[Federal Register Volume 85, Number 202 (Monday, October 19, 2020)]
[Notices]
[Pages 66357-66360]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-23020]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1158]


Certain Digital Video Receivers, Broadband Gateways, and Related 
Hardware and Software Components; Commission Decision To Review in Part 
an Initial Determination Finding a Violation of Section 337; Request 
for Written Submissions on the Issues Under Review and 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 a final initial 
determination (``ID'') of the presiding administrative law judge 
(``ALJ'') finding a violation of section 337. The Commission requests 
written submissions from the parties on the issues under review and 
from the parties, interested government agencies, and interested 
persons on the issues of remedy, the public interest, and bonding, 
under the schedule set forth below.

FOR FURTHER INFORMATION CONTACT: Clint Gerdine, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 708-2310. Copies of non-
confidential documents filed in connection with this investigation may 
be viewed on the Commission's electronic docket (EDIS) at https://edis.usitc.gov. For help accessing EDIS, please email 
[email protected]. General information concerning the Commission may 
also be obtained by accessing its internet server at https://www.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 May 29, 2019, the Commission instituted 
this investigation based on a complaint filed by Rovi Corporation and 
Rovi Guides, Inc. (collectively, ``Rovi''), both of San Jose, 
California. 84 FR 24814-15 (May 29, 2019). The complaint, as 
supplemented, alleged violations of section 337 of the Tariff Act of 
1930, as

[[Page 66358]]

