Roku has dismissed a declaration made earlier in the week by Universal Electronics, in which the remote control maker said a recent ruling in a patent dispute will keep the streaming company and its technology partners from importing Roku-enabled smart TVs, streaming sticks and other gadgets from China and other factories abroad. 

In fact, a Roku rep told Next TV that the U.S. International Trade Commission ruling is weeks old. "The only thing new about it is the press release," the rep said. 

Meanwhile, Joe Hollinger, Roku's VP of litigation and intellectual property, released this statement: “There have been no new developments in this case. On November 10, 2021, the ITC’s Final Determination fully absolved Roku from liability in this proceeding by confirming the Administrative Law Judge’s Initial Determination findings that two of the three patents asserted by UEI are invalid and that Roku has already successfully implemented technical design changes that eliminate any infringement of the one remaining UEI patent. Based on the ITC’s ruling, we do not anticipate any disruption in Roku’s ability to continue to import products.”

Santa Ana, Calif.-based Universal Electronics, which makes remote controls for pay TV and streaming companies, among other clients, filed a complaint last year with the ITC, alleging that Roku violates several of its technology patents. 

On Wednesday, Universal released a statement, declaring that an ITC ruling means that Roku will now have to check with U.S. Customs before it or its gadget partners import devices in order to ensure they're not violating the patents in question. 

Roku shares have tumbled more than 12% as of midday trading on the Nasdaq, with remote control maker Universal Electronics trumpeting that an import ban has been slapped on the streaming company following Universal's complaint filing with the U.S. International Trade Commission (ITC) last year. 

According to Santa Ana, Calif.-based Universal Electronics, once the ITC's ruling becomes finalized in January, Roku will have to check with customs and make sure it's not violating the patents in question before it imports “televisions, set top boxes, remote control devices, streaming devices and sound bars.”

Roku manufactures most of its hardware in China. And's Roku's "player" business has been hit hard by global supply chain issues, with margins edging into negative territory in the third quarter. 

Updated 12/17/2021: Roku has responded with a statement dismissing Universal's claims. 

Also read: Roku Fires Up Patent War with Remote Maker Universal Electronics

“The Commission’s ban on Roku imports and sales is an important step in the process of preventing Roku from continuing its unlawful use of UEI technology," said Richard Firehammer, Universal's senior VP and general counsel, in a statement. 

Even now, we believe that Roku continues to infringe the very patent it was found to infringe despite its attempts to ‘design around’ its infringement with recent software updates," Firehammer added. "These updates coincide with degraded Roku product performance, as evidenced by recent media reports and consumer outcry. We look forward to working with U.S. Customs and Border Protection to ensure the Commission’s orders banning imports of infringing Roku products are appropriately enforced. 

According to Universal, Roku’s products infringe six different claims of U.S. Patent No. 10,593,196. According to a Universal filing with the U.S. Trademark Office, Patent '196 has to do with using a single device to "control all appliances in a home theater system." 

In May 2020, Universal filed a complaint with the ITC, alleging Roku remotes tied to TV sets made by Chinese brands TCL and Hisense, and imported into North America, violate its patents. Universal also filed a suit against Roku in California's Central District court. 

In April of this year, Roku countersued the remote maker in a California federal court, alleging violations of U.S. Patent No. 8,378,875, “Method of Programming a Universal Remote Control,” and No. 7,388,511, “System for Remote Control of Identical Devices.” 

As for the most recent ruling, ITC decisions do carry some weight. For example, an ITC import ban against Comcast in 2018 ultimately propelled the cable giant to settle with TiVo in a long-running patent dispute. 

Roku reps didn't immediately respond to Next TV's email inquiry for comment. 

Leave TiVo’s name out of it.

That seems to be the legal strategy going forward, as Xperi Holding Corp. moves forward with a sprawling patent licensing dispute with Comcast following its $3 billion takeover of TiVo. 

On Wednesday, Xperi claimed victory, announcing that Administrative Law Judge MaryJoan McNamara of the International Trade Commission had recommended the issuance of limited exclusion and cease-and-desist orders against Comcast related to two technology patents. Xperi says these patents are being infringed upon by the cable operator’s X1 video platform. 

Also read: Ex-TiVo Lawyer Patel Joins ‘Ultimate Patent Troll’

The patents, according to Xperi, “cover innovations generally relating to multi-room DVR and communication between multiple set-top boxes using MoCA technology.”

