PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, DC
`
`In the Matter of
`
`CERTAIN DIGITAL VIDEO RECEIVERS
`AND RELATED HARDWARE AND
`SOFTWARE COMPONENTS
`
` Investigation No. 337-TA-1103
`
`COMCAST RESPONDENTS’ PETITION AND CONTINGENT PETITION FOR
`REVIEW OF THE FINAL INITIAL DETERMINATION
`
`COMCAST RESPONDENTS’ PETITION AND CONTINGENT PETITION FOR REVIEW
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`PUBLIC VERSION
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ...............................................................................................................1
`
`A.
`
`B.
`
`Procedural History ...................................................................................................3
`
`The Parties ...............................................................................................................4
`
`1.
`
`2.
`
`Rovi ..............................................................................................................4
`
`Comcast........................................................................................................4
`
`II.
`
`III.
`
`IV.
`
`STANDARDS GOVERNING PETITIONS FOR REVIEW AND CONTINGENT
`PETITIONS FOR REVIEW ................................................................................................5
`
`STATEMENT OF ISSUES FOR REVIEW ........................................................................5
`
`ISSUES 1 AND 2: THE ACCUSED PRODUCTS CANNOT BE “ARTICLES
`THAT INFRINGE” NECESSARY TO FIND A VIOLATION OF SECTION 337 ...........6
`
`A.
`
`The Accused Products ..............................................................................................6
`
`1.
`
`2.
`
`Comcast’s Domestic Servers Perform the Functionalities Accused
`of Infringing the ’011 Patent ........................................................................7
`
`The Accused Products Do Not Perform the Functionalities
`Accused of Infringing the ’585 and ’741 Patents ......................................10
`
`As a Matter of Law, the Imported Set Top Boxes Cannot be “Articles that
`Infringe” the Asserted Patents ...............................................................................15
`
`No Violation of Section 337 May Be Found Based on Comcast’s
`Domestic Use of a Patented Method or System .....................................................18
`
`B.
`
`C.
`
`V.
`
`[CONTINGENT] ISSUE 3: THE ’585 PATENT IS NOT INFRINGED .........................21
`
`A.
`
`B.
`
`C.
`
`The ID Erred In Finding No Disavowal by Rovi of Settings That Do Not
`Control How Programs Are To Be Digitally Stored ..............................................23
`
`The Accused “Auto Pad Recordings” Functionality Do Not Infringe
`Claims 1 and 15. ....................................................................................................27
`
`The Accused “Start,” “Stop” and “HD Preferred” Functionality Do Not
`Infringe Claims 8, 11 and 22..................................................................................31
`
`VI.
`
`[CONTINGENT] ISSUE 4: THE ’741 PATENT IS INVALID .......................................36
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`PUBLIC VERSION
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`A.
`
`B.
`
`Sie Anticipates Claims 1, 8, and 14 of the ’741 Patent..........................................37
`
`If Rovi’s Interpretation of the Asserted Claims Applies, McElhatten
`Anticipates Claims 1, 8, and 14 of the ’741 Patent ................................................42
`
`VII.
