Certain Digital Video Receivers and Related Hardware and Software Components, Inv. 337-TA-1103

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In the Matter of

CERTAIN DIGITAL VIDEO RECEIVERS AND
RELATED HARDWARE AND SOFTWARE
COMPONENTS

Investigation No. 337-TA-1103

Publication 5251 February 2022

U.S. International Trade Commission

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7 CTT

Washington, DC 20436

U.S. International Trade Commission
COMMISSIONERS
David S. Johanson, Chairman
Rhonda K. Schmidtlein, Commissioner
Jason E. Kearns, Commissioner
Randolph J. Stayin, Commissioner
Amy A. Karpel, Commissioner
Address all communications to
Secretary to the Commission
United States International Trade Commission
Washington, DC 20436

U.S. International Trade Commission
Washington, DC 20436
www.usitc.gov
In the Matter of
CERTAIN DIGITAL VIDEO RECEIVERS AND
RELATED HARDWARE AND SOFTWARE
COMPONENTS
Investigation No. 337-TA-1103
Publication 5251 February 2022

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN DIGITAL VIDEO
RECEIVERS AND RELATED
HARDWARE AND SOFTWARE
COMPONENTS
Investigation No. 337-TA-1103
(Rescission)
NOTICE OF COMMISSION DECISION TO INSTITUTE A RESCISSION
PROCEEDING; RESCISSION OF A LIMITED EXCLUSION ORDER AND CEASE
AND DESIST ORDERS; TERMINATION OF RESCISSION PROCEEDING
AGENCY: 	U.S. International Trade Commission.
ACTION: 	Notice.
SUMMARY: Notice is hereby given that the U.S. International Trade Commission
(“Commission”) has determined to institute a rescission proceeding in the above-captioned
investigation and to grant a joint motion for rescission of a limited exclusion order (“LEO”) and
cease and desist orders (“CDOs”) previously issued in the investigation. The LEO and CDOs are
rescinded, and the rescission proceeding is terminated.
FOR FURTHER INFORMATION CONTACT: Sidney A. Rosenzweig, Esq., Office of the
General Counsel, U.S. International Trade Commission, 500 E Street S.W., Washington, D.C.
20436, telephone (202) 708-2532. Copies of non-confidential documents filed in connection
with this investigation may be viewed on the Commission’s electronic docket (EDIS) at
https://edis.usitc.gov. For help accessing EDIS, please email EDIS3Help@usitc.gov. General
information concerning the Commission may also be obtained by accessing its Internet server at
https://www.usitc.gov. Hearing-impaired persons are advised that information on this matter can
be obtained by contacting the Commission’s TDD terminal on (202) 205-1810.
SUPPLEMENTARY INFORMATION: On March 16, 2018, the Commission instituted this
investigation based on a supplemented complaint filed on behalf of, inter alia, Rovi Corporation
of San Jose, California; Rovi Guides, Inc. of San Jose, California; and Veveo, Inc. of Andover,
Massachusetts (collectively, “Rovi”). The supplemented complaint alleged violations of section
337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337 (“section 337”), based upon 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 related hardware and software
components by reason of infringement of certain claims of, inter alia, U.S. Patent No. 7,779,011

2
(“the ’011 patent”). 83 FR 11792 (Mar. 16, 2018). The Commission’s notice of investigation
named as respondents Comcast Corporation of Philadelphia, Pennsylvania; Comcast Cable
Communications, LLC of Philadelphia, Pennsylvania; Comcast Cable Communications
Management, LLC of Philadelphia, Pennsylvania; Comcast Business Communications, LLC of
Philadelphia, Pennsylvania; Comcast Holdings Corporation of Philadelphia, Pennsylvania; and
Comcast Shared Services, LLC of Chicago, Illinois (collectively, “Comcast”). Id. The Office of
Unfair Import Investigations was also named as a party in this investigation. Id.
On April 23, 2020, the Commission terminated the investigation with a finding of
violation of section 337 based on the infringement of claim 9 of the ’011 patent. The
Commission issued an LEO and six CDOs (one for each respondent).
On November 13, 2020, Rovi and Comcast jointly filed confidential and public versions
of a petition to rescind the remedial orders based on a settlement agreement.
Having reviewed the petition and determined that it complies with Commission rules, see
19 CFR 210.76(a)(3), the Commission has determined to institute a rescission proceeding and to
grant the petition. The LEO and the CDOs are hereby rescinded.
The rescission proceeding is terminated.
The Commission vote for this determination took place on November 19, 2020.
The authority for the Commission’s determination is contained in section 337 of the
Tariff Act of 1930, as amended (19 U.S.C. 1337), and in Part 210 of the Commission’s Rules of
Practice and Procedure (19 CFR Part 210).
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: 	November 19, 2020

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED
HARDWARE AND SOFTWARE COMPONENTS
Inv. No. 337-TA-1103
(Recission)
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served by hand
upon the Commission Investigative Attorney, John Shin, Esq. and the following parties as
indicated, on November 19, 2020.
___________________________________
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Requesters Rovi Corporation, Rovi Guides, Inc.,
and Veveo, Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Email: dcawley@mckoolsmith.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Requesters Comcast Corporation, Comcast
Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business
Communications, LLC, Comcast Holdings Corporation, and
Comcast Shared Services, LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS, LLP
555 Eleventh Street, NW, Suite 100
Washington, DC 20004
Email: bert.reiser@lw.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download

1
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN DIGITAL VIDEO
RECEIVERS AND RELATED
HARDWARE AND SOFTWARE
COMPONENTS
Investigation No. 337-TA-1103
(Rescission)
RESCISSION OF REMEDIAL ORDERS
On March 16, 2018, the Commission instituted this investigation based on a
supplemented complaint filed on behalf of, inter alia, Rovi Corporation of San Jose, California;
Rovi Guides, Inc. of San Jose, California; and Veveo, Inc. of Andover, Massachusetts
(collectively, “Rovi”). The supplemented complaint alleged violations of section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. 1337 (“section 337”), based upon 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 related hardware and software components by reason of
infringement of certain claims of, inter alia, U.S. Patent No. 7,779,011 (“the ’011 patent”). 83
FR 11792 (Mar. 16, 2018). The Commission’s notice of investigation named as respondents
Comcast Corporation of Philadelphia, Pennsylvania; Comcast Cable Communications, LLC of
Philadelphia, Pennsylvania; Comcast Cable Communications Management, LLC of Philadelphia,
Pennsylvania; Comcast Business Communications, LLC of Philadelphia, Pennsylvania; Comcast
Holdings Corporation of Philadelphia, Pennsylvania; and Comcast Shared Services, LLC of

2
Chicago, Illinois (collectively, “Comcast”). Id. The Office of Unfair Import Investigations was
also named as a party in this investigation. Id.
On April 23, 2020, the Commission terminated the investigation with a finding of
violation of section 337 based on the infringement of claim 9 of the ’011 patent. The
Commission issued a limited exclusion order (“LEO”) and six cease and desist orders (“CDOs”)
(one for each respondent).
On November 13, 2020, Rovi and Comcast jointly filed confidential and public versions
of a petition to rescind the remedial orders based on a settlement agreement.
Having reviewed the petition and determined that it complies with Commission rules (see
19 C.F.R. § 210.76(a)(3)), the Commission has determined to institute a rescission proceeding
and to grant the petition.
Accordingly, it is hereby ORDERED that:
1. 	The LEO and CDOs issued in the above-captioned investigation are hereby rescinded.
2. 	The Secretary shall serve a copy of this order on the Secretary of the Treasury and all
parties of record and publish notice thereof in the Federal Register.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: November 19, 2020

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED
HARDWARE AND SOFTWARE COMPONENTS
Inv. No. 337-TA-1103
(Recission)
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has
been served by hand upon the Commission Investigative Attorney, John Shin, Esq. and
the following parties as indicated, on November 19, 2020.
___________________________________
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Requesters Rovi Corporation, Rovi Guides, Inc.,
and Veveo, Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Email: dcawley@mckoolsmith.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Requesters Comcast Corporation, Comcast
Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business
Communications, LLC, Comcast Holdings Corporation, and
Comcast Shared Services, LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS, LLP
555 Eleventh Street, NW, Suite 100
Washington, DC 20004
Email: bert.reiser@lw.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN DIGITAL VIDEO
RECEIVERS AND RELATED
HARDWARE AND SOFTWARE
COMPONENTS
Investigation No. 337-TA-1103
NOTICE OF THE COMMISSION’S FINAL DETERMINATION FINDING A
VIOLATION OF SECTION 337; ISSUANCE OF A LIMITED
EXCLUSION ORDER AND CEASE AND DESIST ORDERS;
TERMINATION OF THE INVESTIGATION
AGENCY: 	U.S. International Trade Commission.
ACTION: 	Notice.
SUMMARY: Notice is hereby given that the U.S. International Trade Commission has found a
violation of section 337 of the Tariff Act of 1930, as amended, in this investigation and has
issued a limited exclusion order and cease and desist orders prohibiting importation of infringing
digital video receivers and related hardware and software components.
FOR FURTHER INFORMATION CONTACT: Sidney A. Rosenzweig, Esq., Office of the
General Counsel, U.S. International Trade Commission, 500 E Street, SW, Washington, D.C.
20436, telephone (202) 708-2532. Copies of non-confidential documents filed in connection
with this investigation may be viewed on the Commission’s electronic docket (EDIS) at
https://edis.usitc.gov. For help accessing EDIS, please email EDIS3Help@usitc.gov. General
information concerning the Commission may also be obtained by accessing its Internet server at
http://www.usitc.gov. Hearing-impaired persons are advised that information on this matter can
be obtained by contacting the Commission’s TDD terminal, telephone (202) 205-1810.
SUPPLEMENTARY INFORMATION: On March 16, 2018, the Commission instituted this
investigation based on a supplemented complaint filed on behalf of Rovi Corporation of San
Jose, California; Rovi Guides, Inc. of San Jose, California; and Veveo, Inc. of Andover,
Massachusetts (collectively, “Rovi”); as well as Rovi Technologies Corporation of San Jose, CA.
The supplemented complaint alleges violations of section 337 of the Tariff Act of 1930, as
amended, 19 U.S.C. 1337 (“section 337”), based upon 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 related hardware and software components by reason of infringement of one
or more claims of U.S. Patent Nos. U.S. Patent No. 7,779,011 (“the ’011 patent”); 7,937,394
(“the ’394 patent”); 7,827,585 (“the ’585 patent”); 9,294,799 (“the ’799 patent”); 9,396,741 (“the

2
’741 patent”); 9,578,363 (“the ’363 patent”); 9,621,956 (“the ’956 patent”); and 9,668,014 (“the
’014 patent”). 83 FR 11792 (Mar. 16, 2018). The Commission’s notice of investigation named
as respondents Comcast Corporation of Philadelphia, Pennsylvania; Comcast Cable
Communications, LLC of Philadelphia, Pennsylvania; Comcast Cable Communications
Management, LLC of Philadelphia, Pennsylvania; Comcast Business Communications, LLC of
Philadelphia, Pennsylvania; Comcast Holdings Corporation of Philadelphia, Pennsylvania; and
Comcast Shared Services, LLC of Chicago, Illinois (collectively, “Comcast”). Id. The Office of
Unfair Import Investigations was also named as a party in this investigation. Id.
The Commission previously terminated the investigation as to complainant Rovi
Technologies Corporation; as to the ’956, ’394, ’014, ’799, and ’363 patents in their entirety; and
as to certain claims of the ’011, ’585, and ’741 patents. Order No. 12, unreviewed, Notice (July
24, 2018); Order No. 33, unreviewed, Notice (Sept. 19, 2018); Order 39, unreviewed, Notice
(Oct. 25, 2018).
On June 3, 2019, the presiding ALJ issued Order No. 47, a summary determination
(“SD”), which, inter alia, granted Rovi’s motions for summary determination as to importation
and sale after importation. On June 11, 2019, Comcast filed a petition for review of the SD. On
June 18, 2019, Rovi responded to Comcast’s petition. On June 25, 2019, the Commission
investigative attorney (“IA”) responded to Comcast’s petition.
On June 4, 2019, the ALJ issued the final initial determination (“final ID”). On June 17,
2019, Comcast and Rovi each filed a petition for review of the final ID. On June 25, 2019,
Comcast and Rovi responded to each other’s petition, and the IA responded to both.
In addition, the Commission received comments from Rovi on the public interest
pursuant to Commission Rule 210.50(a)(4). The Commission also received comments from the
following organizations in response to the Commission’s notice soliciting public interest
comments, 84 FR 27804 (June 14, 2019): Tea Party Patriots Action; Americans for Limited
Government; Frontiers of Freedom Institute; Market Institute; and Conservatives for Property
Rights (joined by 60 Plus Association, and Americans for Limited Government). The
Commission also received correspondence from Rep. Peter King (R-N.Y.) (Sept. 19, 2019), Rep.
Jackie Speier (D-Cal.) (Sept. 6, 2019), and Rep. Steve Stivers (R-Ohio) (Aug. 27, 2019).
On August 15, 2019, the Commission determined to review in part the SD as to
reimportation, and not to review the remainder of the SD. Notice at 3 (Aug. 15, 2019) (“Notice
of Review”). As to the final ID, in relevant part the Commission terminated the investigation
with a finding of no violation as to the ’585 and ’741 patents, but determined to review
infringement of the ’011 patent. Id. The Commission solicited briefing on certain questions
pertaining to infringement of the ’011 patent. Id. at 4.
On August 29, 2019, the parties filed responses to the Commission notice, and on
September 10, 2019, Comcast and Rovi filed replies.
Having examined the record of this investigation, including the final ID and the parties’
submissions, the Commission has determined that Comcast’s X1 set-top boxes are used by
Comcast’s users to directly infringe claim 9 of the ’011 patent at Comcast’s inducement. Thus,

3
Comcast violated section 337 with regard to claim 9 of the ’011 patent. The Commission
declines to reach the issue of whether there has been a section 337 violation as to claim 1 of the
’011 patent because of the delay and burden associated with deciding the issue and because such
a finding would not afford any additional relief to Rovi. Thus, the Commission need not decide
the issue. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. Int’l Trade Comm’n, 535 F.3d
1322, 1331-32 (Fed. Cir. 2008).
The Commission has further determined that the appropriate remedy is: (1) a limited
exclusion order prohibiting the entry of infringing digital video receivers and related hardware
and software components; and (2) cease and desist orders directed to respondents. The
Commission has determined that the public interest factors enumerated in section 337(d) and (f),
19 U.S.C. 1337(d), (f), do not preclude the issuance of the limited exclusion order or the cease
and desist orders. The Commission has determined that a bond in the amount of zero percent of
entered value is required during the period of Presidential review. 19 U.S.C. 1337(j)(3).
The investigation is terminated. The Commission’s reasoning in support of its
determinations is set forth more fully in its opinion. The Commission’s orders and opinion were
delivered to the President and the United States Trade Representative on the day of their
issuance.
The authority for the Commission’s determination is contained in section 337 of the
Tariff Act of 1930, as amended (19 U.S.C. 1337), and in Part 210 of the Commission’s Rules of
Practice and Procedure (19 CFR part 210).
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: 	April 23, 2020

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED
HARDWARE AND SOFTWARE COMPONENTS
Inv. No. 337-TA-1103
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served via EDIS
upon the Commission Investigative Attorney, John Shin, Esq. and the following parties as
indicated, on April 23, 2020.
___________________________________
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Rovi Corporation, Rovi Guides,
Inc., and Veveo, Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Email: dcawley@mckoolsmith.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Comcast Corporation, Comcast
Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business
Communications, LLC, Comcast Holdings Corporation, and
Comcast Shared Services, LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS, LLP
555 Eleventh Street, NW, Suite 100
Washington, DC 20004
Email: bert.reiser@lw.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
Investigation No. 337-TA-1103
LIMITED EXCLUSION ORDER
The Commission has determined that there is a violation of section 337 of the Tariff Act
of 1930, as amended (19 U.S.C. § 1337), in the unlawful importation, sale for importation,
and/or sale after importation by respondents Comcast Corporation; Comcast Cable
Communications, LLC; Comcast Cable Communications Management, LLC; Comcast Business
Communications, LLC; Comcast Holdings Corporation; and Comcast Shared Services, LLC
(collectively "Respondents") of certain digital video receivers and related hardware and software
components that infringe claim 9 of U.S. Patent No. 7,779,011.
Having reviewed the record of this investigation, including the written submissions of the
parties, the Commission has made its determination on the issues of remedy, the public interest,
and bonding. The Commission has determined that the appropriate form of relief is a limited
exclusion order prohibiting the unlicensed entry into the United States of infringing digital video
receivers and related hardware and software components manufactured by or on behalf of the
Respondents or any of their affiliated companies, parents, subsidiaries, or other related business
entities, or their successors or assigns.
In the Matter of
CERTAIN DIGITAL VIDEO RECEIVERS
AND RELATED HARDWARE AND
SOFTWARE COMPONENTS

- 2 -
The Commission has also determined that the public interest factors enumerated in 19 U.S.C.
§ 1337(d) do not preclude the issuance of the limited exclusion order, and that the bond during the
Presidential review period shall be in the amount of zero percent of the entered value of the
infringing goods.
Accordingly, the Commission hereby ORDERS that:
1. 	Digital video receivers and related hardware and software components that
infringe claim 9 of U.S. Patent No. 7,779,011 that are manufactured by, or on
behalf of, or are imported by or on behalf of the Respondents or any of their
affiliated companies, parents, subsidiaries, agents, or other related business
entities, or their successors or assigns, including ARRIS and Technicolor to the
extent they import such products on behalf of Respondents,1 are excluded from
entry for consumption into the United States, entry for consumption from a
foreign-trade zone, or withdrawal from a warehouse for consumption, for the
remaining term of U.S. Patent No. 7,779,011, except under license of the patent
owner or as provided by law, and except for service or repair of digital video
receivers that were imported before the effective date of this order. Digital video
receivers for use in a system that has been adjudicated as noninfringing are not
subject to exclusion.
2. 	Notwithstanding paragraph 1 of this Order, the aforesaid digital video receivers
1 ARRIS and Technicolor refer to Technicolor SA; Technicolor USA, Inc.; Technicolor
Connected Home USA LLC; ARRIS International plc; ARRIS Group Inc.; ARRIS Technology,
Inc.; ARRIS Enterprises LLC; ARRIS Solutions, Inc.; ARRIS Global Ltd.; and Pace Americas;
or any of their affiliated companies, parents, subsidiaries, agents, or other related business
entities, or their successors or assigns. See Limited Exclusion Order, Certain Digital Video
Receivers and Hardware and Software Components Thereof, Inv. No. 337-TA-1001.

- 3 -
and related hardware and software components are entitled to entry into the
United States for consumption, entry for consumption from a foreign-trade zone,
or withdrawal from a warehouse for consumption, under bond in the amount of
zero percent of the entered value of the imported digital video receivers and
related hardware and software components pursuant to
subsection (j) of section 337 of the Tariff Act of 1930, as amended (19 U.S.C.
§ 1337(j)), and the Presidential Memorandum for the United States Trade
Representative of July 21, 2005 (70 FR 43251), from the day after this Order is
received by the United States Trade Representative, and until such time as the
United States Trade Representative notifies the Commission that this Order is
approved, disapproved, or no action is taken but, in any event, not later than
sixty (60) days after the issuance of receipt of this action.
3. 	At the discretion of U.S. Customs and Border Protection (“CBP”) and pursuant
to the procedures it establishes, persons seeking to import digital video receivers
and hardware and software components thereof that are potentially subject to
this Order may be required to certify that they are familiar with the terms of this
Order, that they have made appropriate inquiry, and thereupon state that, to the
best of their knowledge and belief, the products being imported are not excluded
from entry under paragraph 1 of this Order, including because the products will
be used as part of a redesign adjudicated by the Commission in the violation
investigation not to infringe, and thus the products cannot be used in a manner
that infringes the claim of the patent that is the subject of this Order. At its
discretion, CBP may require persons who have provided the certification

- 4 -
described in this paragraph to furnish such records or analyses as are necessary
to substantiate this certification.
4. 	In accordance with 19 U.S.C. § 1337(l), the provisions of this Order shall not
apply to infringing digital video receivers and related hardware and software
components that are imported by or for the use of the United States, or imported
for and to be used for, the United States with the authorization or consent of the
Government.
5. 	The Commission may modify this Order in accordance with the procedures
described in section 210.76 of the Commission’s Rules of Practice and
Procedure (19 C.F.R. § 210.76).
6. 	The Secretary shall serve copies of this Order upon each party of record in this
investigation and upon CBP.
7. 	Notice of this Order shall be published in the Federal Register.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: 	April 23, 2020

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED
HARDWARE AND SOFTWARE COMPONENTS
Inv. No. 337-TA-1103
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER has been served via EDIS
upon the Commission Investigative Attorney, John Shin, Esq. and the following parties as
indicated, on April 23, 2020.
___________________________________
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Rovi Corporation, Rovi Guides,
Inc., and Veveo, Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Email: dcawley@mckoolsmith.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Comcast Corporation, Comcast
Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business
Communications, LLC, Comcast Holdings Corporation, and
Comcast Shared Services, LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS, LLP
555 Eleventh Street, NW, Suite 100
Washington, DC 20004
Email: bert.reiser@lw.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download

1
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, DC
Investigation No. 337-TA-1103
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Comcast Shared Services, LLC, of Chicago, Illinois
cease and desist from conducting any of the following activities in the United States: importing,
selling, offering for sale, leasing, offering for lease, renting, offering for rent, marketing,
advertising, distributing, transferring (except for exportation), and soliciting U.S. agents or
distributors for, certain digital video receivers and related hardware and software components
covered by claim 9 of U.S. Patent No. 7,779,011 in violation of section 337 of the Tariff Act of
1930, as amended (19 U.S.C. § 1337).
I. Definitions
As used in this order:
(A) 	“Commission” shall mean the United States International Trade Commission.
(B) 	“Complainants” shall mean Rovi Corporation of San Jose, California; Rovi
Guides, Inc. of San Jose, California; and Veveo, Inc. of Andover,
Massachusetts.
(C) 	“Respondent” shall mean Comcast Shared Services, LLC, 30 N Wabash
In the Matter of
CERTAIN DIGITAL VIDEO RECEIVERS
AND RELATED HARDWARE AND
SOFTWARE COMPONENTS

2
Avenue 22, Chicago, Illinois 60611-3586.
(D) 	“Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent
or its majority-owned or controlled subsidiaries, successors, or assigns.
(E) 	“United States” shall mean the fifty States, the District of Columbia, and Puerto
Rico.
(F) 	The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) 	The term “covered products” shall mean digital video receivers and related
hardware and software components that infringe claim 9 of U.S. Patent No.
7,779,011. Covered products shall not include articles for which a provision of
law or license avoids liability for infringement of claim 9 of U.S. Patent No.
7,779,011. The term does not include digital video receivers for use in a
system that has been adjudicated as noninfringing.
II. Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
assigns, and to each of them insofar as they are engaging in conduct prohibited by section III,
infra, for, with, or otherwise on behalf of, Respondent.
III. Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining term of U.S. Patent No. 7,779,011, Respondent shall not:

3
(A) import or sell for importation into the United States covered products;
(B) market, distribute, sell, offer to sell, lease, offer to lease, rent, offer to rent,
or otherwise transfer (except for exportation), in the United States imported
covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, lease after importation, rent after importation, transfer, or
distribution of covered products.
IV. Conduct Permitted
(A) Notwithstanding any other provision of this Order, Respondent shall be
permitted to engage in specific conduct otherwise prohibited by the terms
of this Order if, in a written instrument, the owner of U.S. Patent No.
7,779,011 licenses or authorizes such specific conduct, including but not
limited to conduct involving covered products that the Commission found
were previously imported into the United States under license;
(B) to engage in specific conduct otherwise prohibited by the terms of this
Order if such specific conduct is related to the importation or sale of
covered products by or for the United States; or
(C) to engage in such specific conduct related to service or repair articles
imported for use in servicing or repairing digital video receivers that were
imported before the effective date of this Order. Exception (C) does not
permit the importation of digital video receivers to replace digital video

4
receivers that were imported before the effective date of this Order.
V. Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
section shall cover the period from the date of issuance of this order through December 31, 2019.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory (whether held in
warehouses or at customer sites) of covered products in the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above and submit eight (8) true paper copies to
the Office of the Secretary by noon the next day pursuant to section 210.4(f) of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.4(f)). Submissions should refer
to the investigation number (“Inv. No. 337-TA-1103”) in a prominent place on the cover pages
and/or the first page. (See Handbook for Electronic Filing Procedures,
https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions
regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a
document to the Commission in confidence, it must file the original and a public version of the
original with the Office of the Secretary and must serve a copy of the confidential version on

5
Complainant’s counsel.1
Persons filing written submissions must file the original document electronically on or
before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R.
§ 210.4(f) are currently waived, pending resolution of the COVID-19 crisis. 85 Fed. Reg. 15798
(March 19, 2020).
VI. Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall
retain any and all records relating to the sale, offer for sale, lease, offer to
lease, rent, offer to rent, marketing, or distribution in the United States of
covered products, made and received in the usual and ordinary course of
business, whether in detail or in summary form, for a period of three (3)
years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order
and for no other purpose, subject to any privilege recognized by the federal
courts of the United States, and upon reasonable written notice by the
Commission or its staff, duly authorized representatives of the Commission
shall be permitted access and the right to inspect and copy, in Respondent's
principal office during office hours, and in the presence of counsel or other
representatives if Respondent so chooses, all books, ledgers, accounts,
correspondence, memoranda, and other records and documents, in detail
and in summary form, that must be retained under subparagraph VI(A) of
1 Complainant must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must
be on the protective order entered in the investigation.