amended, 19 U.S.C. 1337, 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, broadband 
gateways, and related hardware and software components by reason of 
infringement of certain claims of U.S. Patent Nos. 7,779,445 (``the 
'445 patent''); 7,200,855 (``the '855 patent''); 8,156,528 (``the '528 
patent''); 8,001,564 (``the '564 patent''); 7,301,900 (``the '900 
patent''); and 7,386,871 (``the '871 patent''). The complaint further 
alleged the existence of a domestic industry. The Commission's notice 
of investigation named as respondents Comcast Corporation, Comcast 
Cable Communications, LLC, Comcast Cable Communications Management, 
LLC, and Comcast Holdings Corporation (collectively, ``Comcast''), all 
of Philadelphia, Pennsylvania. The Office of Unfair Import 
Investigations (``OUII'') is partially participating in the 
investigation. The '528, '855, and '445 patents remain in the 
investigation and the '564, '900, and '871 patents have been terminated 
from the investigation. Order No. 18 (Sept. 30, 2019), unreviewed by 
Comm'n Notice (Oct. 15, 2019).
    On July 14, 2020, the ALJ issued a written Markman Order. See Order 
No. 41 (Jul. 14, 2020).
    On July 28, 2020, the ALJ issued the final ID finding a violation 
of section 337 as to the '528 and '855 patents based on infringement of 
the asserted claims by Comcast's accused products. Specifically, the ID 
found that: (1) Comcast's accused products infringe claims 13, 27, and 
30 of the '528 patent and claims 60 and 63 of the '855 patent; (2) 
Comcast's accused products do not infringe asserted claim 5 of the '445 
patent; (3) the asserted claims of the '528 and '855 patents are not 
invalid; (4) claims 5 and 15 of the '445 patent are invalid as 
anticipated under 35 U.S.C. 102(g)(2) by Comcast's VOD Vision System; 
and (5) Rovi has satisfied both prongs of the domestic industry 
requirement. The final ID also included the ALJ's recommended 
determination, which recommended the issuance of a limited exclusion 
order directed to Comcast's infringing products and a cease and desist 
order directed to Comcast.
    On August 10, 2020, Rovi petitioned, and Comcast petitioned and 
contingently petitioned, for review of the final ID. On August 18, 
2020, Rovi and Comcast each filed a response in opposition to the other 
party's petition for review.
    Having reviewed the record of the investigation, including the 
parties' petitions and responses thereto, the Commission has determined 
to review the subject ID in part. Specifically, the Commission has 
determined to review: (1) Order No. 41's and the ID's construction of 
the claim limitations: ``same functions,'' ``personal video recorder 
device,'' ``personal video recorder-compliant device,'' ``personal 
video recorder functionality,'' and ``first interactive television 
program guide . . . are implemented'' (``where the first interactive 
television program guide and the second interactive program guide . . . 
are distinctly implemented'') of asserted claims 13, 27, and 30 of the 
'528 patent; (2) the ID's finding that Comcast's Accused Products 
infringe the asserted claims of the '528 patent and that the asserted 
claims are not invalid; (3) the ID's finding that Rovi has satisfied 
the technical prong of the domestic industry requirement with respect 
to the '528 patent; (4) the ID's identification of Comcast's products 
that infringe the asserted claims of the '855 patent; (5) the ID's 
finding that Comcast's redesigns for the '855 patent are not 
sufficiently fixed in design to warrant adjudication; (6) the ID's 
finding that the Accused Products are not ``articles that infringe'' 
claim 5 of the '445 patent; (7) the ID's finding that claims 5 and 15 
of the '445 patent are invalid as anticipated under 35 U.S.C. 102(g)(2) 
by Comcast's VOD Vision System; (8) the ID's finding that Comcast has 
engaged in sales within the United States after importation of accused 
products in accordance with section 337(a)(1)(B); and (9) the ID's 
finding that Rovi satisfied the economic prong of the domestic industry 
requirement. The Commission has determined not to review the remainder 
of the ID.
    The parties are requested to brief their positions with reference 
to the applicable law and the evidentiary record regarding the 
questions provided below:
    (1) Please explain, with citations to the record, how construing 
the limitation ``same functions'' of claims 13, 27 and 30 of the '528 
patent to mean ``all of the same functions'' would impact the findings 
on infringement.
    (2) Please explain, with citations to the record, how construing 
the limitations ``personal video recorder device,'' ``personal video 
recorder-compliant device,'' and ``personal video recorder 
functionality'' of claims 13, 27 and 30 of the '528 patent not to 
require (1) recording to local storage and (2) the automatic recording 
of programs that users are watching in real-time would impact the 
findings on infringement and validity.
    (3) Please explain, with citations to the record, how construing 
the limitation ``first interactive television program guide . . . are 
implemented'' of claims 13, 27 and 30 of the '528 patent to ``include 
the components of a system that can manipulate guide data and user 
inputs to provide an interactive, visual display of media listings and 
other guidance functions'' would impact the findings on infringement.
    (4) Please explain whether (a) the documents provided by SeaChange 
(RX-0053), (b) the 10/24/02 Baltimore Sun article (RX-60), or (c) Ms. 
Scilingo's own contemporaneous documents, individually or in 
combination, are legally sufficient to corroborate Ms. Scilingo's 
testimony with respect to 35 U.S.C. 102(g). Discuss any relevant case 
law for each.
    (5) Please address whether the practice in the United States of the 
method of claim 5 of the `445 patent by Comcast's X1 System using an 
accused set-top box along with other components makes the box an 
``article that--infringes'' under section 337(a)(1)(B), taking into 
account the nature of the accused product, the combination with other 
components, and the specific limitations of claim 5. Please support 
your response with reference to the statutory language, legislative 
history and Commission and court precedent regarding the scope of 
section 337.
    (6) With respect to whether there is a violation concerning the 
`445 patent, how should the fact that an article would be an ``article 
that--infringes'' based on an importer's indirect infringement (through 
supply of an imported article to an infringing third party that 
directly infringes an asserted claim) inform the Commission's 
consideration of whether the same article is an ``article that--
infringes'' based on the importer's (own) direct infringement?
    (7) Please comment on the following possible approaches to 
evaluating whether an importer's own practice of a patented method 
using a combination of an imported article with other articles may give 
rise to a section 337 violation. Also discuss whether, under each of 
these approaches, there would be a violation of section 337 with 
respect to claim 5 of the `445 patent given the facts in this 
investigation.
    a. drawing guidance from the provisions of 35 U.S.C. 271(b), 
concerning inducement of infringement, and therefore examining, inter 
alia, whether the imported article is a device

