[Federal Register Volume 84, Number 162 (Wednesday, August 21, 2019)]
[Notices]
[Pages 43611-43613]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-17981]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1103]


Certain Digital Video Receivers and Related Hardware and Software 
Components; Commission Decision To Review in Part a Summary 
Determination and To Review in Part a Final Initial Determination; 
Schedule for Filing Written Submissions on the Issues Under Review and 
on Remedy, the Public Interest and Bonding

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 part the presiding 
administrative law judge's (``ALJ's'') summary determination (``SD'') 
(Order No. 47) concerning importation and sale after importation and to 
review in part a final initial determination (``ID'' or ``final ID'') 
finding a violation of section 337 of the Tariff Act of 1930, as 
amended, with respect to U.S. Patent No. 7,779,011 (``the '011 
patent''). The Commission requests briefing from the parties on certain 
issues under review, as set forth in this notice. The Commission also 
requests briefing from the parties, interested persons, and government 
agencies on the issues of remedy, the public interest, and bonding.

FOR FURTHER INFORMATION CONTACT: Sidney A. Rosenzweig, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 708-2532. 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 (https://www.usitc.gov). The public record for this investigation may be viewed 
on the Commission's Electronic Docket Information System (``EDIS'') 
(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: On March 16, 2018, the Commission instituted 
this investigation based on a supplemented complaint filed on behalf of 
Rovi Corporation of San Jose, California; Rovi Guides, Inc. of San 
Jose, California; and Veveo, Inc. of Andover, Massachusetts 
(collectively, ``Rovi''); as well as Rovi Technologies Corporation of 
San Jose, CA. The supplemented complaint alleges violations of section 
337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337 (``section 
337''), based upon the importation into the United States, the sale for 
importation, and the sale within the United States after importation of 
certain digital video receivers and related hardware and software 
components by reason of infringement of one or more claims of the '011 
patent; and one or more claims of U.S. Patent Nos. 7,937,394 (``the 
'394 patent''); 7,827,585 (``the '585 patent''); 9,294,799 (``the '799 
patent''); 9,396,741 (``the '741 patent''); 9,578,363 (``the '363 
patent''); 9,621,956 (``the '956 patent''); and 9,668,014 (``the '014 
patent''). 83 FR 11792 (Mar. 16, 2018). The Commission's notice of 
investigation named as respondents Comcast Corporation of Philadelphia, 
Pennsylvania; Comcast Cable Communications, LLC of Philadelphia, 
Pennsylvania; Comcast Cable Communications Management, LLC of 
Philadelphia, Pennsylvania; Comcast Business Communications, LLC of 
Philadelphia, Pennsylvania; Comcast Holdings Corporation of 
Philadelphia, Pennsylvania; and Comcast Shared Services, LLC of 
Chicago, Illinois (collectively, ``Comcast''). Id. The Office of Unfair 
Import Investigations was also named as a party in this investigation. 
Id.
    The Commission previously terminated the investigation as to 
complainant Rovi Technologies Corporation; as to the '956, '394, '014, 
'799, and '363 patents in their entirety; and as to certain claims of 
the '011, '585, and '741 patents. Order No. 12, unreviewed, Notice 
(July 24, 2018); Order No. 33, unreviewed, Notice (Sept. 19, 2018); 
Order 39, unreviewed, Notice (Oct. 25, 2018).
    On June 3, 2019, the presiding ALJ issued Order No. 47, the subject 
SD, which, inter alia, granted Rovi's motions for summary determination 
as to importation and sale after importation. On June 11, 2019, Comcast 
filed a petition for review of the SD. On June 18, 2019, Rovi responded 
to Comcast's petition. On June 25, 2019, the Commission investigative 
attorney (``IA'') responded to Comcast's petition.
    On June 4, 2019, the ALJ issued the final ID. On June 17, 2019, 
Comcast and Rovi each filed a petition for review of the final ID. On 
June 25, 2019, Comcast and Rovi responded to each other's petition, and 
the IA responded to both.
    In addition, the Commission has received comments from Rovi on the 
public interest pursuant to Commission Rule 210.50(a)(4). The 
Commission also received comments from the following organizations in 
response to the Commission notice soliciting public interest comments, 
84 FR 27804 (June 14, 2019): Tea Party Patriots Action; Americans for 
Limited Government; Frontiers of Freedom Institute; Market Institute; 
and Conservatives for Property Rights (joined by 60 Plus Association, 
and Americans for Limited Government).
    On June 26, 2019, the Commission extended the deadline for whether 
to review the SD to be commensurate with the deadline for the final ID. 
On July 24, 2019, the Commission extended the deadline for whether to 
review the SD and the final ID from August 5, 2019 to August 15, 2019.
    With respect to the subject SD, having reviewed the record of this 
investigation, including the SD and the parties' submissions to the ALJ 
and to the Commission, the Commission has determined to review in part 
the SD. In particular, the Commission has determined to review and take 
no position on whether Comcast's alleged reimportations satisfy the 
importation requirement of section 337; the SD made no findings on the 
issue. The Commission has determined not to review the remainder of the 
SD.
    With respect to the subject final ID, having reviewed the record of 
the investigation, including the final ID and the parties' submissions 
to the ALJ and to the Commission, the Commission has determined to 
review in part the final ID as follows:

[[Page 43612]]

    For the '011 patent, the Commission has determined to review the 
final ID's findings on direct and indirect infringement of claims 1 and 
9 of the '011 patent by Comcast's non-redesigned system. The Commission 
has determined not to review the remainder of the final ID's findings 
as to the '011 patent, including the final ID's findings that Comcast's 
two redesigns do not infringe claims 1 and 9 of the '011 patent.
    For the '585 patent, the Commission has determined to review and 
take no position as to the final ID's findings on the contingent 
noninfringement issues raised in Comcast's petition for review of the 
final ID, particularly whether the final ID erred in finding no 
disavowal by Rovi of settings that do not control how programs are to 
be digitally stored; whether the accused ``auto pad recordings'' 
functionality infringes claims 1 and 15; and whether the accused 
``start,'' ``stop,'' and ``HD Preferred'' functionality infringes 
claims 8, 11, and 22. The Commission has determined not to review the 
remainder of the final ID's findings as to the '585 patent, including 
the finding that the asserted claims are invalid in view of the 
ReplayTV prior art.
    For the '741 patent, the Commission has determined to review and 
take no position as to the final ID's findings on the contingent 
invalidity issues raised in Comcast's petition for review of the final 
ID, particularly whether U.S. Patent Application Publication US 2002/
0095510 to Sie (RX-69) anticipates claims 1, 8, and 14 of the '741 
patent and whether, under Rovi's claim construction, U.S. Patent No. 
7,073,189 to McElhatten (RX-71) anticipates Claims 1, 8, and 14 of the 
'741 patent. The Commission has determined not to review the remainder 
of the findings as to the '741 patent, including the ALJ's construction 
of ``specified time'' in the Markman order, Order No. 41 (Oct. 15, 
2018), the final ID's finding of noninfringement, and the final ID's 
waiver determination with respect to the ``Restart Reminder'' feature.
    Comcast's petition for review of the final ID questioned the final 
ID's findings as to whether the accused products are ``articles that--
infringe'' the asserted patents, 19 U.S.C. 1337(a)(1)(B) & 
(a)(1)(B)(i), and the scope of the Commission's authority to find an 
unfair trade act based upon Comcast's direct infringement. Such issues 
fall within the scope of the Commission's review of infringement as to 
the '011 patent, and the Commission will address Comcast's arguments 
based upon the Commission's infringement findings as to the '011 
patent.
    In connection with its review, the Commission requests responses to 
the following questions based in part on Comcast's assertion in its 
petition for review of the final ID that the final ID ``is not entirely 
clear as to whether it found a violation of Section 337 on the basis of 
direct infringement of claim 9 of the '011 Patent by way of Comcast's 
use of the claimed system.'' Comcast Pet. 20. The parties are requested 
to brief their positions with reference to the applicable law and the 
existing evidentiary record.\1\ In addition, the parties are to take as 
true: All of the final ID's findings as to the structure, function, and 
operation of Comcast's X1 system; and Comcast's inducement of its 
users' conduct. Comcast did not petition the Commission for review of 
any of those findings. The questions below reflect the Federal 
Circuit's understanding that certain ``persons' actions'' constitute 
infringement under 35 U.S.C. 271. Suprema, Inc. v. ITC, 796 F.3d 1338, 
1347 (Fed. Cir. 2015) (en banc) (emphasis omitted).
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    \1\ In seeking briefing on these issues, the Commission has not 
determined to excuse any party's noncompliance with Commission rules 
and the ALJ's procedural requirements, including requirements to 
present issues in pre-hearing and post-hearing submissions. See, 
e.g., Order No. 2 (Mar. 28, 2018) (ground rules). The Commission 
may, for example, decline to disturb certain findings in the final 
ID upon finding that issue was not presented in a timely manner to 
the ALJ.
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    1. Please explain, with attention to the statutory language of 35 
U.S.C. 271(a) and any differences in claim language between claims 1 
and 9 of the '011 patent, the circumstances in which each act of direct 
infringement by Comcast occurs for each claim. (For example, is there 
direct infringement by Comcast's testing or other use of its system, by 
a Comcast user's own searching, or both.)
    2. Please explain, with attention to the statutory language of 35 
U.S.C. 271(a) and any differences in claim language between claims 1 
and 9 of the '011 patent, the circumstances in which Comcast's users 
directly infringe either claim. In connection with your response to 
this question please explain whether and how Comcast's users can 
directly infringe claim 9 but not claim 1, or vice versa.
    3. Based on your answers to questions 1 and 2, please explain for 
claims 1 and 9 of the '011 patent whether and how the ``single entity'' 
test of Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 
1020, 1022 (Fed. Cir. 2015) should be applied and whether the final 
ID's application of that test to claim 1 of the '011 patent, see Final 
ID at 271, is correct.
    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, Comm'n Op. at 7-10 (Dec. 1994).
    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 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 limited to the enumerated questions above. 
The parties' opening submissions should not exceed 40 pages, and their 
reply submissions should not exceed 30 pages. Parties to the 
investigation, interested government agencies, and any other interested 
parties are encouraged

