NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

In re: ROKU, INC.,

Petitioner

______________________

2022-116, 2022-117, 2022-118

______________________

On Petitions for Writ of Mandamus to the United 

States Patent and Trademark Office in Nos. IPR2021-

00263, IPR2021-00264, and IPR2021-00299.

---------------------------------------------------

ROKU, INC.,

Appellant

v.

UNIVERSAL ELECTRONICS, INC.,

Appellee

______________________

2022-1216, 2022-1217, 2022-1218

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2021-

00263, IPR2021-00264, and IPR2021-00299.

______________________

ON PETITIONS

Case: 22-116 Document: 18 Page: 1 Filed: 05/11/2022
2 IN RE: ROKU, INC.

______________________

Before DYK, REYNA, and CHEN, Circuit Judges.

DYK, Circuit Judge.

O R D E R

Roku, Inc. directly appeals the Patent Trial and Appeal 

Board’s decisions declining institution of inter partes review of two patents owned by Universal Electronics, Inc. 

In reaching that determination, the Board relied on the advanced stage of co-pending parallel proceedings before the 

International Trade Commission (ITC) involving the same 

patents and overlapping invalidity arguments. Roku has 

also filed related petitions for writs of mandamus seeking 

review of those same non-institution decisions. 

We reaffirmed in Mylan Laboratories Ltd. v. Janssen 

Pharmaceutica, N.V., 989 F.3d 1375, 1378–79 (Fed. Cir. 

2021) that the Board’s discretionary decision to decline institution of inter partes review, including decisions based 

on the Board’s multi-factor standard for evaluating 

whether to institute in view of parallel civil litigation, is 

“final and nonappealable.” (quoting 35 U.S.C. § 314(d)). 

We also made clear that, given the fact that the decision to 

institute inter partes review is committed to the discretion 

of the agency, “there is no reviewability of the Director’s 

exercise of his discretion to deny institution [by way of a 

petition for a writ of mandamus] except for colorable constitutional claims.” Id. at 1382.

Roku has not provided a sufficient justification for distinguishing Mylan here. Roku argues that the ITC, unlike 

a district court, cannot issue a decision on patent validity 

with preclusive effect in other forums, but that does not 

mean the Board’s non-institution decisions are any less “final and nonappealable” under section 314(d). Regardless 

of parallel proceedings, “no statute confers jurisdiction over 

appeals from decisions denying institution,” and “[w]ithout 

Case: 22-116 Document: 18 Page: 2 Filed: 05/11/2022
IN RE: ROKU, INC. 3

such a statute, we lack jurisdiction over those appeals.” Id.

at 1379 (citation omitted). And Roku has not presented a 

colorable constitutional claim. As in Mylan, Roku’s petitions merely challenge the Board’s exercise of discretion 

not to institute review proceedings. Pet. 3–4. Under such 

circumstances, we must dismiss Roku’s direct appeals, and 

we deny its requests for mandamus relief. 

Accordingly, 

 IT IS ORDERED THAT: 

(1) Appeal Nos. 2022-1216, -1217, -1218 are dismissed. 

(2) The mandamus petitions are denied.

(3) Costs in Appeal Nos. 2022-1216, -1217, -1218 to 

Universal Electronics, Inc.

May 11, 2022

 Date

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

Case: 22-116 Document: 18 Page: 3 Filed: 05/11/2022