[Federal Register Volume 82, Number 227 (Tuesday, November 28, 2017)]
[Notices]
[Pages 56268-56269]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2017-25625]
[[Page 56268]]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1001]
Certain Digital Video Receivers and Hardware and Software
Components Thereof Notice of the Commission's Final Determination
Finding a Violation of Section 337; Issuance of a Limited Exclusion
Order and Cease and Desist Orders; Denial of Petition Requesting
Reconsideration of Commission Determination Finding Petition of Certain
Issues To Be Waived; Termination of the Investigation
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
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SUMMARY: Notice is hereby given that the U.S. International Trade
Commission (the ``Commission'') has found a violation of section 337 in
this investigation and has issued a limited exclusion order (``LEO'')
prohibiting importation of certain digital video receivers and hardware
and software components thereof, and has issued cease and desist orders
(``CDOs'') directed to the Comcast respondents. This investigation is
terminated.
FOR FURTHER INFORMATION CONTACT: Ron Traud, Office of the General
Counsel, U.S. International Trade Commission, 500 E Street SW.,
Washington, DC 20436, telephone 202-205-3427. 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 at https://www.usitc.gov. The public record for this investigation may be viewed
on the Commission's electronic docket (``EDIS'') at https://edis.usitc.gov. Hearing-impaired persons are advised that information
on this matter can be obtained by contacting the Commission's TDD
terminal, telephone 202-205-1810.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation
on May 26, 2016, based on a complaint filed on behalf of Rovi
Corporation and Rovi Guides, Inc. (collectively, ``Rovi''), both of San
Carlos, California. 81 FR 33547-48 (May 26, 2016). The complaint, as
amended, alleges violations of section 337 of the Tariff Act of 1930,
as amended, 19 U.S.C. 1337 (``section 337''), by reason of infringement
of certain claims of U.S. Patent Nos. 8,006,263 (``the '263 patent'');
8,578,413 (``the '413 patent''); 8,046,801 (``the '801 patent'');
8,621,512 (``the '512 patent''); 8,768,147 (``the '147 patent'');
8,566,871 (``the '871 patent''); and 6,418,556 (``the '556 patent'').
The complaint further alleges that a domestic industry exists. Id. at
33548.
The Commission's notice of investigation named sixteen respondents
(collectively, ``Respondents''). The respondents are 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''). 81 FR at 33548; see also 82 FR
38934 (Aug. 16, 2017). The Office of Unfair Import Investigations is
not a party to this investigation. 81 FR at 33548.
Prior to the evidentiary hearing, Rovi withdrew its allegations as
to certain patent claims. See Order No. 17 (Sept. 23, 2016),
unreviewed, Comm'n Notice (Oct. 21, 2016); Order No. 25 (Nov. 14,
2016), unreviewed, Comm'n Notice (Dec. 2, 2016); Order No. 27 (Dec. 5,
2016), unreviewed, Comm'n Notice (Dec. 28, 2016). Rovi 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 (the ``Final ID''), which finds a
violation of section 337 by Respondents in connection with the asserted
claims of the '263 and '413 patents. The Final ID finds no violation of
section 337 in connection with the asserted claims of the '556, '801,
'871, and '512 patents. The ALJ recommended that, subject to any public
interest determinations of the Commission, the Commission should issue
an LEO directed to certain accused products, that CDOs 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, Rovi and Respondents filed with the Commission
petitions for review of the Final ID. Respondents petitioned thirty-two
of the Final ID's conclusions, and Rovi petitioned seven of the Final
ID's conclusions. On June 20, 2017, the parties filed responsive
submissions. On July 11, 2017, Rovi and Respondents filed statements on
the public interest. The Commission also received and considered
numerous comments on the public interest from non-parties. On July 5,
2017, Rovi and the ARRIS respondents filed a Joint Unopposed Motion
for, and Memorandum in Support of, Leave to Amend the Complaint and
Notice of Investigation to Correct Corporate Names of Two ARRIS
Respondents. The motion indicated that ARRIS Enterprises, Inc. has
changed its name to ARRIS Enterprises LLC and that Pace Ltd. has
changed its name to ARRIS Global Ltd. And, on July 25, 2017, Comcast
submitted with the Office of the Secretary a letter including
supplemental disclosure and representations. On July 31, 2017, Rovi
submitted with the Office of the Secretary a response thereto. On
August 9, 2017, Comcast filed a response to Rovi's submission.
On August 10, 2017, and after having reviewed the record, including
the petitions and responses thereto, the Commission determined to
review the Final ID in part. 82 FR 38934-36 (Aug. 16, 2017) (the
``Notice of Review''). In particular, the Commission determined to
review the following:
(1) The Final ID's determination that Comcast is an importer of
the accused products (Issue 1 in Respondents' Petition for Review).
(2) The Final ID's determination that Comcast has not sold
accused products in the United States after the importation of those
products into the United States (the issue discussed in section III
of Rovi's Petition for Review).
(3) The Final ID's determination that the accused Legacy
products are ``articles that infringe'' (Issue 2 in Respondents'
Petition for Review).
