[Federal Register Volume 82, Number 157 (Wednesday, August 16, 2017)]
[Notices]
[Pages 38934-38936]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2017-17283]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1001]
Certain Digital Video Receivers and Hardware and Software
Components Thereof; Commission Determination To Review in Part a Final
Initial Determination Finding a Violation of Section 337; Schedule for
Written Submissions on the Issues Under Review and on Remedy, the
Public Interest, and Bonding; Grant of Joint Unopposed Motion for Leave
To Amend the Complaint and Notice of Investigation To Correct Corporate
Names
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 determined to review in part the
final initial determination (``the Final ID'') issued by the presiding
administrative law judge (``ALJ'') on May 26, 2017, finding a violation
of section 337 of the Tariff Act of 1930, as amended in connection with
certain asserted patents. The Commission has also determined to deny
Respondents' motion requesting leave to file a reply to Rovi's response
to Respondents' petition for review of the Final ID. The Commission has
further determined to grant a joint unopposed motion for leave to amend
the complaint and notice of investigation to correct the corporate
names of certain respondents.
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, by reason of infringement of certain claims
of U.S. Patent No. 8,006,263 (``the '263 patent''); U.S. Patent No.
8,578,413 (``the '413 patent''); U.S. Patent No. 8,046,801 (``the '801
patent''); U.S. Patent No. 8,621,512 (``the '512 patent''); U.S. Patent
No. 8,768,147 (``the '147 patent''); U.S. Patent No. 8,566,871 (``the
'871 patent''); and U.S. Patent No. 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.
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;
Technicolor SA of Issy-les-Moulineaux, France; Technicolor USA, Inc. of
Indianapolis, IN; Technicolor Connected Home USA LLC of Indianapolis,
IN; 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. 81 FR at 33548. The Office of
Unfair Import Investigations is not a party to this investigation. Id.
Prior to the evidentiary hearing, Rovi withdrew its allegations as
to certain patent claims. See Notice of Commission Determination Not to
Review an Initial Determination Granting Complainants' Motion to
Terminate Certain Asserted Patent Claims from the Investigation (Oct.
21, 2016); Notice of Commission Determination Not to Review an Initial
Determination Granting Complainants' Motion to Terminate Certain
Asserted Patent Claims from the Investigation (Dec. 2, 2016); Notice of
Commission Determination Not to Review an Initial Determination
Terminating U.S. Patent No. 8,768,147 from the Investigation (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 ALJ issued the Final ID, which finds a
violation of section 337 by the 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 a limited exclusion order directed to the accused
products, that cease and desist orders issue to the respondents, and
that the Commission should not require any bond during the Presidential
review period.
On June 12, 2017, Rovi and the respondents filed petitions for
review of the Final ID. The 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 responses to the
petitions for review. On July 11, 2017, Rovi and the respondents filed
statements on the public interest. The Commission also received
numerous comments on the public interest from the public.
On June 26, 2017, Respondents filed a motion requesting leave to
file a reply to Rovi's response to Respondents' petition for review,
and on June 29, 2017, Rovi filed a response in opposition to that
motion. That motion is denied.
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 indicates that ARRIS Enterprises, Inc.
has changed its name to ARRIS Enterprises LLC and that Pace Ltd. has
changed its name to ARRIS Global Ltd. That motion is granted.
On July 25, 2017, Comcast submitted with the Office of the
Secretary a letter including supplemental disclosure and
[[Page 38935]]
representations. On July 31, 2017, Rovi submitted with the Office of
the Secretary a response thereto, which asserted that ``this new
evidence confirms that there is no reason for the Commission to
review'' certain of the Final ID's conclusions. On August 9, 2017,
Comcast filed a response to Rovi's submission. The Commission has
determined to reopen the evidentiary record and accept the supplemental
disclosure, response thereto, and reply to the response.
Having examined the record in this investigation, including the
Final ID, the petitions for review, and the responses thereto, the
Commission has determined to review the Final ID in part. In
particular, the Commission has 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 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).