6
this Order.
VII. Service of Cease and Desist Order
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy
of this Order upon each of its respective officers, directors, managing
agents, agents, and employees who have any responsibility for the
importation, marketing, distribution, sale, lease, or rent of imported
covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred
to in subparagraph VII(A) of this Order, a copy of the Order upon each
successor; and
(C) Maintain such records as will show the name, title, and address of each
person upon whom the Order has been served, as described in
subparagraphs VII(A) and VII(B) of this Order, together with the date on
which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until U.S.
Patent No. 7,779,011 expires.
VIII. Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section V-VI of this Order should be made in accordance with section 201.6 of the
Commission's Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
confidential treatment is sought, Respondent must provide a public version of such report with

7
confidential information redacted.
IX. 	Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission's Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil
penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any
other action that the Commission deems appropriate. In determining whether Respondent is in
violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X. Modification
The Commission may amend this Order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission's Rules of Practice and Procedure (19
C.F.R. § 210.76).
XI. Bonding
The conduct prohibited by section III of this Order may be continued during the sixty-day
period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)) subject to the Respondent's
posting of a bond in the amount of zero percent of the entered value of the covered products.
This bond provision does not apply to conduct that is otherwise permitted by section IV of this
Order. Covered products imported on or after the date of issuance of this Order are subject to the
entry bond as set forth in the exclusion order issued by the Commission, and are not subject to
this bond provision.
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of

8
temporary exclusion orders. See 19 C.F.R. § 210.68. The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by section III of this Order. Upon the
Secretary's acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties,
and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainants' counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it or takes no action within the review period),
unless the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any
Commission final determination and order as to Respondent on appeal, or unless Respondent
exports or destroys the products subject to this bond and provides certification to that effect that
is satisfactory to the Commission.
The bond is to be released in the event the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, upon service on Respondent of an
order issued by the Commission based upon application therefore made by Respondent to the
Commission.
2 See Footnote 1.

By order of the Commission.

AD

Lisa R. Barton
Secretary to the Commission
Issued: April 23, 2020

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED
HARDWARE AND SOFTWARE COMPONENTS
Inv. No. 337-TA-1103
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER has been served via EDIS
upon the Commission Investigative Attorney, John Shin, Esq. and the following parties as
indicated, on April 23, 2020.
___________________________________
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Rovi Corporation, Rovi Guides,
Inc., and Veveo, Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Email: dcawley@mckoolsmith.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Comcast Corporation, Comcast
Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business
Communications, LLC, Comcast Holdings Corporation, and
Comcast Shared Services, LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS, LLP
555 Eleventh Street, NW, Suite 100
Washington, DC 20004
Email: bert.reiser@lw.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download

1
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, DC
Investigation No. 337-TA-1103
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Comcast Holdings Corporation, of Philadelphia,
Pennsylvania cease and desist from conducting any of the following activities in the United
States: importing, selling, offering for sale, leasing, offering for lease, renting, offering for rent,
marketing, advertising, distributing, transferring (except for exportation), and soliciting U.S.
agents or distributors for, certain digital video receivers and related hardware and software
components covered by claim 9 of U.S. Patent No. 7,779,011 in violation of section 337 of the
Tariff Act of 1930, as amended (19 U.S.C. § 1337).
I. Definitions
As used in this order:
(A) 	“Commission” shall mean the United States International Trade Commission.
(B) 	“Complainants” shall mean Rovi Corporation of San Jose, California; Rovi
Guides, Inc. of San Jose, California; and Veveo, Inc. of Andover,
Massachusetts.
(C) 	“Respondent” shall mean Comcast Holdings Corporation, One Comcast Center,
In the Matter of
CERTAIN DIGITAL VIDEO RECEIVERS
AND RELATED HARDWARE AND
SOFTWARE COMPONENTS

2
1701 John F. Kennedy Boulevard, Philadelphia, Pennsylvania 19103.
(D) 	“Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent
or its majority-owned or controlled subsidiaries, successors, or assigns.
(E) 	“United States” shall mean the fifty States, the District of Columbia, and Puerto
Rico.
(F) 	The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) 	The term “covered products” shall mean digital video receivers and related
hardware and software components that infringe claim 9 of U.S. Patent No.
7,779,011. Covered products shall not include articles for which a provision of
law or license avoids liability for infringement of claim 9 of U.S. Patent No.
7,779,011. The term does not include digital video receivers for use in a
system that has been adjudicated as noninfringing.
II. Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
assigns, and to each of them insofar as they are engaging in conduct prohibited by section III,
infra, for, with, or otherwise on behalf of, Respondent.
III. Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining term of U.S. Patent No. 7,779,011, Respondent shall not:

3
(A) import or sell for importation into the United States covered products;
(B) market, distribute, sell, offer to sell, lease, offer to lease, rent, offer to rent,
or otherwise transfer (except for exportation), in the United States imported
covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, lease after importation, rent after importation, transfer, or
distribution of covered products.
IV. Conduct Permitted
(A) Notwithstanding any other provision of this Order, Respondent shall be
permitted to engage in specific conduct otherwise prohibited by the terms
of this Order if, in a written instrument, the owner of U.S. Patent No.
7,779,011 licenses or authorizes such specific conduct, including but not
limited to conduct involving covered products that the Commission found
were previously imported into the United States under license;
(B) to engage in specific conduct otherwise prohibited by the terms of this
Order if such specific conduct is related to the importation or sale of
covered products by or for the United States; or
(C) to engage in such specific conduct related to service or repair articles
imported for use in servicing or repairing digital video receivers that were
imported before the effective date of this Order. Exception (C) does not
permit the importation of digital video receivers to replace digital video

4
receivers that were imported before the effective date of this Order.
V. Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
section shall cover the period from the date of issuance of this order through December 31, 2019.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory (whether held in
warehouses or at customer sites) of covered products in the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above and submit eight (8) true paper copies to
the Office of the Secretary by noon the next day pursuant to section 210.4(f) of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.4(f)). Submissions should refer
to the investigation number (“Inv. No. 337-TA-1103”) in a prominent place on the cover pages
and/or the first page. (See Handbook for Electronic Filing Procedures,
https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions
regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a
document to the Commission in confidence, it must file the original and a public version of the
original with the Office of the Secretary and must serve a copy of the confidential version on

5
Complainant’s counsel.1
Persons filing written submissions must file the original document electronically on or
before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R.
§ 210.4(f) are currently waived, pending resolution of the COVID-19 crisis. 85 Fed. Reg. 15798
(March 19, 2020).
VI. Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall
retain any and all records relating to the sale, offer for sale, lease, offer to
lease, rent, offer to rent, marketing, or distribution in the United States of
covered products, made and received in the usual and ordinary course of
business, whether in detail or in summary form, for a period of three (3)
years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order
and for no other purpose, subject to any privilege recognized by the federal
courts of the United States, and upon reasonable written notice by the
Commission or its staff, duly authorized representatives of the Commission
shall be permitted access and the right to inspect and copy, in Respondent's
principal office during office hours, and in the presence of counsel or other
representatives if Respondent so chooses, all books, ledgers, accounts,
correspondence, memoranda, and other records and documents, in detail
and in summary form, that must be retained under subparagraph VI(A) of
1 Complainant must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must
be on the protective order entered in the investigation.

6
this Order.
VII. Service of Cease and Desist Order
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy
of this Order upon each of its respective officers, directors, managing
agents, agents, and employees who have any responsibility for the
importation, marketing, distribution, sale, lease, or rent of imported
covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred
to in subparagraph VII(A) of this Order, a copy of the Order upon each
successor; and
(C) Maintain such records as will show the name, title, and address of each
person upon whom the Order has been served, as described in
subparagraphs VII(A) and VII(B) of this Order, together with the date on
which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until U.S.
Patent No. 7,779,011 expires.
VIII. Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section V-VI of this Order should be made in accordance with section 201.6 of the
Commission's Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
confidential treatment is sought, Respondent must provide a public version of such report with

7
confidential information redacted.
IX. 	Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission's Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil
penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any
other action that the Commission deems appropriate. In determining whether Respondent is in
violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X. Modification
The Commission may amend this Order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission's Rules of Practice and Procedure (19
C.F.R. § 210.76).
XI. Bonding
The conduct prohibited by section III of this Order may be continued during the sixty-day
period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)) subject to the Respondent's
posting of a bond in the amount of zero percent of the entered value of the covered products.
This bond provision does not apply to conduct that is otherwise permitted by section IV of this
Order. Covered products imported on or after the date of issuance of this Order are subject to the
entry bond as set forth in the exclusion order issued by the Commission, and are not subject to
this bond provision.
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of

8
temporary exclusion orders. See 19 C.F.R. § 210.68. The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by section III of this Order. Upon the
Secretary's acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties,
and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainants' counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it or takes no action within the review period),
unless the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any
Commission final determination and order as to Respondent on appeal, or unless Respondent
exports or destroys the products subject to this bond and provides certification to that effect that
is satisfactory to the Commission.
The bond is to be released in the event the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, upon service on Respondent of an
order issued by the Commission based upon application therefore made by Respondent to the
Commission.
2 See Footnote 1.

By order of the Commission.

Lisa R. Barton
Secretary to the Commission
Issued: April 23, 2020

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED
HARDWARE AND SOFTWARE COMPONENTS
Inv. No. 337-TA-1103
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER has been served via EDIS
upon the Commission Investigative Attorney, John Shin, Esq. and the following parties as
indicated, on April 23, 2020.
___________________________________
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Rovi Corporation, Rovi Guides,
Inc., and Veveo, Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Email: dcawley@mckoolsmith.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Comcast Corporation, Comcast
Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business
Communications, LLC, Comcast Holdings Corporation, and
Comcast Shared Services, LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS, LLP
555 Eleventh Street, NW, Suite 100
Washington, DC 20004
Email: bert.reiser@lw.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download

1
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, DC
Investigation No. 337-TA-1103
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Comcast Cable Communications Management, LLC,
of Philadelphia, Pennsylvania cease and desist from conducting any of the following activities in
the United States: importing, selling, offering for sale, leasing, offering for lease, renting,
offering for rent, marketing, advertising, distributing, transferring (except for exportation), and
soliciting U.S. agents or distributors for, certain digital video receivers and related hardware and
software components covered by claim 9 of U.S. Patent No. 7,779,011 in violation of section 337
of the Tariff Act of 1930, as amended (19 U.S.C. § 1337).
I. Definitions
As used in this order:
(A) 	“Commission” shall mean the United States International Trade Commission.
(B) 	“Complainants” shall mean Rovi Corporation of San Jose, California; Rovi
Guides, Inc. of San Jose, California; and Veveo, Inc. of Andover,
Massachusetts.
(C) 	“Respondent” shall mean Comcast Cable Communications Management, LLC,
In the Matter of
CERTAIN DIGITAL VIDEO RECEIVERS
AND RELATED HARDWARE AND
SOFTWARE COMPONENTS

2
One Comcast Center, 1701 John F. Kennedy Boulevard, Philadelphia,
Pennsylvania 19103.
(D) 	“Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent
or its majority-owned or controlled subsidiaries, successors, or assigns.
(E) 	“United States” shall mean the fifty States, the District of Columbia, and Puerto
Rico.
(F) 	The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) 	The term “covered products” shall mean digital video receivers and related
hardware and software components that infringe claim 9 of U.S. Patent No.
7,779,011. Covered products shall not include articles for which a provision of
law or license avoids liability for infringement of claim 9 of U.S. Patent No.
7,779,011. The term does not include digital video receivers for use in a
system that has been adjudicated as noninfringing.
II. Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
assigns, and to each of them insofar as they are engaging in conduct prohibited by section III,
infra, for, with, or otherwise on behalf of, Respondent.
III. Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.

3
For the remaining term of U.S. Patent No. 7,779,011, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, sell, offer to sell, lease, offer to lease, rent, offer to rent,
or otherwise transfer (except for exportation), in the United States imported
covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, lease after importation, rent after importation, transfer, or
distribution of covered products.
IV. Conduct Permitted
(A) Notwithstanding any other provision of this Order, Respondent shall be
permitted to engage in specific conduct otherwise prohibited by the terms
of this Order if, in a written instrument, the owner of U.S. Patent No.
7,779,011 licenses or authorizes such specific conduct, including but not
limited to conduct involving covered products that the Commission found
were previously imported into the United States under license;
(B) to engage in specific conduct otherwise prohibited by the terms of this
Order if such specific conduct is related to the importation or sale of
covered products by or for the United States; or
(C) to engage in such specific conduct related to service or repair articles
imported for use in servicing or repairing digital video receivers that were
imported before the effective date of this Order. Exception (C) does not

4
permit the importation of digital video receivers to replace digital video
receivers that were imported before the effective date of this Order.
V. Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
section shall cover the period from the date of issuance of this order through December 31, 2019.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory (whether held in
warehouses or at customer sites) of covered products in the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above and submit eight (8) true paper copies to
the Office of the Secretary by noon the next day pursuant to section 210.4(f) of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.4(f)). Submissions should refer
to the investigation number (“Inv. No. 337-TA-1103”) in a prominent place on the cover pages
and/or the first page. (See Handbook for Electronic Filing Procedures,
https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions
regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a
document to the Commission in confidence, it must file the original and a public version of the

5
original with the Office of the Secretary and must serve a copy of the confidential version on
Complainant’s counsel.1
Persons filing written submissions must file the original document electronically on or
before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R.
§ 210.4(f) are currently waived, pending resolution of the COVID-19 crisis. 85 Fed. Reg. 15798
(March 19, 2020).
VI. Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall
retain any and all records relating to the sale, offer for sale, lease, offer to
lease, rent, offer to rent, marketing, or distribution in the United States of
covered products, made and received in the usual and ordinary course of
business, whether in detail or in summary form, for a period of three (3)
years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order
and for no other purpose, subject to any privilege recognized by the federal
courts of the United States, and upon reasonable written notice by the
Commission or its staff, duly authorized representatives of the Commission
shall be permitted access and the right to inspect and copy, in Respondent's
principal office during office hours, and in the presence of counsel or other
representatives if Respondent so chooses, all books, ledgers, accounts,
correspondence, memoranda, and other records and documents, in detail
1 Complainant must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must
be on the protective order entered in the investigation.

6
and in summary form, that must be retained under subparagraph VI(A) of
this Order.
VII. Service of Cease and Desist Order
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy
of this Order upon each of its respective officers, directors, managing
agents, agents, and employees who have any responsibility for the
importation, marketing, distribution, sale, lease, or rent of imported
covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred
to in subparagraph VII(A) of this Order, a copy of the Order upon each
successor; and
(C) Maintain such records as will show the name, title, and address of each
person upon whom the Order has been served, as described in
subparagraphs VII(A) and VII(B) of this Order, together with the date on
which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until U.S.
Patent No. 7,779,011 expires.
VIII. Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section V-VI of this Order should be made in accordance with section 201.6 of the
Commission's Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which

7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX. 	Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission's Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil
penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any
other action that the Commission deems appropriate. In determining whether Respondent is in
violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X. Modification
The Commission may amend this Order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission's Rules of Practice and Procedure (19
C.F.R. § 210.76).
XI. Bonding
The conduct prohibited by section III of this Order may be continued during the sixty-day
period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)) subject to the Respondent's
posting of a bond in the amount of zero percent of the entered value of the covered products.
This bond provision does not apply to conduct that is otherwise permitted by section IV of this
Order. Covered products imported on or after the date of issuance of this Order are subject to the
entry bond as set forth in the exclusion order issued by the Commission, and are not subject to
this bond provision.
The bond is to be posted in accordance with the procedures established by the

8
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. See 19 C.F.R. § 210.68. The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by section III of this Order. Upon the
Secretary's acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties,
and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainants' counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it or takes no action within the review period),
unless the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any
Commission final determination and order as to Respondent on appeal, or unless Respondent
exports or destroys the products subject to this bond and provides certification to that effect that
is satisfactory to the Commission.
The bond is to be released in the event the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, upon service on Respondent of an
order issued by the Commission based upon application therefore made by Respondent to the
Commission.
2 See Footnote 1.

By order of the Commission.

Lisa R. Barton
Secretary to the Commission
Issued: April 23, 2020

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED
HARDWARE AND SOFTWARE COMPONENTS
Inv. No. 337-TA-1103
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER has been served via EDIS
upon the Commission Investigative Attorney, John Shin, Esq. and the following parties as
indicated, on April 23, 2020.
___________________________________
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Rovi Corporation, Rovi Guides,
Inc., and Veveo, Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Email: dcawley@mckoolsmith.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Comcast Corporation, Comcast
Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business
Communications, LLC, Comcast Holdings Corporation, and
Comcast Shared Services, LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS, LLP
555 Eleventh Street, NW, Suite 100
Washington, DC 20004
Email: bert.reiser@lw.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download

1
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, DC
Investigation No. 337-TA-1103
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Comcast Corporation of Philadelphia, Pennsylvania
cease and desist from conducting any of the following activities in the United States: importing,
selling, offering for sale, leasing, offering for lease, renting, offering for rent, marketing,
advertising, distributing, transferring (except for exportation), and soliciting U.S. agents or
distributors for, certain digital video receivers and related hardware and software components
covered by claim 9 of U.S. Patent No. 7,779,011 in violation of section 337 of the Tariff Act of
1930, as amended (19 U.S.C. § 1337).
I. Definitions
As used in this order:
(A) 	“Commission” shall mean the United States International Trade Commission.
(B) 	“Complainants” shall mean Rovi Corporation of San Jose, California; Rovi
Guides, Inc. of San Jose, California; and Veveo, Inc. of Andover,
Massachusetts.
(C) 	“Respondent” shall mean Comcast Corporation, One Comcast Center, 1701
In the Matter of
CERTAIN DIGITAL VIDEO RECEIVERS
AND RELATED HARDWARE AND
SOFTWARE COMPONENTS

2
John F. Kennedy Boulevard, Philadelphia, Pennsylvania 19103.
(D) 	“Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent
or its majority-owned or controlled subsidiaries, successors, or assigns.
(E) 	“United States” shall mean the fifty States, the District of Columbia, and Puerto
Rico.
(F) 	The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) 	The term “covered products” shall mean digital video receivers and related
hardware and software components that infringe claim 9 of U.S. Patent No.
7,779,011. Covered products shall not include articles for which a provision of
law or license avoids liability for infringement of claim 9 of U.S. Patent No.
7,779,011. The term does not include digital video receivers for use in a
system that has been adjudicated as noninfringing.
II. Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
assigns, and to each of them insofar as they are engaging in conduct prohibited by section III,
infra, for, with, or otherwise on behalf of, Respondent.
III. Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining term of U.S. Patent No. 7,779,011, Respondent shall not:

3
(A) import or sell for importation into the United States covered products;
(B) market, distribute, sell, offer to sell, lease, offer to lease, rent, offer to rent,
or otherwise transfer (except for exportation), in the United States imported
covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, lease after importation, rent after importation, transfer, or
distribution of covered products.
IV. Conduct Permitted
(A) Notwithstanding any other provision of this Order, Respondent shall be
permitted to engage in specific conduct otherwise prohibited by the terms
of this Order if, in a written instrument, the owner of U.S. Patent No.
7,779,011 licenses or authorizes such specific conduct, including but not
limited to conduct involving covered products that the Commission found
were previously imported into the United States under license;
(B) to engage in specific conduct otherwise prohibited by the terms of this
Order if such specific conduct is related to the importation or sale of
covered products by or for the United States; or
(C) to engage in such specific conduct related to service or repair articles
imported for use in servicing or repairing digital video receivers that were
imported before the effective date of this Order. Exception (C) does not
permit the importation of digital video receivers to replace digital video

4
receivers that were imported before the effective date of this Order.
V. Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
section shall cover the period from the date of issuance of this order through December 31, 2019.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory (whether held in
warehouses or at customer sites) of covered products in the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above and submit eight (8) true paper copies to
the Office of the Secretary by noon the next day pursuant to section 210.4(f) of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.4(f)). Submissions should refer
to the investigation number (“Inv. No. 337-TA-1103”) in a prominent place on the cover pages
and/or the first page. (See Handbook for Electronic Filing Procedures,
https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions
regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a
document to the Commission in confidence, it must file the original and a public version of the
original with the Office of the Secretary and must serve a copy of the confidential version on

5
Complainant’s counsel.1
Persons filing written submissions must file the original document electronically on or
before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R.
§ 210.4(f) are currently waived, pending resolution of the COVID-19 crisis. 85 Fed. Reg. 15798
(March 19, 2020).
VI. Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall
retain any and all records relating to the sale, offer for sale, lease, offer to
lease, rent, offer to rent, marketing, or distribution in the United States of
covered products, made and received in the usual and ordinary course of
business, whether in detail or in summary form, for a period of three (3)
years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order
and for no other purpose, subject to any privilege recognized by the federal
courts of the United States, and upon reasonable written notice by the
Commission or its staff, duly authorized representatives of the Commission
shall be permitted access and the right to inspect and copy, in Respondent's
principal office during office hours, and in the presence of counsel or other
representatives if Respondent so chooses, all books, ledgers, accounts,
correspondence, memoranda, and other records and documents, in detail
and in summary form, that must be retained under subparagraph VI(A) of
1 Complainant must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must
be on the protective order entered in the investigation.

6
this Order.
VII. Service of Cease and Desist Order
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy
of this Order upon each of its respective officers, directors, managing
agents, agents, and employees who have any responsibility for the
importation, marketing, distribution, sale, lease, or rent of imported
covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred
to in subparagraph VII(A) of this Order, a copy of the Order upon each
successor; and
(C) Maintain such records as will show the name, title, and address of each
person upon whom the Order has been served, as described in
subparagraphs VII(A) and VII(B) of this Order, together with the date on
which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until U.S.
Patent No. 7,779,011 expires.
VIII. Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section V-VI of this Order should be made in accordance with section 201.6 of the
Commission's Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
confidential treatment is sought, Respondent must provide a public version of such report with

7
confidential information redacted.
IX. 	Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission's Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil
penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any
other action that the Commission deems appropriate. In determining whether Respondent is in
violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X. Modification
The Commission may amend this Order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission's Rules of Practice and Procedure (19
C.F.R. § 210.76).
XI. Bonding
The conduct prohibited by section III of this Order may be continued during the sixty-day
period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)) subject to the Respondent's
posting of a bond in the amount of zero percent of the entered value of the covered products.
This bond provision does not apply to conduct that is otherwise permitted by section IV of this
Order. Covered products imported on or after the date of issuance of this Order are subject to the
entry bond as set forth in the exclusion order issued by the Commission, and are not subject to
this bond provision.
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of

8
temporary exclusion orders. See 19 C.F.R. § 210.68. The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by section III of this Order. Upon the
Secretary's acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties,
and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainants' counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it or takes no action within the review period),
unless the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any
Commission final determination and order as to Respondent on appeal, or unless Respondent
exports or destroys the products subject to this bond and provides certification to that effect that
is satisfactory to the Commission.
The bond is to be released in the event the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, upon service on Respondent of an
order issued by the Commission based upon application therefore made by Respondent to the
Commission.
2 See Footnote 1.

By order of the Commission.

Lisa R. Barton

Secretary to the Commission
Issued: April 23, 2020

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED
HARDWARE AND SOFTWARE COMPONENTS
Inv. No. 337-TA-1103
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER has been served via EDIS
upon the Commission Investigative Attorney, John Shin, Esq. and the following parties as
indicated, on April 23, 2020.
___________________________________
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Rovi Corporation, Rovi Guides,
Inc., and Veveo, Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Email: dcawley@mckoolsmith.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Comcast Corporation, Comcast
Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business
Communications, LLC, Comcast Holdings Corporation, and
Comcast Shared Services, LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS, LLP
555 Eleventh Street, NW, Suite 100
Washington, DC 20004
Email: bert.reiser@lw.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download

1
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, DC
Investigation No. 337-TA-1103
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Comcast Cable Communications, LLC, of
Philadelphia, Pennsylvania cease and desist from conducting any of the following activities in
the United States: importing, selling, offering for sale, leasing, offering for lease, renting,
offering for rent, marketing, advertising, distributing, transferring (except for exportation), and
soliciting U.S. agents or distributors for, certain digital video receivers and related hardware and
software components covered by claim 9 of U.S. Patent No. 7,779,011 in violation of section 337
of the Tariff Act of 1930, as amended (19 U.S.C. § 1337).
I. Definitions
As used in this order:
(A) 	“Commission” shall mean the United States International Trade Commission.
(B) 	“Complainants” shall mean Rovi Corporation of San Jose, California; Rovi
Guides, Inc. of San Jose, California; and Veveo, Inc. of Andover,
Massachusetts.
(C) 	“Respondent” shall mean Comcast Cable Communications, LLC, One Comcast
In the Matter of
CERTAIN DIGITAL VIDEO RECEIVERS
AND RELATED HARDWARE AND
SOFTWARE COMPONENTS

2
Center, 1701 John F. Kennedy Boulevard, Philadelphia, Pennsylvania 19103.
(D) 	“Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent
or its majority-owned or controlled subsidiaries, successors, or assigns.
(E) 	“United States” shall mean the fifty States, the District of Columbia, and Puerto
Rico.
(F) 	The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) 	The term “covered products” shall mean digital video receivers and related
hardware and software components that infringe claim 9 of U.S. Patent No.
7,779,011. Covered products shall not include articles for which a provision of
law or license avoids liability for infringement of claim 9 of U.S. Patent No.
7,779,011. The term does not include digital video receivers for use in a
system that has been adjudicated as noninfringing.
II. Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
assigns, and to each of them insofar as they are engaging in conduct prohibited by section III,
infra, for, with, or otherwise on behalf of, Respondent.
III. Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remaining term of U.S. Patent No. 7,779,011, Respondent shall not:

3
(A) import or sell for importation into the United States covered products;
(B) market, distribute, sell, offer to sell, lease, offer to lease, rent, offer to rent,
or otherwise transfer (except for exportation), in the United States imported
covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, lease after importation, rent after importation, transfer, or
distribution of covered products.
IV. Conduct Permitted
(A) Notwithstanding any other provision of this Order, Respondent shall be
permitted to engage in specific conduct otherwise prohibited by the terms
of this Order if, in a written instrument, the owner of U.S. Patent No.
7,779,011 licenses or authorizes such specific conduct, including but not
limited to conduct involving covered products that the Commission found
were previously imported into the United States under license;
(B) to engage in specific conduct otherwise prohibited by the terms of this
Order if such specific conduct is related to the importation or sale of
covered products by or for the United States; or
(C) to engage in such specific conduct related to service or repair articles
imported for use in servicing or repairing digital video receivers that were
imported before the effective date of this Order. Exception (C) does not
permit the importation of digital video receivers to replace digital video

4
receivers that were imported before the effective date of this Order.
V. Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
section shall cover the period from the date of issuance of this order through December 31, 2019.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory (whether held in
warehouses or at customer sites) of covered products in the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above and submit eight (8) true paper copies to
the Office of the Secretary by noon the next day pursuant to section 210.4(f) of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.4(f)). Submissions should refer
to the investigation number (“Inv. No. 337-TA-1103”) in a prominent place on the cover pages
and/or the first page. (See Handbook for Electronic Filing Procedures,
https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions
regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a
document to the Commission in confidence, it must file the original and a public version of the
original with the Office of the Secretary and must serve a copy of the confidential version on

5
Complainant’s counsel.1
Persons filing written submissions must file the original document electronically on or
before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R.
§ 210.4(f) are currently waived, pending resolution of the COVID-19 crisis. 85 Fed. Reg. 15798
(March 19, 2020).
VI. Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall
retain any and all records relating to the sale, offer for sale, lease, offer to
lease, rent, offer to rent, marketing, or distribution in the United States of
covered products, made and received in the usual and ordinary course of
business, whether in detail or in summary form, for a period of three (3)
years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order
and for no other purpose, subject to any privilege recognized by the federal
courts of the United States, and upon reasonable written notice by the
Commission or its staff, duly authorized representatives of the Commission
shall be permitted access and the right to inspect and copy, in Respondent's
principal office during office hours, and in the presence of counsel or other
representatives if Respondent so chooses, all books, ledgers, accounts,
correspondence, memoranda, and other records and documents, in detail
and in summary form, that must be retained under subparagraph VI(A) of
1 Complainant must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must
be on the protective order entered in the investigation.

