• HQ H292490
• Mar 05, 2018

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   H121519   

OT:RR:BSTC:IPR H292490 CBC/CAB

Mr. Bert C. Reiser
Latham & Watkins LLP
555 Eleventh Street, NW, Suite 1000
Washington, DC 20004

RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1001, Certain Digital Video Receivers and Hardware and Software Components Thereof

Dear Mr. Reiser:

This ruling letter, issued under 19 C.F.R. § 177, is the result of an inter partes proceeding that the Intellectual Property Rights Branch, Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) administered pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, that involved your clients, Comcast Corp.; Comcast Cable Comms., LLC; Comcast Cable Comms. Mgmt., LLC; Comcast Bus. Comms., LLC; Comcast Holdings Corp.; and Comcast Shared Servs., LLC, (collectively “Comcast”) and Rovi Corp. and Rovi Guides, Inc., (collectively “Rovi”) as the two parties with a direct and demonstrable interest in the question presented by the ruling request.

In your letter, dated November 27, 2017, submitted on behalf of your client Comcast, you requested an administrative ruling, pursuant to 19 C.F.R. § 177, as to whether X1 set-top boxes (“the STBs at issue”) imported by Comcast’s co-respondents ARRIS and Technicolor are subject to the limited exclusion order (“1001 LEO”) issued by the U.S. International Trade Commission (“ITC” or “Commission”) in Investigation No. 337-TA-1001 (“the underlying investigation”) in view of certain redesigns Comcast has made to the X1 system. In the underlying investigation, the Commission found a violation of section 337 as to claims 1, 2, 14, and 17 of U.S. Patent No. 8,006,263 (“the ‘263 patent”) and as to claims 1, 3, 5, 9, 10, 14, and 18 of U.S. Patent No. 8,578,413 (“the ‘413 patent”) by Comcast based on direct infringement by Comcast’s customers through their use of the X1 systems in the United States, and Comcast’s inducement that infringement. Comm’n Op. at 16-17, Doc. ID 630893 (Nov. 21, 2017) (“Comm’n Op.”). The STBs at issue are a component in both the X1 system and the modified X1 system. Ruling Request at 12, 23; Rovi Response at 3.

We hold that the STBs at issue are not subject to the 1001 LEO in view of the changes Comcast has made to the X1 system. As discussed in greater detail below, Comcast has carried its burden of demonstrating that the changes made to the X1 system will prevent Comcast’s customers from using the modified X1 system, of which the STBs at issue are a component, in a manner which directly infringes one or more of claims 1, 2, 14, and 17 of the ’263 patent or claims 1, 3, 5, 9, 10, 14, and 18 of the ’413 patent under 35 U.S.C.§ 271(a).

I. BACKGROUND:

A. Rule 177 Proceeding before the IPR Branch

Comcast submitted a letter on November 27, 2017 requesting an administrative ruling, pursuant to 19 C.F.R. § 177, as to whether X1 set-top boxes (“the STBs at issue”) imported by Comcast’s co-respondents ARRIS and Technicolor are subject to the limited exclusion order (“1001 LEO”) issued by the U.S. International Trade Commission (“ITC” or “Commission”) in Investigation No. 337-TA-1001 (“the underlying investigation”) in view of certain redesigns Comcast has made to the X1 system. Comcast’s letter included declarations by Al Tran, Comcast’s Director of Advanced TV Platform Management, and Daniel Wigdor, Ph.D., the latter including Exhibit 1, and Exhibits A through E (collectively, “Ruling Request”). On December 4, 2017, CBP received a supplemental declaration by Al Tran, which included Exhibit 1. On December 28, Rovi submitted a response to the Ruling Request, which included Exhibits A through K (“Rovi Response”). On January 4, 2018, CBP received Comcast’s reply to Rovi’s Response, which included Exhibits F through L (“Comcast Reply”). On January 8, attorneys from CBP inspected Comcast’s redesigned system, in which the digital video receivers are used. On January 11, CBP received Rovi’s sur-reply (“Rovi Sur-Reply”). On January 12, attorneys from CBP inspected the redesigned system’s source code. Both parties presented arguments to CBP during the inter partes proceeding held on February 2. Post-proceeding briefs were subsequently submitted by both parties to CBP on February 9. Comcast’s post-proceeding submission included exhibits M through S and Rovi’s included post-proceeding exhibits A and B, the latter of which included attachments 1 and 2.

B. Investigation No. 337-TA-1001

Comcast, the ruling requester and respondent in the underlying investigation, is a cable company and curator of the X1 ecosystem, which provided certain subscribers with DVR functionality through a set-top box (“STB”) and mobile app. See Certain Digital Video Receivers and Hardware and Software Components Thereof, Inv. No. 337-TA-1001 (“Digital Video Receivers”), Comm’n Op. at 17–21, Doc. ID 630893 (Nov. 21, 2017) (“Comm’n Op.”) (Comcast Exh. E); Initial Determination at 4, Doc. ID 616255 (May 26, 2017) (“ID”) (Comcast Exh. C). The Commission instituted Investigation No. 337-TA-1001 on May 23, 2016, based on a complaint filed by Rovi. Notice of Institution, 81 Fed. Reg. 33547 (May 26, 2016). The complaint alleged violations of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain digital video receivers and hardware and software components thereof by reason of infringement of U.S. Patent Nos. 8,006,263 (“the ’263 patent”) (Comcast Exh. A, Rovi Exhs. C, D); 8,578,413 (“the ’413 patent”) (Comcast Exh. B., Rovi Exh. E); 8,046,801 (“the ’801 patent”); 8,621,512 (“the ’512 patent”); 8,768,147 (“the ’147 patent”); 8,566,871 (“the ’871 patent”); and 6,418,556 (“the ’556 patent”). Id. The notice of investigation named Comcast as respondents as well as Technicolor SA, Technicolor USA, Inc., and Technicolor Connected Home USA LLC (“Technicolor”), and Pace Ltd., Pace Americas, LLC, Arris International plc, Arris Group Inc., Arris Technology, Inc., Arris Enterprises Inc., and Arris Solutions, Inc. (“ARRIS”) (collectively, “respondents”). Id. The Office of Unfair Import Investigations was not named as a party. Id.

The ’147 patent was terminated from the investigation before trial. Order No. 33, Doc. ID 597916 (Dec. 13, 2016), unreviewed, Dec. 28, 2016. On May 26, 2017, the presiding administrative law judge (“ALJ”) issued the Final ID, which found a violation of section 337 with respect to all of the asserted claims of the ’263 and ’413 patents, but not with respect to any of the asserted claims of the ’556, ’801, ’871, and ’512 patents. ID at 613–14. Rovi and respondents appealed to the Commission, which granted review on nine questions and ruled that three other questions had been waived. Notice of Review, 82 Fed. Reg. 38934 (Aug. 16, 2017).

