Last April, Universal Electronics filed a Section 337 complaintElectronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof (Inv. 1200)—accusing Roku devices and Roku-integrated television sets of infringing various patents that describe using a remote to control multiple appliances.  The evidentiary hearing in that investigation was held last week, with a Final Initial Determination expected in July.

Now Roku has filed its own retaliatory ITC complaint—Televisions, Remote Controls, and Components Thereof—asserting two of its own remote control patents against Universal, three cable companies that use Universal’s remotes, and two television manufacturers.

Retaliatory complaints are fairly common at the ITC.  While it’s possible to use Section 337 to prevent infringement by shady foreign pirates, the vast majority of ITC patent investigations are merely duplicative additions to litigation in federal district court involving American companies or large multinationals with a significant U.S. presence.

The prevalence of retaliatory complaints shows how the ITC is often being used as one part of a broader litigation strategy rather than filling in gaps where district courts lack jurisdiction.  And the reality of global supply chains means that “domestic industries” and “importers” are often the same people, especially in the consumer electronics market.

But Roku’s new complaint also has some unique problems of its own.  As Universal pointed out in a request for early disposition, Roku only recently acquired its patents from a third party (for the sole purpose of asserting them in this case) and so may have trouble showing the existence of a domestic industry based on investments over such a short time period.

And Roku’s newly acquired patents may also not survive a validity challenge, considering that Universal’s own portfolio of similar remote control patents has been significantly narrowed after recent PTAB decisions.

Ultimately, Roku and Universal are involved in a patent licensing dispute that has nothing to do with trade and can easily be resolved in federal court. There is no unfair import competition or unreachable foreign infringer.

The sole purpose of the companies’ litigation is to settle disputes over the scope and validity of the patents, which will help determine the final terms of a license agreement. Allowing either one of their complaints to be adjudicated by the ITC merely creates extra work for lawyers while needlessly risking Americans’ access to consumer electronic devices.

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