UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, DC
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`In the Matter of
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`CERTAIN DIGITAL VIDEO RECEIVERS
`AND RELATED HARDWARE AND
`SOFTWARE COMPONENTS
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`Investigation No. 337-TA-1103
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`CEASE AND DESIST ORDER
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`IT IS HEREBY ORDERED THAT Comcast Shared Services, LLC, of Chicago, Illinois
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`cease and desist from conducting any of the following activities in the United States: importing,
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`selling, offering for sale, leasing, offering for lease, renting, offering for rent, marketing,
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`advertising, distributing, transferring (except for exportation), and soliciting U.S. agents or
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`distributors for, certain digital video receivers and related hardware and software components
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`covered by claim 9 of U.S. Patent No. 7,779,011 in violation of section 337 of the Tariff Act of
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`1930, as amended (19 U.S.C. § 1337).
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`I. Definitions
`As used in this order:
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`(A)
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`(B)
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`“Commission” shall mean the United States International Trade Commission.
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`“Complainants” shall mean Rovi Corporation of San Jose, California; Rovi
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`Guides, Inc. of San Jose, California; and Veveo, Inc. of Andover,
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`Massachusetts.
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`(C)
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`“Respondent” shall mean Comcast Shared Services, LLC, 30 N Wabash
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`1
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`Washington, DC
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`In the Matter of
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`CERTAIN DIGITAL VIDEO RECEIVERS
`AND RELATED HARDWARE AND
`SOFTWARE COMPONENTS
`
`Investigation No. 337-TA-1103
`
`CEASE AND DESIST ORDER
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`IT IS HEREBY ORDERED THAT Comcast Shared Services, LLC, of Chicago, Illinois
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`cease and desist from conducting any of the following activities in the United States: importing,
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`selling, offering for sale, leasing, offering for lease, renting, offering for rent, marketing,
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`advertising, distributing, transferring (except for exportation), and soliciting U.S. agents or
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`distributors for, certain digital video receivers and related hardware and software components
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`covered by claim 9 of U.S. Patent No. 7,779,011 in violation of section 337 of the Tariff Act of
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`1930, as amended (19 U.S.C. § 1337).
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`I. Definitions
`As used in this order:
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`(A)
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`(B)
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`“Commission” shall mean the United States International Trade Commission.
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`“Complainants” shall mean Rovi Corporation of San Jose, California; Rovi
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`Guides, Inc. of San Jose, California; and Veveo, Inc. of Andover,
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`Massachusetts.
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`(C)
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`“Respondent” shall mean Comcast Shared Services, LLC, 30 N Wabash
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`1
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`Avenue 22, Chicago, Illinois 60611-3586.
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`(D)
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`“Person” shall mean an individual, or any non-governmental partnership, firm,
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`association, corporation, or other legal or business entity other than Respondent
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`or its majority-owned or controlled subsidiaries, successors, or assigns.
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`(E)
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`“United States” shall mean the fifty States, the District of Columbia, and Puerto
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`Rico.
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`(F)
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`The terms “import” and “importation” refer to importation for entry for
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`consumption under the Customs laws of the United States.
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`(G)
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`The term “covered products” shall mean digital video receivers and related
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`hardware and software components that infringe claim 9 of U.S. Patent No.
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`7,779,011. Covered products shall not include articles for which a provision of
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`law or license avoids liability for infringement of claim 9 of U.S. Patent No.
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`7,779,011. The term does not include digital video receivers for use in a
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`system that has been adjudicated as noninfringing.
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`II. Applicability
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`The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
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`principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
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`(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
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`assigns, and to each of them insofar as they are engaging in conduct prohibited by section III,
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`infra, for, with, or otherwise on behalf of, Respondent.
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`III. Conduct Prohibited
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`The following conduct of Respondent in the United States is prohibited by this Order.
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`For the remaining term of U.S. Patent No. 7,779,011, Respondent shall not:
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`2
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`(A) import or sell for importation into the United States covered products;
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`(B) market, distribute, sell, offer to sell, lease, offer to lease, rent, offer to rent,
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`or otherwise transfer (except for exportation), in the United States imported
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`covered products;
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`(C) advertise imported covered products;
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`(D) solicit U.S. agents or distributors for imported covered products; or
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`(E) aid or abet other entities in the importation, sale for importation, sale after
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`importation, lease after importation, rent after importation, transfer, or
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`distribution of covered products.
