Judge Newman dissents in Roku case

The outcome:


Roku, Inc. appeals the Patent Trial and Appeal Board’s final written decision holding that claims 1, 3, 5, and 7 of U.S. Patent No. 9,716,853 had not been proven unpatentable as obvious. This case turns on a single question— whether a person of ordinary skill in the art would have understood the prior art’s disclosure of a listing of remote command codes formatted for transmission via two different communication methods to be a listing comprised of at least a first communication method and a second communication method different than the first communication method. Because the question presented involved the scope and content of the prior art, the Board resolved this dispute as a purely factual question, which we review for substantial evidence. The Board thoroughly considered the evidence of record and found in its final written decision that the skilled artisan would not have understood the prior patent’s listing of remote command codes to correspond to the claim limitation at issue. Because the Board’s finding in this close factual dispute is supported by substantial evidence, we affirm the Board’s final written decision.


Judge Newman, in dissent


I respectfully dissent, for I have concerns as to both procedural and substantive aspects of the court’s ruling.


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The decision on appeal is “that Petitioner has not established by a preponderance of the evidence that any of claims 1, 3, 5, or 7 of the ’853 patent are unpatentable.” J.A. 24. My concern is with the majority’s implicit holding that if the underlying findings of fact are supported by substantial evidence, then we do not review the ultimate legal question of non-obviousness. I believe that de novo review is appropriate for the questions of law presented herein, along with review of any underlying facts for support by substantial evidence.


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An example is that for selecting the communications method, the ’853 patent shows use of a “matrix” in Figure 7, and states that the matrix contains the “form of command/transmission to be used and a pointer to the required data value and formatting information for the specific command,” Roku Reply Br. 10 (quoting the ’853 patent col. 7 ll. 26–29), while Chardon lists “both CEC-formatted command codes and a parallel set of IR-formatted command codes.” Id. (citing Chardon, ¶¶ [0008], [0039], [0044]). However, any difference in the selection method does not appear in the claims. Applying the requisite analysis of law and fact, I conclude that the ’853 patent claims at issue would have been obvious in view of Chardon, because the methods described in the claims and the prior art are substantially identical and serve the same purpose and use. I respectfully dissent from my colleagues’ contrary ruling.