It’s only the latest turn of the screw in a case that involves dozens of patents and many different lawsuits, disputed in a number of legal venues. Last week, for example, the Patent Trial and Appeal Board—a venue that has generally sided with Comcast in the four-year-old dispute—invalidated eight of the patents Xperi is litigating over. 

So how important are these latest rulings? Tough to say, because the long-running battle has gotten so complicated. Perhaps the most interesting thing that came out of Xperi's announcement today was what wasn't in it: TiVo's brand name. 

The News Is in the Nomenclature

Xperi, which gave TiVo’s lead patent litigator, Arvin Patel, and his team golden parachutes after the merger, is taking over the fight. The TiVo band name will now be exclusive to Xperi's video products business. This is probably for the best: it’s difficult to sell pay TV operators and other clients advanced video technologies while simultaneously shaking them down for patent licensing fees. 

The legal strategy seems the same: Xperi is now championing a legal game plan established by TiVo several years ago against Comcast, whose lack of participation in the TiVo/Xperi patent licensing business represents an existential threat to it. In its legal numbers game, Xperi hopes that at least a few of the patents it disputes will be winners, forcing Comcast to the bargaining table. 

But in its announcement Wednesday, Xperi kept referring to the “Rovi patents.” It mentioned TiVo’s name only once, in the “background” section of the press release, explaining how Xperi Holdings amassed 11,000 technology patents. (As The Dude might say, this case is complicated: Four years before Xperi bought TiVo, the latter merged with Rovi Corp. in a $1.1 billion deal that created a collection of 6,000 patents.)

“We are pleased with this decision, which is now our third favorable decision at the ITC against Comcast,” said Samir Armaly, Xperi’s president of IP licensing, in a statement. “While the decision represents a positive and key milestone in our litigation, our ultimate goal remains to ensure that we receive fair value for our innovations and that we reach a mutually acceptable agreement with Comcast to allow the ongoing use of Rovi patented technology, just as we have done broadly with the other major U.S. pay TV providers. Notably, even while being in litigation over the past few years, our IP business has continued to successfully license, renew or extend licensing agreements across the industry.”

Both TiVo and Comcast are claiming victory Tuesday after an administrative law judge working for the International Trade Commission (ITC) ruled that the cable company violated one of the technology vendor’s patents.

Administrative Law Judge MaryJoan McNamara ruled that Comcast infringed on TiVo’s claims made for Patent No. 7,779,011, “Method and system for dynamically processing ambiguous, reduced text search queries and highlighting results thereof.”

The ruling is similar to one rendered by the ITC  back in November 2017, also in favor of TiVo and against Comcast. The resulting exclusion order from that ruling convinced Comcast to deactivate a remote recording feature in its X1 video platform.

However, Judge McNamara’s latest ruling still must be reviewed by the full ITC Commission before another formal exclusion order would be levied against Comcast.

“We are thrilled by yet another legal victory,” said Arvin Patel, executive VP and chief intellectual property officer at Rovi Corporation, a TiVo company, speaking in a TiVo statement. “This decision demonstrates Comcast's repeated infringement of Rovi’s patents. We hope that today’s decision will encourage Comcast to pay the necessary licensing fees so their customers can once again access advanced cable features.”

Notably, McNamara dismissed TiVo’s claims in regard to Patent No. 9,369,741, “Interactive television systems with digital video recording and adjustable reminders”; and Patent No. 7,827,585, “Electronic program guide with digital storage.” Claims made by TiVo on five other patents were thrown out earlier.

Related: TiVo Goes Back to ITC Playbook in Latest Comcast Patent Attack

“We view today’s initial determination to be a victory for Comcast because the administrative law judge found no violation as to two of the three patents addressed,” Comcast said in a statement. “We look forward to the full Commission’s review of the one remaining patent later this year, but we are confident, regardless, this ruling will not disrupt our service to our customers. Rovi also was unsuccessful on five other patents that it had previously withdrawn from this case. We will continue to resist Rovi’s efforts to force Comcast and our customers to make unreasonable payments for aging and obsolete patents.”

In the fight that spans not only the ITC, but multiple federal courts and several other jurisdictions, Comcast is coming off a string of victories against TiVo in the U.S. Patent Trial and Appeals Board.