The Commission has determined to not review the remainder of the
Final ID. The Commission has further determined that Respondents'
petition of the Final ID's determinations is improper as to the
following issues: (1) The representative accused X1 products for the
'263, '413, and '801 patents; (2) the induced infringement of the '263
and '413 patents; and (3) the eligibility under 35 U.S.C. 101 of the
'512 patent. See 19 CFR 210.43(b)(2) (``Petitions for review may not
incorporate statements, issues, or arguments by reference.''). Those
assignments of error are therefore waived.
The parties are requested to brief their positions with reference
to the applicable law and the evidentiary record regarding the
questions provided below:
(1) As to whether the Legacy accused products are ``articles that
infringe'' (Issue 2 in Respondents' Petition for Review):
Has Rovi shown (or has Comcast conceded) that a Legacy accused
product that infringes the asserted patents (and if so, which patents)
has been imported or re-imported by any respondent or that respondent's
agent(s)?
(2) As to 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
section X of Respondents' Petition for Review):
a. For purposes of giving rise to a section 337 violation and
whether the X1 STBs are ``articles that infringe,'' is the importation
of and infringement through the use of the X1 STBs distinguishable from
the importation of and infringement through the use of the scanners in
Suprema v. Int'l Trade Comm'n, 796 F.3d 1338 (Fed. Cir. 2015)? For
example, is Suprema distinguishable because the imported X1 STBs
require cooperation with hardware (a mobile device and Comcast's
servers) that is not imported by the respondents for an act of
infringement to occur? Note that, in Suprema, the imported scanners
were ``not standalone products,'' but rather, to function, the scanners
had to ``be connected to a computer, and that computer must have
custom-developed software installed and running.'' 796 F.3d at 1341-42.
b. Please discuss any relevant statutory language, legislative
history, case law, and Commission precedent that does or does not
support interpreting the language of section 337 such that the X1 STBs
are ``articles that infringe'' and that a violation arises from the
importation or sale in the United States after importation of the X1
STBs.
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 one or more cease and desist orders 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 cease and desist orders would have on (1) the
public health and welfare, (2) competitive conditions in the U.S.
economy, (3) U.S. production of articles that are like or directly
competitive with those that are subject to investigation, and (4) U.S.
consumers. The Commission is therefore interested in receiving written
submissions that address the aforementioned public interest factors in
the context of this investigation.
The parties and the public are requested to brief their positions
regarding the public interest. The Commission is particularly
interested in responses to the following:
Should the Commission tailor any remedy to mitigate any harm
considered by the public interest factors? Please provide any support,
factual or otherwise, and relate that support to specific public
interest factors.
If the Commission orders some form of remedy, the U.S. Trade
[[Page 38936]]
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.
Complainants are requested to submit proposed remedial orders for the
Commission's consideration. Complainants are also requested to state
the date that the patents expire and the HTSUS numbers under which the
accused products are imported. Complainants are further requested to
supply the names of known importers of the products at issue in this
investigation. The written submissions and proposed remedial orders
must be filed no later than close of business on August 24, 2017. Reply
submissions must be filed no later than the close of business on August
31, 2017. No further submissions on any of 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-1001'') in a prominent place on
the cover page and/or the first page. (See Handbook for Electronic
Filing Procedures, https://www.usitc.gov/secretary/documents/handbook_on_filing_procedures.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. All
information, including confidential business information and documents
for which confidential treatment is properly sought, submitted to the
Commission for purposes of this Investigation may be disclosed to and
used: (i) By the Commission, its employees and Offices, and contract
personnel (a) for developing or maintaining the records of this or a
related proceeding, or (b) in internal investigations, audits, reviews,
and evaluations relating to the programs, personnel, and operations of
the Commission including under 5 U.S.C. appendix 3; or (ii) by U.S.
government employees and contract personnel, solely for cybersecurity
purposes (all contract personnel will sign appropriate nondisclosure
agreements). All nonconfidential written submissions will be available
for public inspection at the Office of the Secretary and on EDIS.
This action is taken under the authority of 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: August 10, 2017.
Lisa R. Barton,
Secretary to the Commission.
[FR Doc. 2017-17283 Filed 8-15-17; 8:45 am]
BILLING CODE 7020-02-P