[Federal Register Volume 78, Number 158 (Thursday, August 15, 2013)]
[Notices]
[Pages 49766-49768]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-19790]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-845]


Certain Products Containing Interactive Program Guide and 
Parental Control Technology; Commission Determination To Review in Its 
Entirety a Final Initial Determination Finding No Violation of Section 
337

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to review in its entirety a final initial 
determination (``ID'') issued by the presiding administrative law judge 
(``ALJ''), finding no violation of section 337 of the Tariff Act of 
1930, 19 U.S.C. 1337, in this investigation.

FOR FURTHER INFORMATION CONTACT: Robert Needham, Office of the General 
Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone (202) 708-5468. Copies of non-
confidential documents filed in connection with this investigation are 
or will be available for inspection during official business hours 
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. 
International Trade Commission, 500 E Street SW., Washington, DC 20436, 
telephone (202) 205-2000. General information concerning the Commission 
may also be obtained by accessing its Internet server (http://www.usitc.gov). The public record for this investigation may be viewed 
on the Commission's electronic docket (EDIS) at http://edis.usitc.gov. 
Hearing-impaired persons are advised that information on this matter 
can be obtained by contacting the Commission's TDD terminal on (202) 
205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on June 6, 2012, based on a complaint filed by Rovi Corporation; Rovi 
Guides, Inc.; Rovi Technologies Corporation; Starsight Telecast, Inc.; 
United Video Properties, Inc.; and Index Systems, Inc. (collectively, 
``Complainants''). 77 FR 33487-88. The respondents are LG Electronics, 
Inc.; LG Electronics U.S.A., Inc. (collectively, ``LGE''); Mitsubishi 
Electric Corp.; Mitsubishi Electric US Holdings, Inc.; Mitsubishi 
Electric and Electronics USA, Inc.; Mitsubishi Electric Visual 
Solutions America, Inc.; Mitsubishi Digital Electronics America, Inc. 
(collectively, ``Mitsubishi''); Netflix Inc. (``Netflix''); Roku, Inc. 
(``Roku''); and Vizio, Inc (``Vizio''). The Office of Unfair Import 
Investigations is not participating in this investigation.
    Originally, Complainants asserted numerous claims from seven 
patents against various respondents. Complainants later moved to 
terminate the investigation as to three of the seven patents, as to 
certain claims of one of the remaining four patents, and as to 
respondents LGE, Mitsubishi, and Vizio. Order No. 9 (Sept. 4, 2012), 
not reviewed, Oct. 2, 2012; Order No 16 (Nov. 6, 2012), not reviewed, 
December 7, 2012; Order Nos. 17 (Dec. 19, 2012) and 19 (Dec. 20, 2012), 
not reviewed, January 18, 2013; Order No. 21 (Jan. 22, 2013), not 
reviewed Feb. 13, 2013; Order Nos. 34 (Feb. 27, 2013) and 36 (Mar. 1, 
2013), not reviewed (Mar. 22, 2013). What remains in the investigation 
are respondents Netflix and Roku, as well as claims 1, 6, 13, and 17 of 
U.S. Patent No. 6,898,762 (``the '762 patent''), claims 13-20 of U.S. 
Patent No. 7,065,709 (``the '709 patent''); claims 1-3, 10, and 11 of 
U.S. Patent No. 7,103,906 (``the '906 patent''); and claims 1, 2, 4, 6, 
14, 15, 17, and 19 of U.S. Patent No. 8,112,776 (``the '776 patent'').
    On June 7, 2013, the presiding ALJ issued his final ID, finding no 
violation of section 337. Specifically, the ALJ found that none of the 
accused products met the importation requirement of section 337. While 
the ALJ found that his importation finding was dispositive, the ALJ 
made additional findings in the event that the Commission determined 
that the importation requirement was met. The ALJ found that no party 
infringed any of the four asserted

