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, 56268-56269 [2017-25625]

Agencies

• INTERNATIONAL TRADE COMMISSION

[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]
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