16
Nov
By Eric Schweibenz
On November 15, 2011, Rovi Corporation, Rovi Guides, Inc., United Video Properties, Inc., and Gemstar Development Corporation—all of Santa Clara, California—and Index Systems, Inc. of the British Virgin Islands (collectively, “Rovi”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Vizio, Inc. of Irvine, California (“Vizio”) and Haier Group Corp. of China and Haier America Trading, LLC of New York, New York (collectively, “Haier”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain products containing interactive program guide (“IPG”) and parental controls technology, including televisions, that infringe certain claims of U.S. Patent Nos. 7,493,643 (the ‘643 patent), RE41,993 (the ‘993 patent), 6,701,523 (the ‘523 patent), and 7,047,547 (the ‘547 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to IPG and parental controls technology.  In particular, the ‘643 patent relates to a system and method for providing an interactive television program guide with video-on-demand browsing capabilities.  The ‘993 and ‘523 patents relate to a system and method for restricting access to television programs.  Lastly, the ‘547 patent relates to an electronic program guide that restricts access to program schedule information.

In the complaint, Rovi states that Vizio and Haier import and sell products that infringe the asserted patents.  The complaint specifically names the Vizio M420SV, VF552XVT, VBR133, and E371VL and the Haier HL46XSL2 as infringing products.

Regarding domestic industry, Rovi states that a domestic industry exists by virtue of Rovi’s substantial investment in the exploitation of the asserted patents in the U.S., including engineering, research and development, and licensing efforts.  Rovi further states that a domestic industry is 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.  Rovi specifically refers to its Rovi Entertainment Store platform and its i-Guide platform.  According to the complaint, these platforms practice the inventions claimed in the ‘643 patent and the ‘547 patent, respectively.  In addition, Rovi states that a domestic industry is present because several licensees of the asserted patents—including two “major international corporations who both have a large U.S. presence”—practice the inventions claimed in the asserted patents within the U.S.

As to related litigation, Rovi states that the ‘643 and ‘993 patents were the subject of both a previous ITC investigation (Inv. No. 337-TA-801) and litigation in the U.S. District Court for the Eastern District of Virginia against Sharp Corporation and related entities (collectively, “Sharp”).  According to the complaint, Sharp agreed to settle these matters.  See our October 5, 2011 post for more details on the termination of the 801 investigation.  Additionally, Rovi states that the ‘523 patent was the subject of another previous ITC investigation (Inv. No. 337-TA-747) and litigation in the U.S. District Court for the District of Delaware against Toshiba Corporation and related entities (collectively, “Toshiba”).  According to the complaint, Toshiba agreed to take a license to settle these matters.  See our July 12, 2011 post for more details on the termination of the 747 investigation.  Rovi further states that the ‘643 patent is currently the subject of litigation in the U.S. District Court for the District of Delaware against Amazon.com, Inc. and others.  Rovi additionally states that the ‘523 patent is currently the subject of two reexamination proceedings at the U.S. Patent and Trademark Office.  Lastly, Rovi states that a European patent related to the ‘547 patent is currently undergoing an opposition proceeding.

With respect to potential remedy, Rovi requests that the Commission issue a permanent limited exclusion order and a cease and desist order.
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