6
this Order.
VII. Service of Cease and Desist Order
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy
of this Order upon each of its respective officers, directors, managing
agents, agents, and employees who have any responsibility for the
importation, marketing, distribution, sale, lease, or rent of imported
covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred
to in subparagraph VII(A) of this Order, a copy of the Order upon each
successor; and
(C) Maintain such records as will show the name, title, and address of each
person upon whom the Order has been served, as described in
subparagraphs VII(A) and VII(B) of this Order, together with the date on
which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until U.S.
Patent No. 7,779,011 expires.
VIII. Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section V-VI of this Order should be made in accordance with section 201.6 of the
Commission's Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
confidential treatment is sought, Respondent must provide a public version of such report with

7
confidential information redacted.
IX. 	Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission's Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil
penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any
other action that the Commission deems appropriate. In determining whether Respondent is in
violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X. Modification
The Commission may amend this Order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission's Rules of Practice and Procedure (19
C.F.R. § 210.76).
XI. Bonding
The conduct prohibited by section III of this Order may be continued during the sixty-day
period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)) subject to the Respondent's
posting of a bond in the amount of zero percent of the entered value of the covered products.
This bond provision does not apply to conduct that is otherwise permitted by section IV of this
Order. Covered products imported on or after the date of issuance of this Order are subject to the
entry bond as set forth in the exclusion order issued by the Commission, and are not subject to
this bond provision.
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of

8
temporary exclusion orders. See 19 C.F.R. § 210.68. The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by section III of this Order. Upon the
Secretary's acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties,
and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainants' counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it or takes no action within the review period),
unless the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any
Commission final determination and order as to Respondent on appeal, or unless Respondent
exports or destroys the products subject to this bond and provides certification to that effect that
is satisfactory to the Commission.
The bond is to be released in the event the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, upon service on Respondent of an
order issued by the Commission based upon application therefore made by Respondent to the
Commission.
2 See Footnote 1.

By order of the Commission.

Lisa R. Barton

Secretary to the Commission

Issued: April 23, 2020

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED
HARDWARE AND SOFTWARE COMPONENTS
Inv. No. 337-TA-1103
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER has been served via EDIS
upon the Commission Investigative Attorney, John Shin, Esq. and the following parties as
indicated, on April 23, 2020.
___________________________________
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Rovi Corporation, Rovi Guides,
Inc., and Veveo, Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Email: dcawley@mckoolsmith.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Comcast Corporation, Comcast
Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business
Communications, LLC, Comcast Holdings Corporation, and
Comcast Shared Services, LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS, LLP
555 Eleventh Street, NW, Suite 100
Washington, DC 20004
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1
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, DC
Investigation No. 337-TA-1103
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Comcast Business Communications, LLC, of
Philadelphia, Pennsylvania cease and desist from conducting any of the following activities in
the United States: importing, selling, offering for sale, leasing, offering for lease, renting,
offering for rent, marketing, advertising, distributing, transferring (except for exportation), and
soliciting U.S. agents or distributors for, certain digital video receivers and related hardware and
software components covered by claim 9 of U.S. Patent No. 7,779,011 in violation of section 337
of the Tariff Act of 1930, as amended (19 U.S.C. § 1337).
I. Definitions
As used in this order:
(A) 	“Commission” shall mean the United States International Trade Commission.
(B) 	“Complainants” shall mean Rovi Corporation of San Jose, California; Rovi
Guides, Inc. of San Jose, California; and Veveo, Inc. of Andover,
Massachusetts.
(C) 	“Respondent” shall mean Comcast Business Communications, LLC, One
In the Matter of
CERTAIN DIGITAL VIDEO RECEIVERS
AND RELATED HARDWARE AND
SOFTWARE COMPONENTS

2
Comcast Center, 1701 John F. Kennedy Boulevard, Philadelphia, Pennsylvania
19103.
(D) 	“Person” shall mean an individual, or any non-governmental partnership, firm,
association, corporation, or other legal or business entity other than Respondent
or its majority-owned or controlled subsidiaries, successors, or assigns.
(E) 	“United States” shall mean the fifty States, the District of Columbia, and Puerto
Rico.
(F) 	The terms “import” and “importation” refer to importation for entry for
consumption under the Customs laws of the United States.
(G) 	The term “covered products” shall mean digital video receivers and related
hardware and software components that infringe claim 9 of U.S. Patent No.
7,779,011. Covered products shall not include articles for which a provision of
law or license avoids liability for infringement of claim 9 of U.S. Patent No.
7,779,011. The term does not include digital video receivers for use in a
system that has been adjudicated as noninfringing.
II. Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, licensees, distributors, controlled
(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
assigns, and to each of them insofar as they are engaging in conduct prohibited by section III,
infra, for, with, or otherwise on behalf of, Respondent.
III. Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.

3
For the remaining term of U.S. Patent No. 7,779,011, Respondent shall not:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, sell, offer to sell, lease, offer to lease, rent, offer to rent,
or otherwise transfer (except for exportation), in the United States imported
covered products;
(C) advertise imported covered products;
(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale after
importation, lease after importation, rent after importation, transfer, or
distribution of covered products.
IV. Conduct Permitted
(A) Notwithstanding any other provision of this Order, Respondent shall be
permitted to engage in specific conduct otherwise prohibited by the terms
of this Order if, in a written instrument, the owner of U.S. Patent No.
7,779,011 licenses or authorizes such specific conduct, including but not
limited to conduct involving covered products that the Commission found
were previously imported into the United States under license;
(B) to engage in specific conduct otherwise prohibited by the terms of this
Order if such specific conduct is related to the importation or sale of
covered products by or for the United States; or
(C) to engage in such specific conduct related to service or repair articles
imported for use in servicing or repairing digital video receivers that were
imported before the effective date of this Order. Exception (C) does not

4
permit the importation of digital video receivers to replace digital video
receivers that were imported before the effective date of this Order.
V. Reporting
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
section shall cover the period from the date of issuance of this order through December 31, 2019.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory (whether held in
warehouses or at customer sites) of covered products in the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
(i) imported and/or (ii) sold in the United States after importation during the reporting period,
and (b) the quantity in units and value in dollars of reported covered products that remain in
inventory in the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
electronically on or before the deadlines stated above and submit eight (8) true paper copies to
the Office of the Secretary by noon the next day pursuant to section 210.4(f) of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.4(f)). Submissions should refer
to the investigation number (“Inv. No. 337-TA-1103”) in a prominent place on the cover pages
and/or the first page. (See Handbook for Electronic Filing Procedures,
https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions
regarding filing should contact the Secretary (202-205-2000). If Respondent desires to submit a
document to the Commission in confidence, it must file the original and a public version of the

5
original with the Office of the Secretary and must serve a copy of the confidential version on
Complainant’s counsel.1
Persons filing written submissions must file the original document electronically on or
before the deadlines stated above. The Commission’s paper filing requirements in 19 C.F.R.
§ 210.4(f) are currently waived, pending resolution of the COVID-19 crisis. 85 Fed. Reg. 15798
(March 19, 2020).
VI. Record-Keeping and Inspection
(A) For the purpose of securing compliance with this Order, Respondent shall
retain any and all records relating to the sale, offer for sale, lease, offer to
lease, rent, offer to rent, marketing, or distribution in the United States of
covered products, made and received in the usual and ordinary course of
business, whether in detail or in summary form, for a period of three (3)
years from the close of the fiscal year to which they pertain.
(B) For the purposes of determining or securing compliance with this Order
and for no other purpose, subject to any privilege recognized by the federal
courts of the United States, and upon reasonable written notice by the
Commission or its staff, duly authorized representatives of the Commission
shall be permitted access and the right to inspect and copy, in Respondent's
principal office during office hours, and in the presence of counsel or other
representatives if Respondent so chooses, all books, ledgers, accounts,
correspondence, memoranda, and other records and documents, in detail
1 Complainant must file a letter with the Secretary identifying the attorney to receive
reports and bond information associated with this Order. The designated attorney must
be on the protective order entered in the investigation.

6
and in summary form, that must be retained under subparagraph VI(A) of
this Order.
VII. Service of Cease and Desist Order
Respondent is ordered and directed to:
(A) Serve, within fifteen (15) days after the effective date of this Order, a copy
of this Order upon each of its respective officers, directors, managing
agents, agents, and employees who have any responsibility for the
importation, marketing, distribution, sale, lease, or rent of imported
covered products in the United States;
(B) Serve, within fifteen (15) days after the succession of any persons referred
to in subparagraph VII(A) of this Order, a copy of the Order upon each
successor; and
(C) Maintain such records as will show the name, title, and address of each
person upon whom the Order has been served, as described in
subparagraphs VII(A) and VII(B) of this Order, together with the date on
which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until U.S.
Patent No. 7,779,011 expires.
VIII. Confidentiality
Any request for confidential treatment of information obtained by the Commission
pursuant to section V-VI of this Order should be made in accordance with section 201.6 of the
Commission's Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which

7
confidential treatment is sought, Respondent must provide a public version of such report with
confidential information redacted.
IX. 	Enforcement
Violation of this order may result in any of the actions specified in section 210.75 of the
Commission's Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil
penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any
other action that the Commission deems appropriate. In determining whether Respondent is in
violation of this order, the Commission may infer facts adverse to Respondent if it fails to
provide adequate or timely information.
X. Modification
The Commission may amend this Order on its own motion or in accordance with the
procedure described in section 210.76 of the Commission's Rules of Practice and Procedure (19
C.F.R. § 210.76).
XI. Bonding
The conduct prohibited by section III of this Order may be continued during the sixty-day
period in which this Order is under review by the United States Trade Representative, as
delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)) subject to the Respondent's
posting of a bond in the amount of zero percent of the entered value of the covered products.
This bond provision does not apply to conduct that is otherwise permitted by section IV of this
Order. Covered products imported on or after the date of issuance of this Order are subject to the
entry bond as set forth in the exclusion order issued by the Commission, and are not subject to
this bond provision.

8
The bond is to be posted in accordance with the procedures established by the
Commission for the posting of bonds by complainants in connection with the issuance of
temporary exclusion orders. See 19 C.F.R. § 210.68. The bond and any accompanying
documentation are to be provided to and approved by the Commission prior to the
commencement of conduct that is otherwise prohibited by section III of this Order. Upon the
Secretary's acceptance of the bond, (a) the Secretary will serve an acceptance letter on all parties,
and (b) Respondent must serve a copy of the bond and accompanying documentation on
Complainants' counsel.2
The bond is to be forfeited in the event that the United States Trade Representative
approves this Order (or does not disapprove it or takes no action within the review period),
unless the U.S. Court of Appeals for the Federal Circuit, in a final judgment, reverses any
Commission final determination and order as to Respondent on appeal, or unless Respondent
exports or destroys the products subject to this bond and provides certification to that effect that
is satisfactory to the Commission.
The bond is to be released in the event the United States Trade Representative
disapproves this Order and no subsequent order is issued by the Commission and approved (or
not disapproved) by the United States Trade Representative, upon service on Respondent of an
order issued by the Commission based upon application therefore made by Respondent to the
Commission.
2 See Footnote 1.

By order of the Commission.

Lisa R. Barton
Secretary to the Commission
Issued: April 23, 2020

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED
HARDWARE AND SOFTWARE COMPONENTS
Inv. No. 337-TA-1103
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER has been served via EDIS
upon the Commission Investigative Attorney, John Shin, Esq. and the following parties as
indicated, on April 23, 2020.
___________________________________
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Rovi Corporation, Rovi Guides,
Inc., and Veveo, Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Email: dcawley@mckoolsmith.com
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On Behalf of Respondents Comcast Corporation, Comcast
Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business
Communications, LLC, Comcast Holdings Corporation, and
Comcast Shared Services, LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS, LLP
555 Eleventh Street, NW, Suite 100
Washington, DC 20004
Email: bert.reiser@lw.com
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☒ Other: Email Notification
of Availability for Download

PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, DC
In the Matter of
CERTAIN DIGITAL VIDEO
RECEIVERS AND RELATED
HARDWARE AND SOFTWARE
COMPONENTS
Inv. No. 337-TA-1103
COMMISSION OPINION
The Commission has determined that there has been a violation of section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. § 1337, with respect to claim 9 of U.S. Patent No.
7,779,011 (“the ’011 patent”) on review of the final initial determination (“final ID”) of the
presiding administrative law judge’s (“ALJ”). The Commission has determined to issue a
limited exclusion order (“LEO”) and cease and desist orders (“CDOs”) directed to infringing
digital video receivers and related hardware and software and to set the bond during the period of
Presidential review in the amount of zero percent of entered value. This opinion sets forth the
Commission’s reasoning in support of that determination. In addition, the Commission adopts
the findings in the final ID that are not inconsistent with this opinion.
I. 	BACKGROUND
A. 	Procedural History
On March 16, 2018, the Commission instituted this investigation based on a
supplemented complaint filed on behalf of Rovi Corporation of San Jose, California; Rovi
Guides, Inc. of San Jose, California; and Veveo, Inc. of Andover, Massachusetts (collectively,
“Rovi”); as well as Rovi Technologies Corporation of San Jose, CA. The supplemented
complaint alleges violations of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C.

PUBLIC VERSION
2
§ 1337 (“section 337”), based upon 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 related hardware and software components by reason of infringement of one or
more claims of the ’011 patent; U.S. Patent No. 7,937,394 (“the ’394 patent”); U.S. Patent No.
7,827,585 (“the ’585 patent”); U.S. Patent No. 9,294,799 (“the ’799 patent”); U.S. Patent No.
9,396,741 (“the ’741 patent”); U.S. Patent No. 9,578,363 (“the ’363 patent”); U.S. Patent No.
9,621,956 (“the ’956 patent”); and U.S. Patent No. 9,668,014 (“the ’014 patent”). 83 Fed. Reg.
11791-2 (Mar. 16, 2018). The Commission’s notice of investigation named as respondents
Comcast Corporation of Philadelphia, Pennsylvania; Comcast Cable Communications, LLC of
Philadelphia, Pennsylvania; Comcast Cable Communications Management, LLC of Philadelphia,
Pennsylvania; Comcast Business Communications, LLC of Philadelphia, Pennsylvania; Comcast
Holdings Corporation of Philadelphia, Pennsylvania; and Comcast Shared Services, LLC of
Chicago, Illinois (collectively, “Comcast”). Id. at 11792. The Office of Unfair Import
Investigations (“OUII”) was also named as a party in this investigation. Id.
The Commission previously terminated the investigation as to (1) complainant Rovi
Technologies Corporation; (2) the ’956, ’394, ’014, ’799, and ’363 patents in their entirety; and
(3) certain claims of the ’011, ’585, and ’741 patents. Order No. 12, unreviewed, Notice (July
24, 2018); Order No. 33, unreviewed, Notice (Sept. 19, 2018); Order 39, unreviewed, Notice
(Oct. 25, 2018). At the time of the hearing, only the following claims were pending: claims 1
and 9 of the ’011 patent, claims 1, 8, 11, 15, and 22 of the ’585 patent, and claims 1, 8, and 14 of
the ’741 patent.
On June 3, 2019, the ALJ issued an ID, inter alia, granting Rovi’s motions for summary
determination as to importation and sale after importation. Order No. 47 at 15-24 (June 3, 2019)

PUBLIC VERSION
3
(“SD”). The SD relied on the Commission’s determination in a companion case, Certain Digital
Video Receivers and Hardware and Software Components Thereof, Inv. No. 337-TA-1001 (“the
1001 Investigation”), that Comcast is an importer within the meaning of section 337. SD at 16.
The SD found that the same types of control and importation activity were conducted in both the
1001 Investigation and in the present investigation. Id. In addition, the SD found that the same
Supply Agreements were at issue. Id. Thus, the SD found that the Commission’s determination
that Comcast is an importer governs the issue in the present investigation. Id. On June 11, 2019,
Comcast filed a petition for review of the SD. On June 18, 2019, Rovi responded to Comcast’s
petition. On June 25, 2019, OUII responded to Comcast’s petition. On August 15, 2019, the
Commission determined to review in part the SD as to reimportation by Comcast and to take no
position on that issue, but the Commission determined not to review the remainder of the SD.
Notice at 3 (Aug. 15, 2019) (“Notice of Review”), published at 84 Fed. Reg. 43611 (Aug. 21,
2019).
On June 4, 2019, the ALJ issued the final ID on violation of section 337. On June 17,
2019, Comcast and Rovi each filed a petition for review of the final ID. On June 25, 2019,
Comcast and Rovi responded to each other’s petition, and OUII responded to both.
In addition, the Commission received comments from Rovi on the public interest
pursuant to Commission Rule 210.50(a)(4). The Commission also received comments from the
following organizations in response to the Commission’s notice soliciting public interest
comments, 84 Fed. Reg. 27804 (June 14, 2019): Tea Party Patriots Action; Americans for
Limited Government; Frontiers of Freedom Institute; Market Institute; and Conservatives for
Property Rights (joined by 60 Plus Association, and Americans for Limited Government). The

PUBLIC VERSION
4
Commission also received correspondence from Representatives Peter King (R-N.Y.); Jackie
Speier (D-Cal.); and Steve Stivers (R-Ohio).
On August 15, 2019, the Commission determined not to review the final ID’s findings
that the asserted claims of the ’585 patent are invalid in view of the prior art; and that Rovi failed
to demonstrate infringement of the asserted claims of the ’741 patent. Notice of Review at 3.
The Commission thereby terminated the investigation as to the ’585 and ‘741 patents with a
finding of no violation of section 337. The Commission determined to review the final ID’s
findings of infringement of the asserted claims of the ’011 patent by Comcast’s non-redesigned1
system. Id. The Commission solicited briefing on certain questions pertaining to infringement
of the ’011 patent, as follows:
1. 	Please explain, with attention to the statutory language of 35 U.S.C. 271(a) and any
differences in claim language between claims 1 and 9 of the ’011 patent, the
circumstances in which each act of direct infringement by Comcast occurs for each
claim. (For example, is there direct infringement by Comcast’s testing or other use of
its system, by a Comcast user’s own searching, or both.)
2. 	Please explain, with attention to the statutory language of 35 U.S.C. 271(a) and any
differences in claim language between claims 1 and 9 of the ’011 patent, the
circumstances in which Comcast’s users directly infringe either claim. In connection
with your response to this question please explain whether and how Comcast’s users
can directly infringe claim 9 but not claim 1, or vice versa.
3. 	Based on your answers to questions 1 and 2, please explain for claims 1 and 9 of the
’011 patent whether and how the “single entity” test of Akamai Technologies, Inc. v.
Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) should be applied and
whether the final ID’s application of that test to claim 1 of the ’011 patent, see Final
ID at 271, is correct.
1 During the investigation, Comcast submitted evidence regarding two redesigns that the ID
found do not infringe claims 1 and 9 of the ’011 patent: (1) the [[ ]] Design Alternative and (2)
the [[ ]] Design Alternative. ID at 80-2. Both of those redesigns modify Comcast’s servers to
prevent the display of highlighted search results to users. ID at 80-83. The Commission
determined not to review this finding. Notice of Review at 3.

PUBLIC VERSION
5
Id. at 4. In connection with this briefing, the Commission stated that “the parties are to take as
true: all of the final ID’s findings as to the structure, function, and operation of Comcast’s X1
system; and Comcast’s inducement of its users’ conduct.” Id. The Commission further
explained that “Comcast’s petition for review of the final ID questioned the final ID’s findings as
to whether the accused products are ‘articles that—infringe’ the asserted patents, 19 U.S.C.
§ 1337(a)(1)(B) & (a)(1)(B)(i), and the scope of the Commission’s authority to find an unfair
trade act based upon Comcast’s direct infringement.” Notice of Review at 3. The Commission
explained that “[s]uch issues fall within the scope of the Commission’s review of infringement as
to the ’011 patent, and the Commission will address Comcast’s arguments based upon the
Commission’s infringement findings as to the ’011 patent.” Id.
On August 29, 2019, Comcast and Rovi submitted opening briefs on the issues under
review, and on remedy, the public interest, and bonding.2 On that same day, OUII filed an
opening brief on remedy, the public interest, and bonding.3 On September 10, 2019, Comcast
and Rovi (but not OUII) filed replies.4
On March 2, 2020, the Federal Circuit issued a precedential opinion in an appeal from the
Commission’s final determination in the related 1001 Investigation mentioned above, Certain
Digital Video Receivers and Hardware and Software Components Thereof, Inv. No. 337-TA-
2 Comcast Resp’ts Resp. to Comm’n Notice and Req. for Written Submissions (Aug. 29, 2019)
(“Comcast Br.”); Rovi’s Resp. to Comm’n Decision to Rev. in Part a Summary Determination
and to Rev. in Part a Final Initial Determination (Aug. 29, 2019) (“Rovi Br.”).
3 Resp. of the Office of Unfair Import Investigations to the Commission’s Req. for Written
Submissions on Remedy and the Public Interest (Aug. 29, 2019) (“OUII Br.”). OUII’s
participation in this investigation is limited to importation, jurisdiction, and remedy.
4 Comcast Resp’ts Resp. to Compl’ts and OUII’s Written Submissions Regarding Comm’n
Notice and Req. for Written Submissions (Sept. 10, 2019) (“Comcast Reply Br.”); Rovi’s Reply
to Comcast Resp’ts Resp. to Comm’n Notice and Req. for Written Submissions (Sept. 10, 2019)
(“Rovi Reply Br.”).