(4) The issue of whether the X1 products are ``articles that
infringe'' (Issue 3 in Respondents' Petition for Review), the issue
of direct infringement of the '263 and '413 patents by the X1
accused products (Issue 5 in Respondents' Petition for Review), and
the issue of ``the nature and scope of the violation found'' (the
issue discussed in
[[Page 56269]]
section X of Respondents' Petition for Review).
(5) The issue of whether Comcast's two alternative designs
infringe the '263 and '413 patents (Issue 4 in Respondents' Petition
for Review).
(6) The Final ID's claim construction of ``cancel a function of
the second tuner to permit the second tuner to perform the requested
tuning operation'' in the '512 patent, and the Final ID's
infringement determinations as to that patent (Issue 26 in
Respondents' Petition for Review).
(7) The Final ID's conclusion that the asserted claims of the
'512 patent are invalid as obvious (the issue discussed in section
VI.B.4 of Rovi's Petition for Review).
(8) The issue of whether the ARRIS-Rovi Agreement provides a
defense to the allegations against the ARRIS respondents (the issue
discussed in section XI of Respondents' Petition for Review).
(9) The Final ID's conclusion that Rovi did not establish the
economic prong of the domestic industry requirement based on patent
licensing (the issue discussed in section IV of Rovi's Petition for
Review).
Id. at 38935. The Commission determined to not review the remainder of
the Final ID. Id. The Commission additionally concluded that
Respondents' petition of certain issues decided in the Final ID was
improper, and therefore, those assignments of error were waived. Id. In
the Notice of Review, the Commission also granted the motion to correct
the corporate names of two of the respondents and determined to reopen
the evidentiary record and accept the supplemental disclosure, response
thereto, and reply to the response. Id. at 38934-35. The Commission
requested briefing on some of the issues under review and also on
remedy, the public interest, and bonding. Id. at 38935-36.
On August 23, 2017, Respondents filed a Petition for
Reconsideration of the Commission's Determination of Waiver as to
Certain Issues Specified in Respondents' Petition for Review or,
Alternatively, Application of Waiver to Issues Raised in Rovi's
Petition for Review. On August 30, 2017, Rovi filed a response thereto.
The Commission has determined to deny that petition.
On August 24, 2017, Rovi and Respondents filed their written
submissions on the issues under review and on remedy, public interest,
and bonding, and on August 31, 2017, the parties filed their reply
submissions.
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 Commission has determined to affirm the Final ID in part,
affirm the Final ID with modifications in part, reverse the Final ID in
part, vacate the Final ID in part, and take no position as to certain
issues under review. 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.
The Commission concludes that there is no section 337 violation as
to the Legacy STBs. Regarding the X1 STBs, the Commission affirms the
Final ID's conclusion that Comcast's customers directly infringe the
'263 and '413 patents. Thus, the Commission affirms the Final ID's
conclusion that complainant Rovi has established a violation by Comcast
as to those patents and the X1 STBs.
The Commission also takes the following actions. The Commission
vacates the Final ID's conclusion that Comcast's two alternative
designs infringe the '263 and '413 patents and instead concludes that
those designs are too hypothetical to adjudicate at this time. The
Commission modifies and affirms the Final ID's claim construction of
the claim term ``cancel a function of the second tuner to permit the
second tuner to perform the requested tuning operation'' in the '512
patent and affirms the Final ID's infringement determinations as to
that patent. The Commission modifies and affirms the Final ID's
conclusion that the asserted claims of the '512 patent are invalid as
obvious. The Commission takes no position as to whether the ARRIS-Rovi
Agreement provides a defense to the allegations against ARRIS, and as
to whether Rovi established the economic prong of the domestic industry
requirement based on patent licensing. The Commission adopts the
remainder of the Final ID to the extent that it does not conflict with
the Commission's opinion or to the extent it is not expressly addressed
in the Commission's opinion.
Having found a violation of section 337 in this investigation by
Comcast with respect to the '263 and '413 patents, the Commission has
determined that the appropriate form of relief is (1) a LEO, that
subject to certain exceptions provided therein, prohibits the
unlicensed entry of certain digital video receivers and hardware and
software components thereof 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 or any of its affiliated companies,
parents, subsidiaries, agents, or other related business entities, or
their successors or assigns; and (2) CDOs that, subject to certain
exceptions provided therein, prohibit Comcast from conducting any of
the following activities in the United States: 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 has also 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 the LEO or CDOs. Finally, the Commission has
determined that the excluded digital video receivers and hardware and
software components thereof may be imported and sold in the United
States during the period of Presidential review with the posting of a
bond in the amount of zero percent of the entered value of the
infringing goods (i.e., no bond). The Commission's orders and opinion
were delivered to the President and to the United States Trade
Representative on the day of their issuance.
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 Part 210 of the Commission's Rules of Practice and Procedure (19 CFR
part 210).
By order of the Commission.
Issued: November 21, 2017.
Katherine M. Hiner,
Supervisory Attorney.
[FR Doc. 2017-25625 Filed 11-27-17; 8:45 am]
BILLING CODE 7020-02-P