On November 21, 2017, the Commission affirmed the Final ID in-part, affirmed the Final ID with modifications in-part, reversed the Final ID in-part, vacated the Final ID in-part, and took no position as to certain issues under review. Notice of Violation, 82 Fed. Reg. 56268 (Nov. 28, 2017). Specifically, the Commission found a violation of section 337 as to the ’263 and ’413 patents by Comcast based on direct infringement by Comcast’s customers through their use of the X1 systems in the United States, and Comcast’s inducement of that infringement. Comm’n` Op. at 16. Accordingly, the Commission issued an LEO and cease and desist orders, prohibiting, inter alia, the importation of articles that infringe claims 1, 2, 14, and 17 of the ’263 patent and claims 1, 3, 5, 9, 10, 14, and 18 of the ’413 patent that are manufactured by, or on behalf of, or are imported by or on behalf of Comcast. See 1001 LEO (Nov. 21, 2017) (Comcast Exh. D).

C. The Remote Access Patents

The ’263 and ’413 patents (“Remote Access Patents”) are each titled “Interactive television program guide with remote access.” The ’263 patent, cover page; the ’413 patent cover page. The ’263 and ’413 patents each claim the benefit of U.S. Provisional Application Nos: 60/097,527, filed August 21, 1998, and 60/093,292, filed July 17, 1998. The ’263 patent, cover page; ’413 patent, at cover page. The ’263 and ’413 patents each share essentially the same specification. Comm’n Op. at 8. The ’263 and ’413 patents relate to interactive television guide programs (“IPGS”) that operate on local devices, such as STBs, and remote devices, such as a laptops or mobile phones. See The ’263 patent, at Abstract; the ’413 patent, at Abstract; see also Final ID at 178, 281; Comm’n Op. at 8-9.




Figure and 6b of the ’413 patent, reproduced above, shows one illustrative arrangement for supporting communications between a remote program guide access device 24 and an interactive television program guide equipment 17 over an Internet link. The ’413 patent, 13:52-55. According to the ’413 patent, the remote program guide access device 24 may establish an Internet session with an Internet service system 61 and thereby obtain program guide data from or set program guide settings with (e.g., set reminders or notifications, view listings, schedule program recording, set favorites, set parental control features, send messages, poll interactive television program guide equipment 17, etc.) the program guide running on interactive program guide equipment 17. The ’413 patent, 13:60-14:1.

D. The Accused Products

The products accused and found to violate section 337 in the underlying investigation were X1 set-top boxes “that Comcast supplies to customers to enable their television viewing experience.” Comm’n Op. at 9 (citing ID at 7). “These products are capable of supporting [the] software-based [X1] guide[] supplied by Comcast to its customers.” Comm’n Op. at 9. Specifically, the ITC found that Comcast induced its customers to infringe the claims at suit “though their use of the X1 systems in the United States.” Comm’n Op. at 16–17; ID at 232–38. In addition to documentary and testimonial evidence of inducement, the ITC also quantified direct evidence of direct infringement, noting the number of instances of remote recording requests provided by Comcast. Comm’n Op. at 18–20; ID at 232–38. Additionally, the ALJ found that ARRIS and Technicolor do not infringe because “the asserted claims require a remote access device” and that neither the set-top boxes nor the X1 system contribute to infringement because both have substantial noninfringing uses. ID at 237–39, aff’d Comm’n Op. at 17, 22.

The ID parsed through representative claim 1 of the ’263 patent, while also citing and accepting Rovi’s arguments that each element satisfied the analogous limitation in the other asserted ’263 patent claims. See ID at 213–30. For example, the ID found that the remote program guide access device limitation found in each of the asserted claims was satisfied by “a mobile device such as an iPhone or iPad running a Comcast Xfinity App.” See ID at 217. By further example, the ID found that the claim element of recording a television program corresponding to a selection, also common to the asserted claims, read on the “X1 local guide, running on” a STB, which “receives the record message and records the selected TV program on memory within the set-top box.” See ID at 226–27.

Then, addressing the other asserted ’263 patent claims specifically, the ALJ observed that neither party argued them separately; he then concluded that the accused products infringe “for the same reasons they infringe claim 1.” ID at 228–30. The ID employed the same reasoning for the asserted claims of the ’413 patent. ID at 396–400.

Rovi provided the ITC with screenshots of the X1 system, which the ALJ considered as evidence of infringement. See, e.g., ID at 213–28, 397 (citing CX-1637). Complainant’s exhibit 1637, among those cited for infringement of each of the elements of the asserted claims, is reproduced below:

1. A Comcast mobile app displays an accused “remote guide” with program listings to a Comcast STB subscriber:




2. The user selects a program (here, Sesame Street) by touching its listing, and is presented with the record button:

3. The user is given a choice of recording the individual program or the series:

4. The message identifying Sesame Street for recording is received by Comcast’s servers and acknowledged to the App with a red dot on the program listing:

5. The accused “local” program guide provided on or through the STB is updated to show a red dot denoting that the program is scheduled to be recorded:



E. The Modified X1 System

On November 27, 2017, Comcast effected an updated to its [[ ]] and [[ ]], which handles voice commands. See Ruling Request at 15; Tran Dec. at ¶¶ 19–23, 64. On December 14, Comcast effected a second update. Supp. Tran. Dec. at ¶¶ 5–7. The redesigned “[[ ]] works the same way for both the Xfinity TV Remote App and the Xfinity Stream app” as well as for the Xfinity Stream TV web app. Tran Dec. at ¶¶ 21–22. These changes have been implemented entirely on Comcast’s servers. Tran Dec. at ¶ 5; Tran Dep. (Rovi Exh. A, Comcast Exh. F) at p. 26, ln.25–p. 30, ln. 17, p. 42 ln. 25–p. 43, ln. 6. Comcast alleges that the updates remove all capability for a set-top box subscriber to remotely schedule a recording. See Tran Dec. at ¶ 5 (attesting to the functionality of the redesign).

The redesigned [[ ]] “controls what is displayed” on all Comcast mobile apps as well as the Xfinity Stream TV web app. Tran Dec. at ¶¶ 5, 12, 16, 21–22, 25, 32. Conversely, a “Record Request” made with an app goes through the [[ ]] before reaching Comcast’s downstream servers. Tran Dec. at ¶ 14.

First, Comcast has redesigned the [[ ]] by adding a [[ ]], which determines whether a record button will be displayed in the customer’s app. Tran Dec. at ¶ 25. When Comcast customers first use an Xfinity app, they must provide their account information, “which is sent [[ ]] for each communication session.” Tran Dec. at ¶¶ 30, 33. If the [[ ]] determines that the customer is a set-top-box subscriber, the [[ ]] removes the instructions to display a record button from the [[ ]]. Tran Dec. at ¶ 33; Supp. Tran. Dec. at ¶ 12. Comcast’s Director of Advanced TV Platform Management Al Tran, who managed the redesign, provides this demonstrative of the changes to the [[ ]]:

[[ ]] Supp. Tran Dec. at ¶ 7. See Tran Dep. at p. 7, ln. 24–p. 13, ln. 19. Thus, for example, a set-top box subscriber would see the following change in an application screen:




Tran Dec. ¶ 45. Related virtual buttons such as “Record Series,” “Cancel Recording,” and “Modify Recording” have also been removed across the Xfinity app suite for STB subscribers. Tran Dec. ¶¶ 43–48.

Second, Comcast added a “Fail-Safe” to [[ ]] such that if a recording request were received from a set-top box subscriber’s app, they would instead receive an error message. Tran Dec. at ¶¶ 49–61. Mr. Tran tested the “Fail-Safe”[[

]] Tran Dec. at ¶¶ 60–61. In either case, the apps generated an error message like the one shown:


Tran Dec. at ¶ 58. A minority of Comcast customers with “obsolete apps” unaffected by the[[ ]] have encountered such a message. Comcast Reply at 23 n.8 (citing Tran Supp. Dec. at Exh. 1).