`
`CONCLUSION ..................................................................................................................44
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`PUBLIC VERSION
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`TABLE OF AUTHORITIES
`
`CASES
`
`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008) ................................................................................................. 40
`
`Certain Digital Video Hardware Receivers,
`Inv. No. 337-TA-1001, Comm’n Op. (2018) ............................................................................ 20
`
`Certain Digital Video Hardware Receivers,
`Inv. No. 337-TA-1001, Initial Determination (June 26, 2017) ................................................. 15
`
`Certain Elec. Devices,
`Inv. No. 337-TA-724, Comm’n Op. (2011) ........................................................................ 19, 20
`
`Certain Electronic Digital Media Devices and Components Thereof,
`Inv. No. 337-TA-796, Comm’n Op. (Sept. 6, 2013) ................................................................. 19
`
`Certain Products Containing Interactive Program Guide and Parental Control Technology,
`Inv. No. 337-TA-845, Final Initial Determination (June 7, 2013) ...................................... 19, 21
`
`Cordance Corp. v. Amazon.com, Inc.,
`658 F.3d 1330 (Fed. Cir. 2011) ................................................................................................. 28
`
`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009) ................................................................................................. 41
`
`Geospan Corp. v. Pictometry Int’l Corp.,
`No. CIV. 08-816 ADM/JSM, 2011 WL 1261583 (D. Minn. Mar. 31, 2011) ........................... 40
`
`Global-Tech Appliances, Inc. v. SEB S.A.,
`563 U.S. 754 (2011) ............................................................................................................ 16, 17
`
`KCJ Corp. v. Kinetic Concepts, Inc.,
`223 F.3d 1351 (Fed. Cir. 2000) ................................................................................................. 40
`
`LaserDynamics, Inc. v. Quanta Computer, Inc.,
`694 F.3d 51 (Fed. Cir. 2012) ..................................................................................................... 16
`
`Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,
`545 U.S. 913 (2005) .................................................................................................................. 18
`
`Norian Corp. v. Stryker Corp.,
`432 F.3d 1356 (Fed. Cir. 2005) ................................................................................................. 24
`
`Suprema, Inc. v. ITC,
`796 F.3d 1338 (Fed. Cir. 2015) .......................................................................................... passim
`
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`Warner-Lambert Co. v. Apotex Corp.,
`316 F.3d 1348 (Fed. Cir. 2003) ................................................................................................. 18
`
`White v. Dunbar,
`119 U.S. 47 (1886) .................................................................................................................... 28
`
`OTHER AUTHORITIES
`
`19 C.F.R. § 210.43(b)(1) ................................................................................................................. 5
`
`19 C.F.R. § 210.43(b)(3) ................................................................................................................. 5
`
`19 C.F.R. § 210.43(d)(2) ................................................................................................................. 5
`
`19 C.F.R. § 210.45(c)...................................................................................................................... 5
`
`19 U.S.C. § 1337(a)(1)(B)(i)......................................................................................................... 15
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`COMCAST RESPONDENTS’ PETITION AND CONTINGENT PETITION FOR REVIEW
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`PUBLIC VERSION
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`TABLE OF ABBREVIATIONS
`
`Abbreviation
`
`ALJ
`API
`Commission or Comm’n
`Comcast RPB
`Fig[s].
`HD
`ID
`Inv. 1001
`IPG[s]
`Ltr.
`OEM
`
`Rovi CIPB
`Rovi RPB
`SD
`SOC
`STB[s]
`Tr.
`TV
`the ’011 Patent
`the ’585 Patent
`the ’741 Patent
`
`Full Name
`Administrative Law Judge
`Application program interface
`United States International Trade
`Commission
`Comcast’s Reply Post-Hearing Brief
`Figure[s]
`High definition
`Initial Determination
`Investigation No. 337-TA-1001
`Interactive Program Guide[s]
`Letter
`Original Equipment Manufacturer
`
`Rovi’s Corrected Initial Post-Hearing Brief
`Rovi’s Reply Post-Hearing Brief
`Standard definition
`System on a Chip
`Set-Top Box[es]
`Transcript
`Television
`US Patent No. 7,779,011
`US Patent No. 7,827,585
`US Patent No. 9,369,741
`
`COMCAST RESPONDENTS’ PETITION AND CONTINGENT PETITION FOR REVIEW
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`PUBLIC VERSION
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`Pursuant to Commission Rule 210.43, 19 C.F.R. § 210.43, Respondents Comcast
`
`Corporation; Comcast Cable Communications, LLC; Comcast Cable Communications
`
`Management, LLC; Comcast Business Communications, LLC; Comcast Holdings Corporation;
`
`and Comcast Shared Services, LLC (collectively, “Comcast” respectfully submit this petition for
`
`review of the June 4, 2019 initial determination on violation of Section 337 (“the ID” and
`
`contingent petition for review on certain related matters.
`
`I.
