03
May
By Eric Schweibenz
On May 1, 2012, Rovi Corporation, Rovi Guides, Inc., Rovi Technologies Corporation, Starsight Telecast, Inc., and United Video Properties, Inc.—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 the following entities (collectively, the “Proposed Respondents”) 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) technology and related features, including televisions and media players, that infringe one or more claims of U.S. Patent Nos. 6,701,523 (the ‘523 patent), 6,898,762 (the ‘762 patent), 7,065,709 (the ‘709 patent), 7,103,906 (the ‘906 patent), 7,225,455 (the ‘455 patent), 7,493,643 (the ‘643 patent), and 8,112,776 (the ‘776 patent) (collectively, the “asserted patents”):

  • LG Electronics, Inc. of South Korea

  • LG Electronics U.S.A., Inc. of Englewood Cliffs, New Jersey

  • Mitsubishi Electric Corp. of Japan

  • Mitsubishi Electric US Holdings, Inc. of Cypress, California

  • Mitsubishi Electric and Electronics USA, Inc. of Vernon Hills, Illinois

  • Mitsubishi Electric Visual Solutions America, Inc. of Irvine, California

  • Mitsubishi Digital Electronics America, Inc. of Irvine, California

  • Netflix Inc. of Los Gatos, California

  • Roku, Inc. of Saratoga, California

  • Vizio, Inc. of Irvine, California


According to the complaint, the asserted patents generally relate to IPG, video-on-demand, and parental controls technology.  In particular, the ‘523 patent relates to a system and method for restricting access to television programs.  The ‘762 patent relates to a client-server interactive television program guide system implemented on user televisions and other user equipment.  The ‘709 patent relates to interactive program guide systems and methods for providing personalized viewing recommendations based on a user’s preference profile.  The ‘906 patent relates to methods for providing multi-device media-on-demand systems.  The ‘455 patent relates to a system and method for using an electronic program guide application to provide access to a non-program guide application.  The ‘643 patent relates to a system and method for providing an interactive program guide with video-on-demand browsing capabilities.  Lastly, the ‘776 patent relates to media guidance systems and methods for providing program listings based on a user’s selection of a program.

In the complaint, Rovi states that the Proposed Respondents import and sell products that infringe the asserted patents.  The complaint specifically refers to various televisions, tablets, and streaming media players associated with the Proposed Respondents.

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 states that it licenses its patent portfolio to many of the leading consumer electronics and television service provider companies in the U.S., including Toshiba Corporation, Sharp Corporation, Samsung Electronics Co. Ltd., and Sony Corporation.  Rovi further states that it employs 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 also refers to its own Rovi Entertainment Store platform.  In addition, Rovi states that a domestic industry exists because several licensees of the asserted patents have made investments in labor and capital in the U.S. and have sold products in the U.S. that practice the asserted patents.

As to related litigation, Rovi states that the ‘906, ‘709, ‘776, and ‘762 patents are the subject of litigation in the U.S. District Court for the Northern District of California involving Netflix, Inc.  Rovi further states that the ‘906 patent is the subject of litigation in the U.S. District Court for the District of Delaware involving Hulu LLC.  Additionally, Rovi states that the ‘643 patent was the subject of a previous ITC investigation (Inv. No. 337-TA-801) and litigation in the U.S. District Court for the Eastern District of Virginia involving Sharp Corporation and related entities (collectively, “Sharp”).  According to the complaint, Sharp agreed to take a license to settle these matters.  See our October 5, 2011 post for more details on the termination of the 801 investigation.  Rovi also 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 involving 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 the subject of litigation in the U.S. District Court for the District of Delaware involving, inter alia, Amazon.com, Inc.  Rovi further states that the ‘643 and ‘523 patents are the subject of an ongoing ITC investigation (Inv. No. 337-TA-820).  See our December 16, 2011 post for more details on the 820 investigation.  Rovi additionally states that the ‘643 patent is the subject of litigation in the U.S. District Court for the District of Delaware involving Vizio, Inc.  Rovi also states that the ‘523 patent is the subject of litigation in the U.S. District Court for the District of Delaware involving, inter alia, Haier Group Corp.  Lastly, Rovi states that the ‘523 patent is currently the subject of two reexamination proceedings before the U.S. Patent and Trademark Office.

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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