Finally, the [[ ]] voice control software has been changed analogously to the [[ ]]. Tran Dec. at ¶¶ 62–67. After a user records a voice command, the [[ ]] determines the user’s intent before the [[ ]] forwards the request to the downstream servers. Tran Dec. at ¶¶ 63–64. As redesigned, if the [[ ]] receives a recording request from a mobile device (regardless of subscriber type), it will throw an error message instead. Tran Dec. at ¶¶ 64–65, 67. Mr. Tran’s demonstrative outlines the logic of the[[ ]] redesign:

[[ ]] Tran Dec. at ¶ 66.

In support of the efficacy of its redesign, Comcast produced customer complaints from its Internet forums, which Comcast assuaged by publicly explaining that the remote recording functionality had been removed. Supp. Tran Dec. Exh. 1. Thus, based on review of the source code as well as the evidence cited, Comcast’s expert witness Dr. Daniel Wigdor opines that the accused products are no longer capable of infringement. Wigdor Dep. These allegations provide “Rovi with no reason to offer expert testimony regarding these technical issues over which there is general agreement.” Rovi Sur-reply at 3.

II. ISSUE:

Whether X1 set-top boxes, i.e., digital video receivers, imported on behalf of Comcast (“the STBs at issue”) are subject to the 1001 LEO because Comcast’s system has been redesigned (“the modified X1 system”) in a manner that will prevent their customers from using the modified X1 system, of which the STBs at issue are one component, in a manner which directly infringes one or more of claims 1, 2, 14, and 17 of the ’263 patent or claims 1, 3, 5, 9, 10, 14, and 18 of the ’413 patent. See Ruling Request at 1.

III. LAW AND ANALYSIS:

A. Treatment of Confidential Business Information Submitted under 19 C.F.R. pt. 177

As a preliminary matter, Comcast has requested confidential treatment in connection with this ruling request for certain information from its submissions, claiming that the disclosure of such information would likely cause substantial harm to its competitive position and, on this basis, seeks to have the information in question redacted from any ruling that is published in accordance with 19 U.S.C. § 1625(a). Disclosure of information related to administrative rulings under 19 C.F.R. § 177 is governed by 31 C.F.R. § 1, 19 C.F.R. § 103, and 19 C.F.R. § 177.8(a)(3). See 19 C.F.R. § 177.10(a). Moreover, the determination whether to include or redact information within a published ruling is guided by various federal laws—and the relevant standards for their application—that involve confidentiality and disclosure, to include the Freedom of Information Act (“FOIA”) (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C.§ 1905), and the Privacy Act of 1974 (5 U.S.C. § 552a). See CBP HQ Ruling H121519 at 1 (dated February 8, 2011).

Congress enacted FOIA to overhaul the earlier public-disclosure section of the Administrative Procedure Act that gradually became more “a withholding statute than a disclosure statute.” Milner v. Dep't of the Navy, 562 U.S. 562, 565 (quoting EPA v. Mink, 410 U.S. 73, 79 (1973)). Accordingly, there is a strong presumption in favor of disclosure, which is consistent with the purpose as well as the plain language of the Act. United States Dep't of State v. Ray, 502 U.S. 164, 173 (1991). Thus, FOIA mandates that an agency disclose certain information unless it falls within one of nine exemptions. Milner, 562 U.S. at 565. These exemptions are “explicitly made exclusive,” EPA, 410 U.S. at 79, and must be “narrowly construed,” FBI v. Abramson, 456 U.S. 615, 630 (1982).

Exemption 4 of FOIA, which is especially relevant here, provides that FOIA does not apply to matters that are “trade secrets and commercial or financial information obtained from a person and privileged or confidential.” 5 U.S.C. § 552 (b)(4); see Chrysler Corp. v. Brown, 441 U.S. 281, 291 (1979). Furthermore, it is worth noting that, as a general matter, the proscriptions of the Trade Secrets Act are “at least co- extensive with Exemption 4 of FOIA . . . [such that], unless another statute or a regulation authorizes disclosure of the information, the Trade Secrets Act requires each agency to withhold any information it may withhold under Exemption 4 of the FOIA.” Venetian Casino Resort, LLC v. EEOC, 530 F.3d 925, 932 (D.C. Cir. 2008) (quoting Canadian Comm. Corp. v. Air Force, 514 F.3d 37, 39 (D.C. Cir. 2008)) (emphasis added); see also Dow Chem. Co. v. United States, 476 U.S. 227, 234 n.2 (1986) (“Dow's fear that EPA might disclose trade secrets revealed in these photographs appears adequately addressed by federal law prohibiting such disclosure generally under the Trade Secrets Act, 18 U.S.C. § 1905, and the Freedom of Information Act, 5 U.S.C. § 552(b)(4).”).

That said, “Congress did not design the Freedom of Information Act exemptions to be mandatory bars to disclosure.” Chrysler Corp., 441 U.S. at 293, 294 (“We therefore conclude that Congress did not limit an agency's discretion to disclose information when it enacted the FOIA.”); see GTE Sylvania v. Consumers Union of United States, 445 U.S. 375, 378, n. 2 (1980) (“The theory of the so-called ‘reverse Freedom of Information Act’ suit, that the exemptions to the Act were mandatory bars to disclosure and that therefore submitters of information could sue an agency under the Act in order to enjoin release of material, was squarely rejected in Chrysler Corp.”).

The test, for administrative rulings under 19 C.F.R § 177, to determine whether certain information is confidential (and therefore properly redacted from any published ruling) is identical to the federal government-wide standard for disclosure under FOIA Exemption 4 as it relates to the likelihood of substantial harm to the competitive position of the person submitting the information and requesting that it be withheld from publication. As with FOIA, the basic objective of administrative rulings under 19 C.F.R. § 177 favors disclosure to provide notice to interested persons of the reasons for the agency’s position and its decision-making process. See Chrysler Corp., 441 U.S. at 290 n. 10 (“We observed in Department of Air Force v. Rose that ‘disclosure, not secrecy, is the dominant objective of the Act.’ The legislative history is replete with references to Congress' desire to loosen the agency's grip on the data underlying governmental decision making.”) (internal citation omitted). Notably, under 19 C.F.R. § 177.8(a)(3) referenced above, there is a general presumption that “[n]o part of the ruling letter, including names, addresses, or information relating to the business transactions of private parties, shall be deemed to constitute privileged or confidential commercial or financial information or trade secrets exempt from disclosure pursuant to the Freedom of Information Act, as amended (5 U.S.C. 552), unless, as provided in §?177.2(b)(7), the information claimed to be exempt from disclosure is clearly identified and the reasons for the exemption are set forth.”

In turn, 19 C.F.R. § 177.2(b)(7) provides that “[i]nformation which is claimed to constitute trade secrets or privileged or confidential commercial or financial information regarding the business transactions of private parties the disclosure of which would cause substantial harm to the competitive position of the person making the request (or of another interested party), must be identified clearly and the reasons such information should not be disclosed, including, where applicable, the reasons the disclosure of the information would prejudice the competitive position of the person making the request (or of another interested party) must be set forth.”