`
`INTRODUCTION
`
`This is the second of three Commission proceedings that Complainant Rovi has initiated
`
`in its attempt to force Comcast and its customers to pay unjustified fees for a license to Rovi’s
`
`patent portfolio. As in Rovi’s first case, however, the evidence adduced in this Investigation
`
`showed that Comcast is the innovator in the cable television industry and a leader of the cloud
`
`revolution in that field. In contrast, Rovi missed the cloud revolution and, as a result, has been
`
`forced to stretch its patents well beyond their natural reach to cover technology Rovi simply did
`
`not invent. Accordingly, either Rovi withdrew or the ALJ found no violation as to seven of the
`
`eight patents that Rovi initially asserted in this Investigation.
`
`The June 4, 2019 ID addressed three patents that remained at issue by the time of the
`
`evidentiary hearing. It found one—U.S. Patent No. 7,779,011 (the “’011 Patent”)—infringed by
`
`Comcast’s X1 system and not invalid and, as a result, found that Comcast had violated Section
`
`337 by allegedly importing and selling after importation X1 set-top boxes (STBs) for use with that
`
`system. Comcast petitions for review of that finding because the ID’s holding that the domestic
`
`alleged infringement by Comcast constitutes a violation of Section 337—premised on the
`
`Commission’s incorrect application of the Federal Circuit’s decision in Suprema, Inc. v. ITC, 796
`
`F.3d 1338 (Fed. Cir. 2015) (“Suprema”)—was legal error. The accused Comcast X1 STBs
`
`necessarily cannot and do not infringe, directly or indirectly, any of the asserted patents at the time
`COMCAST RESPONDENTS’ PETITION AND CONTINGENT PETITION FOR REVIEW
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`PUBLIC VERSION
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`of their importation. As part of its X1 system, Comcast moved its guide and related accused
`
`functionalities from its STBs to the cloud.
`
` ID at 49-50. And the
`
`STBs are not even arguably used in any inducing acts directed to Comcast’s customers until long
`
`after they have crossed the border. Those STBs therefore cannot be “articles that infringe,” a
`
`statutorily necessary foundation for any finding of a violation of Section 337.
`
`The ID found no violation as to the other two patents addressed at the evidentiary hearing.
`
`Specifically, it found U.S. Patent No. 7,827,585 (the “’585 Patent” invalid on two separate
`
`grounds and U.S. Patent No. 9,369,741 (the “’741 Patent” not infringed. The ALJ got it right and
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`the Commission should not review those findings. However, if the Commission decides otherwise,
`
`Comcast respectfully requests that the Commission also review related findings regarding both
`
`patents.
`
`First, if the Commission reviews the ID’s finding that the asserted claims of the ’585 Patent
`
`are invalid, then it should also review the ID’s finding that they were infringed by the Accused
`
`Products. In addition to the fact that X1 STBs are not “articles that infringe” for the reasons
`
`discussed above, the accused storage settings do not “control how programs are to be digitally
`
`stored” as required by the claims. All of the accused storage settings control what is recorded, not
`
`how it is recorded, and they therefore cannot infringe the ’585 Patent.
`
`Second, if the Commission reviews the ID’s finding that the ’741 Patent is not infringed,
`
`then it should also review the ID’s findings that the patent is not anticipated by two separate prior
`
`art references. One reference (Sie anticipates under any interpretation of the claims. Rovi’s
`
`expert did not even address this reference at the hearing, and the only reason the ID did not find
`
`anticipation was that Rovi asserted an erroneous interpretation of the claims for the first time in its
`
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`PUBLIC VERSION
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`reply post-hearing brief, to which Comcast had no opportunity to respond. The other reference
`
`(McElhatten anticipates under the interpretation of the claims that Rovi asserts for infringement
`
`purposes. The ID correctly rejected Rovi’s infringement theory and accordingly held that
`
`McElhatten does not anticipate. But if the Commission were to overturn the non-infringement
`
`finding then the validity finding based on McElhatten must be remanded to the ALJ for findings
`
`regarding that reference in view of that new infringement read.
`
`A.
`
`Procedural History
`
`In its initial wave of patent infringement allegations against Comcast, Rovi asserted 15
`
`patents. See Rovi Guides, Inc. v. Comcast Corp., No. 1:16-cv-09278-JPO (S.D.N.Y.; Certain
`
`Digital Video Receivers and Hardware and Software Components Thereof, Inv. No. 337-TA-1001.
