Rovi Files New 337 Complaint Regarding Certain Products Containing Interactive Program Guide And Parental Controls Technology
On July 26, 2011, Rovi Corporation, Rovi Guides, Inc., United Video Properties, Inc., and Gemstar Development Corporation (collectively, “Rovi”) — all of Santa Clara, California —filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.
The complaint alleges that Sharp Corporation of Japan, Sharp Electronics Corporation of Mahwah, New Jersey, and Sharp Electronics Manufacturing Company of America, Inc. of Mahwah, New Jersey (collectively, “Sharp”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain products containing interactive program guide and parental controls technology that infringe certain claims of U.S. Patent Nos. 6,305,016 (the ‘016 patent), 7,493,643 (the ‘643 patent) and RE41,993 (the ‘993 patent) (collectively, the “asserted patents”).
According to the complaint, the asserted patents generally relate to interactive program guide and parental controls technology. In particular, the ‘016 patent relates to a system for displaying program guide data with a perceived transparency over a selected television channel and methods for simultaneously presenting information (or alternatively, a computer generated image using digital data) with a television program, where the information is displayed with a perceived partial transparency. The ‘643 patent relates to a system and method for providing an interactive television program guide with video-on-demand browsing capabilities. Lastly, the ‘993 patent relates to a system and method for restricting access to television programs.
In the complaint, Rovi states that Sharp imports and sells products that infringe the asserted patents. The complaint specifically identifies a number of Sharp television models as infringing products.
Regarding domestic industry, Rovi states that it has made a substantial investment in the exploitation of the asserted patents in the U.S., including engineering, research and development, and licensing efforts. According to the complaint, Rovi maintains 10 offices across the U.S. and employs a full-time legal and technical staff in the U.S. to perform market analysis, identify potential licensing activities, and engage in licensing and enforcement activities. Rovi further states that a domestic industry is also present as a result of Rovi’s significant investment in plant and equipment and substantial employment of labor and capital with respect to articles protected by the asserted patents, particularly its RoxioNow platform. Additionally, Rovi states that a domestic industry is present because several licensees of the asserted patents practice the inventions claimed in the asserted patents within the U.S.
As to related litigation, Rovi states that it previously asserted the ‘016 patent against Toshiba Corporation and related entities both at the ITC (Inv. No. 337-TA-747) and in the U.S. District Court for the District of Delaware. See our November 23, 2010 post for more details on the 747 investigation. According to the complaint, Toshiba agreed to take a license to settle these matters. Rovi additionally states that the European counterpart to the ‘016 patent has been litigated successfully in Europe against Sharp Electronics GmbH, Toshiba Europe GmbH, and TechniSat Digital GmbH. Rovi also states that the ‘643 patent is the subject of pending litigation against Amazon.com, Inc. and others in the U.S. District Court for the District of Delaware. Additionally, Rovi states that the ‘016 patent is currently the subject of an ex parte reexamination that was initiated on September 16, 2010 by a third party requester.
With respect to potential remedy, Rovi requests that the Commission issue a permanent limited exclusion order and a cease and desist order.