In-House Counsel Request Careful Consideration From ITC in TiVo's Case Against Comcast

In a case making its way through the U.S. International Trade Commission, TiVo Corp. subsidiary Rovi Corp. claimed that Comcast Corp. and others infringed patents related to set-top boxes.

With the investigation slated to conclude in late September, a handful of in-house counsel have weighed in, requesting that the ITC carefully consider the potential impact of its decision.

In April 2016, Rovi, which did not immediately respond to a request for comment, filed an ITC complaint alleging that Comcast and equipment manufacturers such as Arris International and Technicolor infringed six patents associated with set-top boxes and interactive program guides. "For over a decade Comcast has built its interactive cable business on the back of Rovi's technology that Comcast had licensed for a fixed term," Rovi said in the complaint, adding that Comcast refuses to renew its license on acceptable terms and continues to make, use and sell products that not only compete with Rovi products but also infringe on its patents.

Comcast, which did not reply to a request for comment, asked the commission in an April 20, 2016, response, to consider public interest issues, noting that with over 22 million Comcast subscribers in the U.S., "there likely would be a significant impact on these consumers, as well as other potential subscribers, if the Commission were to issue the remedial orders requested by Rovi."

 

 

This May 26, an administrative law judge issued a final initial determination, finding Section 337patent infringement violations committed by a number of entities, including Comcast, with respect to two of the asserted patents. For the other four asserted patents, it was determined that a violation had not occurred. The ALJ went on to recommend that, subject to the public interest determinations of the ITC, the commission should issue a limited exclusion order and cease and desist orders against Comcast and other named companies.

In a notice published Aug. 16, the ITC announced that it would review the May decision, specifically looking at whether one of the patents is invalid and if Comcast is, in fact, an importer of the accused products.

Richard Vilsoet, vice president and general counsel of Dycom Industries Inc., noted in a July 11 comment, that, as Comcast is one of the construction engineering company's largest customers, a disruption of Comcast's cable TV operations would mean Dycom's "operations would be unnecessarily disrupted."

With any orders, Vilsoet requested that the ITC "provide mechanisms and time for orderly conversion to other equipment and thereby avoid unnecessarily disrupting Comcast's and Dycom's operations and the livelihood of our employees."

Remote control manufacturer Universal Electronics Inc., which also counts Comcast as a large customer, similarly requested in a July 10 comment signed by company senior vice president and general counsel Richard Firehammer Jr. that the ITC consider the potential impact of any orders.

"The remote controls that we supply to Comcast are specific to the set-top boxes and network resources used by Comcast," Firehammer noted. And while it's not yet clear which set-top boxes might be impacted, Firehammer asked "that any remedial orders include a period for Comcast and its suppliers to transition to alternative equipment and/or software."

And in a July 11 comment from computer data storage company Western Digital Corp., Bernard Shek, the company's vice president of litigation, urged the commission to carefully examine the significance the decision may have on suppliers such as Western Digital. "If the Commission decides to issue a remedial order, we respectfully request any such order be sufficiently tailored to limit the disruption it may have on our business and the businesses of other non-party suppliers," Shek said. He added that one way to do this would be to provide "a grace period for the affected respondents in the investigation to take actions to revise their operations as needed."

Contact Jennifer Williams-Alvarez at jwilliams@alm.com.

Contributing Author

Jennifer Williams-Alvarez

Jennifer Williams-Alvarez is a staff reporter for ALM Media and Inside Counsel. She can be contacted at jwilliams@alm.com.

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