`
`All asserted claims of 12 of those 15 patents—including all claims of the only two (related and
`
`indistinguishable patents on which a violation was found in Inv. 1001—have been held invalid
`
`by the Patent Trial and Appeal Board (PTAB in IPR proceedings, many on multiple grounds. See
`
`Hr’g Tr. at 184:25-185:8; IPR2017-00950 (final written decision re: ’263 patent; IPR2017-00951
`
`(same; IPR2017-01048 (final written decision re: ’413 patent; IPR2017-01049 (same; IPR2017-
`
`01050 (same. Rovi withdrew its assertions against Comcast with respect to two of the remaining
`
`three patents, and Comcast’s motion for summary judgment of non-infringement on the third is
`
`pending in the Southern District of New York.1
`
`Having failed in its first round of litigation, Rovi asserted eight additional patents in its
`
`Complaint in this Investigation. Rovi Complaint (Doc. ID 635973. Rovi withdrew five of those
`
`patents. Order Nos. 12, 33 and 39. From October 17-25, 2018, the ALJ held an evidentiary hearing
`
`on the remaining three patents and 10 asserted claims.
`
`1 In addition, the district court in Case No. 1:16-cv-09278 (S.D.N.Y.) invalidated one patent as
`indefinite.
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`PUBLIC VERSION
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`On June 4, 2019, the ALJ issued the ID, which determined there to be no violation of
`
`Section 337 as to 8 of the remaining 10 asserted claims. ID at 323-24. The ID found there to be
`
`a violation as to claims 1 and 9 of the ’011 Patent (id., but also held that Comcast’s design
`
`alternatives do not infringe either of those claims of the ’011 Patent and that Comcast does not
`
`induce infringement of method claim 1. Id. at 53-54, 270-71.
`
`B.
`
`The Parties
`1.
`Rovi
`
`Rovi is an amalgamation of companies that generates a large portion of its revenue from
`
`acquiring and asserting patents. See Hr’g Tr. (Armaly) at 115:18-116:8, 119:15-25. In 2014, Rovi
`
`acquired Veveo and its patent portfolio. Hr’g Tr. (Armaly) at 119:15-25, 121:18-122:8, 123:1-14;
`
`id. (Koenig) at 425:15-23. In 2016, Rovi acquired TiVo Solutions, Inc. and created a new parent
`
`company called TiVo Corporation. Hr’g Tr. (Armaly) at 124:15-125:20. In connection with that
`
`transaction, Rovi represented to the U.S. Department of Justice that the TiVo and Rovi patent
`
`portfolios were complementary. While the legacy TiVo portfolio was directed to allegedly
`
`fundamental DVR innovation, systems and hardware, Rovi’s portfolio was directed to consumer
`
`features such as electronic program guides. Hr’g Tr. (Armaly) at 166:1-13; RX-1419C (email
`
`attaching presentation to the Department of Justice re: proposed TiVo acquisition) at 4. None of
`
`the asserted patents are legacy TiVo patents. Hr’g Tr. (Armaly) at 166:14-167:5.
`
`2.
`
`Comcast
`
`Comcast was founded in 1963 when its founders acquired a small cable television system
`
`in Tupelo, Mississippi. Hr’g Tr. (McCann) at 1399:7-23. Headquartered in Philadelphia,
`
`Pennsylvania, Comcast has become one of the largest suppliers of cable TV services in the United
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`States, with over 100,000 employees and thousands of engineers. Hr’g Tr. (McCann) at 1399:24-
`
`COMCAST RESPONDENTS’ PETITION AND CONTINGENT PETITION FOR REVIEW
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`1401:3. Among Comcast’s numerous product offerings is X1, its revolutionary cloud-based
`
`service. Id. at 1400:6-11.
`
`II.
`
`STANDARDS GOVERNING PETITIONS FOR REVIEW AND CONTINGENT
`PETITIONS FOR REVIEW
`
`Under Commission Rule 210.43(b)(1), a petition for review may be granted if the petition
`
`demonstrates:
`
`i.
`
`ii.
