[Federal Register Volume 78, Number 158 (Thursday, August 15, 2013)]
[Notices]
[Pages 49766-49768]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-19790]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-845]
Certain Products Containing Interactive Program Guide and
Parental Control Technology; Commission Determination To Review in Its
Entirety a Final Initial Determination Finding No Violation of Section
337
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 its entirety a final initial
determination (``ID'') issued by the presiding administrative law judge
(``ALJ''), finding no violation of section 337 of the Tariff Act of
1930, 19 U.S.C. 1337, in this investigation.
FOR FURTHER INFORMATION CONTACT: Robert Needham, Office of the General
Counsel, U.S. International Trade Commission, 500 E Street SW.,
Washington, DC 20436, telephone (202) 708-5468. 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 (http://www.usitc.gov). The public record for this investigation may be viewed
on the Commission's electronic docket (EDIS) at http://edis.usitc.gov.
Hearing-impaired persons are advised that information on this matter
can be obtained by contacting the Commission's TDD terminal on (202)
205-1810.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation
on June 6, 2012, based on a complaint filed by Rovi Corporation; Rovi
Guides, Inc.; Rovi Technologies Corporation; Starsight Telecast, Inc.;
United Video Properties, Inc.; and Index Systems, Inc. (collectively,
``Complainants''). 77 FR 33487-88. The respondents are LG Electronics,
Inc.; LG Electronics U.S.A., Inc. (collectively, ``LGE''); Mitsubishi
Electric Corp.; Mitsubishi Electric US Holdings, Inc.; Mitsubishi
Electric and Electronics USA, Inc.; Mitsubishi Electric Visual
Solutions America, Inc.; Mitsubishi Digital Electronics America, Inc.
(collectively, ``Mitsubishi''); Netflix Inc. (``Netflix''); Roku, Inc.
(``Roku''); and Vizio, Inc (``Vizio''). The Office of Unfair Import
Investigations is not participating in this investigation.
Originally, Complainants asserted numerous claims from seven
patents against various respondents. Complainants later moved to
terminate the investigation as to three of the seven patents, as to
certain claims of one of the remaining four patents, and as to
respondents LGE, Mitsubishi, and Vizio. Order No. 9 (Sept. 4, 2012),
not reviewed, Oct. 2, 2012; Order No 16 (Nov. 6, 2012), not reviewed,
December 7, 2012; Order Nos. 17 (Dec. 19, 2012) and 19 (Dec. 20, 2012),
not reviewed, January 18, 2013; Order No. 21 (Jan. 22, 2013), not
reviewed Feb. 13, 2013; Order Nos. 34 (Feb. 27, 2013) and 36 (Mar. 1,
2013), not reviewed (Mar. 22, 2013). What remains in the investigation
are respondents Netflix and Roku, as well as claims 1, 6, 13, and 17 of
U.S. Patent No. 6,898,762 (``the '762 patent''), claims 13-20 of U.S.
Patent No. 7,065,709 (``the '709 patent''); claims 1-3, 10, and 11 of
U.S. Patent No. 7,103,906 (``the '906 patent''); and claims 1, 2, 4, 6,
14, 15, 17, and 19 of U.S. Patent No. 8,112,776 (``the '776 patent'').
On June 7, 2013, the presiding ALJ issued his final ID, finding no
violation of section 337. Specifically, the ALJ found that none of the
accused products met the importation requirement of section 337. While
the ALJ found that his importation finding was dispositive, the ALJ
made additional findings in the event that the Commission determined
that the importation requirement was met. The ALJ found that no party
infringed any of the four asserted
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patents. He also found that the `776 patent is invalid as anticipated
and obvious, but that the respondents had failed to show that the other
three asserted patents were invalid. The ALJ found a domestic industry
for articles protected by each of the patents-in-suit, but found that
Complainants had not shown a domestic industry based on substantial
investment in licensing the asserted patents. The ALJ also rejected
Respondents' patent misuse, implied license, and patent exhaustion
defenses.
On June 24, 2013, Complainants filed a petition for review
challenging the ALJ's findings that the importation requirement is not
met, that Netflix does not induce infringement, and that the economic
prong of the domestic industry is not met by Complainants' licensing
activity. That same day, the respondents Netflix and Roku filed a joint
contingent petition for review arguing additional bases for finding no
violation. On July 2, 2013, the parties filed oppositions to each
other's petitions.
Having examined the record of this investigation, including the
ALJ's final ID, the petitions for review, and the responses thereto,
the Commission has determined to review the final ID in its entirety.