Significantly, § 177.2(b)(7) was added to this section through rulemaking (T.D. 75-186, 40 Fed. Reg. 31929, July 30, 1975) that promulgated a final rule based on a previous notice of proposed rulemaking (40 Fed. Reg. 2437, January 13, 1975) where the text as proposed did not contain (b)(7) or any other provision addressing the treatment of putative confidential business information. The “substantial harm to a competitive position” standard adopted in § 177.2(b)(7) to handle confidentiality issues is identical to that standard for FOIA Exemption (b)(4) contemporaneously established by the U.S. Court of Appeals for the District of Columbia Circuit (“D.C. Circuit”) in National Parks & Conservation Asso. v. Morton, 498 F.2d 765 (D.C. Cir. 1974). See N.H. Right to Life v. HHS, 136 S. Ct. 383; 193 L. Ed. 2d 412; 2015 U.S. LEXIS 7169 (2015) (Thomas, J., dissenting from denial of the petition for writ of certiorari). In 1974, a year before the promulgation of the Customs final rule, the D.C. Circuit construed the word “confidential” in Exemption 4 and determined that commercial information is “confidential” if disclosure would “cause substantial harm to the competitive position of the person from whom the information was obtained.” National Parks, 498 F.2d at 770; see also N.H. Right to Life, 136 S. Ct. at 384. The D.C. Circuit later elaborated that, when applying this test, there was no need to show actual competitive harm and that actual competition and the likelihood of substantial competitive injury sufficed. See Public Citizen Health Research Group v. FDA, 704 F.2d 1280, 1291 (D.C. Cir. 1983); see also N.H. Right to Life, 136 S. Ct. at 384. Accordingly, to overcome the strong presumption in favor of disclosure, ruling requesters seeking confidential treatment must prove (1) they actually face competition, and that (2) substantial competitive injury would likely result from disclosure. See Gov't Accountability Project v. FDA, 2016 U.S. Dist. LEXIS 114927, at *15 (D.C. Cir. 2016). Conclusory and generalized allegations of substantial competitive harm are unacceptable and will not support a ruling requester’s efforts to withhold certain information from publication. See Public Citizen Health Research Group, 704 F.2d at 1291.

There is no dispute that Comcast faces actual competition and therefore the relevant analysis will focus on the second prong above. See Commission Opinion at 43-44.

As suggested above, the relevant Customs regulations not only mirror the general presumption in favor of disclosure but also place the burden on the person requesting confidentiality to demonstrate that such information qualifies. See generally FCC v. Schreiber, 381 U.S. 279 (1965) (upholding a rule requiring public disclosure except where the proponents of a request for confidential treatment have established their burden to justify that such information should not be disclosed). Moreover, the provisions of the Customs regulations that place the burden on the ruling requester to establish, during the administrative proceeding, that the information at issue constitutes confidential business information is consistent with the burden the government must satisfy in an action brought against it under FOIA challenging the position an agency has taken not to disclose information pursuant to one or more of the exemptions. See 5 U.S.C. § 552(a)(4)(B); see also United States Department of Justice v. Landano, 508 U.S. 165, 171 (1993) (“The Government bears the burden of establishing that the exemption applies.”).

This line of inquiry is further illuminated by the “general right to inspect and copy public records and documents” that courts have historically recognized, including in patent cases involving highly sensitive information. Apple Inc. v. Samsung Elecs. Co., 727 F.3d 1214, 1221 (Fed. Cir. 2013) (quoting Nixon v. Warner Commc’ns, Inc., 435 U.S. 589 (1978)). The nature of this right, rooted in the common law, is not conditioned on a proprietary interest in the information, see Nixon, 435 U.S. at 597, although certainly there are instances where an interest in the information may rise to or approach such a level. Instead, the only interest necessary to compel access to such information is found in the “citizen's desire to keep a watchful eye on the workings of public agencies.” Nixon, 435 U.S. at 597-98. This consideration is particularly warranted in regard to the ex parte administrative rulings under 19 C.F.R. § 177 where a person who believes a ruling is incorrect (legally or factually), may seek to have it modified or revoked under 19 C.F.R. § 177.12.

Therefore, a determination whether to grant a request for confidential treatment must balance the likelihood of substantial harm to a competitive position against the need to provide the greatest amount of transparency possible to the agency’s decision- making process. In light of the above, a request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. § 177 faces a strong presumption in favor of disclosure and the person seeking this treatment must overcome that presumption with a request that is narrowly tailored and supported by evidence establishing a likelihood of substantial harm to a competitive position that outweighs the general history and public policy—embedded in FOIA, the common law, and the relevant Customs regulations—favoring transparency and disclosure. To that end, any request for confidential treatment must provide a particularized showing of the specific harm that will result if certain information is disclosed. Broad, unsubstantiated allegations of harm without specific examples articulating reasons for the harm will not suffice.

Notwithstanding the above, it is well recognized by the Federal Circuit and among various federal district courts that, in civil actions arising under the patent laws “source code requires additional protections to prevent improper disclosure because it is often a company’s most sensitive and most valuable property . . . (noting that source code might represent a company's ‘most sensitive and confidential property’ and that, in ‘U.S. litigation, extreme measures are ordered to protect [its] confidentiality’). As a result, district courts regularly provide for additional restrictions on discovery to account for the unique characteristics of source code.” Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1300 n.13 (Fed. Cir. 2016) (internal citations omitted).

Recognizing the significance of source code that is understood in district court actions and Commission investigations under section 337, any source code that forms a part of the administrative record for an ex parte ruling request under 19 C.F.R. § 177 will not be subject to disclosure without permission of submitter. Nevertheless, as at least one district court has acknowledged, “[s]oftware [patent] cases present unique challenges for the parties and the courts because, prior to discovery, plaintiffs usually only have access to the manifestation of the defendants' allegedly infringing source code and not the code itself. From this manifestation, plaintiffs must somehow divine whether the defendants' code infringes. Although defendants vigorously and rightly guard their source code, until plaintiffs have access to it, plaintiffs are typically unable to give highly specified infringement contentions.” American Video Graphics, L.P. v. Electronic Arts, Inc., 359 F. Supp. 2d 558, 560 (E.D. Tex. 2005). Therefore, as noted above, requests for confidential treatment in the context of section 337 exclusion order- based rulings under 19 C.F.R. § 177, especially those involving software running on a particular device, must be narrowly tailored, fully supported by evidence showing a likelihood of substantial harm to a competitive position, and still permit a description of the device’s operation.

Therefore, as noted above, requests for confidential treatment in the context of section 337 exclusion order-based rulings under 19 C.F.R. § 177 must be narrowly tailored, fully supported by evidence showing a likelihood of substantial harm to a competitive position, and still permit a description of the device’s operation.

Based on the framework above, the information for which Comcast has established a likelihood of substantial harm to its competitive position if disclosed (or consists of information that was redacted from the public version of the agency record at the Commission) has been bracketed in red [[ ]] for redaction from the published ruling but otherwise has been described or identified to the greatest extent allowed throughout this ruling (including, whenever possible, with citations referencing the confidential agency record at the Commission from Inv. No. 337-TA-1001).