`
`That a finding or conclusion of material fact is clearly erroneous;
`
`That a legal conclusion is erroneous, without governing precedent, rule or law, or
`constitutes an abuse of discretion; or
`
`iii.
`
`That the determination is one affecting Commission policy.
`
`19 C.F.R. § 210.43(b)(1).
`
`The Commission will grant a petition and order review “if it appears that an error or abuse
`
`of the type described in paragraph (b)(1) of this section is present or if the petition raises a policy
`
`matter connected with the [ID], which the Commission thinks is necessary or appropriate to
`
`address.” 19 C.F.R. § 210.43(d)(2). If the Commission determines to review the ID, it may “affirm,
`
`reverse, modify, set aside or remand for further proceedings, in whole or in part.” 19 C.F.R. §
`
`210.45(c). Contingent petitions for review are governed by the same standards as petitions for
`
`review. 19 C.F.R. § 210.43(b)(3).
`
`III.
`
`STATEMENT OF ISSUES FOR REVIEW
`
`Pursuant to 19 C.F.R. § 210.43(b)(1), Comcast respectfully petitions for or contingently
`
`petitions for review of the following issues:
`
`1. Whether the ID committed legal or clear factual error in determining that the
`imported devices are “articles that infringe” the ’011 Patent, where the imported
`devices undisputedly cannot perform all of the elements of the asserted claims, and
`where the infringing functionality occurs in remote cloud servers located in the
`United States.
`
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`2. Whether the ID committed legal error in determining that a respondent’s domestic
`use, without more, is a violation of Section 337.2
`
`3.
`
`4.
`
`[Contingent] Whether the ID committed legal or clear factual error in determining
`that the asserted claims of the ’585 Patent are infringed by the Accused Products
`where none of the Accused Products satisfy the asserted claims’ requirement of a
`“storage setting configured to control how [programs are / the program is] to be
`digitally stored.”
`
`[Contingent] Whether the ID committed legal error in failing to find that the
`asserted claims of the ’741 Patent are anticipated by Sie (RX-0069) or by
`McElhatten (RX-0071).
`
`IV.
`
`ISSUES 1 AND 2: THE ACCUSED PRODUCTS CANNOT BE “ARTICLES
`THAT INFRINGE” NECESSARY TO FIND A VIOLATION OF SECTION 337
`
`A.
`
`The Accused Products
`
`The Notice of Investigation defines the scope of this Investigation as “the importation into
`
`the United States, the sale for importation, or the sale within the United States after importation of
`
`certain digital video receivers and related hardware and software components.” Notice of
`
`Investigation at 2.3 The “certain digital video receivers” are Comcast X1 STBs initially imported
`
`into the United States (by companies other than Comcast) after April 1, 2016.4 But the specific
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`factual findings of the ID and the unrebutted evidence demonstrate that X1 STBs do not provide
`
`the functionalities accused of infringing any of the three asserted patents.
`
`2 Should the Commission review the determinations of no violation as to either the ’585 or ’741
`Patents, Comcast contingently requests the Commission review issues 1 and 2 with respect to
`those Patents as well.
`3 All emphasis added unless otherwise noted.
`4 Rovi seeks no remedy as to any article that was initially imported into the United States prior
`to April 2, 2016. Rovi CIPB at 3 n. 4.
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`PUBLIC VERSION
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`1.
`
`Comcast’s Domestic Servers Perform the Functionalities Accused of
`Infringing the ’011 Patent
`
`The relationship of the Accused Products to the search functionalities accused of infringing
`
`the ’011 Patent is at most attenuated, and legally insufficient to form a violation of Section 337.
`
`17; id. (McCann) at 1404:5-15, 1405:11-21; JX-0107C (Kallurkar Dep. Designations) at 75:11-
`
` See ID at 47-48; Hr’g Tr. (Kelly) at 1685:3-10, 1686:12-
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`19; see also RDX-0004C.9.
`
` See ID at 47-48; JX-0107C
`
`(Kallurkar Dep. Designations) at 12:20-13:4, 16:19-17:3, 34:12-16.
`
` See Hr’g Tr. (Kelly) at
`
`1686:18-1687:20; RDX-0004C.10-17.