But all TiVo needs is the occasional win, and the ITC has proven fruitful ground for the company.

Speaking to MCN last year, a TiVo attorney said the technology company’s goal is to litigate against Comcast over as many patents as it can, in as many venues as it is able. If Comcast is forced to disable too many X1 features, TiVo believes, it will be forced to settle.

As the only major pay TV company not paying TiVo royalties at this point, a victory by Comcast would undermine the rest of TiVo’s IP licensing business, the technology company surmises.

It's questionable how big a drip of blood TiVo would draw from this latest ruling.

An individual close to Comcast told MCN that if the full ITC Commission were to issue another exclusion order against X1 for Patent No. 7,779,011, the cable company’s users might not even notice if it stopped highlighting text in search results.

“It’s not like our customers would lose much,” the source said.

Regardless, TiVo seems determined to keep right on battling, with the tech company introducing half a dozen more patents for review by the ITC earlier this year. 

TiVo shares rose more than 10% in after-hours trading Tuesday after the International Trade Commission handed down a final ruling finding that Comcast had violated two TiVo patents.

According to the notice posted today, the ITC, following its investigation, has issued a “limited exclusion order prohibiting the importation of certain digital video receivers and hardware and software components” and had “issued cease and desist orders…directed to the Comcast respondents. The investigation is terminated.”

In addition to Comcast, other respondents in the ITC case include set-top suppliers such as Technicolor, Arris and Pace Ltd. (Arris acquired U.K.-based Pace in January 2016). 

“Rovi is pleased the International Trade Commission issued its final ruling in our favor and found that two Rovi patents are valid and infringed by Comcast’s X1 products, and issued an exclusion order that bans Comcast from importing and selling X1 devices that infringe our valuable intellectual property,” Rovi, a TiVo company, said in a statement. “Today’s Commission Opinion reinforces the need for Comcast to take the necessary licenses to our IP.”

TiVo and Rovi completed their merger last fall. Though TiVo/Rovi has recently renewed and/or extended patent and licensing deals with several other major MVPDs, including AT&T of late, it and Comcast have not yet come to terms on a new agreement. The ITC ruling could hasten a new deal between TiVo and Comcast. 

Update: Comcast issued this statement:“We respectfully disagree with the ITC’s decision in this matter. In fact, Rovi has never disputed that Comcast or its predecessors independently developed our X1 platform and our cloud- and app-based technology. While we believe the ITC reached the wrong decision, we will remove this feature from those offered to our subscribers while we pursue an appeal.”

The feature Comcast is referring to is functionality that lets video customers schedule DVR recordings remotely from mobile devices that they would watch later via the set-top box. 

Comcast also has deals in place to license/syndicate its X1 platform to other MSOs, including Cox Communications (it inked a multi-year intellectual agreement with Rovi in 2010)  and three based in Canada (Rogers Communications, Shaw Communications, and Videotron), which seemingly would have no bearing as this is a U.S.-focused case). Shaw is already facing a legal challenge from Nagra and OpenTV over the MSO's BlueSky TV service, which leans on Shaw's X1 syndication deal with Comcast. 

The ITC’s final ruling follows an initial determination in May finding that various respondents, including Comcast, had violated two TiVo patents – No. 8,006,263 and 8,578,413 that describe “Interactive Television Program Guide with Remote Access”– and that other four patents asserted by TiVo/Rovi in the case “were found to have no violation at this point.”

RELATED: TiVo Shares Soar on Prelim ITC Ruling Against Comcast“Having examined the record in this investigation, the Commission has determined to affirm the Final ID’s conclusion that Comcast has violated section 337 in connection with the asserted claims of the ’263 and ’413 patents,” the ITC said in the notice issued today. “More particularly, the Commission affirms the Final ID’s determination that Comcast imports the accused X1 set-top boxes (“STBs”), and takes no position as to whether Comcast is an importer of the Legacy STBs. The Commission also takes no position on as to whether Comcast sells the accused products after importation.”

Regarding what’s next, the final ITC notice now heads to a 60-day Presidential period, where the exclusion order will be reviewed and a decision will be made as to whether there’s a public health policy reason to suspend it. That’s considered unlikely in this instance.

Comcast also has the option to appeal the notice to the federal circuit, though such action isn't expected to slow TiVo’s ability to stop infringing boxes from entering the U.S.