B. Law of Patent Infringement

Under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, the Commission has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused articles are found to be infringing. See 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d), (f), (i). 19 U.S.C. § 1337(d), in particular, empowers the Commission to direct the exclusion from entry of articles found to infringe the asserted patents. When the Commission determines there is infringement and thus a violation of section 337, it generally issues one of two types of exclusion orders: (1) a limited exclusion order or (2) a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007).

Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed Cir. 2008). “A limited exclusion order is ‘limited’ in that it only applies to the specific parties before the Commission in the investigation. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission's investigation.” Id. A general exclusion order is appropriate only if two exceptional circumstances apply. See Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO [general exclusion order] by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”).

In addition to the action taken above, the Commission may issue an order under 19 U.S.C. § 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion order if their owner, importer, or consignee previously had articles denied entry on the basis of that exclusion order and received notice that seizure and forfeiture would result from any future attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are operative against articles presented for customs examination or articles conditionally released from customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. §§ 1337(d)(1) (“The Commission shall notify the Secretary of the Treasury of its action under this subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through the proper officers, refuse such entry.”); id. at (i)(3) (“Upon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).”) (emphasis added); see also ClearCorrect Operating, LLC v. U.S. Int’l Trade Comm’n, 810 F.3d 1283, 1295 (Fed. Cir. 2015) (“This section [1337(i)] permits the Commission to exclude ‘articles’ from importation into the United States; however, it is difficult to see how one could physically stop electronic transmissions at the borders under the current statutory scheme…. A construction of the term ‘articles’ that includes electronically transmitted digital data is also not reasonable when applied to Section 337(i)(3). This section reads, ‘[u]pon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).’ Not only can an electronic transmission not be subject to an ‘attempted entry’ through a ‘port of entry,’ it also cannot be intercepted at a ‘port of entry’ as contemplated in the statute.”) (emphasis added), reh’ng en banc denied by Clearcorrect Operating v. U.S. Int’l Trade Comm’n, 819 F.3d 1334 (Fed. Cir. 2016).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that infringe the relevant claims of an asserted patent without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order. See Vastfame Camera, Ltd. v. U.S. Int’l Trade Comm’n, 386 F.3d 1108, 1114 (Fed. Cir. 2004). The Commission also has recognized that even limited exclusion orders have broader applicability beyond just the parties found to infringe during an investigation. See Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Comm’n Op. at 17, n. 6, Doc ID 317981 (Jan. 2009) (“We do not view the Court’s opinion in Kyocera as affecting the issuance of LEOs [limited exclusion orders] that exclude infringing products made by respondents found to be violating Section 337, but imported by another entity. The exclusionary language in this regard that is traditionally included in LEOs is consistent with 19 U.S.C. § 1337(a)(1)(B)–(D) and 19 U.S.C. § 1337(d)(1).”).

However, this is not the only difference between district court injunctions under section 283 of the Patent Act and Commission exclusion orders under section 337 of the Tariff Act. For example, the traditional test for injunctive relief, used by district courts in accordance with the Supreme Court’s eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), opinion “does not apply to Commission remedy determinations under Section 337.” Spansion, Inc. v. U.S. Int’l Trade Comm’n, 629 F.3d 1331, 1359 (Fed. Cir. 2010). This difference between exclusion orders under Section 337 and injunctions under the Patent Act follows “the long-standing principle that importation is treated differently than domestic activity.” Id. at 1360 (citing United States v. 12 200-Ft. Reels of Super 8mm Film, 413 U.S. 123 (1973) (“Import restrictions and searches of persons or packages at the national borders rest on different considerations and different rules of constitutional law from domestic regulations. The Constitution gives Congress broad, comprehensive powers ‘to regulate Commerce with foreign Nations.’ Art. I, § 8, cl. 3.”); see Buttfield v. Stranahan, 192 U.S. 470 (1904) (“As a result of the complete power of Congress over foreign commerce, it necessarily follows that no individual has a vested right to trade with foreign nations, which is so broad in character as to limit and restrict the power of Congress to determine what articles of merchandise may be imported into this country and the terms upon which a right to import may be exercised. This being true, it results that a statute which restrains the introduction of particular goods into the United States from considerations of public policy does not violate the due process clause of the Constitution.”) (emphasis added).

Moreover, in the district courts, the criteria for adjudicating a violation of an injunction against future infringement by a party whose legacy products have already been adjudged to infringe requires application of the colorable differences test. TiVo Inc. v. Echostar Corp., 646 F.3d 869, 876 (Fed. Cir. 2011) (en banc). Under this test, if new or redesigned products are so different from the product previously found to infringe (focusing not on differences randomly chosen between the two but on the specific features of the product found to infringe in the earlier infringement trial), such that they raise a fair ground of doubt as to the wrongfulness of the defendant's conduct, the new or redesigned products are deemed to be more than colorably different from the legacy one adjudged to be infringing and violation of the injunction at this point would not be the appropriate consideration. Instead, a new trial would be required to litigate the infringement question. Id. at 881-83. The initial inquiry under the colorable differences test, therefore, focuses on whether the modification in question is significant. Id.

Exclusion orders, however, apply to any articles—new, modified, or otherwise— that are “covered by” the patent claims included in the exclusion order. See Certain Optical Disk Controller Chips and Chipsets, Inv. No. 337-TA-506, Comm’n Op. at 56-57, USITC Pub. 3935, Doc ID 287263 (July 2007) (“The Commission's long-standing practice is to direct its remedial orders to all products covered by the patent claims as to which a violation has been found, rather than limiting its orders only to those specific models selected for the infringement analysis...[W]hile individual models may be evaluated to determine importation and infringement, the Commission's jurisdiction extends to all models of infringing products that are imported at the time of the Commission's determination and to all such products that will be imported during the life of the remedial orders.”). The Commission has confirmed that this requires CBP to employ the traditional two-step test for patent infringement, and not the colorable differences test from TiVo, when administering a Commission exclusion order under section 337 to determine whether an imported article, or one at issue in a ruling request, is within the scope of that exclusion order. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-879, Advisory Opinion at 10, n. 2, Doc ID 539875 (Aug. 2014); see also Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (“The Commission has always issued its orders in terms of ‘infringing’ products, and has always intended them, as in this case, to prohibit to future importation or sale of products which were not specifically adjudged infringing in the violation proceeding, but do in fact infringe. The Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist. Thus, in cases where the violation found involves infringement of patent claims, the Commission has consistently ordered the exclusion of articles which infringe the relevant patent claims.”) (emphasis added).

Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee,” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843; 187 L. Ed. 2d 703; 2014 U.S. LEXIS 788 (2014), the Commission has held that Medtronic is not controlling precedent and does not overturn its longstanding practice of placing the burden of proof on the party who, in light of the issued exclusion order, is seeking to have an article entered for consumption. See Certain Sleep- Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA- 879, Advisory Opinion at 6-11. In particular, the Commission has noted that “[t]he Federal Circuit has upheld a Commission remedy which effectively shifted the burden of proof on infringement issues to require a company seeking to import goods to prove that its product does not infringe, despite the fact that, in general, the burden of proof is on the patent to prove, by a preponderance of the evidence, that a given article does infringe the patent in question.” Certain Integrated Circuit Telecommunication Chips, Inv. No. 337-TA-337, Comm’n Op. at 21, n.14, USITC Pub. 2670, Doc ID 217024 (Aug. 1993), (emphasis in original) (citing Sealed Air Corp. v. U.S. Int’l Trade Comm’n, 645 F.2d 976, 988–89 (C.C.P.A. 1981)).

