[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