PUBLIC VERSION
6
1001. Comcast Corp. v. Int’l Trade Comm’n, 951 F.3d 1301 (Fed. Cir. 2020). The 1001
Investigation involved the same parties as the present investigation and it raised several of the
same issues presented here, including whether Comcast’s X1 set-top boxes (“STBs”) are
“articles that infringe” and whether Comcast is an importer within the meaning of section 337.
In Comcast, the Federal Circuit affirmed the Commission’s finding that Comcast’s X1
STBs are “articles that infringe” when Comcast induces Comcast’s STB users to directly infringe
the asserted claims by using them in the United States after importation. Comcast, 951 F.3d at
1308 (“It is undisputed that direct infringement of the ’263 and ’413 patents occurs when the
imported X1 set-top boxes are fitted by or on behalf of Comcast and used with Comcast’s
customers’ mobile devices. Reversible error has not been shown in the Commission’s
determinations that the X1 set-top boxes imported by and for Comcast for use by Comcast’s
customers are ‘articles that infringe’ in terms of Section 337.”). The Federal Circuit’s decision
in Comcast followed the Court’s earlier en banc decision in Suprema, Inc. v. International Trade
Commission, 796 F.3d 1338 (Fed. Cir. 2015) (en banc), which held that “the Commission’s
interpretation that the phrase ‘articles that infringe’ covers goods that were used by an importer
to directly infringe post-importation as a result of the seller’s inducement is reasonable.” Id.
(quoting Suprema, 796 F.3d at 1352-53).
The Federal Circuit also affirmed the Commission’s determination that Comcast is an
“importer” within the meaning of section 337. Id. at 1308-10. This finding supports the SD’s
determination that Comcast is an importer in the current investigation as well. The SD found
that Comcast and its suppliers are similarly situated insomuch as almost all of the same suppliers
are involved in this investigation, the Supply Agreements are the same, and the control and
conduct during importation are the same. SD at 15-24. 	The Commission determined not to

PUBLIC VERSION
7
review the relevant parts of the SD. Notice of Review at 3. Accordingly, those portions of the
SD became the Commission’s final determination on August 15, 2019, as to whether Comcast is
an importer.
B. 	The Accused Products
Rovi accuses Comcast’s X1 cable STBs of infringement. See ID at 44. These STBs are
imported with Comcast’s proprietary operating system. Id. at 45. 	A variety of manufacturers
including ARRIS, Cisco, and Samsung manufacture the accused boxes on behalf of Comcast. Id. at
44. The final ID explains, with respect to the products accused of infringing the ’011 patent claims:
“The Accused 011 Products are STBs, initially imported on or after April 1, 2016, that implement
the X1 Platform. Comcast’s X1 System includes an accused STB, an IPG [interactive program
guide] accessed through the STB, [[ 	REDACTED
]]:
[[FIGURE REDACTED]]

PUBLIC VERSION
8
ID at 46-47 (reprinting CDX-0008C.27). As shown in that figure, [[ 	REDACTED
]]. As also shown in that figure, the remote control and STB are
necessary, but not sufficient, to practice the claims of the ’011 patent.
C. 	The ’011 Patent
The ’011 patent (JX-1), originally assigned to Veveo, Inc., issued in 2010 from non-
provisional and provisional applications filed in 2005. The patent discloses and claims logic and
processes for interpreting user input for an “overloaded keypad.” An “overloaded keypad” is one
for which multiple letters are assigned to each key, as is customary with touch-tone dialing. See,
e.g., ’011 patent, Fig. 1. The overall system architecture is shown in Figure 2 of the patent:
’011 patent, Fig. 2. For both asserted claims, users enter information via a remote control (208), or,
less commonly, via telephone (210) or hand-held device (206). See ’011 patent, col. 4 lines 43-51.
That information pertains to searches for relevant television programming. The searches are
processed in a server farm (202), or in alternate embodiments, on the devices themselves. ’011

PUBLIC VERSION
9
patent, col. 4 lines 20-26. The search results are then displayed with the user’s entered input
highlighted. Figures 6A and 6B show exemplary search results from a search for “866”:
’011 patent, Figs. 6A & 6B.
Rovi asserts claims 1 and 9 against Comcast, which are reprinted, side-by-side, below, with
reference characters (a)-(f) added to facilitate discussion of the claim limitations. As can be seen,
the two claims are similar. Claim 1 is directed to a “method,” whereas claim 9 is directed to a
“computer-readable medium comprising instructions for causing a computer system to” perform the
claim limitations. Claim 9 also includes certain references to a “display device.” The parties do not
dispute that claim 9 should be treated as a system or apparatus claim. Rovi Br. at 12; Comcast Br.
at 13.
Claim 1 	Claim 9
A method of processing unresolved
keystroke entries by a user from a
keypad with overloaded keys in
A system for processing
unresolved keystroke entries by a
user from a keypad with

PUBLIC VERSION
10
Claim 1 	Claim 9
which a given key is in fixed
association with a number and at
least one alphabetic character, said
unresolved keystroke entries being
directed at identifying an item from
a set of items, each of said items
being associated with information
describing the item comprising one
or more words, said method
comprising:
overloaded keys in which a given
key is in fixed association with a
number and at least one alphabetic
character, said unresolved
keystroke entries being directed at
identifying an item from a set of
items, each of said items being
associated with information
describing the item comprising one
or more words, said system
comprising a computer-readable
medium comprising instructions
for causing a computer system to:
(a) indexing said items by associating
subsets of said items with
corresponding strings of one or
more unresolved keystrokes for
overloaded keys so that the subsets
of items are directly mapped to the
corresponding strings of unresolved
keystrokes for various search query
prefix substrings;
(a) index said items by associating
subsets of said items with
corresponding strings of one or
more unresolved keystrokes for
overloaded keys so that the subsets
of items are directly mapped to the
corresponding strings of
unresolved keystrokes for various
search query prefix substrings;
(b) for at least one subset of items,
which determining letters and
numbers present in the information
associated with and describing the
indexed items of said subset caused
said items to be associated with the
strings of one or more unresolved
keystrokes that are directly mapped
to said subset;
(b) for at least one subset of items,
which determine letters and
numbers present in the information
associated with and describing the
indexed items of said subset
caused said items to be associated
with the strings of one or more
unresolved keystrokes that are
directly mapped to said subset;
(c) subsequent to said indexing,
receiving from a user a search query
for desired items composed of
unresolved keystrokes, said search
query comprising a prefix substring
for at least one word in information
associated with the desired item;
(c) subsequent to said indexing,
receive from a user a search query
for desired items composed of
unresolved keystrokes, said search
query comprising a prefix
substring for at least one word in
information associated with the
desired item;
(d) in response to each unresolved
keystroke, identifying and
displaying the subsets of items, and
information associated therewith,
that are associated with the strings
of one or more unresolved
(d) in response to each unresolved
keystroke, identify and display on
a display device at least one of the
subsets of items, and information
associated therewith, that are
associated with the strings of one

PUBLIC VERSION
11
Claim 1 	Claim 9
keystrokes received from the user
based on the direct mapping of
strings of unresolved keystrokes to
subsets of items;
or more unresolved keystrokes
received from the user based on
the direct mapping of strings of
unresolved keystrokes to subsets
of items;
(e) in response to each unresolved
keystroke, as the identified items
are displayed, highlighting the
letters and numbers present in the
one or more words in said
information describing the
identified items that were
determined to have caused the
displayed items to be associated
with the strings of unresolved
keystrokes that are directly mapped
to said items received so as to
illustrate to the user how the
unresolved keystrokes entered
match the information associated
with the displayed items; and
(e) in response to each unresolved
keystroke, as the identified items
are displayed, highlight on the
display device the letters and
numbers present in the one or
more words in said information
describing the identified items that
were determined to have caused
the displayed items to be
associated with the unresolved
keystrokes received so as to
illustrate to the user how the
strings of unresolved keystrokes
that are directly mapped to said
items entered match the
information associated with the
displayed items; and
(f) ordering the displayed items in
accordance with one or more given
criteria.
(f) order on the display device the
displayed items in accordance with
one or more given criteria.
In the accused products, the generation of the index reflected in limitations (a) and (b) of
both claims [[ 	REDACTED 	]]. The index is available to be
searched by the user of the accused products via a remote-control query, i.e., each user puts into
service the Comcast system for processing unresolved keystroke entries with his or her search
query. There is no dispute that limitations (c)-(f) occur in response to each search query by a user
with his or her remote control.5
5 Limitations (c)-(f) expressly recite that they occur in response to user input. Limitation (c)
(“subsequent to said indexing, receive from a user a search query . . . composed of unresolved
keystrokes”); limitation (d) (“in response to each unresolved keystroke”); limitation (e) (“in
response to each unresolved keystroke”); limitation (f) (displaying the items from the earlier
steps). The final ID finds, and the parties do not dispute, that limitation (b) is performed as part
of the indexing process. ID at 67-73, 279.

PUBLIC VERSION
12
II. 	STANDARD
With respect to the issues under review, “the Commission may affirm, reverse, modify,
set aside or remand for further proceedings, in whole or in part, the initial determination of the
administrative law judge.” 19 C.F.R. § 210.45(c). The Commission also “may take no position
on specific issues or portions of the initial determination,” and “may make any finding or
conclusions that in its judgment are proper based on the record in the proceeding.” Id.
III. 	ANALYSIS
On review, the Commission finds a violation of section 337 with respect to claim 9 of the
’011 patent. In particular, the Commission finds that Comcast’s users directly infringe claim 9, that
Comcast induces that infringement, and that Comcast’s importation of the X1 STBs, which are used
to induce that infringement, is a violation of section 337. As discussed in more detail below, the
Commission, however, declines to reach the issue of whether there has been a violation based on
Rovi’s theory of infringement as to claim 1 of the ’011 patent.
A. 	Infringement
1. 	Claim 9
The parties all agree that claim 9 should be interpreted as a system or apparatus claim.6
Rovi Br. at 12; Comcast Br. at 13. The final ID found that Comcast’s users directly infringe claim
9. ID at 276. Indeed, the final ID noted that at the end of 2016, Comcast’s customers [[
REDACTED 	]] Id. The final ID explained that
6 See, e.g., Intellectual Ventures I LLC v. Motorola Mobility LLC, 870 F.3d 1320, 1328 (Fed. Cir.
2017) (“Claim 41 is written to claim a ‘device configured’ to perform certain operations . . . .
But the parties have treated Centillion [Data Sys., LLC v. Qwest Commc’ns Int’l, Inc., 631 F.3d
1279 (Fed. Cir. 2011)], which addressed claims to ‘systems comprising’ certain elements, as the
governing one in this case, and for that reason we limit our consideration to what Centillion
means for this case. We do not decide what standards would govern here if claim 41 were not
treated as a system claim under Centillion.”).

PUBLIC VERSION
13
“although the indexing and determining steps required by claim 9 of the ’011 patent take place
[[ 	REDACTED 	]], users still directly infringe because
by initiating the search query, the users ‘control’ and ‘benefit’ from each claimed component of
claim 9.” Id. at 279 (citing Intellectual Ventures I LLC v. Motorola Mobility LLC, 870 F.3d 1320
(Fed. Cir. 2017) and Centillion Data Sys., LLC v. Qwest Commc’ns Int’l, Inc., 631 F.3d 1279 (Fed.
Cir. 2011)). The final ID found that Comcast induces its users’ infringement of claim 9. ID at 274-
75, 276-82.
a) 	The Parties’ Arguments and Issues of Waiver
In response to the Notice of Review, Rovi asserts that Comcast (by making or using) and its
users (by using) each directly infringe claim 9. The Commission describes Comcast’s direct
infringement arguments and then Comcast’s users’ direct infringement arguments below as well as
resolves various waiver arguments. The Commission then analyses the substance of those
arguments.
Comcast’s Alleged Direct Infringement Based Upon “Makes”: In its opening brief on
Commission review, Rovi contends that Comcast is a direct infringer because it “makes” and
“uses” the claimed system within the meaning of 35 U.S.C. § 271(a). Rovi Br. at 7. As to
“makes,” Rovi contends that direct infringement for “making” occurs when an accused infringer
“‘adds the final limitations’ to complete the system.” Id. at 8 (quoting Centrak, Inc. v. Sonitor
Techs., Inc., 915 F.3d 1360, 1372 (Fed. Cir. 2019)). Rovi emphasizes Comcast’s control over the
X1 system, and its control over the manufacture of the accused X1 set top boxes. Rovi Br. at 8.
Comcast argues that the issue has been waived. Comcast Reply Br. at 6. The Commission agrees
with Comcast that Rovi has waived an opportunity to raise a theory of direct infringement based on

PUBLIC VERSION
14
“making” the infringing system; Rovi’s arguments in its post-hearing brief are based on using, not
on making, the infringing system. Rovi Post-Hearing Br. at 26-27.
Comcast’s Alleged Direct Infringement Based Upon “Uses”: As to direct infringement by
“use,” Rovi quotes Centillion: “[T]o ‘use’ a system for purposes of infringement, a party must put
the invention into service, i.e., control the system as a whole and obtain benefit from it.” Centillion,
631 F.3d at 1284. Rovi explains that Comcast “uses” the claimed system when Comcast employees
use the search feature for testing purposes or otherwise from Comcast premises. Rovi Br. at 9.
Comcast asserts that Rovi also waived this theory of direct infringement. Comcast Reply Br. at 7.
The Commission agrees with Comcast that Rovi has waived direct infringement by Comcast by
failing to allege such infringement in Rovi’s post-hearing brief. Rovi Post-Hearing Br. at 26-27;
Comcast Reply Br. at 7 & n.4.
Comcast’s Users’ Direct Infringement Based Upon “Uses”: Relying extensively on
Centillion, Rovi also argues that Comcast’s users directly infringe each time they use the Comcast
system to search. Rovi Br. at 12. Comcast, citing Centillion and Intellectual Ventures, disagrees,
and argues that “Comcast customers do not directly infringe claim 9 because they do not ‘use’ (or
“control and benefit from”) the only computer-readable medium that allegedly comprises the
instructions accused of satisfying the ‘indexing’ limitation, which is the [[ REDACTED ]].”
Comcast Br. at 18. Comcast asserts that “[w]hen Comcast’s customers initiate a numeric keypad
search using an X1 remote control, the [[ 	REDACTED 	]] is not invoked or used in any
way. . . . Therefore, according to Comcast, at most Comcast’s customers could be understood to
‘use’ the [[REDACTED]] when they conduct a search, but they cannot be understood to ‘use’ the
[[REDACTED]] at all.” Id. at 20 (emphasis original).

PUBLIC VERSION
15
In reply, Rovi fairly characterizes Comcast’s argument as follows:
Comcast does not dispute that its X1 System includes every element of
system claim 9, or that its users invoke the X1 System as a whole to
perform overloaded key search queries. 	Comcast Br. 17-20. 	Comcast
does not dispute that it instructs its customers how to use the X1 System
to perform overloaded key search queries and encourages such use.
Rather, Comcast argues that its customers’ use of the X1 system is not
direct infringement because customers do not “control and benefit from”
a single limitation—the “indexing” component. Id. at 18.
Rovi Reply Br. at 12.
b) 	Comcast’s Users Directly Infringe Claim 9
Comcast’s arguments are predicated on its assertion that in order to infringe an apparatus
claim, a user must “control and benefit from” each limitation of the claim. Comcast Br. at 18.
Comcast argues that its system includes a “[[REDACTED]],” which carries out the “indexing”
limitation of claim 9 (limitation (a) as annotated above). According to Comcast, unlike other
limitations of the claims, which are performed in response to a user’s query, the [[
REDACTED 	]]. Comcast Br. at 18-20. Comcast asserts that “Comcast’s customers do
not ‘request service’ from the [[REDACTED]] and they receive no responses from it at all.”
Comcast Br. at 20. Rovi responds that the [[REDACTED]] is merely part of the [[
REDACTED 	]]. Rovi Reply Br. at 13. Rovi cites the final ID’s
statement that [[ 	REDACTED 	]]” Id. (quoting ID at 48 n.30 (in turn
quoting Tr. (Bovik) at 561:13-16)).
Centillion, like the present case, deals with a user interacting with the system of a
telecommunications provider (Qwest). Centillion, 631 F.3d at 1281. Also like the present case,
that system included a “back-end” operated by Qwest and a “front-end” installed on user premises
(on a user’s computer system). Id. The Federal Circuit held that “to ‘use’ a system for purposes of

PUBLIC VERSION
16
infringement, a party must put the invention into service, i.e., control the system as a whole and
obtain benefit from it.” Id. at 1284. The Federal Circuit found that the standard operation of the
system at issue was an “infringing” use, because once a user subscribes to the Qwest system, Qwest
will automatically generate back-end reports.7 Id. at 1285 (“By subscribing a single time, the user
causes the back-end processing to perform its function on a monthly basis.”). Centillion also states
that in “order to ‘put the system into service,’ the end user must be using all portions of the claimed
invention.” Id. at 1284.
In Intellectual Ventures, the Federal Circuit attempted to clarify Centillion. The Court
explained that based on Centillion, “it follows that, to use a system, a person must control (even if
indirectly) and benefit from each claimed component.” Id. The Court then applied the component-
by-component test as to benefit, but not control:
In an analysis of a system claim under Centillion, proof of an infringing
“use” of the claimed system under § 271(a) requires the patentee to
demonstrate that the direct infringer obtained “benefit” from each and
every element of the claimed system. See Centillion, 631 F.3d at 1284.
In addition, the direct or indirect control required “is the ability to place
the system as a whole into service.” Id.
Intellectual Ventures, 870 F.3d at 1329. The Court then examined on a component-by-
component basis benefit, but not control. Id. at 1329-31. Judge Newman dissented from this
reading of Centillion, arguing that there is no component-by-component requirement in
Centillion for benefit or control. Id. at 1333 (Newman, J., dissenting). In a subsequent non-
precedential decision, the Court “decline[d] the parties’ invitations to expand our doctrine on the
7 Centillion also examines an “on-demand” operation of the system in which a user exercises
more control. Id. at 1285. We focus on the “normal” operation, because that operation presents
facts closer to the case at hand.

PUBLIC VERSION
17
control aspect of ‘use’ of system claims under § 271(a).” Grecia v. McDonald’s Corp., 724 F.
App’x 942 (Fed. Cir. Mar. 6, 2018).
The Commission finds, consistent with the foregoing cases, that control and benefit are
met by Comcast’s users, who use the X1 system to infringe under 35 U.S.C. § 271(a). As to
benefit in the present case, the Commission finds, and Comcast does not dispute, that Comcast’s
customers “obtain[] ‘benefit’ from each and every element of the claimed system,” Intellectual
Ventures, 870 F.3d at 1329, including the indexing (i.e., limitation (a) and the related
determining element of limitation (b)). The indexing exists to serve user queries, ID at 279, and
there is no point in creating, maintaining or updating an index corresponding to user remote-
control searches, if the index [[ 	REDACTED 	]] is never
queried. Thus, Comcast’s users benefit from each and every element of the system claimed in
claim 9 of the ’011 patent. Intellectual Ventures, 870 F.3d at 1329; see also Centillion, 631 F.3d
at 1285-86.
The Commission further finds that Comcast’s users have “the ability to place the system
as a whole into service,” satisfying “the direct or indirect control” requirement. Intellectual
Ventures, 870 F.3d at 1329. Each user puts into service the Comcast system for processing
unresolved keystroke entries with his or her search query. See, e.g., ID at 276-79; Tr. (Bovik) at
603:10-606:1; Tr. (Shamos) at 389:5-9, 391:3-24, 392:20-393:5, 394:9-395:18, 396:23-397:9,
397:10-398:4, 398:24-399:4, 421:25-423:17; CX-0355C; CX-0356C; CX-0357C. Contrary to
Comcast’s argument, the Commission does not find adequate support in Federal Circuit caselaw
to conclude that user control must be established on a component-by-component basis.
However, even if the Federal Circuit caselaw were read to require some control on a component-
by-component basis, the Commission finds that the [[REDACTED]], which Comcast asserts is

PUBLIC VERSION
18
not controlled by the user, is merely part of the [[ 	REDACTED 	]], which
creates the index and conducts the search. See ID at 48 n.30. [[ 	REDACTED
]], which is part of the X1 system. ID at 46-48. The
Commission finds, in accordance with the ID (at pp. 47-48), that the [[ 	]] is the appropriate
component under Comcast’s interpretation of Federal Circuit caselaw, and that Comcast’s users
control, even if indirectly, the [[ 	]] under Centillion and Intellectual Ventures.8 The
Commission therefore rejects Comcast’s argument that Comcast’s users do not meet a “control”
requirement with respect to indexing. Comcast asserts that its users do not control the Comcast
system because Comcast [[ 	REDACTED
]]. Comcast Br. 7-9; Comcast
Reply Br. 14. The Commission agrees with Rovi that “Comcast is breaking down the X1 system
into smaller and smaller functional components,” Rovi Reply Br. at 13, i.e., by attempting to
focus on the [[REDACTED ]] in isolation. As stated, the [[ 	REDACTED 	]] is part of the
[[ ]] which users at least indirectly control through their search queries. Thus, we find that
Comcast, by deconstructing the XI system into smaller and smaller components, has not rebutted
Rovi’s evidentiary showing that the “control” requirement is met.
c) 	Comcast Induces Its Users’ Infringement
Comcast does not dispute its active inducement of its users’ direct infringement
[[ 	REDACTED 	]], and the Commission affirms the final ID’s findings on this issue. ID at
272-82; Comcast Br. at 21. As found in the ID, “Comcast provides videos and documents that
instruct, direct, or advise its customers to use the X1 unresolved overloaded key search
8 It is undisputed that the same result would follow if the Commission treated the [[
REDACTED 	]] as the appropriate component; Comcast’s argument relies on
consideration of the [[ REDACTED ]] in isolation.

PUBLIC VERSION
19
functionality implemented on the X1 System in a way that infringes claim 9 of the ’011 patent.” Id.
at 274. The Commission notes that the record demonstrates that there are [[
REDACTED 	]]. ID at 276.
The Commission further notes that on August 16, 2019, the Commission found two
Comcast redesigns, which prevent search results from being highlighted, see ID at 80-83, to be
noninfringing. Notice, 84 Fed. Reg. 43611, 43612 (Aug. 21, 2019) (“The Commission has
determined not to review the remainder of the final ID’s findings as to the ’011 patent, including the
final ID’s findings that Comcast’s two redesigns do not infringe claims 1 and 9 of the ’011
patent.”). Notwithstanding the passage of time since that notice, and notwithstanding Comcast’s
concession of infringement of claims 1 and 9 of the ’011 patent, the record provides no evidence
that Comcast has implemented either redesign.
d) 	Comcast’s Importation of its Set-Top Boxes is a Violation of Section
337
Comcast has argued repeatedly in this proceeding that the Commission’s authority does not
extend to a section 337 violation predicated on induced infringement. The Commission disagrees.
As to claim 9, the Commission finds that the Federal Circuit’s en banc decision in Suprema and its
subsequent decision in Comcast control. In Suprema, the Federal Circuit held that section 337
encompasses inducement of infringement. Suprema, 796 F.3d at 1346-47. In particular, the
Federal Circuit explained: “Induced infringement is one kind of infringement, and when it is
accomplished by supplying an article, the article supplied can be an ‘article that infringes’ if the
other requirements of inducement are met.” Id. at 1349. The Federal Circuit in Comcast upheld the
Commission’s determination that section 337 applies to products that were imported on behalf of a
respondent and supplied to its customers with instructions to use the imported products to directly

PUBLIC VERSION
20
infringe the asserted system claims.9 Comcast, 951 F.3d at 1308. That is precisely the situation
here insomuch as the same parties and same conduct is involved. Specifically, the Commission has
found that Comcast induced the direct infringement of claim 9 by its users’ by supplying the
accused STBs with instructions for infringing use. Accordingly, the Commission finds that the
STBs are “articles that infringe” and Comcast has violated section 337 by importing those
infringing STBs into the United States.
2. 	Claim 1
The final ID found that Comcast, but not its users, performed all the steps of claim 1,
including the steps regarding indexing. ID at 65-83 & 270-71. Rovi agrees with this finding and
acknowledges that only Comcast, and not Comcast’s users, directly infringes claim 1 of the ’011
patent. Rovi Br. at 9-10, 12-13. Thus, Rovi seeks to establish a violation of section 337 as to claim
9 The Commission finds based on the record of the present investigation that, even if the location
of Comcast’s inducing conduct were legally relevant, and it is not, see Comcast, 951 F.3d at
1307-08, Comcast designed the X1 STBs to be used in an infringing manner and directed their
manufacture overseas—requiring, among other things overseas installation of the relevant
software onto the STBs. See, e.g., Order No. 47 at 10-13, 15. Comcast then directed and caused
the importation of those STBs to Comcast facilities in the United States while simultaneously
inducing its users to infringe through the continuous provision of videos and documents
instructing its users how to infringe. See, e.g., id. The record demonstrates that initially
Comcast practiced the claims of the ’011 patent under a license from Rovi, and Comcast
instructed its customers to practice the claims of the ’011 patent. When that license expired, and
prior to the importation of any of the X1 STBs at issue in this investigation, Comcast continued
to instruct its users to practice the claims of the ’011 patent, which by virtue of the expiration of
the license became induced infringement. That inducement continued long after the license
expired, including throughout this investigation, as Comcast refused for years to disable the
infringing functionality, and during that time, Comcast continued to induce its users’
infringement and to import the X1 STBs.
In the Comcast appeal, Comcast attempted to draw distinctions between the facts in that
investigation and the Federal Circuit’s decision in Suprema. As set forth in Comcast, those
distinctions are irrelevant. Comcast, 951 F.3d at 1307-08. Moreover, those distinctions are
factually false. In Suprema, Suprema encouraged Mentalix to infringe after importation by
importing a Suprema scanner and then cooperating with Mentalix (in the United States), after
importation, to combine that previously-imported scanner with Mentalix’s software. Suprema,
796 F.3d at 1343; id. at 1354 (Dyk, J., dissenting).

PUBLIC VERSION
21
1 based on Comcast’s direct infringement of the claim. Rovi does not seek to establish a violation
of section 337 as to claim 1 based on a theory of indirect infringement by Comcast as it does with
regard to claim 9. Rovi Br. at 12-13.
The Commission declines to reach the issue of whether there has been a section 337
violation based on Rovi’s theory of infringement of claim 1 of the ’011 patent. The remedy issuing
herein for claim 9 provides the same relief as would be provided under claim 1. The added delay to
the parties and burden on the Commission in resolving the issues concerning claim 1 are unjustified
given the relief afforded to Rovi as to claim 9 (discussed above), which covers the same accused
products as claim 1. See Yingbin-Nature (Guangdong) Wood Indus. Co., Ltd. v. Int’l Trade
Comm’n, 535 F.3d 1322, 1331-32 (Fed. Cir. 2008) (finding that there was no justiciable dispute as
to infringement of certain patent claims, where the exclusion order covered the same goods based
on infringement of other patent claims). Accordingly, the Commission has decided to take no
position on the issues concerning infringement of claim 1.10
IV. 	REMEDY, THE PUBLIC INTEREST, AND BONDING
A. 	Remedy
Where a violation of section 337 has been found, the Commission must consider the issues
of remedy, the public interest, and bonding. Section 337(d)(1) provides that “[i]f the Commission
determines, as a result of an investigation under this section, that there is a violation of this section,
10 The Notice of Review also solicited briefing on “whether and how the ‘single entity’ test of
Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015)
should be applied and whether the final ID’s application of that test to claim 1 of the ’011 patent,
see Final ID at 271, is correct.” Notice of Review at 4. Akamai allows liability for performance
of certain method claims where one party’s partial performance of the claims can fairly be
attributed to the other party’s partial performance. The parties agree that Akamai is limited to
method claims, and therefore does not affect claim 9. Rovi Br. at 15; Rovi Reply Br. at 16;
Comcast Reply Br. at 15.