This approach is supported by Federal Circuit precedent. See Hyundai Elecs. Indus. Co. v. U.S. Int'l Trade Comm'n, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (“Indeed, we have recognized, and Hyundai does not dispute, that in an appropriate case the Commission can impose a general exclusion order that binds parties and non-parties alike and effectively shifts to would-be importers of potentially infringing articles, as a condition of entry, the burden of establishing noninfringement. The rationale underlying the issuance of general exclusion orders—placing the risk of unfairness associated with a prophylactic order upon potential importers rather than American manufacturers that, vis-a-vis at least some foreign manufacturers and importers, have demonstrated their entitlement to protection from unfair trade practices—applies here [in regard to a limited exclusion order] with increased force.”) (emphasis added) (internal citation omitted).

In the underlying investigation, the Commission determined Comcast’s customers directly infringed the ’263 and ’413 patents through their use of the X1 systems in the United States, and that Comcast induced that infringement. Comm’n Op. at 16. Accordingly, the burden is on Comcast to establish that their proposed modification to the X1 system will prevent their customers from using the modified X1 system, of which the STBs at issue are one component, in a manner which directly infringes one or more of claims 1, 2, 14, and 17 of the ’263 patent or claims 1, 3, 5, 9, 10, 14, and 18 of the ’413 patent under 35 U.S.C. § 271(a).

C. Infringement Analysis The claims at issue are claims 1, 2, 14, and 17 of the ’263 patent and claims 1, 3, 5, 9, 10, 14, and 18 of the ’413 patent. Claims 1, 14, and 17 of the ’263 patent are independent claims. Claim 1 the ’263 patent recites:

1. A system for selecting television programs over a remote access link comprising an Internet communications path for recording, comprising: a local interactive television program guide equipment on which a local interactive television program guide is implemented, wherein the local interactive television program guide equipment includes user television equipment located within a user's home and the local interactive television program guide generates a display of one or more program listings for display on a display device at the user's home; and a remote program guide access device located outside of the user's home on which a remote access interactive television program guide is implemented, wherein the remote program guide access device is a mobile device, and wherein the remote access interactive television program guide: generates a display of a plurality of program listings for display on the remote program guide access device, wherein the display of the plurality of program listings is generated based on a user profile stored at a location remote from the remote program guide access device; receives a selection of a program listing of the plurality of program listings in the display, wherein the selection identifies a television program corresponding to the selected program listing for recording by the local interactive television program guide; and transmits a communication identifying the television program corresponding to the selected program listing from the remote access interactive television program guide to the local interactive television program guide over the Internet communications path; wherein the local interactive television program guide receives the communication and records the television program corresponding to the selected program listing responsive to the communication using the local interactive television program guide equipment.

The ’263 patent, 28:27-63, emphasis and formatting added.

Claim 14 of the ’263 patent recites:

14. A system for selecting television programs over a remote access link comprising an Internet communications path for recording, comprising: a local interactive television program guide implemented on a local interactive television program guide equipment, wherein the local interactive television program guide equipment is located within a user's home, and wherein the local interactive television program guide: generates a display of one or more program listings for display on a display device at the user's home; receives a communication from a remote access interactive television program guide implemented on a remote interactive television program guide access device located outside the user's home to the local guide over the Internet communications path, wherein the communication identifies a television program corresponding to a program listing selected at the remote access interactive television program guide, wherein the remote interactive television program guide access device is a mobile device, wherein the remote interactive television program guide access device generates a display of a plurality of program listings based on a user profile stored at a location remote from the remote interactive television program guide access device, and wherein the selected program listing is selected from the plurality of program listings; and records the television program corresponding to the selected program listing responsive to the communication using the local interactive television program guide equipment.

The ’263 patent, 31:1-31, emphasis and formatting added.

Claim 17 of the ’263 patent recites:

17. A method for selecting television programs over a remote access link comprising an Internet communications path for recording, the method comprising steps of: generating, with a local interactive television program guide, a display of one or more program listings for display on a display device at a user's home; receiving, at the local interactive television program guide, a communication from a remote access interactive television program guide implemented on a remote interactive television program guide access device located outside the user's home, wherein the communication is received over the Internet communications path, and the communication identifies a television program corresponding to a program listing selected at the remote access interactive television program guide, wherein the remote interactive television program guide access device is a mobile device, wherein the remote interactive television program guide access device generates a display of a plurality of program listings based on a user profile stored at a location remote from the remote interactive television program guide access device, and wherein the program listing is selected from the plurality of program listings; and recording the television program corresponding to the selected program listing responsive to the communication using the local interactive television program guide implemented on a local interactive television program guide equipment.

The ’263 patent, 32:1-27, emphasis and formatting added.

Claims 1 and 10 of the ’413 patent are independent claims. Claim 1 recites:

1. A system for selecting a television program over a remote access link comprising an Internet communications path for recording, the system comprising: a local interactive television program guide equipment on which a local interactive television program guide is implemented, wherein the local interactive television program guide generates a display of one or more television program listings for display on a display device at a user's home, wherein the local interactive television program guide equipment is located within the user's home and includes user television equipment, wherein a mobile device communicates with the local interactive television program guide equipment, wherein the mobile device, on which a remote access interactive television program guide is implemented, is located outside of the user's home, and wherein the mobile device: generates a display of the remote access interactive television program guide, the remote access interactive television program guide comprising a plurality of television program listings for display on the mobile device, wherein the display of the remote access interactive television program guide is generated based on a user profile stored at a location remote from the mobile device; receives a user selection of the television program for recording by the local interactive television program guide, wherein the user selects the television program by selecting a television program listing from the plurality of television program listings displayed, by the remote access interactive television program guide, on the mobile device; and transmits, to the local interactive television program guide over the Internet communications path, a communication identifying the television program for recording corresponding to the television program listing selected by the user with the remote access interactive television program guide, wherein the local interactive television program guide receives the communication and, responsive to the communication, records the television program corresponding to the selected television program listing using the local interactive television program guide equipment.

The ’413 patent, 40:6-47, emphasis and formatting added.

Claim 10 of the ’413 patent recites:

10. A method for selecting a television program over a remote access link comprising an Internet communications path for recording, the method comprising: generating, using a local interactive television program guide, a display of one or more television program listings for display on a display device located at a user's home, wherein the local interactive television program guide is implemented on a local interactive television program guide equipment, wherein the local interactive television program guide equipment is located within the user's home and includes user television equipment, wherein a mobile device communicates with the local interactive television program guide equipment, wherein the mobile device, on which a remote access interactive television program guide is implemented, is located outside of the user's home, and wherein the mobile device: generates a display of the remote access interactive television program guide, the remote access interactive television program guide comprising a plurality of television program listings for display on the mobile device, wherein the display of the remote access interactive television program guide is generated based on a user profile stored at a location remote from the mobile device; receives a user selection of the television program for recording by the local interactive television program guide, wherein the user selects the television program by selecting a television program listing from the plurality of television program listings displayed, by the remote access interactive television program guide, on the mobile device; and transmits a communication, identifying the television program for recording corresponding to the television program listing selected by the user with the remote access interactive television program guide, to the local interactive television program guide over the Internet communications path, wherein the local interactive television program guide receives the communication and, responsive to the communication, records the television program corresponding to the selected television program listing using the local interactive television program guide equipment.