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`IV. Conduct Permitted
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`(A) Notwithstanding any other provision of this Order, Respondent shall be
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`permitted to engage in specific conduct otherwise prohibited by the terms
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`of this Order if, in a written instrument, the owner of U.S. Patent No.
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`7,779,011 licenses or authorizes such specific conduct, including but not
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`limited to conduct involving covered products that the Commission found
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`were previously imported into the United States under license;
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`(B) to engage in specific conduct otherwise prohibited by the terms of this
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`Order if such specific conduct is related to the importation or sale of
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`covered products by or for the United States; or
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`(C) to engage in such specific conduct related to service or repair articles
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`imported for use in servicing or repairing digital video receivers that were
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`imported before the effective date of this Order. Exception (C) does not
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`permit the importation of digital video receivers to replace digital video
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`receivers that were imported before the effective date of this Order.
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`V. Reporting
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`For purposes of this requirement, the reporting periods shall commence on January 1 of
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`each year and shall end on the subsequent December 31. The first report required under this
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`section shall cover the period from the date of issuance of this order through December 31, 2019.
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`This reporting requirement shall continue in force until such time as Respondent has truthfully
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`reported, in two consecutive timely filed reports, that it has no inventory (whether held in
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`warehouses or at customer sites) of covered products in the United States.
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`Within thirty (30) days of the last day of the reporting period, Respondent shall report to
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`the Commission: (a) the quantity in units and the value in dollars of covered products that it has
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`(i) imported and/or (ii) sold in the United States after importation during the reporting period,
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`and (b) the quantity in units and value in dollars of reported covered products that remain in
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`inventory in the United States at the end of the reporting period.
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`When filing written submissions, Respondent must file the original document
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`electronically on or before the deadlines stated above and submit eight (8) true paper copies to
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`the Office of the Secretary by noon the next day pursuant to section 210.4(f) of the
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`Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.4(f)). Submissions should refer
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`to the investigation number (“Inv. No. 337-TA-1103”) in a prominent place on the cover pages
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`and/or the first page. (See Handbook for Electronic Filing Procedures,
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`https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions
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`regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a
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`document to the Commission in confidence, it must file the original and a public version of the
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`original with the Office of the Secretary and must serve a copy of the confidential version on
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`4
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`Complainant’s counsel.1
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`Persons filing written submissions must file the original document electronically on or
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`before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R.
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`§ 210.4(f) are currently waived, pending resolution of the COVID-19 crisis. 85 Fed. Reg. 15798
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`(March 19, 2020).
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`VI. Record-Keeping and Inspection
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`(A) For the purpose of securing compliance with this Order, Respondent shall
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`retain any and all records relating to the sale, offer for sale, lease, offer to
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`lease, rent, offer to rent, marketing, or distribution in the United States of
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`covered products, made and received in the usual and ordinary course of
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`business, whether in detail or in summary form, for a period of three (3)
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`years from the close of the fiscal year to which they pertain.
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`(B) For the purposes of determining or securing compliance with this Order
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`and for no other purpose, subject to any privilege recognized by the federal
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`courts of the United States, and upon reasonable written notice by the
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`Commission or its staff, duly authorized representatives of the Commission
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`shall be permitted access and the right to inspect and copy, in Respondent's
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`principal office during office hours, and in the presence of counsel or other
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`representatives if Respondent so chooses, all books, ledgers, accounts,
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`correspondence, memoranda, and other records and documents, in detail
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`and in summary form, that must be retained under subparagraph VI(A) of
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`1 Complainant must file a letter with the Secretary identifying the attorney to receive
`reports and bond information associated with this Order. The designated attorney must
`be on the protective order entered in the investigation.
`5
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`this Order.
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`VII. Service of Cease and Desist Order
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`Respondent is ordered and directed to:
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`(A) Serve, within fifteen (15) days after the effective date of this Order, a copy
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`of this Order upon each of its respective officers, directors, managing
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`agents, agents, and employees who have any responsibility for the
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`importation, marketing, distribution, sale, lease, or rent of imported
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`covered products in the United States;
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`(B) Serve, within fifteen (15) days after the succession of any persons referred
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`to in subparagraph VII(A) of this Order, a copy of the Order upon each
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`successor; and
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`(C) Maintain such records as will show the name, title, and address of each
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`person upon whom the Order has been served, as described in
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`subparagraphs VII(A) and VII(B) of this Order, together with the date on
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`which service was made.