PUBLIC VERSION
22
it shall direct that the articles concerned, imported by any person violating the provision of this
section, be excluded from entry into the United States, unless, after considering the [public interest],
it finds that such articles should not be excluded from entry.” 19 U.S.C. § 1337(d)(1). The
Commission has “broad discretion in selecting the form, scope, and extent of the remedy.”
Viscofan, S.A. v. US. Int’1 Trade Comm’n, 787 F.2d 544, 548 (Fed. Cir. 1986).
1. 	Limited Exclusion Order
Rovi requests the entry of an LEO against Comcast and requests that the LEO
specifically recite Comcast’s suppliers, ARRIS and Technicolor, who import STBs on Comcast’s
behalf.11 Rovi Br. at 16. While Comcast does not dispute that an LEO is the appropriate
remedy, Comcast requests that non-party suppliers be excluded from the order, and Comcast
further requests the addition of certain provisions in the order, including a certification provision
and an exception for warranty and repair. Comcast Br. at 26-29. OUII agrees that an LEO is the
appropriate remedy. OUII Br. at 5-8. The Commission has determined to issue an LEO as to
Comcast’s infringing digital video receivers and hardware and software components thereof.
The Commission addresses below the parties’ arguments concerning the appropriate content of
the exclusion order.
a) 	Certification Provision
Comcast requests that the LEO include a certification provision that allows Comcast to
certify that its imported STBs are being used with the two redesigns that the Commission found
do not infringe. Comcast Br. at 26. Comcast argues that this is necessary because it is not
11 ARRIS and Technicolor refer to Technicolor SA; Technicolor USA, Inc.; Technicolor
Connected Home USA LLC; ARRIS International plc; ARRIS Group Inc.; ARRIS Technology,
Inc.; ARRIS Enterprises LLC; ARRIS Solutions, Inc.; ARRIS Global Ltd.; and Pace Americas;
or any of their affiliated companies, parents, subsidiaries, agents, or other related business
entities, or their successors or assigns.

PUBLIC VERSION
23
readily apparent from inspecting the STBs whether or not they infringe, especially because the
accused functionality resides on domestic servers. Id. Rovi does not object to inclusion of a
certification provision. Rovi Reply Br. at 17. The RD also recommended a certification
provision enabling Comcast to certify that the imported X1 STBs will be used as part of a
noninfringing system. RD at 314.
The Commission will include a certification provision that will allow persons seeking to
import adjudicated noninfringing digital video receivers and hardware and software components
thereof that are potentially subject to exclusion to certify that, to the best of their knowledge and
belief, the products being imported are not subject to exclusion. This certification allows persons
seeking to import XI STBs to certify that, to the best of their knowledge and belief, the XI STBs
will be used as part of an adjudicated noninfringing system. Respondents may only submit a
certification regarding products for use in a system for which there is a prior adjudication of no
infringement. For example, the Commission has already adjudicated two alternative Comcast
redesigns not to infringe. Notice of Review at 1-3. The Commission is including the following
language to address these issues in its LEO:
At the discretion of U.S. Customs and Border Protection (“CBP”) and pursuant to
the procedures it establishes, persons seeking to import digital video receivers and
hardware and software components thereof that are potentially subject to this
Order may be required to certify that they are familiar with the terms of this
Order, that they have made appropriate inquiry, and thereupon state that, to the
best of their knowledge and belief, the products being imported are not excluded
from entry under paragraph 1 of this Order, including because the products will be
used as part of a redesign adjudicated by the Commission in the violation
investigation not to infringe, and thus the products cannot be used in a manner
that infringes the claim of the patent that is the subject of this Order. At its
discretion, CBP may require persons who have provided the certification
described in this paragraph to furnish such records or analyses as are necessary to
substantiate this certification.

PUBLIC VERSION
24
b) 	Warranty and Repair
Comcast argues that it is well settled that exclusion orders are not meant to retroactively
punish customers who already obtained their devices. Comcast Br. at 27. In addition, Comcast
argues that it is undisputed that its STBs are subject to existing service and warranty contracts.
Id. Accordingly, Comcast requests that the exclusion order include an exemption for warranty
and repair. Id. Rovi does not object to inclusion of an exemption for warranty and repair. Rovi
Reply Br. at 17. OUII recommends that there be an exception for replacement parts. OUII Br. at
7. The RD recommends the inclusion of a limited exception for service and repair under existing
warranty and service contracts to avoid unnecessary disruption caused by an LEO. RD at 314-
15. In light of the fact that it is undisputed that Comcast’s STBs are subject to existing service
and warranty contracts, the Commission has determined to include an exemption to the remedial
order for replacement parts used to repair previously-imported STBs under warranty. Tr. at
935:3-6; ID at 314-14. See Certain Sleep-Disordered Breathing Treatment Sys. & Components
Thereof, Inv. No. 337-TA-890, Comm’n. Op. at 47 (Jan. l6, 2015).
c) 	Non-Parties
Finally, Comcast disagrees that any exclusion order should cover non-party suppliers,
ARRIS and Technicolor. Comcast Br. at 28-9. Rovi argues that they should be included because
they are the vehicle that Comcast uses to import its products into the United States. Rovi Br. at
17. Rovi points out that in the 1001 Investigation, the Commission expressly named ARRIS and
Technicolor in the LEO that issued. Rovi Br. at 18. The RD, however, did not recommend
including ARRIS or Technicolor within the scope of the LEO. RD at 313.
The exclusion order that issued in Inv. No. 1001 includes the following provision:
Digital video receivers and hardware and software components-thereof that
infringe one or more of claims 1, 2, 14, and 17 of United States Patent No.

PUBLIC VERSION
25
8,006,263 or one or more of claims 1, 3, 5, 9, 10, 14, and 18 of United States
Patent No. 8,578,413 that are manufactured by, or on behalf of or are imported by
or on behalf of the Respondents or any of their affiliated companies, parents,
subsidiaries, agents, or other related business entities, or their successors or
assigns, including ARRIS and Technicolor to the extent they import such products
on behalf of Respondents, are excluded from entry…
The Federal Circuit in Comcast affirmed the Commission’s decision to name ARRIS and
Technicolor in the LEO that issued in that investigation. Comcast, 951 F.3d at 1310.
As discussed earlier, and is replete in the factual record of this investigation and in the
1001 Investigation (such factual findings were not challenged on appeal), the X1 STBs, inter
alia, are designed by and for Comcast, apparently work only on Comcast’s network, are
preloaded by ARRIS and Technicolor with Comcast’s software, and cannot be sold or marketed
to persons other than Comcast without Comcast’s permission. See, e.g., Order No. 47 at 10-13,
15; 1001 Investigation, Final ID at 10-12. The Commission finds, based upon the same
relationship between ARRIS, Technicolor, and Comcast in this investigation as in the 1001
Investigation, including the same supply relationships, that ARRIS and Technicolor act on behalf
of Comcast in the importation of Comcast’s infringing STBs.
The Commission recognizes that the express inclusion of ARRIS and Technicolor, to the
extent that they act on behalf of Comcast, ought to have no legal effect, and ought to be
unobjectionable to Comcast. Yet, Comcast steadfastly opposes the naming of ARRIS and
Technicolor in the LEO here. It has been standard for decades that Commission limited
exclusion orders extend to infringing articles that are “manufactured by, or on behalf of, or are
imported by, or on behalf of” the infringing respondent.12 The ALJ found and the Commission
12 See, e.g., Stainless Steel Rod Treating Apparatus and Components Thereof, No. 337-TA-97,
Comm’n Op., 1981 WL 50445, at *35 (Dec. 10, 1981). In 1994, Congress codified Commission
practice by recognizing the Commission’s issuance of limited exclusion orders and adopting the
Commission’s requirements for issuance of general exclusion orders. Uruguay Round
[Footnote continued on next page]

PUBLIC VERSION
26
determined not to review that, based on the record of the present investigation, including
Comcast’s relationship to ARRIS and Technicolor, that Comcast is liable as an importer of its
X1 STBs. See Order No. 47 at 8-21.
The Commission has named ARRIS and Technicolor in the exclusion order to provide
clarity to Customs, the parties, and the public that Comcast’s X1 STBs that are made by ARRIS
or Technicolor are subject to the terms of the exclusion order, so long as ARRIS or Technicolor
acts on Comcast’s behalf. Although the record of the present investigation standing alone
provides adequate basis for the Commission’s decision to name ARRIS and Technicolor, the
Commission further notes that given that the limited exclusion order in the 1001 Investigation
expressly named ARRIS and Technicolor, there would be risk of confusion if the terms of the
two orders were disparate and ARRIS and Technicolor were not named in the present exclusion
order. For the foregoing reasons, the Commission has determined that it is appropriate to name
ARRIS and Technicolor in the exclusion order in this investigation in order to assist CBP with
enforcement. To be clear, even absent such express inclusion, ARRIS and Technicolor would be
covered by the order regardless through the statement “manufactured abroad for or on behalf of,
or imported by or on behalf of Comcast or any of their affiliated companies, parents,
subsidiaries, or other related business entities or their successors or assigns.” Accordingly,
infringing STBs imported by or on behalf of Comcast, but manufactured by other parties, such as
ARRIS and Technicolor, are prohibited from entry. The Commission notes that the LEO would
not reach ARRIS and Technicolor were those companies not to act on Comcast’s behalf.
Agreements Act, Pub. L. No. 103-465, § 321, 108 Stat. 4809, 4944-45 (1994), codified at 19
U.S.C. § 1337(d)(2).

PUBLIC VERSION
27
2. 	Cease and Desist Order
Section 337(f)(1) provides that in addition to, or in lieu of, the issuance of an exclusion
order, the Commission may issue a CDO as a remedy for violation of section 337. See 19 U.S.C.
§ 1337(f)(1). CDOs are generally issued when, with respect to the imported infringing products,
respondents maintain commercially significant inventories in the United States or have
significant domestic operations that could undercut the remedy provided by an exclusion order.13
See, e.g., Certain Table Saws Incorporating Active Injury Mitigation Technology & Components
Thereof (“Table Saws”), Inv. No. 337-TA-965, Comm’n Op. at 4-6 (Feb. 1, 2017); Certain
Protective Cases & Components Thereof, Inv. No. 337-TA-780, USITC Pub. No. 4405, Comm’n
Op. at 28 (Nov. 19, 2012) (citing Certain Laser Bar Code Scanners & Scan Engines,
Components Thereof & Prods. Containing Same, Inv. No. 337-TA-551, Comm’n Op. at 22 (June
24, 2007)). Rovi requests CDOs against all of the Comcast entities. Comcast argued that CDOs
are unnecessary because it holds zero inventory of STBs that run the accused functionality.
Comcast Br. at 30. Comcast does not dispute its inventory levels in its submissions to the
Commission. Rather, Comcast suggested that it disabled the functionality, so the STBs in
inventory no longer infringe. OUII supported the imposition of CDOs. OUII Br. at 8-10. The
RD found that Comcast maintains commercially significant levels of inventory and
13 When the presence of infringing domestic inventory or domestic operations is asserted as the
basis for a CDO under section 337(f)(1), Commissioner Schmidtlein does not adopt the view that
the inventory or domestic operations needs to be “commercially significant” in order to issue the
CDO. See, e.g., Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-
1058, Comm’n Op. at 65, n.24 (Mar. 25, 2019); Table Saws, Comm’n Op. at 6-7, n.2 (Feb. 1,
2017). In Commissioner Schmidtlein’s view, the presence of some infringing domestic
inventory or domestic operations, regardless of its commercial significance, provides a basis to
issue a CDO. Id.

PUBLIC VERSION
28
recommended that the Commission issue CDOs to Comcast with a limited exception for service
and repair. RD at 316-17.
The Commission has determined to issue CDOs against Comcast Corporation; Comcast
Cable Communications, LLC; Comcast Cable Communications Management, LLC; Comcast
Business Communications, LLC; Comcast Holdings Corporation; and Comcast Shared Services,
LLC. All of these entities are domestic entities. The Commission agrees with the RD that Rovi has
shown that Comcast maintains commercially significant U.S. inventories of its STBs.14 RD at 316-
17. The Commission has also determined to include an exemption to the CDOs for replacement
parts used to repair previously-imported STBs.
B. 	The Public Interest
Section 337 requires the Commission, upon finding a violation of section 337, to issue an
LEO “unless, after considering the effect of such exclusion upon the public health and welfare,
competitive conditions in the United States economy, the production of like or directly
competitive articles in the United States, and United States consumers, it finds that such articles
should not be excluded from entry.” 19 U.S.C. § 1337(d)(l). Similarly, the Commission must
consider these public interest factors before issuing a CDO. 19 U.S.C. § 1337(f)(1).
The statute requires the Commission to consider and make findings on the public interest
in every case in which a violation is found regardless of the quality or quantity of public interest
information supplied by the parties. 19 U.S.C. § 1337(d)(l) & (f)(l). Thus, the Commission
publishes a notice inviting the parties as well as interested members of the public and interested
government agencies to gather and present evidence on the public interest at multiple junctures
14 Commissioner Schmidtlein supports issuance of the CDOs due to the presence of some
infringing domestic inventory, regardless of the commercial significance.

PUBLIC VERSION
29
in the proceeding. 19 U.S.C. § 1337(d)(l) & (f)(l). In this investigation, the Commission
received comments from Rovi on the public interest. Rovi argued that public interest concerns
favor enforcement of U.S. intellectual property rights in the United States and that there is no
reason not to issue an exclusion order. 	Rovi Br. at 19-23. Comcast did not present any
arguments indicating that the public interest should preclude issuance of an exclusion order.
The Commission also received comments from the following organizations asserting that
robust enforcement of section 337 is in the national interest: Tea Party Patriots Action;
Americans for Limited Government; Frontiers of Freedom Institute; Market Institute; and
Conservatives for Property Rights (joined by 60 Plus Association, and Americans for Limited
Government). The Commission also received similar comments concerning the importance of
patent rights from Rep. Peter King (R-N.Y.), Jackie Speier (D-Cal.), and Steve Stivers (R-Ohio).
Neither they nor the parties raise any public interest concerns that would preclude the issuance of
relief in this investigation.
For the reasons set forth below, the Commission finds that these factors do not warrant
denying a remedy against Comcast.
1. 	Public Health and Welfare
Specifically, the Commission has historically examined the first factor, effect of the
remedy on the public health and welfare, by looking to whether “an exclusion order would
deprive the public of products necessary for some important health or welfare need[.]” Spansion,
Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1360 (Fed. Cir. 2010). The Commission has already
determined that two Comcast redesigns do not infringe, and the Commission will allow Comcast
to certify that the imported STBs are being used with the non-infringing redesigns. Both of those
redesigns modify Comcast’s servers to prevent the display of highlighted search results to users.

PUBLIC VERSION
30
ID at 80-83. The Commission finds that this factor does not weigh against the issuance of a
remedy as there is no unfilled need by virtue of the exclusion order.
2. 	Competitive Conditions in the United States Economy
With respect to the effect of the remedy on competitive conditions in the United States
economy, the Commission finds no evidence in the record that this factor would weigh against
the issuance of a remedy.
3. 	Production of Like or Directly Competitive Articles in the United States
The third public interest factor is the effect of the remedy on the production of like or
directly competitive articles in the United States. No party has argued that this factor weighs
against a remedy. Accordingly, the Commission finds that this factor does not weigh against
issuing an LEO or CDOs against Comcast’s products.
4. 	United States Consumers
As to the effect of the remedy on United States consumers, the Commission finds that
this factor does not weigh against the issuance of a remedy. The Commission finds that United
States consumers will continue to have noninfringing options for Comcast STBs. The
Commission has already adjudicated two noninfringing redesigns. Moreover, the Commission
concludes that there are no public interest concerns from the non-highlighting of search results.
Accordingly, the public interest factors do not preclude issuance of an exclusion order in this
investigation.
C. 	Bonding
If the Commission enters an exclusion order or a cease and desist order, a respondent
may continue to import and sell its products during the 60-day period of Presidential review
under a bond in an amount determined by the Commission to be “sufficient to protect the

PUBLIC VERSION
31
complainant from any injury.” 19 U.S.C. § 1337(j)(3); see also 19 C.F.R. § 210.50(a)(3). When
reliable price information is available in the record, the Commission has often set the bond in an
amount that would eliminate the price differential between the domestic product and the
imported, infringing product. See Certain Microsphere Adhesives, Processes for Making Same,
& Prods. Containing Same, Including Self-stick Repositionable Notes, Inv. No. 337-TA-366,
USITC Pub. No. 2949, Comm’n Op. at 24 (Jan. 16, 1996). The Commission also has used a
reasonable royalty rate to set the bond amount where a reasonable royalty rate could be
ascertained from the evidence in the record. See, e.g., Certain Audio Digital-to-Analog
Converters & Prods. Containing Same, Inv. No. 337-TA-499, Comm’n Op. at 25 (Mar. 3, 2005).
Where the record establishes that the calculation of a price differential is impractical or there is
insufficient evidence in the record to determine a reasonable royalty, the Commission has
imposed a 100 percent bond. See, e.g., Certain Liquid Crystal Display Modules, Prods.
Containing Same, & Methods Using the Same, Inv. No. 337-TA-634, Comm’n Op. at 6-7 (Nov.
24, 2009). The complainant, however, bears the burden of establishing the need for a bond.
Certain Rubber Antidegradants, Components Thereof & Prods. Containing Same, Inv. No. 337-
TA-533, USITC Pub. No. 3975, Comm’n Op. at 40 (July 21, 2006).
The parties dispute the amount of any bond during the period of Presidential review.
Consistent with its argument to the ALJ, Rovi requests that the bond be set at “approximately
$35.46 to $39.62 per product, or a reasonable royalty of no less than $0.22 per subscriber per
month.” Rovi Br. at 28. The RD found that a zero percent bond is appropriate because Rovi failed
to establish a well-founded basis to support a bond based on price differential or reasonable royalty
rates. RD at 319-22. The RD further noted that the Commission imposed a zero percent bond in
the 1001 Investigation. Id.

PUBLIC VERSION
32
The Commission agrees with the RD’s conclusion that Rovi failed to justify the need for a
bond, including that Rovi did not establish an appropriate price differential in view of the absence
of reliable pricing information, RD at 320-21, or royalty rate, where Rovi failed to show the role of
these patents in the portfolio patent licenses Rovi put forward, RD at 321-22. Accordingly, the
Commission has determined to set the bond during the period of Presidential review in the amount
of zero percent of entered value.
V. 	CONCLUSION
For the reasons set forth herein, the Commission determines that Rovi established a
violation of section 337 by Comcast with respect to claim 9 of the ’011 patent. The Commission
determines that the appropriate remedy is an LEO and CDOs directed to the Comcast
respondents, the public interest does not preclude that remedy, and the bond during the period of
Presidential review is set in the amount of zero percent of entered value. Accordingly, the
investigation is terminated with a finding of a violation of section 337.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: May 13, 2020

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED
HARDWARE AND SOFTWARE COMPONENTS
Inv. No. 337-TA-1103
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached COMMISSION OPINION has been
served via EDIS upon the Commission Investigative Attorney, John Shin, Esq. and the
following parties as indicated, on May 13, 2020.
___________________________________
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Rovi Corporation, Rovi Guides,
Inc., and Veveo, Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Email: dcawley@mckoolsmith.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download
On Behalf of Respondents Comcast Corporation, Comcast
Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business
Communications, LLC, Comcast Holdings Corporation, and
Comcast Shared Services, LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS, LLP
555 Eleventh Street, NW, Suite 100
Washington, DC 20004
Email: bert.reiser@lw.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability for Download

UNITED STATES INTERNATIONAL TRADE COMIVIISSION
Washington, D.C.
In the Matter of
CERTAIN DIGITAL VIDEO 	Investigation No. 337-TA-1103
RECEIVERS AND RELATED *
HARDWARE AND SOFTWARE
COMPONENTS
NOTICE OF COMMISSION DECISION '
TO REVIEW IN PART A SUMMARY DETERMINATION
AND TO REVIEW IN PART A FINAL INITIAL DETERMINATION;
SCHEDULE FOR FILING WRITTEN SUBMISSIONS ON THE ISSUES UNDER
REVIEW AND ON REMEDY, THE PUBLIC INTEREST, AND BONDING
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
SUMMARY: Notice is hereby given that the U.S. International Trade Commission has
determined to review in part the presiding administrative law judge’s (“ALJ’s”) summary
determination (“SD”) (Order No. 47) conceming importation and sale after importation and to
review in part a final initial determination (“ID” or “final ID”) finding a violation of section 337
of the Tariff Act of 1930, as amended, with respect to U.S. Patent No. 7,779,011 (“the ’011
patent”). The Commission requests briefing from the parties on certain issues under review, as
set forth in this notice. The Cormnission also requests briefing from the parties, interested
persons, and government agencies on the issues of remedy, the public interest, and bonding.
FOR FURTHER INFORMATION CONTACT: SidneyA. Rosenzweig, Office of the General
Counsel, U.S. International Trade Commission, 500 E Street SW., Washington, DC 20436,
telephone (202) 708-2532. Copies of non-confidential documents filed in connection with this
investigation are or will be available for inspection during official business hours (8:45 a.m. to
5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street
SW., Washington, DC 20436, telephone (202) 205-2000. General information concerning the
Commission may also be obtained by accessing its Intemet server (httgs://www.usitc. gov). The
public record for this investigation may be viewed on the Commission’s Electronic Docket
Information System (“EDIS”) (htggs://edis.usitc.gov). Hearing-impaired persons are advised that
information on this matter can be obtained by contacting the Commission’s TDD tenninal,
telephone (202) 205-1810.

SUPPLEMENTARY INFORIVIATION: On March 16, 2018, the Cormnission instituted this
investigation based on a supplemented complaint filed on behalf of Rovi Corporation of San
Jose, California; Rovi Guides, Inc. of San Jose, Califomia; and Veveo, Inc. of Andover,
Massachusetts (collectively, “Rovi”); as Wellas Rovi Technologies Corporation of San Jose, CA.
The supplemented complaint alleges violations of section 337 of the Tariff Act of 1930, as
amended, 19 U.S.C. 1337 (“section 337”), based upon 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 related hardware and software components by reason of infringement of one
or more claims of the ’01l patent; and one or more claims of U.S. Patent Nos. 7,937,394 (“the
’394 patent”); 7,827,585 (“the ’585 patent”); 9,294,799 (“the 7799 patent”); 9,396,741 (“the ’741
patent”); 9,578,363 (“the ’363 patent”); 9,621,956 (“the ’956 patent”); and 9,668,014 (“the ’014
patent”). 83 FR 11792 (Mar. 16, 2018). The Commission’s notice of investigation named as
respondents Comcast Corporation of Philadelphia, Pennsylvania; Comcast Cable
Communications, LLC of Philadelphia, Pennsylvania; Comcast Cable Communications
Management, LLC of Philadelphia, Pennsylvania; Comcast Business Communications, LLC of
Philadelphia, Pennsylvania; Comcast Holdings Corporation of Philadelphia, Pennsylvania; and
Comcast Shared Services, LLC of Chicago, Illinois (collectively, “Comcast”). Id The Office of
Unfair Import Investigations was also named as a party in this investigation. Id.
The Commission previously terminated the investigation as to complainant Rovi
Technologies Corporation; as to the ’956, ’394, ’014, ’799, and ’363 patents in their entirety; and
as to certain claims of the ’011, ’585, and ’74l patents. Order No. 12, unreviewed, Notice (July
24, 2018); Order No. 33, unreviewed, Notice (Sept. 19, 2018); Order 39, unreviewed, Notice
(Oct. 25, 2018).
On June 3, 2019, the presiding ALI issued Order No. 47, the subject SD, which, inter
alia, granted Rovi’s motions for summary determination as to importation and sale after
importation. On June 11, 2019, Comcast filed a petition for review of the SD. On June 18,
2019, Rovi responded to Comcast’s petition. On June 25, 2019, the Commission investigative
attorney (“IA”) responded to Comcast’s petition.
On June 4, 2019, the ALJ issued the final ID. On June 17, 2019, Comcast and Rovi each
filed a petition for review of the final ID. On June 25, 2019, Comcast and Rovi responded to
each other’s petition, and the IA responded to both.
In addition, the Cormnission has received comments from Rovi on the public interest
pursuant to Commission Rule 210.50(a)(4). The Commission also received comments from the
following organizations in response to the Commission notice soliciting public interest
comments, 84 FR 27804 (June 14, 2019): Tea Party Patriots Action; Americans for Limited
Government; Frontiers of Freedom Institute; Market Institute; and Conservatives for Property
Rights (joined by 60 Plus Association, and Americans for Limited Government).
On June 26, 2019, the Commission extended the deadline for Whetherto review the SD to
be commensurate with the deadline for the final ID. On July 24, 2019, the Commission extended
the deadline for whether to review the SD and the final ID from August 5, 2019 to August 15,
2019.
2