The ’413 patent, 41:4-42:11, emphasis and formatting added.

In the underlying investigation, the ITC construed the claims of the ’263 and ’413 patents as follows:

’263 Patent  Term / Phrase ITC Construction  Local Guide local interactive television program guide  Preamble (system for selecting television programs over a remote access link comprising an Internet communications path for recording) The preamble is limiting.  Receiving, with the remote access interactive television program guide, a selection of a program listing the plurality of program listings in the display receiving, with the remote access interactive television program guide, a selection of a program listing of the plurality of program listings in the display  Interactive television program guide equipment equipment on which an interactive television program guide is implemented  Local interactive television program guide equipment equipment on which a local interactive television program guide is implemented  Location remote from the mobile device/remote program guide access device location other than on the mobile device/remote program guide access device  Program listing information sufficient to identify a television program for recording  Remote access link comprising an Internet communications path a communications path including at least the Internet  User profile user specific data at least defining preferences  Remote device remote interactive television program guide access device  Remote guide remote access interactive television program guide  Remote to the remote device not on the remote device  Television equipment user television equipment  User equipment user television equipment  User site location of the user equipment  Local interactive television program guide guide that allows navigation through television program listings and causes display of program information on user television equipment  Remote access interactive television program guide guide allowing navigation through television program listings using a remote access link  Remote program guide access device / remote interactive television program guide access device equipment for accessing a remote interactive television program guide over a remote access link  Remote interactive television program guide access device equipment for accessing a remote interactive television program guide over a bidirectional remote access link  User television equipment equipment for displaying television program listings information and other program guide data using a local interactive television program guide  Generates[/ing] . . . a display creates a display  records the television program corresponding to the selected program listing responsive to the communication using the local interactive television program guide equipment records the television program corresponding to the selected program listing identified in the communication using the local interactive television program guide equipment  communication message   ’413 Patent  Term / Phrase ITC Construction  records the television program corresponding to the selected television program listing using the local interactive television program guide equipment records using the local interactive television program guide equipment the television program corresponding to the selected television program listing   See ID at 178-209 and 394-396.

Claims 1, 14, and 17 of the ’263 patent and claims 1 and 10 of the ’413 patent (collectively, “the independent claims at issue”) each recite the limitation that a “local interactive television program guide equipment” (an STB) “records [recording] the television program corresponding to the selected television program.” Each of the independent claims at issue further requires that “the selected television program” be selected for recording on a guide located on a mobile device.

Consistent with the construction of the claims in the underlying investigation, in order to directly infringe any of the independent claims at issue, Comcast’s customers must be able to, through their use of the modified X1 system, record, on an STB, a television program that was selected for recording on a guide located on a mobile device.

The modified X1 system prevents customers from recording television programs on STBs in which the television programs were selected for recording on a guide located on a mobile device. Comcast has redesigned the [[ ]] by adding a [[ ]], which determines whether a record button will be displayed in the customer’s app. Tran Dec. at ¶ 25. When Comcast customers first use an Xfinity app, they must provide their account information, “which is sent [[ ]] for each communication session.” Tran Dec. at ¶¶ 30, 33. If the [[ ]] determines that the customer is a set-top-box subscriber, the [[ ]] removes the instructions to display a record button from the [[ ]]. Tran Dec. at ¶ 33; Supp. Tran. Dec. at ¶ 12. Comcast also added a “Fail-Safe” to [[ ]] such that if a recording request were received from a set-top box subscriber’s app, they would instead receive an error message. Tran Dec. at ¶¶ 49–61. Accordingly, the modified X1 system prevents customers from practicing all of the limitations of the independent claims at issue. As such, Comcast’s customers’ use of the modified X1 system, of which the STBs in question are a component, can not infringe any of the independent claims at issue, or any claim that depends therefrom.

Rovi argues that Comcast has failed to meet its burden and its request should be denied for three reasons (See Rovi’s Response to Comcast’s 177 Request with Exhibits A-E at 3 (December 28, 2017):

First, Rovi argues that Comcast has not removed any underlying functionality in the software or hardware of the infringing system. See Rovi’s Response to Comcast’s 177 Request at 3 (December 28, 2017). [[

]] as confirmed by the undisputed fact that many of Comcast’s customers (those who access Comcast programming without an STB) continue to make full use of remote recording functionality. Id. Rovi alleges that rather than undertake to “redesign” its system to “remove’ the infringing functionality, [[

]] Id. Rovi then cites the Federal Circuit’s decision in Finjan, Inc. v. Secure Computing Corp, 626, F.3d 1197 (Fed. Cir. 2010) for the proposition that “software for performing the claimed functions exist[s] in the products,”[[ ]], “in the same way that an automobile engine for propulsion exists in a car even when the car is turned off.” Id.. Accordingly, Rovi argues, the remote recording software continues to exist in unmodified form on all users’ STBs and mobile applications where the temporary locks on the server prevent some, but not all users, from making use of the still available remote recording functionality. Id.

The IPR Branch has considered this argument and disagrees with Rovi’s legal analysis. In Finjan, the Federal Circuit stated that it had addressed a similar issue in Fantasy Sports Props. v. Sportsline.com, Inc. 287 F.3d 1108, 1118 (Fed. Cir. 2002), where it held that software for playing fantasy football could infringe a claim to a computer “for playing” football. Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1205 (Fed. Cir. 2010). As Rovi has pointed out, the Federal Circuit noted that the defendants who sold the software in Fantasy Sports argued that infringement occurred only when users configured it to play games and that the Federal Circuit had rejected this argument in the past because, although a user must activate the functions programmed into a piece of software by selecting those options, the user is only activating means that were already present in the underlying software. Id. However, what Rovi omits from its analysis of Finjan is that the Federal Circuit then clarified that “infringement occurred because the code was written in such a way as to enable a user of that software to utilize the function without having to modify that code.” Id. The Federal Circuit then applied this rationale to the facts in Finjan. Id. (“Infringement occurred because the code “was written in such a way as to enable a user of that software to utilize the function … without having to modify that code.” That analysis applies here.”). Because the code for proactive scanning that was at issue in Finjan was already present in Defendants’ accused product when sold and there was no evidence that customers needed to modify the underlying code to unlock any software modules, the Federal Circuit found Defendants in Finjan to infringe. Id.