The parties are requested to brief their positions on the issues
under review with reference to the applicable law and the evidentiary
record. In connection with its review, the Commission is particularly
interested in briefing on the following issues:
1. Whether direct infringement being carried out by non-imported
Netflix servers and Netflix user interfaces affects whether the Netflix
SDK induces infringement at the time of importation. Additionally,
explain how the Commission Opinion in Certain Electronic Devices with
Image Processing Systems, Components Thereof, and Associated Software,
Inv. No. 337-TA-724, applies to the accused Netflix SDK for each of the
asserted patents.
2. Whether Complainants' licensing of the Netflix Ready Devices
pursuant to the LGE and Vizio licenses affects whether the accused
Netflix software infringes.
3. Whether Netflix's provision of its SDK pursuant to its
agreements with LGE and Vizio constitutes a ``sale'' within the meaning
of section 337(a)(1)(B).
4. Identify the specific software that allegedly induces
infringement of each of the asserted patents, and explain where such
software is present in both the Netflix software allegedly ``sold for
importation'' and in the Netflix Ready Devices imported into the United
States. Or explain why no such software exists.
5. Explain specifically how the Netflix SDK itself induces
infringement of each of the asserted patents. Or explain why the
Netflix SDK itself does not induce infringement of each of the asserted
patents.
6. Whether Netflix may induce infringement where the direct
infringement is carried out by Netflix servers and Netflix user
interfaces.
7. For each claim that Netflix is accused of inducing infringement,
explain who or what carries out the direct infringement for each claim
limitation.
The parties have been invited to brief only the discrete issues
described above, with reference to the applicable law and evidentiary
record. The parties are not to brief other issues on review, which are
adequately presented in the parties' existing filings.
In connection with the final disposition of this investigation, the
Commission may (1) issue an order that could result in the exclusion of
the subject articles from entry into the United States, and/or (2)
issue a cease and desist order that could result in the respondent
being required to cease and desist from engaging in unfair acts in the
importation and sale of such articles. Accordingly, the Commission is
interested in receiving written submissions that address the form of
remedy, if any, that should be ordered. If a party seeks exclusion of
an article from entry into the United States for purposes other than
entry for consumption, the party should so indicate and provide
information establishing that activities involving other types of entry
either are adversely affecting it or likely to do so. For background,
see Certain Devices for Connecting Computers via Telephone Lines, Inv.
No. 337-TA-360, USITC Pub. No. 2843 (December 1994) (Commission
Opinion).
If the Commission contemplates some form of remedy, it must
consider the effects of that remedy upon the public interest. The
factors the Commission will consider include the effect that an
exclusion order and/or a cease and desist order would have on (1) the
public health and welfare, (2) competitive conditions in the U.S.
economy, (3) U.S. production of articles that are like or directly
competitive with those that are subject to investigation, and (4) U.S.
consumers. The Commission is therefore interested in receiving written
submissions that address the aforementioned public interest factors in
the context of this investigation.
If the Commission orders some form of remedy, the U.S. Trade
Representative, as delegated by the President, has 60 days to approve
or disapprove the Commission's action. See Presidential Memorandum of
July 21, 2005, 70 FR 43251 (July 26, 2005). During this period, the
subject articles would be entitled to enter the United States under
bond, in an amount determined by the Commission and prescribed by the
Secretary of the Treasury. The Commission is therefore interested in
receiving submissions concerning the amount of the bond that should be
imposed if a remedy is ordered.
Written Submissions: The parties to the investigation are requested
to file written submissions on the issues identified in this notice.
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. The written submissions must not exceed 75 pages,
and must be filed no later than close of business on August 23, 2013.
Reply submissions must not exceed 50 pages, and must be filed no later
than the close of business on August 30, 2013. No further submissions
on these issues will be permitted unless otherwise ordered by the
Commission.
Persons filing written submissions must file the original document
electronically on or before the deadlines stated above and submit 8
true paper copies to the Office of the Secretary by noon the next day
pursuant to section 210.4(f) of the Commission's Rules of Practice and
Procedure (19 CFR 210.4(f)). Submissions should refer to the
investigation number (``Inv. No. 337-TA-845'') in a prominent place on
the cover page and/or the first page. (See Handbook for Electronic
Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf). Persons with questions
regarding filing should contact the Secretary (202-205-2000).
Any person desiring to submit a document to the Commission in
confidence must request confidential treatment. All such requests
should be directed to the Secretary to the Commission and must include
a full statement of the reasons why the Commission should grant such
treatment. See 19 CFR 201.6. Documents for which confidential treatment
by the Commission is properly sought will be treated accordingly. A
redacted non-
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confidential version of the document must also be filed simultaneously
with the any confidential filing. All non-confidential written
submissions will be available for public inspection at the Office of
the Secretary and on EDIS.
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 sections 210.42-46 of the Commission's Rules of Practice and
Procedure (19 CFR 210.42-46).
Issued: August 9, 2013.
By order of the Commission.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2013-19790 Filed 8-14-13; 8:45 am]
BILLING CODE 7020-02-P