SCOTTSDALE, Arizona – (COMMERCIAL THREAD) – Universal Electronics Inc. (“UEI”) (NASDAQ: UEIC), the global leader in universal wireless control solutions for home entertainment and smart home devices, today announced that the International Trade Commission of the United States (“ITC” or the “Commission”) has publicly issued its final favorable decision in the UEI patent infringement case against Roku, Inc. (“Roku”), finding that several Roku products infringe an UEI patent and prohibit the import and sale of these products. Orders will become final on January 9, 2022, after the expiration of a presidential review period.
“We have taken this action to protect our highly innovative intellectual property from unauthorized use by Roku, and we are delighted that ITC has acknowledged Roku’s infringement and ordered its shutdown, ”said Richard A. Firehammer, Jr. SVP & General Counsel of UEI. “Now that the full Commission’s opinion is available to the public, the clear and decisive victory of the UEI is evident to all. The Commission’s ban on Roku Imports and Sales is an important step in the process to prevent Roku from continuing to illegally use UEI technology. Even now, we believe that Roku continues to infringe the very patent it was discovered despite its attempts to “design” its infringement with recent software updates. These updates coincide with the degradation in performance of Roku products, as evidenced by recent media reports and consumer outcry. We look forward to working with U.S. Customs and Border Protection to ensure that Commission orders banning imports of counterfeit Roku products are properly enforced. The UEI will continue to take all necessary measures to put an end to Roku’s illegal activities.
The ITC notice made it clear that Roku’s products violated six different claims of UEI’s U.S. Patent No. 10,593,196 and rejected Roku’s plea to avoid the ITC’s ban. Referring to the UEI’s evidence as “substantial”, “impressive” and “device”, the Commission issued a limited exclusion order prohibiting Roku from importing any “counterfeits”televisions, set-top boxes, remotes, streaming devices and soundbars.
“Importantly, the Commission has made it clear that Roku should certify to Customs, at its discretion, that the products Roku wishes to import do not infringe and therefore are not excluded from entry. We do not believe that Roku can shoulder this burden, and as of January 9, 2022, any counterfeit Roku product will be subject to the exclusion from importation, ”Mr. Firehammer said.
A copy of the ITC’s Final Determination is available in its entirety here. The UEI also brought patent infringement actions against Roku in the US District Court for the District of Central California. These cases (Case No: 8: 18-cv-01580 and 8-20-cv-00701) allege the infringement of fourteen UEI patents in both cases and are currently on hold pending the final resolution of the Roku case. Inter Partes Review (DPI) of challenges filed against UEI patents and pending the final resolution of the ITC investigation, including any IPR appeals and the ITC investigation. In the District Court cases, UEI argues that Roku began copying UEI’s intellectual property without authorization or payment after engaging with UEI and gaining access to details related to UEI’s proprietary technology under ‘a confidentiality agreement concluded years ago.
Leading global consumer electronics brands and entertainment service operators license UEI’s portfolio of cloud technologies, software and QuickSet solutions. QuickSet Cloud is built on UEI’s comprehensive device knowledge base and enables automated discovery, configuration and control of home entertainment devices and smart home devices and services. UEI holds more than 600 issued or pending US patents.
About Universal Electronics Inc.
Founded in 1986, Universal Electronics Inc. (NASDAQ: UEIC) is the global leader in universal wireless control solutions for home entertainment and smart home devices. We design, develop, manufacture, ship and support control and detection technology solutions as well as a wide range of universal control systems, audio-video accessories and intelligent wireless security and smart home products. . Our products and solutions are used by the world’s leading brands in the video services, consumer electronics, security, home automation, air conditioning and home appliance markets. For more information visit www.uei.com.
This press release contains “forward-looking statements” within the meaning of federal securities laws, including statements regarding the ITC complaint, the litigation in the Central District of California, and the timing and outcome of these procedures and the associated enforcement measures. These forward-looking statements are based on expectations, estimates and projections regarding these matters, as well as on certain assumptions made by management and involve known and unknown risks, uncertainties and other unknown factors that could cause actual results of the Company are materially different from any future results expressed or implied by such forward-looking statements, including, but not limited to (1) the result of any legal proceedings and enforcement action in connection with the disputes discussed. in this press release; (2) the ability to capitalize on the Company’s patent portfolio and generate license rights and revenues, in general and with respect to the patents at issue in the litigation discussed in this press release; (3) the Company’s ability to settle the disputes referred to in this press release on acceptable terms; (4) the potential challenges to the validity of the Company’s patents underlying its licensing opportunities and the litigation discussed in this press release; and (5) the Company’s ability to achieve widespread adoption of the Company’s QuickSet technology. Any of these factors could cause actual results to differ materially from the expectations we express or imply in this press release. We make these forward-looking statements as of December 15, 2021. We assume no obligation to publicly update or revise any forward-looking statement, whether as a result of new information, future events or otherwise.