Not So Obvious: Substantial Evidence Review of Factual Issue in an Obviousness Claim

ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.

Before Newman, Reyna, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: When an appeal from the PTAB addresses only a factual issue, the substantial evidence standard of review applies.

Roku petitioned for inter partes review of Universal Electronics’ universal control engine (universal remote) patent. The PTAB found that Roku did not prove that the challenged patent was obvious. In particular, the PTAB found that Roku failed to demonstrate that the prior art disclosed or rendered obvious a particular limitation of the challenged claim. Roku appealed.

The Federal Circuit affirmed the PTAB decision. In its briefing Roku conceded that the only issue on appeal was a factual one—whether the prior art taught a claim element. The Federal Circuit acknowledged that what the referenced disclosed “was highly contested and closely decided.” Although the Federal Circuit stated that it could “see both sides of [the] factual dispute,” under the substantial evidence standard of review for factual questions, it held that the PTAB’s determination on whether the prior art disclosed the claim limitation was supported by substantial evidence.

Judge Newman dissented, arguing that de novo review should have applied because the appeal addressed the legal determination of obviousness, not merely a factual issue.

Editor: Paul Stewart

Rachel Zacuto California State Bar Pending