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patents. He also found that the `776 patent is invalid as anticipated 
and obvious, but that the respondents had failed to show that the other 
three asserted patents were invalid. The ALJ found a domestic industry 
for articles protected by each of the patents-in-suit, but found that 
Complainants had not shown a domestic industry based on substantial 
investment in licensing the asserted patents. The ALJ also rejected 
Respondents' patent misuse, implied license, and patent exhaustion 
defenses.
    On June 24, 2013, Complainants filed a petition for review 
challenging the ALJ's findings that the importation requirement is not 
met, that Netflix does not induce infringement, and that the economic 
prong of the domestic industry is not met by Complainants' licensing 
activity. That same day, the respondents Netflix and Roku filed a joint 
contingent petition for review arguing additional bases for finding no 
violation. On July 2, 2013, the parties filed oppositions to each 
other's petitions.
    Having examined the record of this investigation, including the 
ALJ's final ID, the petitions for review, and the responses thereto, 
the Commission has determined to review the final ID in its entirety.
    The parties are requested to brief their positions on the issues 
under review with reference to the applicable law and the evidentiary 
record. In connection with its review, the Commission is particularly 
interested in briefing on the following issues:
    1. Whether direct infringement being carried out by non-imported 
Netflix servers and Netflix user interfaces affects whether the Netflix 
SDK induces infringement at the time of importation. Additionally, 
explain how the Commission Opinion in Certain Electronic Devices with 
Image Processing Systems, Components Thereof, and Associated Software, 
Inv. No. 337-TA-724, applies to the accused Netflix SDK for each of the 
asserted patents.
    2. Whether Complainants' licensing of the Netflix Ready Devices 
pursuant to the LGE and Vizio licenses affects whether the accused 
Netflix software infringes.
    3. Whether Netflix's provision of its SDK pursuant to its 
agreements with LGE and Vizio constitutes a ``sale'' within the meaning 
of section 337(a)(1)(B).
    4. Identify the specific software that allegedly induces 
infringement of each of the asserted patents, and explain where such 
software is present in both the Netflix software allegedly ``sold for 
importation'' and in the Netflix Ready Devices imported into the United 
States. Or explain why no such software exists.
    5. Explain specifically how the Netflix SDK itself induces 
infringement of each of the asserted patents. Or explain why the 
Netflix SDK itself does not induce infringement of each of the asserted 
patents.
    6. Whether Netflix may induce infringement where the direct 
infringement is carried out by Netflix servers and Netflix user 
interfaces.
    7. For each claim that Netflix is accused of inducing infringement, 
explain who or what carries out the direct infringement for each claim 
limitation.
    The parties have been invited to brief only the discrete issues 
described above, with reference to the applicable law and evidentiary 
record. The parties are not to brief other issues on review, which are 
adequately presented in the parties' existing filings.
    In connection with the final disposition of this investigation, the 
Commission may (1) issue an order that could result in the exclusion of 
the subject articles from entry into the United States, and/or (2) 
issue a cease and desist order that could result in the respondent 
being required to cease and desist from engaging in unfair acts in the 
importation and sale of such articles. Accordingly, the Commission is 
interested in receiving written submissions that address the form of 
remedy, if any, that should be ordered. If a party seeks exclusion of 
an article from entry into the United States for purposes other than 
entry for consumption, the party should so indicate and provide 
information establishing that activities involving other types of entry 
either are adversely affecting it or likely to do so. For background, 
see Certain Devices for Connecting Computers via Telephone Lines, Inv. 
No. 337-TA-360, USITC Pub. No. 2843 (December 1994) (Commission 
Opinion).
    If the Commission contemplates some form of remedy, it must 
consider the effects of that remedy upon the public interest. The 
factors the Commission will consider include the effect that an 
exclusion order and/or a cease and desist order would have on (1) the 
public health and welfare, (2) competitive conditions in the U.S. 
economy, (3) U.S. production of articles that are like or directly 
competitive with those that are subject to investigation, and (4) U.S. 
consumers. The Commission is therefore interested in receiving written 
submissions that address the aforementioned public interest factors in 
the context of this investigation.
    If the Commission orders some form of remedy, the U.S. Trade 
Representative, as delegated by the President, has 60 days to approve 
or disapprove the Commission's action. See Presidential Memorandum of 
July 21, 2005, 70 FR 43251 (July 26, 2005). During this period, the 
subject articles would be entitled to enter the United States under 
bond, in an amount determined by the Commission and prescribed by the 
Secretary of the Treasury. The Commission is therefore interested in 
receiving submissions concerning the amount of the bond that should be 
imposed if a remedy is ordered.
    Written Submissions: The parties to the investigation are requested 
to file written submissions on the issues identified in this notice. 
Parties to the investigation, interested government agencies, and any 
other interested parties are encouraged to file written submissions on 
the issues of remedy, the public interest, and bonding. Such 
submissions should address the recommended determination by the ALJ on 
remedy and bonding. The written submissions must not exceed 75 pages, 
and must be filed no later than close of business on August 23, 2013. 
Reply submissions must not exceed 50 pages, and must be filed no later 
than the close of business on August 30, 2013. No further submissions 
on these issues will be permitted unless otherwise ordered by the 
Commission.
    Persons filing written submissions must file the original document 
electronically on or before the deadlines stated above and submit 8 
true paper copies to the Office of the Secretary by noon the next day 
pursuant to section 210.4(f) of the Commission's Rules of Practice and 
Procedure (19 CFR 210.4(f)). Submissions should refer to the 
investigation number (``Inv. No. 337-TA-845'') in a prominent place on 
the cover page and/or the first page. (See Handbook for Electronic 
Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf). Persons with questions 
regarding filing should contact the Secretary (202-205-2000).
    Any person desiring to submit a document to the Commission in 
confidence must request confidential treatment. All such requests 
should be directed to the Secretary to the Commission and must include 
a full statement of the reasons why the Commission should grant such 
treatment. See 19 CFR 201.6. Documents for which confidential treatment 
by the Commission is properly sought will be treated accordingly. A 
redacted non-

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confidential version of the document must also be filed simultaneously 
with the any confidential filing. All non-confidential written 
submissions will be available for public inspection at the Office of 
the Secretary and on EDIS.
    The authority for the Commission's determination is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and 
in sections 210.42-46 of the Commission's Rules of Practice and 
Procedure (19 CFR 210.42-46).

    Issued: August 9, 2013.

    By order of the Commission.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2013-19790 Filed 8-14-13; 8:45 am]
BILLING CODE 7020-02-P