By Eric Schweibenz
On November 1, 2013, the International Trade Commission (the “ITC” or the “Commission”) issued a notice in Certain Products Containing Interactive Program Guide and Parental Control Technology (Inv. No. 337-TA-845).  In the notice, the Commission determined to affirm with modified reasoning the ALJ’s finding of no violation of Section 337.

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 and June 4, 2012 posts for more details on the complaint and notice of investigation, respectively.  Numerous Respondents have been terminated from the investigation, and only Netflix Inc. (“Netflix”) and Roku, Inc. (“Roku”) remain. 

On June 7, 2013, ALJ David P. Shaw issued his initial determination (“ID”) finding no violation of Section 337 by Netflix and Roku based upon findings of invalidity and non-infringement of the asserted patents.  He also found that none of the accused products met the importation requirement of Section 337.  ALJ Shaw also found that, while the technical prong of the domestic industry requirement was met, the economic prong, based on licensing the asserted patents, was not.  See our June 11, 2013 post for more details on the ID.

On August 9, 2013, the Commission determined to review the ID in its entirety, and requested written submissions on seven issues, as well as on remedy, bond, and the public interest.  After examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined that Rovi did not prove a violation of Section 337.  More particularly, the Commission affirmed the ALJ’s finding that the importation requirement was not met, though with modified reasoning.  The Commission also affirmed with modified reasoning the ALJ’s determinations of validity and noninfringement.  In addition, the Commission modified the ALJ’s claim construction, and under this modified claim construction, reversed the ALJ’s determination that the technical prong of the domestic industry requirement was met by Rovi with regard to one of the patents.  However, the finding that a domestic industry exists with regard to the remaining patents was affirmed, with the Commission noting that both prongs were met without reaching the issue of substantial investments in licensing.  Lastly, the notice indicated that a Commission opinion will issue shortly.