With respect to the subject SD, having reviewed the record of this investigation,
including the SD and the parties’ submissions to the ALJ and to the Commission, the
Conrrnission has determined to review in part the SD. In particular, the Commission has
determined to review and take no position on whether Comcast’s alleged reimportations satisfy
the importation requirement of section 337; the SD made no findings on the issue. The
Commission has determined not to review the remainder of the SD.
With respect to the subject final ID, having reviewed the record of the investigation,
including the final ID and the parties’ submissions to the AL] and to the Commission, the
Commission has determined to review in part the final ID as follows:
For the ‘011 patent, the Commission has determined to review the final ID’s
findings on direct and indirect infringement of claims 1 and 9 of the ’0ll patent by
Comcast’s non-redesigned system. The Cormnission has determined not to review the
remainder of the final ID’s findings as to the ‘O11patent, including the final ID’s findings
that Comcast’s two redesigns do not infringe claims 1 and 9 of the ’01l patent.
For the ’585 patent, the Commission has determined to review anditake no
position as to the final ID’s findings on the contingent noninfringement issues raised in
Comcast’s petition for review of the final ID, particularly whether the final ID erred in
finding no disavowal by Rovi of settings that do not control how programs are to be
digitally stored; whether the accused “auto pad recordings” functionality infringes claims
1 and 15; and whether the accused “start,” “stop,” and “HD Preferred” functionality
infringes claims 8, ll, and 22. The Commission has detennined not to review the
remainder of the final ID’s findings as to the ’585 patent, including the finding that the
asserted claims are invalid in view of the ReplayTV prior art.
For the ’74l patent, the Commission has determined to review and take no
position as to the final ID’s findings on the contingent invalidity issues raised in
Comcast’s petition for review of the final ID, particularly whether U.S. Patent
Application Publication US 2002/0095510 to Sie (RX-69) anticipates claims 1, 8, and l4
of the ’74l patent and whether, under Rovi’s claim construction, U.S. Patent No.
7,073,189 to McElhatten (RX-71) anticipates Claims 1, 8, and 14 of the ’741 patent. The
Commission has determined not to review the remainder of the findings as to the ’741
patent, including the ALJ’s construction of “specified time” in the Markman order,
Order No. 41 (Oct. 15, 2018), the final ID’s finding of noninfringement, and the fmal
ID’s waiver determination with respect to the “Restart Reminder" feature.
Comcast’s petition for review of the final ID questioned the final ID’s findings as to
whether the accused products are “articles that—infringe” the asserted patents, 19 U.S.C.
l337(a)(1)(B) & (a)(1)(B)(i), and the scope of the Commission’s authority to find an unfair trade
act based upon Comcast’s direct infringement. Such issues fall within the scope of the
Cornmission’s review of infringement as to the ’Oll patent, and the Commission will address
Co1ncast’sarguments based upon the Commission’s infringement findings as to the ’01l patent.
3

In connection with its review, the Cormnission requests responses to the following
questions based in part on Comcast’s assertion in its petition for review of the final ID that the
final ID “is not entirely clear as to whether it found a violation of Section 337 on the basis of
direct infringement of claim 9 of the ’01l Patent by way of Comcast’s use of the claimed
system.” Comcast Pet. 20. The parties are requested to brief their positions with reference to the
applicable law and the existing evidentiary record.[1] In addition, the parties are to take as true:
all of the final ID’s findings as to the structure, function, and operation of Comcast’s X1 system;
and Comcast’s inducement of its users’ conduct. Comcast did not petition the Commission for
review of any of those findings. The questions below reflect the Federal Circuit’s understanding
that certain “persons’ actions” constitute infringement under 35 U.S.C. 271. Suprema, Inc. v.
ITC, 796 F.3d 1338, 1347 (Fed. Cir. 2015) (en banc) (emphasis omitted).
1. Please explain, with attention to the statutory language of 35 U.S.C. 27l(a) and any
differences in claim language between claims 1 and 9 of the ’0l1 patent, the
circumstances in which each act of direct infringement by Comcast occurs for each
claim. (For example, is there direct infringement by Comcast’s testing or other use of
its system, by a Comcast user’s own searching, or both.)
2. Please explain, with attention to the statutory language of 35 U.S.C. 27l(a) and any
differences in claim language between claims 1 and 9 of the ’01l patent, the
circumstances in which Comcast’s users directly infringe either claim. In connection
with your response to this question please explain whether and how C0mcast’s users
can directly infringe claim 9 but not claim 1, or vice versa.
3. Based on your answers to questions 1 and 2, please explain for claims 1 and 9 of the
’0ll patent whether and how the “single entity” test ofAkamai Technologies, Inc. v.
Limelight Networks, Ina, 797 F.3d 1020, 1022 (Fed. Cir. 2015) should be applied and
whether the final ID’s application of that test to claim 1 of the ’()11patent, see Final
ID at 271, is correct.
In CO1'1.1'1€C'[l0l'l	with the final disposition of this investigation, the Commission may
(1) issue an order that could result in the exclusion of the subject articles from entry into the
United States, and/or (2) issue a cease and desist order that could result in the respondent being
required to cease and desist from engaging in unfair acts in the importation and sale of such
articles. Accordingly, the Commission is interested in receiving written submissions that address
the form of remedy, if any, that should be ordered. If a party seeks exclusion of an article from
entry into the United States for purposes other than entry for consumption, the party should so
indicate and provide information establishing that activities involving other types of entry either
are adversely affecting it or likely to do so. For background, see Certain Devicesfor Connecting
[1]In seeking briefing on these issues, the Commission has not determined to excuse any
party’s noncompliance with Commission rules and the ALJ’s procedural requirements, including
requirements to present issues in pre-hearing and post-hearing submissions. See, e.g., Order No.
2 (Mar. 28, 2018) (ground rules). The Commission may, for example, decline to disturb certain
findings in the final ID upon finding that issue was not presented in a timely manner to the ALJ.
4

Computers via Telephone Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843, Comm’n Op. at 7
10 (Dec. 1994).
If the Commission contemplates some form of remedy, it must consider the effects of that
remedy upon the public interest. The factors the Commission will consider include the effect
that an exclusion order and/or cease and desist order would have on (1) the public health and
welfare, (2) competitive conditions in the U.S. economy, (3) U.S. production of articles that are
like or directly competitive with those that are subject to investigation, and (4) U.S. consumers.
The Commission is therefore interested in receiving written submissions that address the
aforementioned public interest factors in the context of this investigation.
If the Commission orders some form of remedy, the U.S. Trade Representative, as
delegated by the President, has 60 days to approve or disapprove the Commission’s action. See
Presidential Memorandum of July 21, 2005, 70 FR 43251 (July 26, 2005). During this period,
the subject articles would be entitled to enter the United States under bond, in an amount
determined by the Commission and prescribed by the Secretary of the Treasury. The
Commission is therefore interested in receiving submissions concerning the amount of the bond
that should be imposed if a remedy is ordered.
WRITTEN SUBMISSIONS: The parties to the investigation are requested to file written
submissions limited to the enumerated questions above. The parties’ opening submissions
should not exceed 40 pages, and their reply submissions should not exceed 30 pages. Parties to
the investigation, interested govemment agencies, and any other interested parties are
encouraged to file written submissions on the issues of remedy, the public interest, and bonding.
Such submissions should address the recommended determination by the ALJ on remedy and
bonding. Complainant and the Commission investigative attorney are also requested to submit
proposed remedial orders for the Commission’s consideration. Complainant is also requested to
state the date that the asserted patents expire and the HTSUS numbers under which the accused
products are imported, and provide identification information for all known importers of the
subject articles. Initial written submissions and proposed remedial orders must be filed no later
than close of business on Thursday, August 29, 2019. Reply submissions must be filed no later
than the close of business on Tuesday, September 10, 2019. No further submissions on these
issues will be permitted unless otherwise ordered by the Commission. Persons filing written
submissions must file the original document electronically on or before the deadlines stated
above and submit 8 true paper copies to the Office of the Secretary by noon the next day
pursuant to section 210.4(i) of the Commission’s Rules of Practice and Procedure (19 CFR
210.4(t)). Submissions should refer to the investigation number (Inv. No. 337-TA-1103) in a
prominent place on the cover page and/or the first page. (See Handbook for Electronic Filing
Procedures, fgjps://www.usitc.gov/documents/handb00k_0n_filingApr0cedurespdf). Persons
with questions regarding filing should contact the Secretary at (202) 205-2000.
Any person desiring to submit a document to the Commission in confidence must request
confidential treatment. All such requests should be directed to the Secretary to the Commission
and must include a full statement of the reasons why the Commission should grant such
treatment. See 19 CFR 201.6. Documents for which confidential treatment by the Commission
is properly sought will be treated accordingly. All infonnation, including confidential business
information and documents for which confidential treatment is properly sought, submitted to the
5

Commission for purposes of this investigation may be disclosed to and used: (i) by the
Commission, its employees and Offices, and contract personnel (a) for developing or
maintaining the records of this or a related proceeding, or (b) in internal investigations, audits,
reviews, and evaluations relating to the programs, personnel, a_ndoperations of the Commission
including under 5 U.S.C. Appendix 3; or (ii) by U.S. government employees and contract
personnel,[2]solely for cybersecurity purposes. All nonconfidential written submissions will be
available for public inspection at the Office of the Secretary and on EDIS.
The authority for the Commission’s determination is contained in section 337 of the
Tariff Act of 1930, as amended (l9 U.S.C. 1337), and in Part 210 of the Commission’s Rules of
Practice and Procedure (19 CFR part 210).
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: August l5, 2019
[2]All contract personnel will sign appropriate nondisclosure agreements.
i 	6

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED 	Inv. No. 337-TA-1103
HARDWARE AND SOFTWARE COMPONENTS
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served by hand
upon the Commission Investigative Attorney, John Shin, Esq. and the following parties as
indicated, on August 15, 2019.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Rovi Corporation. Rovi Guides,
Inc., and Veveo, Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
III Via Hand Delivery
II] Via Express Delivery
Via First Class Mail
|:l Other:
On Behalf of Respondents Comcast Corporation. Comcast
Cable Communications. LLC. Comcast Cable
Communications Management. LLC. Comcast Business
Communications. LLC. Comcast Holdings Corporation. and
Comcast Shared Services. LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS, LLP
555 Eleventh Street, NW, Suite 100
Washington, DC 20004
III Via Hand Delivery
III Via Express Delivery
Via First Class Mail
El Other:

~ Public Version

UNITED STATES INTERNATIONAL TRADE COMMISSION

Washington, D.C.

In the Matter of

CERTAIN DIGITAL VIDEO RECEIVERS
AND RELATED HARDWARE AND
SOFTWARE COMPONENTS

Inv. No. 337-TA-1103

INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND
RECOMMENDED DETERMINATION ON REMEDY AND BOND

Administrative Law Judge MaryJoan McNamara

. (June 4, 2019)
Appearances:

For the Complainants Rovi Corporation, Rovi Guides, Inc., Rovi r echnologies Corporation, and
Veveo, Inc.: t

Douglas A. Cawley, Esq. of McKool Smith, P.C 5 Dallas, TX.
Roderick G. Dorman, Esq. of McKool Smith, P.C., Los Angeles, CA.

John B. Campbell, Esq.; Joshua W. Budwin, Esq.; Leah B. Buratti, Esq.; and Kristina S.
Baehr, Esq. of McKool Smith, P.C., Austin, TX.

Matthew J. Rizzolo; Esq. of ‘Ropes ‘& Gray LLP, Washington, DC.
For -the Respondents Comcast_Corporation, Comcast Cable Communications, LLC. Comcast

Cable Communications. Management, LLC, Comcast Business ‘Communications, LLC, Comcast
Holdings Corporation, and Comcast Shared Services, LLC:

Bert C. Reiser, Esq. and Jamie D. Underwood, Esq. of Latham & Watkins LLP, Washington,
DC.

Douglas E. Lumish, Esq. of Latham & Watkins LLP, Menlo Park, CA.
Charles H. Sanders, Esq. of Latham & Watkins LLP, Boston, MA.

Michael A. David, Esq. of Latham & Watkins LLP, New York, NY.
Joseph H. Lee, Esq. of Latham & Watkins LLP, Costa Mesa, CA.

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Michael L. Brody, Esq. of Winston & Strawn LLP, Chicago, IL.
Steven M. Anzalone, Esq. and Paul C. Goulet of Winston & Strawn LLP, Washington, DC.

Michael M. Murray, Esq. and Krishnan Padmanabhan, Esq. of Winston & Strawn LLP, New
York, NY.

Anthony Fenwick, Esq. and David Lisson, Esq. of Davis Polk & Wardell LLP, Menlo Park,
CA.

David F. Nickel, Esq.; Susan Koegel, Esq.; and Matthew N. Duescher, Esq. of Foster,

Murphy, Altman & Nickel, PC, Washington, DC. . .

For the Commission Investigative Staff:

Margaret D. McDonald, Esq., Director; Jeffrey T. Hsu, Esq., Supervisory Attorney; and John
K. Shin, Esq., Investigative Attorney, of the Office of Unfair Import Investigations, U.S.
International Trade Commission, Washington, D.C.

Public Version

SELECTED SUMMARY FINDINGS

Pursuant to the Notice of Investigation, 83 Fed. Reg. 1 1791, dated March 16, 2018, this is
the Initial Determination (“ID”’) of the Investigation in the Matter of Certain Video Receivers
and Related Hardware and Software Components, United States International Trade Commission
Investigation No. 337-TA-1103. See 19 CER. § 210.42(a).

It is a finding of this ID that Complainants Rovi Corporation; Rovi Guides, Inc.; and
Veveo, Inc. (collectively, “Complainants” or “Rovi”) have proven by a preponderance of the
evidence that Respondents Comcast Corporation; Comcast Cable Communications, LLC:
Comcast Cable Communications Management, LLC; Comcast Business Communications, LLC;
Comcast Holdings Corporation; and Comeast Shared Services, LLC (collectively,
“Respondents” or “Comeast”) have violated subsection (b) of Section 337 of the Tariff Act of
1930, in the importation into the United States, the sale for importation, or the sale within the

United States after importation of certain video receivers and related hardware and software

* components.

‘

It is a finding of this ID that Comcast has infringed asserted claims 1 and 9 of U.S. Patent
No. 7,779,011 (“the ’011 patent”) and that claims 1 and 9 of the ’011 patent are valid.

It is a finding of this ID that Comcast has infringed asserted claims 1, 8, 11, 15, and 22 of
U.S. Patent No. 7,827,585 (“the ’585 patent”). However, it is a finding of this ID that claims 1,
8, iL, 15, and 22 of the ’585 patent are invalid,

It is a finding of this ID that Comcast has not infringed asserted claims 1, 8, and 14 of
U.S. Patent No. 9,369,741 (“the ’741 patent”). It is also a finding of this ID that claims 1, 8, and
14 of the ’741 are valid.

It is a finding of this ID that one or more of Rovi’s domestic industry products have

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satisfied the technical industry prong of the domestic industry requirement for the ’011 and ’585
patents. It is also a finding of this ID that Rovi’s domestic industry products do not satisfy the
technical industry prong of the domestic industry requirement for the *741 patent.

It is a finding of this ID that Rovi has satisfied the economic prong of the domestic
industry requirement under Section 337(a)(3)(A), (B), and (C).

This decision recommends: (1) a Limited Exclusion Order with a standard certification
provision and service and repair exception; (2) a Cease and Desist Order with a standard service

and repair exception; and (3) no bond during the Presidential Review Period.

II.

Hl.

IV.

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TABLE OF CONTENTS

INITIAL DETERMINATION ON VIOLATION OF SECTION 337, AND

RECOMMENDED DETERMINATION ON REMEDY AND BOND ...........cceseceeeeees 1
A. Overview of Unsettled Issues .0..........:cscceesesseeseecereceeseeeeseesssseneesseuseseeseesesessneesaees 1
B. Summary Of FindingS...........: cece sceeeesceseseeseesessescsessessseseseseeseesssassecsseseessesseeaenees 3
BACKGROUND ; 4
A. Institution and Selected Procedural History ...............cccccesseesseeseeeeeseeesteseseeeesenseees 4
B. Related Investigation 00.0.0... cceccsscsessesseescsseneensesseeseesecsecesseeseessessesseseeseneeneeasens 12
C. The Parties .......c.cccccccccccssecssecesseeeeecesseeeseeessecsseesseesessseseusesesesesesseeens Lesceebeceeseseees 16
1. Complainants Rovi Corporation; Rovi Guides, Inc.; and Veveo, Inc. ..... ‘16
2. Respondents Comcast Corporation; Comcast Cable Communications,

LLC; Comcast Cable Communications Management, LLC; Comcast
Business Communications, LLC; Comcast Holdings Corporation; and

Comcast Shared Services, LLC ...........:..ccccscscccccccceeessesesentsnceneeeeettereeeesene 17
JURISDICTION, IMPORTATION, AND STANDING 18
A. The Commission Has Jurisdiction................ beveuceacseccesssacscsaeseseeceaeeeesesesaeseeaeseeeenes 18

1. Subject Matter Jurisdiction .......... ccc eceeeceeseeeeseeeeseseeseeseneeeeseeeseesseeeeseens 18

2. Personal Jurisdiction ..............:ccsccesceseeeseessceeeeseeeeee eeseeaeeeeeaes veueeessauesssees 25

3. In Rem Jurisdiction .............ccccescccecceeseeeeeeesseeeesecesssseseussssesseeeseeeseeessaesennees 25

B. Complainants Have Standing in the Commission ..............s:csesesesesereeeeeeeseseeees 26
THE ASSERTED PATENTS 26
A. Overview of the Technology ..........cecccesesseeseecssseecesccsscesseeeeseeeaeeeneenseessessesenees 26
B. U.S. Patent No. 7,779,011 (“the ’011 Patent’’)........ esseseeeesecaeseseeseseeaeaeeeeaees eteseees 27
1. Overview of the ’011 Patent.......... eccesececeaeceseeseeeeeetseesaeeteceeeseeensesoeseateasae 27

2. Asserted Claims of the ’011] Patent... ccseceeeseeteesetseteeeneeteeeeteeeees 34

C. U.S. Patent No. 7,827,585 (“the ’585 Patent’) 0.0... eee es eecesseeeesseeeseeeeeeseeeees 36
1, Overview of the °585 Patent 0.0.0... esses eseeseseses testes eseseeseeneneeenssees a. 36

2. Asserted Claims of the ’585 Patent........csscsssssesssccssssssssesssecssssssseeseeeesesnen 39

D. U.S. Patent No. 9,369,741 (“the 741 Patent”) 00... cece eseesseeeesesseeseeeeeeeeeeeees 41
1. Overview of the ’741 Patent ........... ccc cceceeescesccecneeeeeeeteceeeseeesseeeesseesseeesees 41

2. Asserted Claims of the ’741 Patent... cee eeeeseessreeeeneneeeeseeseesseeoons 42

THE PRODUCTS AT ISSUE. 44

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A. Comcast’s Accused Products........ aesseneatanensesseeatacessesoneserserersnnenesssosedeseraronssanessaos 44 .
1. Accused 011 Products... ccc eeeeseessecsecsscesscessecseeseeeseeeeeenene eesesseseseee . 46
2. Accused 585 Products ..........cceeceesscessecessecesserseeresseesseeessessssessesseessesenseeeess 50
3. Accused 741 Products........scscsssecsecsesssssnscnessesissnesesneeseesessnessestesseaneneees 51
4. Representative Accused Products ..0........ ce eeeeeseseeseseeeeseeneisseeesnteeseeseren 51
B. Comcast’s Design Alternatives... ..ccecceeseeecesecssseseceseseeceeeensensssneseeeseeeeneeees 53,
C. Rovi’s DI Products ......ss.csccesesssssseessssseetessssessessseses sscessausssssnsneseeneneennneseersneenie 54
VI. CLAIM CONSTRUCTION... 56
A. Legal Standard: Level of Ordinary Skill in the Arto... eee eeeeeeteeseeeenees 56
—=Bz Definition of Person of Ordinary Skill in the Art oc... eee eee ceseeeeeseaeenes 57
C. Legal Standard: Claim Construction.................... Leeseeseeaceeaceneeececeeaeeaeeneeseeneeneeseees 58
VII. U.S. PATENT NO. 7,779,011 61
A. Literal Infringement....... Lesceceseensecseeeeceecsagecsceceaeeesceseeseeeseeecneesseesneseuesesasosaeenssaeeees 61
1. Legal Standard ...ccccsscsssscssssssssecsssssesvssssessesessssessuesssesseunesssssusnesssseee 61
2 Infringement Overview ......... eee eesceseeseseeesceseceeceseecsecsecseeseessenseeeeteees 62
3. Relevant Claim Terms ...............:cccccseeeeeceeeseeeeessesseeeeesssenssssesessesseseeeneees 63
4 When Operating in the X1 System, the Accused 011 Products Practice |

Claims 1 (Method) and 9 (System) of the 011 Patent... 65

a) Preambles [1, 9]: ‘““A method of [system for] processing
unresolved keystroke entries by a user from a keypad with
overloaded keys in which a given key is in fixed association
with a number and at least one alphabetic character, said
unresolved keystroke entries being directed at identifying an
item from a set of items, each of said items being associated
with information describing the item comprising one or more
words, said method [system] Comprising” .............:ccsseeeeeseeeeeeseees 65

b) 1[a]/9[a]: “indexing [index] said items by associating
subsets of said items with corresponding strings of one or
more unresolved keystrokes for overloaded keys so that the
subsets of items are directly mapped to the corresponding
strings of unresolved keystrokes for various search query
prefix SUbStrings” oo... ec ceee eee sesceessesseseesaeseeseesereneeeeneee ... 67

c) 1[b]/9[b]: “for at least one subset of items, determining
[determine] which letters and numbers present in the
information associated with and describing the indexed items
of said subset caused said items to be associated with the
strings of one or more unresolved keystrokes that are directly

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mapped to said SUDSEt” oo. .ceccssssessesseessesseessecsccssecseesecseesseaueensceneenes 68

d) 1[c]/9[c]: subsequent to said indexing, receiving [receive]
from a user a search query for desired items composed of
unresolved keystrokes, said search query comprising a prefix
substring for at least one word in information associated with
the desired item” 0... cecceeseceseceseessscsesseesseessssseseeesseeesnesens 74

e) 1[d]/9[d]: ‘in response to each unresolved keystroke,
identifying [identify] and displaying [display on a display
device at least one of] the subsets of items, and information
associated therewith, that are associated with the strings of
one or more unresolved keystrokes received from the user
based on the direct mapping of strings of unresolved
keystrokes to subsets of items” oo... ccccseseceseseeseeeeeeeeeeeeseseees 74

f) 1[e]/9[e]: “in response to each unresolved keystroke, as the
identified items are displayed, highlighting [highlight on the
display device] the letters and numbers present in the one or
more words in said information describing the identified
items that were determined to have caused the displayed
items to be associated with the [strings of] unresolved
keystrokes [that are directly mapped to said items] [received] .
so as to illustrate to the user how the [strings of] unresolved
keystrokes [that are directly mapped to said items] entered

match the information associated with the displayed items”’........ 76
i. - Accused 011 Products............. Laceeceeseeesecseceseeeaceeseetsceesseeseeeasons 76
ii. Design Altermatives.........c ccc ceccseescsessseeecseeseseeseeereeseeenrees 80

g) 1[f]/9[f]: “ordering [order on the display device] the
displayed items in accordance with one or more given

CTICCTIA ooo. eee eccceceteecseeceseececceesecesesesseeeeeeneecseeerseecesseeseseeseaneneeees 83
B. Technical Prong of Domestic Industry ............c:cceccesesessseeseeseeseeeesecseeeeeeneseeeeees 83
l. Legal Standard 0.0... cccccccscscseesssecsessesseseeesssecseeseseseeseeseeseessseaeseeneenes 83
2. Technical DI Overview............:cceee sovesseessnessnsssceseesseesesssesnensneegeseneesnes 84
3. Rovi’s Veveo AS&R DI Product Practices Claim 9 and Its Next-Gen
DI Product Practices Claims 1 and 9......... «eeeeecseceeeeseceeeeeeseeeaesseeensenatents 85
a) Veveo AS&R Does Not Practice Claim 1 (Method)................... 85
b) Veveo AS&R Practices Claim 9 (System)...........cceeeeeeeseeeeeeeee 86

=?) _ Rovi’s Next-Gen Platform Practices Claims 1 (Method) and

9 (System) 0.0... ceescecesseesesssceseesesssscsceesseesessesssceeesenseseseeeseseeenees 91

i. Preambles [1, 9]: “A method of [system for] processing
unresolved keystroke entries by a user from a keypad

Vil

il.

ill.

iv.

