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A video sign displays the logo for Roku at the Nasdaq Market in New York, U.S., September 28, 2017. REUTERS/Brendan McDermid
(Reuters) - Roku's redesigned versions of its soundbars and Ultra streaming device don't infringe a patent owned by a company that specializes in universal remotes, but the original versions of the devices do, the U.S. International Trade Commission has ruled.
The ITC's Wednesday order blocks Roku from importing certain televisions, streaming devices, remote controls, and other products that infringe the remote-control patent, including the Roku Soundbar and Roku Ultra but excluding "revised" versions of them. The commission also said two other patents UEI accused Roku of infringing are invalid.
Joe Hollinger, Roku's vice president of litigation and intellectual property, said in a statement Thursday that the decision "fully absolves" the company, and that it has already designed around the patent.
UEI's attorney Adam Swain of Alston & Bird said his client was pleased with the ruling that Roku infringed and the import ban.
Scottsdale, Arizona-based UEI makes universal remotes compatible with a range of electronics. It filed a complaint against San Jose, California-based Roku and others including television makers TCL and Hisense at the ITC last year for infringing several patents.
The ITC hears disputes brought by owners of U.S. intellectual property against companies that import allegedly infringing goods.
The case was later narrowed to claims that only Roku's products infringed three UEI patents. Administrative Law Judge Cameron Elliot found in an initial July ruling that Roku's Ultra and Soundbar infringe one of the patents, but that the other two were invalid, and that new versions of the two products don't infringe.
The ITC agreed Wednesday, and broadly banned Roku from importing devices that infringe the patent.
The parties have also sued each other for infringement in California federal court. Those cases were paused for the investigation and related ITC proceedings brought by Roku against UEI and others, as well as Roku challenges to the validity of UEI's patents at the Patent Trial and Appeal Board.
Matthew Rizzolo of Ropes & Gray represents Roku.
The case is In the Matter of Certain Electronic Devices, U.S. International Trade Commission, No. 337-TA-1200.
For Roku: Matthew Rizzolo of Ropes & Gray
For UEI: Adam Swain of Alston & Bird
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Roku gets mixed result in ITC dispute over remote-control patent - Reuters
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