Jonathan B. Baker

The last couple of years have been very busy for Baker, thanks to virtually back-to-back trials before the U.S. International Trade Commission where he has been representing his client Roku Inc. as both a claimant and a respondent. He also is representing Roku in federal district court and before the Patent Trial and Appeals Board.

“It’s been pretty intense the past two years,” he said, but the results for Roku have been good.

Much of the litigation involves various aspects of the technologies used for remote controls to send, receive and interpret information. That litigation is against Universal Electronics Inc., an Arizona company that makes universal remotes capable of controlling most smart devices in a home.

In one of the ITC matters, Roku is the claimant. It is alleging that Universal’s QuickSet technology, used by Samsung, LG, Charter, Altice and Wow, infringes two Roku patents. That case was tried in January and a decision is expected in June. In the Matter of Certain Televisions, Remote Controls, and Components Thereof, 337-TA-1263 (ITC, inst. May 10, 2021).

Baker is defending Roku in another ITC case on charges that its TVs and streaming players infringe six of Universal’s patents. He eliminated three of the patents early on. In a trial last April, the ITC ruled that two others were not infringed and that Roku’s design-around products avoided infringement of the last patent. In the Matter of Certain Electronic Devices, Including Streaming Players, 337-TA-1200 (ITC, inst. May 22, 2020).

Avoiding problems with that final patent took an unusual extra step. “We had to go through a proceeding at Customs … where we requested a ruling that Roku’s design-around products did not infringe the patent and so were not prohibited from importation,” Baker said. “Not every case gets that far, where you end up litigating substantive issues about infringement in front of Customs.”

Although there can be depositions and declarations in the proceedings, there is no in-person hearing. Everything is handled by letter briefs and replies, he said.

“It was very interesting for me personally because I’d not been through that before,” he said.

Baker also is defending Roku in a pair of federal lawsuits claiming that many of its products infringe some 14 Universal patents. Together, the cases could potentially lead to substantial damages and orders banning most Roku products. Universal Electronics, Inc. v. Roku, Inc., 8:18-cv-01580 (C.D. Cal., filed Sept. 5, 2018). Both cases are stayed.

Finally, he and co-counsel have appealed several cases in which the Patent Trial and Appeal Board invoked its NHK-Fintiv doctrine to decline to hear some Roku matters because related cases were pending at the ITC. The rationale for the controversial rule “doesn’t really work when you’re talking about the ITC,” he said. “Even if the ITC invalidates a patent, it’s not binding in other proceedings or the district court.” Roku, Inc. v. Universal Electronics, Inc., 2022- 1216 (Fed. Cir., filed Dec. 2, 2021).

--Don DeBenedictis