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Public Version

with overloaded keys in which a given key is in fixed
association with a number and at least one alphabetic

character, said unresolved keystroke entries being

directed at identifying an item from a set of items, each

of said items being associated with information

describing the item comprising one or more words, said
method [system] COMprising” ............e eee eesceeceteeeseteeeeeeeees 93

1[a]/9[a]: “indexing [index] said items by associating
subsets of said items with corresponding strings of one or
more unresolved keystrokes for overloaded keys so that
the subsets of items are directly mapped to the
corresponding strings of unresolved keystrokes for
various search query prefix substrings”; 1[b]/9[b]: “for
at least one subset of items, determining [determine]
which letters and numbers present in the information
associated with and describing the indexed items of said
subset caused said items to be associated with the strings
of one or more unresolved keystrokes that are directly
mapped to said subset”’.................06. dectnennersscrsaceecseesenssonscsassers 94

1[c]/9[c]: subsequent to said indexing, receiving
[receive] from a user a search query for desired items
composed of unresolved keystrokes, said search query
comprising a prefix substring for at least one word in
information associated with the desired item”; 1[d]/9d]:
“in response to each unresolved keystroke, identifying
[identify] and displaying [display on a display device at
least one of] the subsets of items, and information
associated therewith, that are associated with the strings
of one or more unresolved keystrokes received from the
user based on the direct mapping of strings of unresolved
keystrokes to subsets Of iteMs” 0... eee cece eeeeeeeeeteeeeeeenee 95

1[e]/[9e]: “in response to each unresolved keystroke, as
the identified items are displayed, highlighting [highlight
on the display device] the letters and numbers present in
the one or more words in said information describing the
identified items that were determined to have caused the
displayed items to be associated with the [strings of]
unresolved keystrokes [that are directly mapped to said
items] [received] so as to illustrate to the user how the
[strings of] unresolved keystrokes [that are directly
mapped to said items] entered match the information
associated with the displayed items” ..............cccseeseeneeeeeees 96

1[f}/9[f]: “ordering [order on the display device] the

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displayed items in accordance with one or more given

CTILCTIA” oo. eee eeeceeeeseeneeeseenserseessecssseseeesessceessaesneteaseeseseneeees 97
C. Invalidity ........ccccccccecesseecscceeeseeeseesseeseeesscesseseceseecescssssseseesssescaseesensesseseseeeneeranenes 97
A. Legal Standard: ObDViOUSNESS........... see eeeecseeseeeeeeereeceeeeaeeseeseenseeeaeeeees 97
2. The Combination of Gross (RX-0180) and Smith (RX-0174) Does Not
Render Obvious Claims 1 and 9 of the 011 Patent... eens 100
a) Invalidity OVerview .........cceccescesseeseesscesscesceesessasesseeseeeaeeeaeenes ... 100
b) The Combination of Gross and Smith Teaches “Directly
Mapped” as Recited in the “Indexing” 1{a]/9[a],
“Determining” 1[b]/9[b], “Identifying and Displaying”
1[d]/9[d], and “Highlighting” 1[e]/9[e] Limitations of Claims
1 And Ooo. ee eccceceseseceesecseeeseesseeseeeseseaeceesaecseessesesesssesssaeeanesaeenes 101
c) The Combination of Gross and Smith Teaches the
Remaining Limitations of Claims 1 and 9.0.0... cececcseesseeeeees 102

i. Preambles [1,9]: “A method of [system for] processing
unresolved keystroke entries by a user from a keypad
with overloaded keys in which a given key is in fixed
association with a number and at least one alphabetic
character, said unresolved keystroke entries being
directed at identifying an item from a set of items, each
of said items being associated with information
describing the item comprising one or more words, said
method [system] Comprising” .........:.ccceeeeeeeteeseeseereeeeeseses 102

iit. 1[a]/9[a]: “indexing [index] said items by associating
subsets of said items with corresponding strings of one or
more unresolved keystrokes for overloaded keys so that
the subsets of items are directly mapped to the
corresponding strings of unresolved keystrokes for
various search query prefix substrings” ..............ccccsseeeeees 104

iv. 1[b]/9[b]: “for at least one subset of items, determining
[determine] which letters and numbers present in the
information associated with and describing the indexed
items of said subset caused said items to be associated
with the strings of one or more unresolved keystrokes
that are directly mapped to said subset” oo... cece eeeeeeeees 106

v. 1{c]/9[c]: subsequent to said indexing, receiving
[receive] from a user a search query for desired items
composed of unresolved keystrokes, said search query
comprising a prefix substring for at least one word in
information associated with the desired item”’.................0.. 107

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vi. 1[{d]/9[d]: “in response to each unresolved keystroke,
identifying [identify] and displaying [display on a display
device at least one of] the subsets of items, and
information associated therewith, that are associated with
the strings of one or more unresolved keystrokes
received from the user based on the direct mapping of
strings of unresolved keystrokes to subsets of items” .......... 109

vii. 1[e]/9[e}: “in response to each unresolved keystroke, as
the identified items are displayed, highlighting [highlight
on the display device] the letters and numbers present in
the one or more words in said information describing the
identified items that were determined to have caused the
displayed items to be associated with the [strings of]
unresolved keystrokes [that are directly mapped to said
items] [received] so as to illustrate to the user how the
[strings of] unresolved keystrokes [that are directly
mapped to said items] entered match the information
associated with the displayed items” ...............cccesseeseseeee 109

vit. —L[f]/9[f]: “ordering [order on the display device] the
displayed items in accordance with one or more given

CTILCTIA” ooo... eee eeeecssseeeeeeeseeesseeesseeeseceseecesssseseneaesseeseneeenees 110
3. Comcast Has Not Proven by Clear and Convincing Evidence Thata_
Person of Ordinary Skill in the Art Would Have Been Motivated to, or
Had a Reason to, Combine Gross and Smith... cece eeeecceseeseeeeeees 111
4. Rovi Failed to Meet Its Burden to Show Secondary Considerations of
NOn-ODVIOUSNESS ...........csccessccetseeeeeeeseeeeseeesseessescsseeeseessesesseecseecesesseeeseeas 113
a) Rovi Failed to Show Long-Felt but Unsolved Need................... 113
b) Comcast Did Not Copy Veveo’s Search Technology................. 116
VIII. U.S. PATENT NO. 7,827,585 :; 119
A. Literal Infringement ......0... cece cesses cesscesesseseesseesecseecseeressseseeesseeseseseseneenseeaees 119
1. Infringement OVErview ........ccceceeeesssseeseessessescsscsessesesseeneaeceseeseeseeaeees 119
2. Relevant Claim Terms ............cccccsscssscesseeeeseesereeeseeessessesesseeesseseeeseseeenees 122
3... When Operating in the X1 System, the Accused 585 Products Practice
Claims 1, 8, 11, 15, and 22 of the *585 Patent... ee eecceeeeeeeees 123
a) Claims 1 (Method) and 15 (System)...........::cssseeeeeeeeteeetenes 124 .

i. Preamble [claim 1]: “A method for allowing a user to
select storage options for storing programs using an
interactive television program guide implemented on
user television equipment, the method comprising”;

b)

il.

ill.

iv.

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1.

Public Version

Preamble [claim 15]: “A system for allowing a user to
select storage options for storing programs, the system
comprising”; 15[a]: “a display screen”; 15[c]: “an
interactive television program guide implemented at least
partially on circuitry, wherein the interactive television

program guide is programmed tO”... eeeeeseeteeneeeseees

I[a]: “providing the user with an opportunity to select at
least one storage option for storing a program to be
recorded, wherein the at least one storage option relates
to at least one storage setting configured to control how
programs are to be digitally stored on a random access
digital storage device”; 15[b]: “a random access digital
storage device”; 15[d]: “provide the user with an
opportunity to select at least one storage option for
storing a program to be recorded, wherein said at least
one storage option relates to at least one storage setting
configured to control how programs are to be digitally

stored on the random access digital storage device” ...........

I[b]: “in response to a user selection of the at least one
storage option, modifying the at least one storage

setting”; 15[e] “in response to a user selection of the at
least one storage option, modify the at least one storage

SCtti gy” oo. eeeeecesecesessecseeeseeeeecsaseseessesseseesessessesseeseeeseieeseaesees

1[c]: “displaying in the interactive television program
guide at least one program listing related to at least one
program”; 15[f]: “display in the display screen at least

one program listing related to at least one program”’...........

1[d]: “providing the user with an opportunity to select a
program listing from the at least one displayed program
listing for recording on the random access digital storage
device”; 15[g]: “provide the user with an opportunity to
select a program listing from the at least one displayed
program listing for recording on the random access

digital storage device” ..........cccceeseeeeees seceeceseeseesseeseeneeaee

I[e]: “recording the program on the random access
digital storage device based on the modification of the at
least one storage setting”; 15[h]: “record the program on
the random access digital storage device based on the

modification of the at least one storage setting”’.................
Claims 8 (Method) and 22 (System)

Preamble [claim 8]: “A method for recording programs
using an interactive television program guide

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Amen e ewer ac eens rec eenaannsceceesesesseee

il.

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vi.

Public Version

implemented on user television equipment, the method
comprising”; Preamble [claim 22]: “A system for
recording programs, the system comprising”; 22[a]: “a
display screen”; 22[c]: “and an interactive television
program guide implemented at least partially on
circuitry, wherein the interactive television program
guide is programmed tO” .........cceccccesseseeeeeeeeeeeees esesesesseess 159

8[a]: “displaying in a display screen at least one program
listing relating to at least one program”; 22[d]: “display

in the display screen at least one program listing related

to at least one Program”? 0.0... eee ce eee cee teseesecesseeeeeteeeeees 159

8[b]: “providing a user with an opportunity to indicate a
program to be recorded on a random access digital
storage device by selecting a program listing from the at
least one displayed program listing, wherein the selected
program listing corresponds to the program to be
recorded”; 22[e] “provide a user with the opportunity to
indicate a program to be recorded on the random access
digital storage device by selecting a program listing from
the at least one displayed program listing, wherein the
selected program listing corresponds to the program to be
T1010) C6 (21 A seesecenseeseeseeeasenseessoess 161

iv. 8[c]: “providing the user with an opportunity to select at

least one storage option for storing the program to be
recorded, wherein the at least one storage option relates
to at least one storage setting configured to control how
the program is to be digitally stored on the random
access digital storage device;”; 22[b]: “a random access
digital storage device”; 22[f]: “provide the user with an
opportunity to select at least one storage option for
storing a program to be recorded, wherein the at least one
storage option relates to at least one storage setting
configured to control how the program is to be digitally
stored on the random access digital storage device” ............ 162

8[d]: “in response to receiving the user selection of the

at least one storage option, modifying the at least one

storage setting for the program to be recorded”; 22[g]:

“modify said at least one storage setting in response to

said user selection”; 22[h]: “in response to receiving the

user selection of the at least one storage option, modify

the at least one storage setting for the program to be

TECOLPCEN”” .......ececccesscesceeseeseeeeeeeecseceeeeeecsaecaeeanseseeeneseeseeeesaees 166.

8[e]: “recording the program on the random access

xii

Public Version

digital storage device based on the modification of the at

least one storage setting for the program”; 22[i]: “record

the program on the random access digital storage device

based on the modification of the at least one storage

setting for the program”? 0... see eseeseeceeeeeeeeseeeeeeeneees 166

c) Claim 11 (Method)..........esssecsescsseesssecssesseessnsenseessneennecsnneceneetnes 168

i. “The method of claim 10 [The method of claim 8
wherein the at least one storage option is for selecting at
least one video format for recording.] wherein the at least.
one video format comprises at least one of high
definition television, normal television and a digital

FOTMAL.” eee ccccccccsecessseceeneecsseeeessaceceeaeeesseeeseseeessusovonseesses 168
B. Technical Prong of the Domestic Industry ...........:sssesssseesesesteseeeeeneentteneenteey 170
1. Technical DI Overview.........ccccecsceseseenecssereeseeeeseesssesssssessssesesesaeeeseeeenes 170
2. Rovi’s 585 DI Products Practice One or More Claims of the ’585
Pate nt..........ccccccescccccesssscccessenneecceenaeeeeeecceeeeeesseeeseosesseseseessseseesesseaeeeseegges 171
a) Claims 8 arid 22 ccccccssssssssssssscsesecssesssessssesessssesessssnssnsnavssssssssssssen 171

i. Preamble [claim 8]: “A method for recording programs
using an interactive television program guide
implemented on user television equipment, the method
comprising;” [claim 22]: “A system for recording
programs, the system comprising”; 22{a]: “a display
screen”; 22[c]: “and an interactive television program
guide implemented at least partially on circuitry, wherein
the interactive television program guide is programmed
to” 171

ii. 8[a]: “displaying in a display screen at least one program ~
listing relating to at least one program;” 22[d]: “display
in the display screen at least one program listing related
to at least One PLOQTAM” .0... ee eee eee ects c ese teeeeeseeereeeeeneeeseeees 173

ili. 8[b]: “providing the user with an opportunity to indicate ~
a program to be recorded on a random access digital
storage device by selecting a program listing from the at
least one displayed program listing, wherein the selected
program listing corresponds to the program to be
recorded;” 22[e]: “provide a user with the opportunity to
indicate a program to be recorded on the random access
digital storage device by selecting a program listing from
the at least one displayed program listing, wherein the
selected program listing corresponds to the program to be
TECOLUEM””.......eeeeeccceeeeeeseeeneeesseeseceeseeeeseoeseeeseesessessseseseeressenes 175

Xiii

Public Version

viv. 8[c]: “providing the user with an opportunity to select at
least one storage option for storing the program to be
recorded, wherein the at least one storage option relates
to at least one storage setting configured to control how
the program is to be digitally stored on a random access
digital storage device;” 22[b]: “a random access digital
storage device”; 22[f]: “provide the user with an —
opportunity to select at least one storage option for
storing a program to be recorded, wherein the at least one
storage option relates to at least one storage setting
configured to control how the program is to be digitally
stored on the random access digital storage device;” ........... 177

v. 8[d]: ‘in response to receiving the user selection of the
at least one storage option, modifying the at least one
storage setting for the program to be recorded;” 22[g]: .
“modify said at least one storage setting in response to
said user selection;” 22[h]: “in response to receiving the
user selection of the at least one storage option, modify
the at least one storage setting for the program to be

vi. 8[e]: “recording the program on the random access
digital storage device based on the modification of the at
least one storage setting for the program;” 22[i]: “record
the program on the random access digital storage device
based on the modification of the at least one storage
setting for the program,” ...........cccceeeeeeteeeeseseeetseeeeeeeea wee 181

b) Cai DL cccccscscccsccscccccssssccessesisessvssevssssussssssssssssssssssssssesseseeeeeeeeees 182

i. The method of claim 10 wherein the at least one video
format comprises at least one of high definition

‘television, normal television and a digital format................. 182
CC. Lnnwallidity ciccccscsccccccssccensescssesssssssecsvessssssesvesssstssesessesssnnsseseseassnssessasssseseseeee 184
1. Legal Standard: Anticipation... cccscsssccsscsseseeeesseeseeseeeesseesseneens 184
2. Invalidity OVErView .........sessseseeseesseecsesseseseeseenseessnsesnsenseenecnnecanecneenecnes 185
3. Examining the Crowded Prior Art Field Reveals the Strength of
Comcast’s Invalidity Case and the Weakness of Rovi’s Rebuttal.......... 185
a) Overview of the Prior Art......... veseceeseeaeeseeeaeeaeensececeaeeeaeeeaeeeaeenes 186
b) Rejecting Rovi’s Invalidity Rebuttal Argument that Claims 1
and 15 Require Steps Performed in the Exact Order Recited..... 190
4. ReplayTV 893 Application (RX-0008) Anticipates Claims 1, 8, 11, 15

and 22 of the ’585 Patent........... desscvuccesseceeeeeesncuceecssseesscesecseeesececcesereees 192

XIV

b)

Public Version

ReplayTV 893 Application (RX-0008) Teaches Limitations
I[pre]/8[pre]/15[c}]/22[c] — 1 [Pre] A method for allowing a
user to select storage options for storing programs using an
interactive television program guide implemented on user
television equipment, the method comprising; 8[Pre] A
method for recording programs using an interactive
television program guide implemented on user television
equipment, the method comprising; 15[c] and an interactive
television program guide implemented at least partially on
circuitry, wherein the interactive television program guide is
programmed to; 22[c] and an interactive television program
guide implemented at least partially on circuitry, wherein the

interactive television program guide is programmed to: ............ 193

ReplayTV 893 Application (RX-0008) Teaches Limitations
1[a]/15{d]/8[c]/22[f]—1 [a] providing the user with an
opportunity to select at least one storage option for storing a
program to be recorded, wherein the at least one storage
option relates to at least one storage setting configured to
control how programs are to be digitally stored on a random
access digital storage device; 15[d] provide the user with an
opportunity to select at least one storage option for storing a
program to be recorded, wherein said at least one storage
option relates to at least one storage setting configured to

‘control how programs are to be digitally stored on the

random access digital storage device; 8[c] providing the user
with an opportunity to select at least one storage option for
storing the program to be recorded, wherein the at least one
storage option relates to at least one storage setting
configured to control how the program is to be digitally
stored on the random access digital storage device; 22[f]
provide the user with an opportunity to select at least one
storage option for storing a program to be recorded, wherein
the at least one storage option relates to at least one storage
setting configured to control how the program is to be

digitally stored on the random access digital storage device:..... 197

ReplayTV 893 Application (RX-0008) Teaches Limitations
1[b}/8[d]/15[e]/22[g]/22[h] — 1[b] in response to a user
selection of the at least one storage option, modifying the at
least one storage setting; [d] in response to receiving the user
selection of the at least one storage option, modifying the at
least one storage setting for the program to be recorded; [e]
in response to a user selection of the at least one storage
option, modify the at least one storage setting; [g] modify
said at least one storage setting in response to said user

XV

d)

Public Version

selection; and [h] in response to receiving the user selection
of the at least one storage option, modify the at least one
storage setting for the program to be recorded .............. eee 207

ReplayTV 893 Application (RX-0008) Teaches Limitations
I[c]/8[a]/15[a]/15[f]/22[a}]/22[d]—1[c] displaying in the

interactive television program guide at least one program

listing related to at least one program; 8[a] displaying in a

display screen at least one program listing relating to at least

one program; 15{a] a display screen; 15[f] display in the

display screen at least one program listing related to at least

one program; 22[a] a display screen; 22[d] display in the

display screen at least one program listing related to at least

ONE PLOPTAME 20... eee eee eeee cee ceseeseeesessscescescesecseseeessseeseasseenseseseenees 209

ReplayTV 893 Application (RX-0008) Teaches Limitations
1[d]/8[b]/15[g]/22[e]—1[d] providing the user with an
opportunity to select a program listing from the at least one
displayed program listing for recording on the random access
digital storage device; 8[b] providing a user with an
opportunity to indicate a program to be recorded on a
random access digital storage device by selecting a program
listing from the at-least one displayed program listing,
wherein the selected program listing corresponds to the
program to be recorded; 15[g] provide the user with an
opportunity to select a program listing from the at least one
displayed program listing for recording on the random access
digital storage device; and 22[e] provide a user with the
opportunity to indicate a program to be recorded on the
random access digital storage device by selecting a program
listing from the at least one displayed program listing,

-wherein the selected program listing corresponds to the

program to be recorded: ..........seseseseeeeseseseeteeetenenesenens Leseeeeeeseeees 211

ReplayTV 893 Application (RX-0008) Teaches Limitations
1[e]/8[e]/15[b]/15[h]/22[b}/22[1]—1 [e] recording the
program on the random access digital storage device based
on the modification of the at least one storage setting; 8[e]
recording the program on the random access digital storage
device based on the modification of the at least one storage
setting for the program; 15[b] a random access digital
storage device; 15[h] record the program on the random
access digital storage device based on the modification of the
at least one storage setting; 22[b] a random access digital
storage device; and 22[i] record the program on the random
access digital storage device based on the modification of the
at least one storage setting for the program: «0.0... . cele eeeeeeee 213

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Public Version

. g) ReplayTV 893 Application (RX-0008) Teaches the

Additional Limitations Required by Claim 11 (which

depends from claim 10)—10. The method of claim 8

wherein the at least one storage option is for selecting at least

one video format for recording; 11. The method of claim 10
wherein the at least one video format comprises at least one

of high definition television, normal television and a digital
FOTMAL! 0... eee ceceeeesscceeeeeeeceeseersceseeeeeeseseeseesssecseeeeeseeeaseseeeeeees 215

ReplayTV. 338 (RX-0006) Does Not Anticipate Claims 1, 8, 15, and 22

5.
of the ’585 Patent Because ReplayTV 338 Fails To Disclose “How”
Storage Options and Related Settings.............cccceeseseseteeseeeeeeteeeenees 217
6. Blatter (RX-0004) Does Not Anticipate Claims 1, 8, 11, 15, and 22 of
the °585 Patent Because Blatter (RX-0004) Fails to Disclose an
Interactive Television Program Guide (Claims 1, 8, 11, 15, and 22) and
User Selection of a Video Format (Claim 11)... ce eeeeesseseseesseeeees 219
7. Claims 1, 8, 11, 15, and 22 Are Not Obvious In View of ReplayTV
893, ReplayTV 338, or Blatter, Individually ..............cccccccseeseeeeseeeeeesees 223
a) ReplayTV 893 Application (RX-0008) and ReplayTV 338
(RX-0006) Do Not Individually Render Obvious Claims 1,
_ 8,11, 15, and 22 of the 585 Patent ....0.. eee eesesseeeseeeeeeeeeees 223
b) Blatter (RX-0004) Does Not Render Obvious Claims 1, 8,
11, 15, and 22 of the "585 Patent... cece esceesesseeseeeeeeenseees 225
8. The Combination of ReplayTV 893 Application (RX-0008) and
ReplayTV338 (RX-0006) Renders Obvious Claims 1, 8, 11, 15, and 22
Of the °585 Patent ...........cc cc eccceeseeseeeseeeseecessersseessseseeecssssesesesseeesseeeeees 226
9. Secondary Considerations Support an Obviousness Finding esseesesaeeseees 229
IX. U.S. PATENT NO. 9,369,741 230
A. Literal Infringement ..0........... ccc cesecsceecseeeeneeeeeseeseeaseeceeneeseeseeeeseteeeaeeeeetaees 230
1. Infringement OVErVieW ..........cceccseseeteeteetecseeneessensceseeneneetseseneneeeaeeaeeaeey 230
2. Relevant Claim Terms ...........:ccccsccscessecesecssessseeseesssesecseessssesessaseeseeeneeees 233
3. The Accused 741 Products Do Not Practice Claims 1, 8, and 14 of the
TAL Patent ........cccccccccceseeceneeeseeeseessseessecessecessesensasssseseseseeeeseeeeeeesaeseses 234
a) Claim 1 oo. ccc eeeeeeeceneeeseeeseecessessasceseessssscssesseesesseesseseeeeeeseeeegs 237
i. Preamble: “A system COMPriSiNg”..........s-scseeeeeeeeeee 237
ii. l[a]: “storage circuitry for storing archived copies of
ViCEOS” oo..scccceccescescescesceceeceeeceeceaetseeaceaceaseaeeacensenseeaseaeeseeeees 237
iti. 1[b]: “control circuitry configured tO” .......c.ccccsesesseeeeeeeees 238

iv. I[c]: “transmit a video to a plurality of user equipment,

XVil

Public Version

wherein the transmitting begins at a start time and ends at

AN ON tHe”... eteceeseceeeeeeseeteeeeeseeecesaeeeaeseseecseesseeeseseeens 239.
> v. l[d]: “access a database to determine whether an

archived copy corresponding to the video is available toa

user After the start time” ..............eeeeceeceeeeeeeeeeeeee enacts ‘laseeeees 240

vi. 1[e]: “based on determining that the archived copy is
available to the user after the start time, cause an
indication corresponding to the archived copy to be
displayed simultaneously with the video after a specified
time after the start time but before the end time, wherein
the specified time was configured prior to the start time”... 241

vil. I[f]: “receive a user response to the indication that is

displayed” .....ceccececsscssessessecsecsessecsscesecsesssecsecesecsecseeaseeseeneess 247
viii. I[g]: “based on the received user response, retrieve,
from the storage circuitry, the archived copy”................00+ 248
b) Claim 8.00... ececcccccseccescccessccesscsceesneesssecssneeceseesenseeeseesessneeeteees 249

i. A method comprising: transmitting a video to a plurality
of user equipment, wherein the transmitting begins at a
start time and ends at an end time; accessing a database
to determine whether an archived copy corresponding to
the video is available to a user after the start time; based
on the determining, causing an indication corresponding
to the archived copy to be displayed simultaneously with
the video after a specified time after the start time, but
before the end time, wherein the specified time was
configured prior to the start time; receiving a user

’ response to the indication that is displayed; and based on
the received user response, retrieving from storage the
archived COPY. ........:ccsecsesscesceesecseeeseceeeeaeeseesasonsesnaeonees sesneeees 249

C) Cam 14 cece cecccccsscesesscssssseesesssssssesssssssssessessssssevtsesssssnsetssssssseeeeees 250

i. “The method of claim 8, further comprising: removing
the archived copy from the storage device at an end of a
- retention period, wherein the archived copy on the

storage device is associated with the retention period.” ....... 250
B. Technical Prong of Domestic Industry ...0.........eceeceeseeeeceseeseeeceeecesestareeeeesaeeeees 251
1. Technical DI Overview ..........cccccccccccccesseseeceeceeeereeeessseeeeees seseeseeseete 251
2. Rovi’s 741 DI Products Do Not Practice Claim 1 or 8 of the ’741 -
Pate... eee eeeececeseeeeeenceeeseseceeesseessssasessecccssssessesesssosaeeseeeeseneneeenseaeess 251
Co Urnallidity coc ccccecccccseescssssesssssessssssessssvecsssecssssecssssvcsssuvesssssecsssssecssssevesssuesssseesanees 254

XViil

the °741 Patent 0... eee csreceseeesseseeessseeessssessseesseseseeesneees 255
b) RX-0069 (McElhatten) Does Not Anticipate Claims 1, 8, and
14 of the ?741 Patent ........ cee ceeceseeeeeceseeeeeeseeteseeseseseseesesesees 260
C) Claims 1, 8, and 14 Are Not Invalid for Lack of Written
Description.......... aeeeaceenseecaueesceceeeeneeeesaeeesueeeeersaeseseesesenesaeenseeeaeas 262 .
INDIRECT INFRINGEMENT , 268
A. Legal Standard: Induced Infringement ...............cccccecceseeseeseesseeeeeeeseeeeeeeeneees 268
B. Indirect Infringement Overview «0.0.0.0... ececcecsesseseseseeeeseeseessessscaceseceeeseeseceeseaeens 269
C. Comcast Does Not Induce Infringement of Claim 1 (Method) of the ’011 Patent
and Claim 1 (System) of the ’741 Patent Because Users of Comcast’s X1 System
Do Not Directly Infringe........ cece eee seceseeeseeeseeseeseceeseseescnssessessessesseeasaeseeseaees 270
1. Claim 1| of the ’O11 Patent 00.0. eeeee sees sseeseeeeseeeeeeeesseeeenes 270
2. Claim 1 of the ’741 Patent 00.0... eeceeeseeesneeeeeeeseeseeeerseeseeesseeseeee 272
D. Comcast Induces Infringement of Claim 9 (System) of the ’011 Patent and Claims
15 and 22 (System) of the "585 Patent... cee ee eeceeeeseeseesesesetsesseseesseeeeeeee 272
1. Comcast Had Pre-Suit Knowledge of the ’011 and 585 Patents........... 272
a). The 7011 Patent... eee ensecseecseesssecseseesssseneeeseeees 272
b) The "585 Patent 0.0... cccecccceesececeeeesseeeteeeseesasessesseseseesseerseseneees 273
2. Comcast Encourages Its U.S. Customers to Infringe Claim 9 of the
011 Patent and Claims 15 and 22 of the ’585 Patent.........0.. eee 274
a) Claim 9 of the 011 Patent 0... cee cent eeeeeeeeeeeees essees 274
b) — Claims 15 and 22 of the ’585 Patent ......c.cccccscssessssesssseeseseessssess .. 275
3. Comcast Users Directly Infringe Claim 9 of the ’011 and Claims 15
and 22 of the ’585 Patent ......... ec ceeseeeecenseesseeeeseresesereeseseseseeeseseneees 276
4. Comcast Intends to Induce Infringement or Has Been Willfully Blindto |
Infringement... eee eeeeseescseeseeseesecseeseeseessecsscsessseesseseeeseseeseaseeeeneses 279
DOMESTIC INDUSTRY REQUIREMENT: ECONOMIC PRONG .............c000 282
A. Legal Standard 0... ceseseeseeeeeesseeesessescseecesseseceteeseeessseesscssesssesessseesessesaaceees 282
B. Economic DI Overview ....c.sccsssessessessesssesseessesstessesssesesssesseesecsseeseesessees seeeeeeeenneees 285 -
C. Rovi Properly Relied Upon Its Product Allocations in the Ordinary Course of
BUSINESS ..........ccccccscecssecsscecscceseeesnecescecseeessessseessaaecsseseseesessssessesseessaeseseaseeeseeeeiats 286
D.

