The U.S. International Trade Commission has issued a final determination finding a violation of section 337 in a matter dealing with infringement of patents owned by Rovi Corporation. As a result of the investigation the ITC issued a limited exclusion order prohibiting importation of certain digital video receivers and hardware and software components, and also issued cease and desist orders directed to the Comcast respondents. This final determination concludes the matter at the ITC and the investigation is now terminated, with this final determination submitted to President Trump for his review.
The Commission instituted this investigation on May 26, 2016, based on a complaint filed by Rovi Corporation and Rovi Guides, Inc. (collectively, “Rovi”), both of San Carlos, California. The complaint alleged violations of section 337 of the Tariff Act of 1930, codified at 19 U.S.C. 1337 (“section 337”). Rovi asserted infringement of U.S. Patent Nos. 8,006,263; 8,578,413; 8,046,801; 8,621,512; 8,768,147; 8,566,871; and 6,418,556.
The Commission’s notice of investigation named sixteen respondents. The respondents were Comcast Corporation of Philadelphia, PA; Comcast Cable Communications, LLC of Philadelphia, PA; Comcast Cable Communications Management, LLC of Philadelphia, PA; Comcast Business Communications, LLC of Philadelphia, PA; Comcast Holdings Corporation of Philadelphia, PA; Comcast Shared Services, LLC of Chicago, IL (collectively, “Comcast”); Technicolor SA of Issy-les-Moulineaux, France; Technicolor USA, Inc. of Indianapolis, IN; Technicolor Connected Home USA LLC of Indianapolis, IN (collectively, “Technicolor”); Pace Ltd. of Saltaire, England (now ARRIS Global Ltd.); Pace Americas, LLC of Boca Raton, FL; ARRIS International plc of Suwanee, GA; ARRIS Group Inc. of Suwanee, GA; ARRIS Technology, Inc. of Horsham, PA; ARRIS Enterprises Inc. of Suwanee, GA (now ARRIS Enterprises LLC); and ARRIS Solutions, Inc. of Suwanee, GA (collectively, “ARRIS”).
Prior to the evidentiary hearing, Rovi withdrew certain allegations, but proceeded at the evidentiary hearing on the following patents and claims: claims 7, 18, and 40 of the ’556 patent; claims 1, 2, 14, and 17 of the ’263 patent; claims 1, 5, 10, and 15 of the ’801 patent; claims 12, 17, and 18 of the ’871 patent; claims 1, 3, 5, 9, 10, 14, and 18 of the ’413 patent; and claims 1, 10, 13, and 22 of the ’512 patent.
On May 26, 2017, the administrative law judge (the “ALJ”) issued the final initial determination, which found a violation of section 337 by Respondents in connection with the asserted claims of both the ’263 and ’413 patents. The final initial determination found no violation of section 337 in connection with the asserted claims of the ’556, ’801, ’871, and ’512 patents. The ALJ recommended a limited exclusion order directed to certain accused products, that cease and desist orders issue to Respondents, and that the Commission should not require any bond during the Presidential review period (see 19 U.S.C. 1337(j)).
On June 12, 2017, both Rovi and the Respondents filed petitions for review of the ALJs final initial determination. Respondents petitioned thirty-two of the conclusions contained within the final initial determination, and Rovi petitioned seven conclusions. On August 10, 2017, and after having reviewed the record, including the petitions and responses, the Commission determined to review the final initial determination of the ALJ in part. The Commission additionally concluded that Respondents’ petition of certain issues decided in the final initial determination was improper, and therefore, those assignments of error were waived.
After examining the record in this investigation, the Commission determined to affirm the final initial determination conclusion that Comcast violated section 337 in connection with the asserted claims of the ’263 and ’413 patents. The Commission also affirmed the conclusion that Comcast’s customers directly infringe the ’263 and ’413 patents.
The Commission also vacated the conclusion that Comcast’s two alternative designs infringe the ’263 and ’413 patents, determining that those designs are too hypothetical to adjudicate at this time.
Having found a violation of section 337 in this investigation by Comcast with respect to the ’263 and ’413 patents, the Commission determined that the appropriate relief is (1) a limited exclusion order prohibits the unlicensed entry of certain digital video receivers and hardware and software components that infringe one or more of claims 1, 2, 14, and 17 of the ’263 patent and claims 1, 3, 5, 9, 10, 14, and 18 of the ’413 patent that are manufactured by, or on behalf of, or are imported by or on behalf of Comcast; and (2) cease and desist orders that prohibit Comcast from importing, selling, offering for sale, leasing, offering for lease, renting, offering for rent, marketing, advertising, distributing, transferring (except for exportation), and soliciting U.S. agents or distributors for imported covered products; and aiding or abetting other entities in the importation, sale for importation, sale after importation, lease after importation, rent after importation, transfer, or distribution of covered products.
The Commission further determined that the public interest factors enumerated in section 337(d) and (f) (19 U.S.C. 1337(d) and (f)) do not preclude issuance of either the limited exclusion order or the cease and desist orders.
The Commission did, however, determine that the excluded digital video receivers and hardware and software components may be imported and sold in the United States during the period of Presidential review without the posting of a bond.
The Commission’s orders and opinion were delivered to the President and to the United States Trade Representative on November 21, 2017. Pursuant to 19 U.S.C. 1337(j), President Trump has 60 days from November 22, 2017 (the day after the Commission delivered the orders and opinion) within which to disapprove of the final determination of the ITC based on policy grounds. If the President does not disapprove of the final determination of the ITC within that 60-day Presidential review period, or if the President notifies the Commission before the close of the period that he approves of the orders and opinions, the determination becomes final.
Presidential disapproval of ITC orders and opinions is exceptionally rare. Having said that, President Obama did disapprove of an ITC an exclusion order in a case involving Apple and Samsung, which was the first time in 26 years that a President had used this statutory authority to overrule an ITC decision. See President Obama Vetoes ITC Exclusion Order of Apple Products.