) 21 DAY Summons Issued re Complaint (Attorney Civil Case Opening), #1 as to Defendants C.G. Development Ltd., CG Mxico Remote Controls, S. de R.L. de C.V., Gemstar Technology Qinzhou Co. Ltd., Gemstar Technology Yangzhou Co. Ltd., UEI Brasil Controles Remotos Ltda., Universal Electronics BV, Universal Electronics, Inc. (car) (Entered: 04/09/2021)

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  • 04/09/2021
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  • Docket(#8) NOTICE TO PARTIES OF COURT-DIRECTED ADR PROGRAM filed. (car) (Entered: 04/09/2021)

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  • 04/09/2021
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  • Docket(#7) NOTICE OF ASSIGNMENT to District Judge Josephine L. Staton and Magistrate Judge Douglas F. McCormick. (car) (Entered: 04/09/2021)

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  • 04/09/2021
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  • Docket(#6) Request for Clerk to Issue Summons on Complaint (Attorney Civil Case Opening), #1 filed by Plaintiff Roku, Inc.. (Baker, Jonathan) (Entered: 04/09/2021)

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  • 04/08/2021
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  • Docket(#5) REPORT ON THE FILING OF AN ACTION Regarding a Patent or a Trademark (Initial Notification) filed by Roku, Inc.. (Baker, Jonathan) (Entered: 04/08/2021)

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  • 04/08/2021
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  • Docket(#4) NOTICE of Related Case(s) filed by Plaintiff Roku, Inc.. Related Case(s): 8:18-cv-01580; 8:20-cv-00701; 8:20-cv-00696; 8:20-cv-00700; 8:20-cv-00704 (Baker, Jonathan) (Entered: 04/08/2021)

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  • 04/08/2021
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  • Docket(#3) NOTICE of Interested Parties filed by Plaintiff Roku, Inc., (Baker, Jonathan) (Entered: 04/08/2021)

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  • 04/08/2021
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  • Docket(#2) CIVIL COVER SHEET filed by Plaintiff Roku, Inc.. (Baker, Jonathan) (Entered: 04/08/2021)

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  • 04/08/2021
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  • Docket(#1) COMPLAINT Receipt No: ACACDC-31076791 - Fee: $402, filed by Plaintiff Roku, Inc.. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D, #5 Exhibit E, #6 Exhibit F, #7 Exhibit G, #8 Exhibit H) (Attorney Jonathan D Baker added to party Roku, Inc.(pty:pla))(Baker, Jonathan) (Entered: 04/08/2021)

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