Federal Circuit Affirmed the PTAB’s Ruling that the Petitioner has the Burden of Proof to Show that a POSA Would Equate Features from the Prior Art to Claim Features

In Roku, Inc. v. Universal Electronics, Inc., No. 2022-1058 (Fed. Cir. 2022), the Federal Circuit affirmed the PTAB’s holding that Roku failed to fulfill their burden of proof to show that a person of ordinary skill in the art (“POSA”) would understand how features of the asserted prior art would equate to the claim features at issue.  Roku filed an IPR to invalidate U.S. Pat. No. 9,716,853.  In alleging that the ‘853 Patent would be obvious in view of U.S. Pat. Pub. No. 2012/0249890 (“Chardon”), Roku equated CEC and IR command codes of Chardon with a claimed first and second communication method.  However, Roku failed to explain how the database of CEC and IR command codes would correspond to a list of communication methods.  The PTAB found, and the CAFC affirmed, that Roku failed to show how a POSA would understand the list of command codes in Chardon and the claimed listing of communication methods are the same thing.  Accordingly, Roku failed to fulfill their burden of proof.