By Eric Schweibenz
On April 8, 2013, ALJ David P. Shaw issued the public versions of Order Nos. 40 and 41 – both dated March 4, 2013 – in Certain Products Containing Interactive Program Guide and Parental Control Technology (Inv. No. 337-TA-845).  Each will be discussed in turn below.

By way of background, the investigation is based on a May 1, 2012 complaint filed by Rovi Corporation; Rovi Guides, Inc.; Rovi Technologies Corporation; Starsight Telecast, Inc.; United Video Properties, Inc.; and Index Systems, Inc. (collectively, “Rovi”) alleging violation of Section 337 in the importation into the U.S. and sale of certain products containing interactive program guide and parental control technology that infringe one or more claims of U.S. Patent Nos. 6,701,523; 6,898,762; 7,065,709; 7,103,906; 7,225,455; 7,493,643; and 8,112,776.  See our May 3, 2012 post for more details.

According to Order No. 40, various Respondents filed motions for summary determination.  Netflix, Inc.’s (“Netflix”) motion for summary determination of no-violation with respect to U.S. Patent No. 7,103,906 was denied as Netflix’s specific intent or willful blindness is considered a disputed material fact.  Netflix and Roku, Inc. also filed a motion for summary judgment of invalidity that was denied as ALJ Shaw determined there are genuine issues of material fact as to whether or not the asserted claims are directed to abstract ideas.  Netflix’s second motion for summary determination of invalidity based on anticipation was also denied, as ALJ Shaw also considered that genuine issues of fact were in dispute.  Netflix, LG Electronics, Inc., and LG Electronics U.S.A., Inc.’s motion for summary determination of noninfringement was denied as the underlying claim construction issue was not yet resolved.  Lastly, two motions of summary determination filed by Respondents since terminated from the investigation were denied as moot.

Rovi filed a motion of summary determination of Respondents’ affirmative defenses of patent misuse, asserting that Respondents failed to provide sufficient evidence that Rovi’s licensing of its patents expanded the scope of these patents and caused competitive harm.  However, as Respondents “dispute dozens of [the] alleged undisputed statements,” the motion was denied.

According to Order No. 41, Rovi filed nine motions in limine and Respondents filed ten.  Six of Rovi’s motions were denied, and thus arguments and evidence regarding standing, exhaustion, implied licenses, and certain expert testimony will be admitted.  The three granted motions excluded arguments that an Initial Determination from 2002 is binding, evidence based on documents stored in third-party warehouses, and testimony that has been rendered moot by the termination of particular Respondents.

All ten of Respondents’ motions were denied.  Specifically, attempts to limit arguments to contention interrogatories and to strike particular expert testimony were denied, and the corresponding evidence will be admitted.  ALJ Shaw noted that, where appropriate, the weight given the testimony of a particular expert may be impacted.  Two motions were denied as moot based on the termination of particular parties from the investigation.