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`PUBLIC VERSION
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` ID at 49; Hr’g Tr. (McCann) at 1420:23-1421:5.
`
` See ID at 48 n.30, 67 (noting,
`
` id. at 69
`
` id. at 74
`
` id. at 75, 130 (noting
`
`id. 49, 80-81, 130 (noting
`
` id. at 49
`
`Tr. (McCann) at 1420:23-1421:5; Tr. (Allinson) at 1477:9-19
`
` ID at 130;
`
` Hr’g Tr. (Kelly) at 1685:14-1686:11; see also RDX-0004C.10.
`
`1685:14-1686:11; JX-0107C (Kallurkar Dep. Designations) at 72:16-73:3, 95:5-96:21.
`
` Hr’g Tr. (Kelly) at
`
`Hr’g Tr. (Kelly) at 1685:14-1686:11; JX-0107C (Kallurkar Dep.
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`PUBLIC VERSION
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` Designations) at 72:16-73:3; see also RDX-0004C.17.
`
`(Allinson) at 1476:2-10, 1477:9-19
`
` Hr’g Tr. (Kelly) at 1690:17-19; id.
`
` ID at 271; Hr’g Tr. (Bovik) at 560:18-561:16, 568:1-8, 698:14-25; see also id. (Kelly)
`
`at 1715:5-1716:7.
`
`An X1 user may initiate a search by, among other ways, pressing a key on a remote control.
`
`ID at 48-49.
`
`1687:20; see also RDX-0004C.11-12.
`
`see also RDX-0004C.12-13.
`
`Tr. (Kelly) at 1687:21-1689:24.
`
` Hr’g Tr. (Kelly) at 1686:18-
`
` See ID at 49; Hr’g Tr. (Kelly) at 1686:18-1687:20;
`
` Hr’g
`
` Id. at 1688:18-1690:12; see also RDX-0004C.14-17.
`
` Hr’g Tr. (Kelly) at 1690:2-12, 1694:17-
`
`1697:11, 1698:7-19.
`
` Id.; see also Hr’g Tr. (Kelly) at 1697:12-21, 1699:23-1701:21.
`
` ID at 49-50.
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`PUBLIC VERSION
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`Rovi and its expert incorrectly suggested that the X1 STBs performed the accused search
`
`functionality.
`
` Tr. (Bovik) at 560:13-20.
`
` ID at 49.
`
` Id. at 50.
`
` ID 49-50.
`
`2.
`
`The Accused Products Do Not Perform the Functionalities Accused of
`Infringing the ’585 and ’741 Patents
`
`The ID made specific findings concerning the operation of Comcast’s X1 system that
`
`demonstrate the, at most, tangential relationship of the accused X1 STBs to the guide-related
`
`functionalities accused of infringing the ’585 and ’741 Patents.5
`
`At the hearing, Comcast witnesses John McCann, Comcast’s Vice President of Product
`
`Engineering, and Stephen Allinson, Comcast’s Senior Director of Product Management for
`
`Consumer Premise Equipment Software, explained the
`
` (Xfinity X1 Architecture
`
`Presentation) at 12. Hr’g Tr. (McCann) at 1403:20-1404:15; id. (Allinson) at 1471:3-1474:3.
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`5 The ID found that Comcast did not infringe the asserted claims of the ’741 Patent. ID at 234-
`51.
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`PUBLIC VERSION
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`As the ID found, when a user presses a key on her remote control,
`
`(McCann) at 1405:22-1406:18; id. (Allinson) at 1472:9-14.
`
`(Allinson) at 1472:15-18, 1485:7-21.
`
`See ID at 130; Hr’g Tr.
`
` See ID at 130; Hr’g Tr.
`
`1405:22-1406:18; id. (Allinson) at 1472:22-1473:5.
`
`1405:22-1406:18; id. (Allinson) at 1472:22-1473:5.
`
` See ID at 130; Hr’g Tr. (McCann) at
`
` See ID at 132; Hr’g Tr. (McCann) at
`
`1486:13-1487:11.
`
`. ID at 130; Hr’g Tr. (Allinson) at 1473:6-15,
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`The ID provided additional detail concerning
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`ID at 128 & Fig. 26.