The ITC ruling doesn’t factor in any monetary damages. TiVo is seeking those in two separate court cases occurring in the Southern District of New York. One involves the same patents covered in the ITC case, which had been under a stay until the Commission determined a final ruling.

In 2016, prior to its merger with TiVo, Rovi filed a patent suit against Comcast in the Eastern District of Texas, Marshall Division, alleging that the cable operator, together with a handful of its set-top suppliers, including Arris/Pace, Technicolor and Humax, are infringing on 14 patents that, it claims, covers features such as remote recording and search for Comcast’s X1 platform.

On Oct. 9, an International Trade Commission (ITC) administrative law judge made an initial determination in a patent infringement case between mobile technology companies. The ITC judge’s determination, albeit preliminary, was that the commission could find no evidence to support the claims made by the plaintiff, Nvidia, which owns patents for graphics processing technology. However the case will continue and the implications of a potential ruling could be pernicious for the Latino community in the United States.

Almost a year ago, Nvidia Corp. filed a claim at the ITC asserting that Samsung Electronics Co. and Qualcomm Inc. infringed on some of its patents related to specific chips in particular Samsung mobile devices. Nvidia asked the ITC, an independent government board, for an exclusion order that would apply to Samsung products, including tablets and smartphones that contain the disputed Qualcomm chip technology. 

An exclusion order would essentially bar these devices from entering the U.S. This order would reduce access to smartphones and other connected devices like tablets. Our concern is that this would have a disproportionate effect on the nation's Latino communities, which depend on affordable mobile technologies for Internet access more than other communities.

Nearly 72% of Hispanics own a smartphone – 20% higher than the national average – according to a Nielson report released last year. But that high level of ownership does not tell the full story about the unique relationship U.S. Latinos have with their smartphones, tablets and other devices. For many Latinos, these devices are the only way they access the Internet. 

A Pew Research Center study shows that at least 13% of Hispanics and 12% of African-Americans are “smartphone-dependent,” suggesting that they don’t have access to the Internet at home. There are many reasons for this, notably the availability of affordable broadband connections. Just the same, the so-called digital divide is narrowing. According to Pew’s research, 81% of Hispanics now use the Internet, compared with 85% of whites. And mobile technology is critical to closing this divide.

Presently, connecting to the Internet is not an option but a necessity. It is frequently the most efficient way to access a host of information in a timely manner, seek employment opportunities and stay current on news that affects you – no matter where you live, transcending income level and ethnicity. In the past year, 73% of Hispanics who own a smartphone have used their device to search for information related to a health condition, and 45% have used their phone to look up educational materials or access the rapidly increasing offering of online education programs.

One of the reasons why this exclusion order would be particularly disruptive is cost. According to Experian Marketing Services, 53% of Hispanic adults use an Android device, compared with only 34 percent that use an iPhone. Because Samsung manufactures 65 percent of all Android smartphones, an import ban on its many popular products would hit Hispanic smartphone users especially hard as the smartphone supply would be dramatically reduced. In addition, Pew’s study also noted Latinos are twice as likely as other groups to terminate their smartphone service because of increased costs.

Not so long ago the mobile Internet was novel new concept. Now it is a redundant term. The Internet is mobile. The dramatic increase in connectivity is allowing new businesses to grow with dynamic efficiency and is breaking down barriers for millions. This is a testament to free-market innovation and, for the most part, a light regulatory touch. Keeping an ample supply of a variety of affordable devices is a critical element of maintaining the momentum of today’s world. Therefore, this exclusion order affecting so many products could have dramatic unintended consequences, particularly among Hispanics.

Disputes over patents are common in a competitive technology economy, and companies should be free to contest each other over intellectual property rights and recover what is rightfully theirs. In Nvidia's dispute with Samsung and Qualcomm, however, let’s hope the initial determination sets the stage for the ITC to reject Nvidia’s request for an exclusion order when it reaches a final ruling, which is expected next year. An exclusion order in this case threatens to restrict Internet access for millions of consumers and an even larger proportion of Hispanics, who rely on affordable mobile technology to stay connected.

Allen Gutierrez serves as the National Executive Director of The Latino Coalition, a national organization that represents Latino interests with senior executives of many Fortune 500 companies and local and federal government agencies.