[[Page 43613]]

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. Complainant and the 
Commission investigative attorney are also requested to submit proposed 
remedial orders for the Commission's consideration. Complainant is also 
requested to state the date that the asserted patents expire and the 
HTSUS numbers under which the accused products are imported, and 
provide identification information for all known importers of the 
subject articles. Initial written submissions and proposed remedial 
orders must be filed no later than close of business on Thursday, 
August 29, 2019. Reply submissions must be filed no later than the 
close of business on Tuesday, September 10, 2019. 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-1103) in a prominent 
place on the cover page and/or the first page. (See Handbook for 
Electronic Filing Procedures, https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions regarding 
filing should contact the Secretary at (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. All 
information, including confidential business information and documents 
for which confidential treatment is properly sought, submitted to the 
Commission for purposes of this investigation may be disclosed to and 
used: (i) By the Commission, its employees and Offices, and contract 
personnel (a) for developing or maintaining the records of this or a 
related proceeding, or (b) in internal investigations, audits, reviews, 
and evaluations relating to the programs, personnel, and operations of 
the Commission including under 5 U.S.C. Appendix 3; or (ii) by U.S. 
government employees and contract personnel,\2\ solely for 
cybersecurity purposes. All nonconfidential written submissions will be 
available for public inspection at the Office of the Secretary and on 
EDIS.
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    \2\ All contract personnel will sign appropriate nondisclosure 
agreements.
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    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: August 15, 2019.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2019-17981 Filed 8-20-19; 8:45 am]
BILLING CODE 7020-02-P