[[Page 66359]]

distributed with the purpose of bringing about infringing acts.
    b. drawing guidance from the provisions of 35 U.S.C. 271(c), 
concerning contributory infringement, (which is one of the few parts of 
section 271 that specifically references components of an infringing 
invention), and therefore examining:
    (i) whether the imported article is a material part of the 
invention, known to be especially made or especially adapted for use in 
an infringement of such patent, and not a staple article or commodity 
of commerce suitable for substantial non-infringing use.
    (ii) whether the imported article is a material part of the 
invention and specifically designed for use in the combination that 
practices the patented invention.
    (8) For each of the two redesigns individually and in combination, 
please explain whether Rovi has preserved arguments as to infringement 
in light of its admissions of noninfringement. See Tr. at 1402 
(Kamprath). If so, please explain whether each of the two redesigns, 
individually and in combination, infringe or do not infringe the 
asserted claims of the `855 patent. Please explain whether each 
redesign alters the accused products physically or alters the code that 
resides on the accused products to turn off the MoCA functionality. 
Please also explain whether any redesigned articles have been imported, 
and whether, for redesigned articles that have yet to be imported, 
whether the redesigns would be imported with the physical alterations 
and/or altered code. (add line space)
    (9) Please explain, on a patent-by-patent basis, how Complainants' 
claimed investments are significant under Section 337(a)(3)(A) and (B). 
See Lelo Inc. v. Int'l Trade Comm'n, 786 F.3d 879, 883-84 (Fed. Cir. 
2015); Certain Carburetors and Products Containing Such Carburetors, 
Inv. No. 337-TA-1123, Comm'n Op. at 17-19 (Oct. 28, 2019).
    In connection with the final disposition of this investigation, the 
statute authorizes issuance of, inter alia, (1) an exclusion order that 
could result in the exclusion of the subject articles from entry into 
the United States; and/or (2) cease and desist orders that could result 
in the respondents 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 (December 1994).
    The statute requires the Commission to 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 orders 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, 
disapprove, or take no action on the Commission's determination. 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 under review that 
specifically address the Commission's questions set forth in this 
notice.\1\ The submissions should be concise and thoroughly referenced 
to the record in this investigation. 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.
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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 petitions and pre-hearing and post-hearing 
submissions. See, e.g., Order No. 2 (June 7, 2019) (ground rules); 
19 CFR 210.43(a)(2). 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 or to the Commission.
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    In their initial submissions, Complainants are also requested to 
identify the remedy sought and Complainants and OUII are requested to 
submit proposed remedial orders for the Commission's consideration. 
Complainants are also requested to state the dates that the asserted 
patents expire, to provide the HTSUS subheadings under which the 
accused products are imported, and to supply the identification 
information for all known importers of the products at issue in this 
investigation. The written submissions and proposed remedial orders 
must be filed no later than close of business on October 23, 2020. 
Reply submissions must be filed no later than the close of business on 
October 30, 2020. 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. The 
Commission's paper filing requirements in 19 CFR 210.4(f) are currently 
waived. 85 FR 15798 (March 19, 2020). Submissions should refer to the 
investigation number (``Inv. No. 337-TA-1158'') in a prominent place on 
the cover page and/or the first page. (See Handbook on 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 of the Commission and must include 
a full statement of the reasons why the Commission should grant such 
treatment. See 19 CFR 210.6. Documents for which confidential treatment 
by the Commission is sought will be treated accordingly. A redacted 
non-confidential version of the document must also be filed 
simultaneously with any confidential filing. 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

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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, solely for cybersecurity purposes. All contract personnel 
will sign appropriate nondisclosure agreements. All non-confidential 
written submissions will be available for public inspection at the 
Office of the Secretary and on EDIS.
    The Commission vote for this determination took place on October 9, 
2020.
    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: October 13, 2020.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2020-23020 Filed 10-16-20; 8:45 am]
BILLING CODE 7020-02-P