25
Jan
On January 24, 2011, Microsoft Corporation of Redmond, Washington (“Microsoft”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that TiVo Inc. of Alviso, California (“TiVo”) unlawfully imports into the U.S., sells for importation, and/or sells within the U.S. after importation certain set-top boxes and hardware and software components thereof that infringe U.S. Patent Nos. 5,585,838 (the ‘838 patent), 5,731,844 (the ‘844 patent), 6,028,604 (the ‘604 patent), and 5,758,258 (the ‘258 patent) (collectively, the “asserted patents”).

The accused products are certain set-top boxes known as digital video recorders (“DVRs”), and their associated software and hardware.   According to the complaint, the ‘838 patent discloses systems and methods for providing an electronic program guide.  The ‘844 patent discloses computer systems and methods for providing a user with efficient selection of a television program or other content to view or record.  The ‘604 patent discloses graphical user interfaces and operating environments for controlling a computer through limited input devices such as remote controls.  The ‘258 patent discloses systems and methods for associating viewing restrictions with identifiable viewer classes in an interactive viewing environment.

According to the complaint, TiVo’s infringing DVRs are manufactured and assembled outside the U.S., primarily in Mexico, and imported into the U.S. for sale, and TiVo infringes the asserted patents by making, using, selling, offering for sale, and importing the articles claimed by or practicing the claimed methods of the asserted patents, or by contributing and/or inducing their infringement by end users of its products.  The complaint specifically identifies the following TiVo models as infringing: TiVo Premiere, TiVo Premiere XL, TiVo HD, and TiVo HD XL.

Regarding domestic industry, the complaint alleges that Microsoft’s Mediaroom product/software uses the subject matter claimed in the asserted patents, and this software platform is licensed for use in connection with AT&T’s U-verse subscriber service, which in turn is provided through set-top boxes practicing the asserted patents.  Microsoft further alleges that it made significant investment in plant, equipment, research and development, and employment in the U.S. with respect to its Mediaroom product/software.

As to related litigation, Microsoft states that concurrently with this complaint, it is filing a civil action in the U.S. District Court for the Western District of Washington accusing TiVo of infringing each of the same asserted patents.

With respect to potential remedy Microsoft requests that the Commission issue a permanent exclusion order and a permanent cease and desist order directed at TiVo.