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`The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until U.S.
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`Patent No. 7,779,011 expires.
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`VIII. Confidentiality
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`Any request for confidential treatment of information obtained by the Commission
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`pursuant to section V-VI of this Order should be made in accordance with section 201.6 of the
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`Commission's Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
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`confidential treatment is sought, Respondent must provide a public version of such report with
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`6
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`confidential information redacted.
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`IX. Enforcement
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`Violation of this order may result in any of the actions specified in section 210.75 of the
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`Commission's Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil
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`penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any
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`other action that the Commission deems appropriate. In determining whether Respondent is in
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`violation of this order, the Commission may infer facts adverse to Respondent if it fails to
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`provide adequate or timely information.
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`X. Modification
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`The Commission may amend this Order on its own motion or in accordance with the
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`procedure described in section 210.76 of the Commission's Rules of Practice and Procedure (19
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`C.F.R. § 210.76).
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`XI. Bonding
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`The conduct prohibited by section III of this Order may be continued during the sixty-day
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`period in which this Order is under review by the United States Trade Representative, as
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`delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)) subject to the Respondent's
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`posting of a bond in the amount of zero percent of the entered value of the covered products.
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`This bond provision does not apply to conduct that is otherwise permitted by section IV of this
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`Order. Covered products imported on or after the date of issuance of this Order are subject to the
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`entry bond as set forth in the exclusion order issued by the Commission, and are not subject to
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`this bond provision.
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`The bond is to be posted in accordance with the procedures established by the
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`Commission for the posting of bonds by complainants in connection with the issuance of
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`temporary exclusion orders. See 19 C.F.R. § 210.68. The bond and any accompanying
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`documentation are to be provided to and approved by the Commission prior to the
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`commencement of conduct that is otherwise prohibited by section III of this Order. Upon the
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`Secretary's acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties,
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`and (b) Respondent must serve a copy of the bond and accompanying documentation on
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`Complainants' counsel.2
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`The bond is to be forfeited in the event that the United States Trade Representative
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`approves this Order (or does not disapprove it or takes no action within the review period),
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`unless the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any
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`Commission final determination and order as to Respondent on appeal, or unless Respondent
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`exports or destroys the products subject to this bond and provides certification to that effect that
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`is satisfactory to the Commission.
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`The bond is to be released in the event the United States Trade Representative
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`disapproves this Order and no subsequent order is issued by the Commission and approved (or
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`not disapproved) by the United States Trade Representative, upon service on Respondent of an
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`order issued by the Commission based upon application therefore made by Respondent to the
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`Commission.
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`2 See Footnote 1.
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`By order of the Commission.
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`Issued: April 23, 2020
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` Lisa R. Barton
`Secretary to the Commission
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`9
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`CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED
`HARDWARE AND SOFTWARE COMPONENTS
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`Inv. No. 337-TA-1103
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`PUBLIC CERTIFICATE OF SERVICE
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`I, Lisa R. Barton, hereby certify that the attached ORDER has been served via EDIS
`upon the Commission Investigative Attorney, John Shin, Esq. and the following parties as
`indicated, on April 23, 2020.
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`___________________________________
`Lisa R. Barton, Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, DC 20436
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`On Behalf of Complainants Rovi Corporation, Rovi Guides,
`Inc., and Veveo, Inc.:
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`Douglas A. Cawley, Esq.
`MCKOOL SMITH P.C.
`300 Crescent Court, Suite 1500
`Dallas, TX 75201
`Email: dcawley@mckoolsmith.com
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Email Notification
`of Availability for Download
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`On Behalf of Respondents Comcast Corporation, Comcast
`Cable Communications, LLC, Comcast Cable
`Communications Management, LLC, Comcast Business
`Communications, LLC, Comcast Holdings Corporation, and
`Comcast Shared Services, LLC:
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`Bert C. Reiser, Esq.
`LATHAM & WATKINS, LLP
`555 Eleventh Street, NW, Suite 100
`Washington, DC 20004
`Email: bert.reiser@lw.com
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`☐ Via Hand Delivery
`☐ Via Express Delivery
`☐ Via First Class Mail
`☒ Other: Email Notification
`of Availability for Download
`
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