The facts before CBP in this Ruling Request are quite different from Finjan in several ways. First, unlike in Finjan, Rovi has presented no evidence that the end users of the X1 STBs can use the recording functionality without modifying the code simply by purchasing an upgrade as end users in Finjan did. See Finjan, 626 F.3d at 1202 (“Therefore, a customer who purchases an accused product can activate all, some or none of the eight modules at different cost.”). Second, unlike in Finjan, Rovi has not argued that the non-X1 STB subscribers who can use the recording functionality without modifying the code are engaging in an infringing use. By contrast, counsel for Comcast have cited a case more on point, Telemac Cellular Corp. v. Topp Telecom, Inc. 247 F.3d 1316 (Fed. Cir. 2001). See Comcast Post Hearing CBP Brief with Exhibits M-S (February 9, 2018) at 26. In Telemac, the Federal Circuit repeated a well established rule that “Under the precedent of this circuit, however, that a device is capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement.” Telemac, 247 F.3d at 1330. Unlike in Finjan, where the end user could activate the functionality without modifying the code, Comcast’s redesign is more like Telemac in which the code in the X1 system would need to be modified by Comcast rather than the end users to activate the functionality. See Telemac, 247 F.3d at 1330 (“In this case, due to a restriction built into the software program stored in the telephone’s memory, a user of Topp’s system is prevented from directly placing international calls. Therefore, international rates, and the calculation of charges for such calls, are not included in the billing algorithm of the accused device. The district court correctly concluded that Telemac’s allegations of literal infringement must fail.”) Rovi has not shown additional factors that would make such modification more like Finjan than Telemac. The weight of the evidence shows that end users of the X1 STBs cannot record at all and there is no option to purchase an upgrade that allows recording in a way analogous to Finjan. See also Mikkelsen Graphic Eng'g Inc. v. Zund Am., Inc., 2011 U.S. Dist. LEXIS 141548, *14–15, 2011 WL 6122377 (E.D. Wis. Dec. 8, 2011) (“Although the combination of source code containing instructions . . . and configuration files written to allow that source code to cause a computer to execute a . . . function is structure capable of performing that function, the combination of source code containing instructions . . . and configuration files written to prevent the computer from executing a . . . function is not.”).

Rovi’s second argument is that even if Comcast’s [[ ]] on the still-present remote recording functionality could be considered to have some impact on the capability of the overarching system as a whole, they plainly have no impact on the capability of the imported X1 STBs that have been excluded from entry by the Commission because[[ ]]. Rovi’s Response to Comcast’s 177 Request with Exhibits A-E (December 28, 2017) at 3. It is thus Rovi’s position that the X1 STBs as imported—having undergone no changes whatsoever—are just as capable of infringement today as they were on the day that the Commission issued its LEO. Id. at 4. Rovi argues that this is particularly significant with respect to exemplary claim 14 of the ’263 patent because while many of the claims at issue may read on the overarching system, exemplary claim 14 of the ’263 patent reads on the local IPG portion of the system: here user functionality accessed from the X1 STBs. Id.

Rovi arguments amount to an allegation that the STBs at issue directly infringe claim 14. This allegation is in direct contradiction to the findings of the underlying ITC investigation, in which the Commission found “no section 337 violation by ARRIS or Technicolor because Rovi failed to demonstrate direct or indirect infringement by ARRIS and Technicolor.” Comm’n. Op. at 17. Specifically, in the underlying investigation, the ALJ found that:

The asserted claims require a remote access device, which ARRIS and Technicolor do not provide. Thus, ARRIS and Technicolor do not directly infringe the ’263 Patent.

See ID at 237 (emphasis added).

Thus, were CBP to adopt Rovi’s arguments that claim 14 is purely an STB claim, which does not require a mobile device or any of the surrounding aspects of the X1 system, such a finding would be in direct contradiction to the findings of the ITC.

Rovi’s third argument is that aside from these specific deficiencies, Comcast has generally failed to meet its burden to prove that the overarching system is no longer capable of infringement. See Rovi’s Response to Comcast’s 177 Request with Exhibits A-K (December 28, 2017) at 4. In support of this, Rovi argues that in deposition Comcast’s representatives admitted that [[

]] Id. Rovi also claims in subsequent correspondence Comcast flatly refused to produce any information as to the number of remote recording requests performed by its users in the period after it is alleged to have “locked” its users from accessing remote recording functionality. Id. Rovi argues that as an adjudicated infringer, proving noninfringement is Comcast’s burden and that Comcast cannot meet that burden without highly relevant evidence that it now claims is too “burdensome” to produce – despite producing similar evidence in the underlying ITC Action. Id.

CBP agrees with Rovi that the burden is on Comast to show that the redesigned products are not subject to the exclusion order, but CBP disagrees with Rovi that Comcast’s failure to provide these recording logs means that Comcast has failed to meet its burden. Comcast has produced, as part of its Ruling Request, numerous customer complaints indicating the X1 STB subscribers’ inability to use the remote recording functionality of the X1 system using the X1 STBs. See Comcast Inter Partes Responsive Letter (January 4, 2018) at Exhibit 1. In addition Comcast has also provided, for example, a physical sample of the redesign at issue, which included access to the source code. While Rovi points to the absence of recording request logs, Rovi’s counsel admitted during oral argument that even if such recording request logs were provided it would be not dispositive as to noninfringement:

MR. BUDWIN: If they provided the data commensurate to what they provided to the ITC about the number of remote recording requests made on or after the implementation of the redesign in November 2017, it would be evidence of noninfringement of the method claims. It would have no bearing on the capability of the apparatus for an apparatus claim like claim 14 of the `263 patent that reads on the local portion of the IPG.

See Comcast Post-Hearing CBP Brief with Exhibits, Exhibit O (Hrg. Tr.) at 155.2-10 (emphasis added).

Comcast bears the burden to establish that their proposed modification to the X1 system will prevent their customers from using the modified X1 system, of which the STBs at issue are one component, in a manner which directly infringes one or more of claims 1, 2, 14, and 17 of the ’263 patent or claims 1, 3, 5, 9, 10, 14, and 18 of the ’413 patent. After weighing the evidence in the record, we determine that Comcast has met that burden.

IV. HOLDING:

The STBs at issue are not subject to the 1001 LEO in view of the changes Comcast has made to the X1 system. Comcast has carried its burden of demonstrating that the changes made to the X1 system will prevent Comcast’s customers from using the modified X1 system, of which the STBs at issue are a component, in a manner which directly infringes one or more of claims 1, 2, 14, and 17 of the ’263 patent or claims 1, 3, 5, 9, 10, 14, and 18 of the ’413 patent.

Claims 1, 14, and 17 of the ’263 patent are independent claims, and claims 1 and 10 of the ’413 patent are independent claims (collectively, “the independent claims at issue”). Each of the independent claims at issue recites the limitation that a “local interactive television program guide equipment” (an STB) “records [recording] the television program corresponding to the selected television program.” Each of the independent claims at issue further requires that “the selected television program” be selected for recording on a guide located on a mobile device.

Thus, in order to directly infringe any of the independent claims at issue, Comcast’s customers must be able to, through their use of the modified X1 system, record, on an STB, a television program that was selected for recording on a guide located on a mobile device. However, the modified X1 system prevents customers from recording television programs on STBs in which the television programs were selected for recording on a guide located on a mobile device. Accordingly, the modified X1 system prevents customers from practicing all of the limitations of the independent claims at issue. As such, Comcast’s customers’ use of the modified X1 system, of which the STBs in question are a component, can not infringe any of the independent claims at issue, or any claim that depends therefrom.

Accordingly, the STBs at issue are not subject to the 1001 LEO.

The decision is limited to the specific facts set forth herein. If the X1 system in which the set top boxes at issue are employed differs from the modified X1 system described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. Part 177.2(b)(1), (2), and (4), Part 177.9(b)(1) and (2).


Sincerely,

/s/ Charles R. Steuart
Charles R. Steuart
Chief, Intellectual Property Rights Branch