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` ID at 127; CX-0443C (Xfinity X1 Architecture Presentation) at 9; Hr’g Tr.
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`(Allinson) at 1481:13-23.
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`See ID at 127; Hr’g Tr. (Allinson) at 1482:8-17.
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`ID at 127; Hr’g Tr. (Allinson) at 1482:18-1483:16.
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` See
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`See ID at 127; Hr’g Tr. (Allinson) at 1479:25-1480:5, 1481:5-
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`12, 1483:20-22.
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`As the ID found, and Comcast’s witnesses explained, the only
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`at 1483:23-1484:7.
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`Hr’g Tr. (Allinson) at 1484:8-13.
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` See ID at 128; Hr’g Tr. (Allinson)
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`. See ID at 128;
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` ID at 128; Hr’g Tr. (McCann at 1433:5-11, 1404:23-1405:10; id.
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`(Allinson at 1471:21-1472:5, 1486:2-12.
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`(Allinson) at 1484:14-1487:11.
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`. ID at 128; Hr’g Tr.
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`. ID at 128-29; Hr’g Tr. (McCann) at 1406:19-1407:5 (
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`455:17-1456:13; id. (Allinson) at 1488:25-1489:5
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`at 1485:7-21, 1486:13-1487:11.
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`s. ID at 130; Hr’g Tr. (Allinson)
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` Id.
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`In regards to the functionality accused of infringing the ’585 and ’741 Patents, the ID
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`recognized
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`’585 Patent specifically, the ID found that
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`. ID at 130. As to the
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` ID at 130-31; (Tr. (McCann) at 1407:22-1408:19
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`Tr. (Allinson) at 1475:20-23.). Further,
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`ID at 132. In regards to the functionality accused of infringing the ’741 Patent, the
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`ID recognized that the Accused Products
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`ID at 131 (internal quotation marks omitted); Tr. (Karger) at 1532:23-1533:13, 1534:9-22.
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`Throughout the hearing, Rovi and its experts misleadingly suggested that
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`Indeed, Rovi’s expert, Dr. Balakrishnan, went as far as to include in his
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`demonstratives a figure from a document,
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` Tr.
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`(McCann) at 1456:14-1457:24. But any suggestion by Rovi or its expert that
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`contrary to the express findings of the ID outlined above. While the ID sometimes refers to
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` accused functionalities is incorrect and
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` the ALJ’s claim
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`construction that the “interactive television program guide” application recited in the ’585 Patent
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`claims may be distributed such that very little need be done by the STB itself. ID. at 47, 51, 132.
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`While the ID found that the accused STBs
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` are necessary for a STB
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`user to access the X1 guide
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` (ID at 129-30), numerous other
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`software and hardware components throughout Comcast’s domestic system are also necessary for
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`such functions, including such things as power sources. That such components are necessary for
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`the X1 system to operate is not sufficient to render them articles that infringe Rovi’s patents, which
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`are directed to functionalities actually implemented, if at all, by other software running on
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`Comcast’s domestic cloud servers.
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`B.
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`As a Matter of Law, the Imported Set Top Boxes Cannot be “Articles that
`Infringe” the Asserted Patents
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`Section 337 declares unlawful the sale for importation, importation, or sale in the United
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`States after importation of “articles that infringe.” 19 U.S.C. § 1337(a)(1)(B)(i). In Suprema, the
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`Federal Circuit explained that Congress’s use of the present tense—“articles that infringe”—
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`requires that the articles must be “infring[ing]” at the point of their importation into the country.
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`Id. at 1346, 1347-48. Noting that in the case of inducement, the direct infringement that
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`“complete[s]” infringement “will typically not have taken place at the time of the importation that
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`induces it” (id. at 1347-48), the court concluded that Section 337 did not require that all the
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`infringing conduct—both inducement and direct infringement—be complete at the time of
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`importation. Rather, the court concluded that “Section 337’s present-tense language” can be
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`“satisfied by the indirect infringer’s own acts, including importation that is part of inducement or
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`contribution.” Id. at 1348. The court thus construed Section 337 to impose a critical limiting
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`condition when inducement is the basis for an alleged violation: an article must have been used in
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`an inducing act, such that liability for inducement attached with respect to that article, by the time
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`of its importation. Id. at 1348-49.
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`Here, it is undisputed that X1 STBs (the imported articles) do not directly infringe at the
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`time of importation. See Section IV.A and infra. And as the ALJ found in Inv. No. 1001, the
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`STBs have substantial noninfringing uses. See Certain Digital Video Hardware Receivers, Inv.
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`No. 337-TA-1001, Initial Determination at 112 (June 26, 2017). Further, the accused X1 STBs
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`cannot be “articles that infringe” under an inducement theory because the STBs have not been
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`used in any inducing act at the time they are imported. Cf. Suprema, 796 F.3d at 1343 (holding
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`that Section 337’s present-tense language permits the Commission to “prevent importation of
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`articles that have been part of inducement as an unfair trade act.”). The ID holds that Comcast
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`induces subscribers to directly infringe the asserted system claims of the ’011 and ’585 Patents by
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`using their X1 STBs with Comcast’s cloud-based X1 system. ID at 23, 272. But any such
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`inducement can only occur after importation, when Comcast “suppl[ies]” the STB to the subscriber
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`and, according to Rovi, intentionally persuades the subscriber to infringe. See Suprema, 796 F.3d
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`at 1349; LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 76 (Fed. Cir. 2012; accord
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`Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 760 (2011.
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`The ID noted that the Commission already found X1 STBs to be articles that infringe in
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`Inv. 1001. ID at 22-23. Comcast disagrees with the Commission’s application of the law in Inv.
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`1001 and that issue is on appeal before the Federal Circuit. Regardless, the determination as to
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`whether Section 337’s requirements have been met in this Investigation—i.e., whether the Accused
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`Products were proven to be “articles that infringe” the Asserted Patents—depends on this
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`Investigation’s evidentiary record. This record uniquely addresses the subject matter claimed in
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`the Asserted Patents, the functionalities accused of infringing those particular patents, and
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`Respondents’ alleged acts. The evidence in this Investigation is clear that every Comcast action
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`directed towards its customers that allegedly constitutes inducement occurs entirely in the United
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`States and implicates a given STB—if at all—only after its importation.
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`The ID holds that Comcast designed the X1 STBs before they were imported and that this
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`constitutes an inducing act that satisfies Suprema’s strictures. ID at 23. This assertion fails both
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`factually and legally. Multiple third-party witnesses in this Investigation confirmed that X1 STBs
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`are designed by third-parties, not by Comcast. Hr’g Tr. (Rousseau at 980:4-24, 982:11-21, 995:8-
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`996:6; JX-0100C (Folk Dep. at 154:19-158:22. The alleged “specifications” provided by
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`Comcast simply provide a
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`Hr’g Tr. (Rousseau at 982:11-21, 995:8-996:6; JX-0100C (Folk Dep. at 163:1-
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`164:8. And far from being directed to infringement, nothing on the X1 STBs is di rected to the
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`core accused functionalities at all. See Section IV.A; Hr’g Tr. (Allinson at 1475:20-1477:14; Hr’g
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`Tr. (Kelly at 1691:1-1692:12; RDX-0004C.20.
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` See Section
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`IV.A.2; Hr’g Tr. (McCann at 1403:20-1404:15; Hr’g Tr. (Allinson at 1471:3-1474:3, 1485:7-21,
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`1486:13-1487:11.
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`For similar reasons, the ALJ’s finding that Comcast imports the STBs does not control this
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`issue. ID at 18 n.18. Comcast maintains its position that it does not import STBs. But regardless,
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`Suprema held that Section 337 may be satisfied by “importation that is part of inducement,” not
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`just any “importation,” and the facts of Suprema demonstrate the distinction. Suprema, 796 F.3d
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`at 1348. In that case, Suprema, a Korean company that manufactured its scanners in Korea, “aided
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`and abetted Mentalix’s [direct] infringement by collaborating ‘with Mentalix to import the
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`scanners’” into the United States. Id. at 1343. That is, the importation itself was part of cross-
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`border inducing conduct directed towards the direct infringer. H