Public Version

l. Invalidity OVerVieW ....... ccc eseeseessesceseceeescssssssssssssseecsaeeseeseaseseeaeegs 254
2. Comcast Failed to Demonstrate that the Asserted Claims Are Invalid .. 255
a) RX-0069 (Sie) Does Not Anticipate Claims 1, 8, and 14 of

Rovi’s Investments in Its Domestic Industry Are Significant Under Subsections

X1X

Public Version

(A) and (B) and Substantial Under Subsection (C)>...........ccceseeteeseteeseeteteteees 296
1. Classic Guides and Veveo AS&R.........cccececcescessesseseeeeeseeeesatessenseneeneneas 296
a) Rovi’s Investment in Plant and Equipment ..............:ccscseeseeeees (296
b) Rovi’s Investment in Labor and Capital... ceceeeceeseeeeeeees 297
c) Rovi’s Investment in Exploitation of Its Patents, Based on
Engineering, Research and Development.............0..cccceseeseeseeee 299
2. Next-Gen Platform......c.c.cccccccccsssssssscsssesesescseseseeeseseeeeeeeeneeseeeeeeeeeeeees wee 301
a) Domestic Industry for Next-Gen Is In the Process ..................... 301
i. Tangible Steps Before Filing the Complaint ..........0.0.0..0. 302
ii. Tangible Steps Before the Close of Discovery...............064 304
b) Rovi’s Investment in Plant and Equipment ........... eee 305
c) Rovi’s Investment in Labor and Capital 0... ee eeeceeeeeeereeeneees 306 |
d) Rovi’s Investment in Exploitation of Its Patents, Based on
Engineering, Research and Development...............:s:cccccseeseee +. 307
E. Licensee TSI’S Investments Satisfy the Economic Prong of the DI Requirement

esesccescesseeseceaecaeeececseecseceneesacaeeeessesedcesuacseaesescsescseesssesasenecnacensssssenseeseseaeeneeeneeeaeenes 308

1. TSI’s Investments in TiVo Bolt with Experience 4.0 Are Significant
Under Subsections (A) and (B) and Substantial Under Subsection (C) . 309 |

XII. RECOMMENDATION ON REMEDY AND BOND 311
A. Legal Standard ......... cee eeseeeeescessssseseeseessenssesenessesesseeeeaseseseesseeseeseenees seeeeeeeee 311
B. A Limited Exclusion Order Is Warranted ..0............:cessceescceseesseeeesseesseeeeeseeseseees 312
C. A Cease and Desist Order Is Warranted ..............:..:ceessecsssesssessecessseesseeeeeeeeeeseeas 315
D. A Bond During the Presidential Review Period Is Not Warranted ceseaceeseeeeeeeees 318
XII WAIVER OR WITHDRAWAL OF RESPONDENTS?’ DEFENSEG.........csssscssssees 322

XIV. FINDINGS OF FACT AND CONCLUSIONS OF LAW: THIS INITIAL
DETERMINATION FINDS A SECTION 337 VIOLATION BASED UPON

INFRINGEMENT OF U.S. PATENT NO. 7,779,011 . 323
XV. CONCLUSION 324
APPENDICES

Appendix A: Accused Products
_ Appendix B: DI Products

XX

Public Version

ABBREVIATIONS

The following shorthand references to the parties, related U.S. agencies, and related proceedings
are used in this Initial Determination:

Complainants or
Rovi

Respondents or
Comcast

Staff

Private Parties
Parties

OUI

CBP

PTO

PTAB

SEC

Veveo

TSI

1001 Investigation

Complainants Rovi Corporation; Rovi Guides, Inc.; and Veveo,
Inc., collectively |

Respondents Comcast Corporation; Comcast Cable
Communications, LLC; Comcast Cable Communications
Management, LLC; Comcast Business Communications, LLC;
Comcast Holdings Corporation; and Comcast Shared Services,
LLC, collectively

Commission Investigative Staff, Office of Unfair Import
Investigations

Rovi and Comcast, collectively

Rovi, Comcast, and Staff, collectively
Office of Unfair Import Investigations
U.S. Customs and Border Protection

US. Patent and Trademark Office

Patent Trial and Appeal Board of the PTO
Securities and Exchange Commission
Veveo, Inc.

TiVo Solutions, Inc.

Investigation No. 337-TA-1001

The following abbreviations for pleadings, exhibits, briefs, transcripts, and Orders are used in
this Initial Determination:

XXxi

Public Version

Compl. | Complaint

Response of Respondents Comcast Corporation; Comcast Cable
Communications, LLC; Comcast Cable Communications
Management, LLC; Comcast Business Communications, LLC;

Resp. Comcast Holdings Corporation; and Comcast Shared Services, LLC
to the Notice of Investigation and Complaint Under Section 337 of
the Tariff Act of 1930, as Amended

Cx Complainants’ exhibit

CDX Complainants’ demonstrative exhibit

CPX Complainants’ physical exhibit

CPBr. Complainants’ Pre-Hearing Brief

CBr. Complainants’ Initial Post-Hearing Brief!

CRBr. Complainants’ Post-Hearing Reply Brief

CPSt. Complainants’ Pre-Hearing Statement

JX Joint exhibit -

RX Respondents’ exhibit

RDX Respondents’ demonstrative exhibit

RPX Respondents’ physical exhibit

RPBr. Respondents’ Pre-Hearing Brief

RBr. Respondents’ Initial Post-Hearing Brief

RRBr. Respondents’ Post-Hearing Reply Brief

RPSt. Respondents’ Pre-Hearing Statement

SPBr. Commission Investigative Staff's Pre-Hearing Brief

' This refers to Complainants’ Corrected Initial Post-Hearing Brief.

XXil

SBr. |
SPSt.
Sx

Tr.

Dep. Tr.
CMBr. .
RMBr.
SMBr.

Markman Order

Public Version

Commission Investigative Staff's Initial Post-Hearing Brief?
Commission Investigative Staff’s Pre-Hearing Statement
Commission Investigative Staff's exhibit

Evidentiary hearing transcript

Deposition transcript

Complainants’ Markman Brief

Respondents’ Markman Brief

Commission Investigative Staffs Claim Construction Brief

Order No. 41 (Oct. 15, 2018)

_ The following abbreviations for technical terms are used in this Initial Determination:

API
DVR
HD
HDD
HW
IP
IPG
iVOD_
RAM

REX

Application program interface
Digital video recorder

High definition

Hard disks

Hardware

Internet Protocol

Interactive Program Guide
Instant Video-On Demand
Random-Access Memory

Relevance Engine for Xfinity

2 Staff did not file a separate Post-Hearing Reply Brief.

Xxitl

SD
STB
T9
TV
VCR
voD

VREX

Public Version

Resume Point Service

Standard definition

Set-top box

Text on 9 keys —

Television

Videocassette recorder

Voice-On Demand

Voice Relevance Engine for Xfinity

+
Cross-platform runtime environment

The following shorthand references to certain products and patents at issue are used in this Initial

Determination:

"011 patent
585 patent
°741 patent
Asserted Patents

Accused 011
Products

Accused 585
Products

Accused 741
Products

Accused Products

011 DI Products

U.S Patent No. 7,779,011
U.S. Patent No. 7,827,585
USS. Patent No. 9,369,741

’011, °585, and ’741 patents, collectively

XG1, XG2, Xi5, and XiD STBs, collectively

- XG1 and XG2 STBs with cloud DVR enabled, XG1 STBs with

cloud DVR disabled, and Xi5 and XiD STBs, collectively

~

XG1, XG2, XiD, and Xi5 STBs, collectively

Accused 011 Products, Accused 585 Products, and Accused 741
Products, collectively

AS&R and Next-Gen Platform

XX1V

585 DI Products
741 DI Products

DI Products

Public Version

i-Guide, Passport Guide, Next-Gen Platform and TiVo Bolt with
Experience 4.0

Next-Gen Platform and TiVo Bolt with Experience 4.0

011 DI Products, 585 DI Products, and 741 DI Products,
collectively

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Public Version

1. INITIAL DETERMINATION ON VIOLATION OF SECTION 337, AND
RECOMMENDED DETERMINATION ON REMEDY AND BOND

A. Overview of Unsettled Issues

This is not the first television “set-top box” or television programming equipment-related
(broadly defined) investigation the Commission has undertaken. This Investigation is one of
several investigations in which one or both of the parties to this Investigation has been a party,
whether together in the same investigation, or in investigations involving other parties. It is not
the last of similar investigations. See Certain Digital Video Receivers, Broadband Gateways,
and Related Hardware and Software Components, Inv. No. 337-TA-1158 (May 22, 2019).

However, in this Investigation, there are two (2) issues of unsettled law that have been
decided by summary determination and that are not addressed in the Initial Determination on
Violation (“ID”). Instead, the two (2) issues were litigated fully both on paper and in a separate
hearing I held on September 6, 2018 precisely so the issues would receive a thorough airing on
their merits away from the potential distractions of the evidentiary hearing.

The first issue, which is not addressed in this ID, is whether Comcast is an “importer”
within the meaning of Section 337. In an investigation with the same parties, virtually the same
accused set-top boxes, and the same evidence, the Commission affirmed the finding of the ID of
the companion investigation, Inv. No. 337-TA-1001 (1001 Investigation”), that “Comcast” is an
“importer” within the meaning of Section 337 even though Comcast was not the importer of
record. See Certain Digital Video Receivers and Hardware and Software Components Thereof,
Inv. No. 337-TA-1001, Comm’n Op. at 10 (Nov. 21 , 2017) (“Digital Video Receivers’). That
issue is pending on Comcast’s appeal in the Federal Circuit. Comcast Corp., et al., v. Int’l Trade

Comm’n, 2018-1450, 2018-1653, 2018-1667 (Fed. Cir. 2018).

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I adopted the finding of the 1001 Investigation and the Commission’s affirmance that
Comcast is an “importer” within the meaning of Section 337. The outcome in the Federal
Circuit also will affect that same finding in this Investigation.

The second issue of unsettled law is whether the charge, or “retail price,” that Comcast
requires its subscribers to pay who fail to return their set-top boxes at the end of their lease
agreement, constitutes a “sale” within the meaning of Section 337, the Uniform Commercial
Code (“UCC”), or common law, including under a theory of conversion. The Commission did _,
not take a position on this issue in the 1001 Investigation. (See Digital Video Receivers,
Comm’n Op. at 10.). In another investigation, Inv. No. 337-TA-1010 (“1010 Investigation”), the
issue was limited to “whether the rental of products by Comcast constitutes a sale after
importation.” See Certain Semiconductor Devices, Semiconductor Device Packages, & Prods.
Containing Same, Order No. 69 (Feb. 21, 2017) (“Semiconductor Devices”), not reviewed,
Comm’n Notice (Mar. 27, 2017).

Unlike in the 1001 or in the 1010 Investigations, a more extensive evidentiary record was
developed in this Investigation, which included but was not limited to: (1) evidence with respect
to Comcast’s Subscriber Agreement for pertinent products at certain points in time; (2) evidence
with respect to Comcast’s actions when a set-top box is not returned; (3) how Comcast treats
unreturned set-top boxes on its balance sheets; and how (4) Comcast invoices its subscribers for
the cost, including profit, of an unreturned set-top box following the expiration or termination of
a Comcast lease agreement with its subscriber.

Both issues are discussed in Order No. 47 that was filed on June 3, 2019. (Doc. ID No.

677614 (June 3, 2019).).

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B. Summary of Findings

A summary of this decision’s findings are set forth in Table No. 1 below.

Table No. 1: Summary of Findings

Product

Patent

Claims

Determination

Accused 011
Products

°011 patent

l and 9

Violation (claims 1
and 9): Claims 1 and
9 are valid and
infringed by the
Accused 011
Products.

Accused 585
Products

*585 patent

t

1, 8, 11, 15, and 22

No violation (claims
1, 8, 11, 15, and 22):
Claims 1, 8, 11, 15,
and 22 are infringed
by the Accused 585

._| Products but are

invalid.

Accused 741
Products

°741 patent

1, 8, and 14

No violation (claims 1
8, and 14): Claims 1,
8, and 14 are valid
but not infringed by
the Accused 741
Products.

DI Products

All Asserted Patents

Satisfied. Rovi’s
domestic R&D
activities with respect
to their DI Products
satisfy the domestic
industry requirement
set forth in 19 U.S.C.
§ 337(a)(3)(A), (B),
and (C).

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Il. BACKGROUND

A. Institution and Selected Procedural History

On February 8, 2018, Rovi Corporation; Rovi Guides, Inc.; Rovi Technologies
Corporation;? and Veveo, Inc. filed a complaint (“Complaint”) under Section 337 of the Tariff
Act of 1930, as amended, 19 U.S.C. § 1337, alleging infringement of certain claims of U.S.
Patent No. 7,779,011 (JX-0001, hereafter “the ’011 patent”); U.S. Patent No. 7,937,394 (JX-
0003, hereafter “the ’394 patent”); U.S. Patent No. 7,827,585 (JX-0004, hereafter “the *585
patent”); U.S. Patent No. 9,294,799; (JX-0005, hereafter “the ’799 patent”); U.S. Patent No.
9,369,741 (JX-0006, hereafter “the ’741 patent); U.S. Patent No. 9,578,363 (Compl. at Ex. 6,
hereafter “the ’363 patent”); U.S. Patent No. 9,621,956 (Compl. at Ex. 7, hereafter “the °956
patent”); and U.S. Patent No. 9,668,014 (JX-0007, hereafter “the ’014 patent”). (See, e.g., Doc.
ID No. 636148, Compl. at ] 7 (Feb. 8, 2018).).* .

The Commission instituted this Investigation pursuant to subsection (b) of Section 337 of
the Tariff Act of 1930, as amended, to determine:

whether there is a violation of subsection (a)(1)(B) of section 337 in the importation

into the United States, the sale for importation, or the sale within the United States

after importation of certain digital video receivers and related hardware and

software components by reason of infringement of one or more of claims 1-3, 5-11,

13-19, and 21-24 of the ’011 patent; claims 1, 2, 4-6, and 8-11 of the ’394 patent,

claims 1, 3, 4, 8, 10, 11, 15, 17, 18, 22, 24, and 25 of the ’585 patent; claims 1-3,

5, 7, 9-12, 14, 16, 18, and 28 of the ’799 patent; claims 1-3, 5-10, 12, 14-17, 19,

and 20 of the ’741 patent; claims 1-8, 10-18, and 20 of the ’363 patent; claims 1, 2,

4-6, 11, 12, and 14-16 of the ’956 patent; and claims 1-4, 7-13, and 17-20 of the

’014 patent, and whether an industry in the United States exists or is in the process
of being established as required by subsection (a)(2) of section 337[.]

3 Rovi Technologies Corporation has since withdrawn from this Investigation. (See Order No. 33 (Aug.
20, 2018); Doc. ID No. 656136, Notice of Comm’n Not to Review ID (Sept. 19, 2018).).

4 Rovi also filed a confidential version of the Complaint. (Doc. ID No. 635973 (Feb. 8, 2018).).

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83 Fed. Reg. 11792 (Mar. 16, 2018).

The Notice of Investigation (“NOI”) names as complainants: Rovi Corporation, Rovi
Guides, Inc., and Rovi Technologies Corporation, of San Jose, California; and Veveo, Inc. of
Andover, Massachusetts (collectively, “Complainants” or “Rovi’). Jd. The NOI names as
respondents: Comcast Corporation, Comcast Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business Communications, LLC, and Comcast
Holdings Corporation, all of Philadelphia, Pennsylvania; and Comcast Shared Services, LLC of
Chicago, Illinois (collectively, “Respondents” or “Comcast,” and with Complainants, “the
Private Parties”). Jd. Commission Investigative Staff of the Office of Unfair Import
Investigations (“Staff,” and with the Private Parties, the “Parties”) is also named as a party.> Id.

On April 3, 201 8, Comcast filed a response to the Complaint and NOI (“Response”).
(Doc. ID No. 640900 (Apr. 3, 2018). In its Response, Comcast identified 18 affirmative
defenses (““Comcast’s Affirmative Defenses”).7 (Resp. at 59-75.).

As the result of a series of Initial Determinations (“ID”) granting Rovi’s partial
terminations of this Investigation against Comcast with respect to certain asserted claims and the
asserted °394, "799, 363, 956 and ’014 patents in their entirety, the ten (10) claims remaining

that are the subject of this decision are: (i) claims 1 and 9 of the ’011 patent; (11) claims 1, 8, 11,

J

>On April 24, 2018, OUII provided notice that its participation in this Investigation would be limited to
issues relating to importation, jurisdiction, and remedy. (Doc. ID No. 643074 (Apr. 24, 2018).).

® Comcast also filed a confidential version of its Response. (Doc. ID No. 640893 (Apr. 3, 2018).).

7 Comcast withdrew its Sixteenth Affirmative Defense of unclean hands. (Doc. ID No. 651424, Notice of
Withdrawal of Affirmative Defense (July 27, 2018).).

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15, and 22 of the ’585 patent; and (iii) claims 1, 8, and 14 of the ’741 patent.®

On July 27, 2018, Rovi and Comcast each filed a motion for summary determination
(“MSD”) related to importation and a statement of undisputed facts (““SUMF’’) in support:
Rovi’s MSD on Importation (Motion Docket No. 1103-021 (July 27, 2018)); and Comcast’s
MSD on No Sale After Importation (Motion Docket No. 1103-020 (July 27, 2018)). On August
8, 2018, Staff filed responses to Rovi’s and Comcast’s MSDs and SUMFs. (Doc. ID No.

65248 1(Aug. 8, 2018); (Doc. ID No. 652484 (Aug. 8, 2018).). On August 17, 2018, Rovi filed a
| cross-motion related to importation: Rovi’s MSD on Sale After Importation (Motion Docket No.
1103-031 (Aug 17, 2018)).? On August 21, 2018, Staff filed a response to Rovi’s cross-motion.
(Doc. ID No. 653538 (Aug. 21, 2018).). The Parties provided oral argument on the summary
determination motions on September 6, 2018 (“MSD Hearing”). (Doc. ID Nos. 6551 16, 655117
(Sept. 6, 2018).).

_ Although the findings on the summary determination motions were given to the Parties
orally during a pre-hearing conference, the fully explained rationale is provided in Order No. 47
(“Importation ID”). (Order No. 47 (June 3, 2019); Oct. 16, 2018 Telephone Conference
Transcript (“Teleconf. Tr.”) (Doc. ID No. 659593 at 16:4-15 (Oct. 23, 2018).). In Order No. 47,
I followed Judge Shaw’s finding and the Commission’s affirmance of the 1001 ID’s finding that
Comcast is an “importer” within the meaning of Section 337. (/d. at 23.). I also found that the

charge Comcast subscribers pay when they fail to return set-top boxes (“STB”) results in a “sale”

8 These IDs are Order Nos. 12 (July 2, 2018), 16 (Mar. 8, 2018), 33 (Aug. 29, 2018), and 39 (Oct. 3,
2018), which the Commission determined not to review. (See Doc. ID Nos. 651067 (July 24, 2018),
656136 (Sept. 19, 2018), 659869 (Oct. 25, 2018).).

° See n.18, infra, regarding an ID and Order, granting and denying Rovi’s MSD and Comcast’s MSD,
respectively.

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within the meaning of the UCC, common law, and the Restatement of Torts. (See id. at 35.).

On June 15, 2018, the Private Parties filed a joint Markman hearing proposal. (Doc. ID
No. 647986 (June 15, 2018).). The Private Parties agreed that early resolution of the claim
construction disputes in this Investigation would be desirable and that a Markman hearing would
be beneficial. (Id. at 1.). Thus, a Markman hearing was held on July 26, 2018. (See Doc. ID
No. 651341 (July 27, 2018).). On October 15, 2018, a Markman Order issued that: (1) adopted
the claim terms on which the Parties agreed; and (2) construed the claim terms in dispute. (Order
No. 41 (“Markman Order”) (Oct. 15, 2018).).

Rovi filed four (4) motions in limine (“MILs”). (Motion Docket Nos. 1103-034 (Sept. 4,
2018), 1103-037 (Sept. 7, 2018), 1103-038 (Sept. 7, 2018), 1103-040 (Sept. 7, 2018).). Comcast
also filed four (4) MILs. (Motion Docket Nos. 1103-039 (Sept. 7, 2018), 1103-041 (Sept. 7,
2018), 1103-042 (Sept. 7, 2018), 1103-044 (Sept. 14, 2018).). Staff had limited participation in
this Investigation. Staff only filed briefs or participated in oral argument with respect to
jurisdiction and certain summary determination motions, and did not file any MILs.

* Rovi’s and Comcast’s MILs, and the rulings on these motions, are summarized in Table

Nos. 2 and 3 below.

Table No. 2: Rovi’s MILs

MIL No./Motion Caption/Issue . Ruling
Docket No. ,
MIL No. 2 Rovi’s MIL to exclude late _ Granted in-part, denied in-part. (Order
(Motion Docket No invoices and to strike No. 42 at 3-4 (Oct. 15, 2018).).

portions of Comcast’s
updated statement of
material facts

1103-034) The first part of Rovi’s MIL requests
that invoices that Comcast filed on
August 28, 2018, without leave, and
then attached as Exhibits 1-4 (“Late

Invoices”) to its MSD of No Sale be

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MIL No./Motion
Docket No.

Caption/Issue

Ruling

stricken. (MIL No. 2 at 1-2.).

‘During the Oct. 10, 2018
Teleconference, I advised the Parties
that the first part of Rovi’s MIL No. 2 is
moot because it resurrects the substance
of Comcast’s Motion for Leave to file
the same Late Invoices, Motion Docket
No. 1103-033, that I denied in Order
No. 37 (Doc. ID No. 657570 (Oct. 3,
2018)). Accordingly, the first part of
Rovi’s MIL No. 2 is effectively granted
and Exhibits 1-4 to Comcast’s No Sale
SD and its SMF are stricken, even
though that part of Rovi’s MIL No. 2 is
technically moot in view of Order No.
37. Comcast may not allude to, cite to
or use any of the stricken exhibits, 1.e.,
Late Invoices, for any purpose. As I
explained in Order No. 37, the Late
Invoices were very late, especially since
I extended discovery deadlines to permit:
more extensive discovery on the sale/vs.
liquidated damages issue. Comcast did
not meet any of the initial deadlines for

production let alone the extended
discovery deadline for production of the
Late Invoices.” (Order No. 42 at 3-4
(emphases in original).).

The second part requests that certain of
Comcast’s “facts” in its Statement of
Material Facts that was revised as part
of its MSD of No Sale that reference the
Late Invoices also be stricken. (MIL
No. 2 at 8.).

“During the Oct. 10, 2018
Teleconference, I advised the Parties
that I was denying the second part of
Rovi’s MIL No. 2 and would not strike
any supplementation of Comcast’s
SMF. I am modifying that part of the

Order from the Oct. 10, 2018

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Dr. Balakrishnan’s Rebuttal
Expert Report and Errata,
and to preclude argument

- MIL No./Motion Caption/Issue Ruling
Docket No.
Teleconference. To the extent that
Comcast modified its SMF to allude to
or reference the stricken Exhibits, or to
| change any of the wording of its SMF to
correct or amend its SMF to incorporate
the Late Invoices that are stricken, that
part of Rovi’s MIL No. 2 is granted and
any language alluding to the stricken
invoices not contained in Comcast’s
original SMF is also stricken.” (Order
No. 42 at 4 (emphases in original).).
MIL No. 3 Rovi’s MIL to preclude Denied without prejudice. (/d. at 6-7.).
(Motion Docket No. Comcast's Todd
1103-038) Schoettelkotte from
testifying to opinions that.
are contrary to law
MIL No. 4 Rovi’s MIL to exclude Denied without prejudice. (/d. at 9-10.).
(Motion Docket No. Comcast's alleged
1103-037) alternative designs for U.S. -
Patent No. 7,779, 011
MIL No. 5. Rovi’s MIL to preclude Denied without prejudice. (/d. at 11-
‘(Motion Docket No undisclosed arguments with | 12.).
1103-040) " | respect to “motivation to
combine” certain prior art
References
\
Table No. 3: Comcast’s MILs
MIL No./Motion Caption/Issue Ruling
Docket No.
MIL No. 1 Comcast’s MIL to exclude | Granted in-part, denied in-part. (Order
(Motion Docket No new claim construction and | No. 43 at 5-6 (Oct. 16, 2018).).
1103-042) validity arguments raised in “Tn its first argument, Comcast contends

that Dr. Balakrishnan’s opinions are
based on a misunderstanding ofthe law.
Comcast argues that under controlling

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MIL No./Motion
- Docket No.

Caption/Issue

Ruling

regarding the Same

Federal Circuit precedent, a ‘claim is
not limited to performance of the steps
in the order recited, unless the claim
explicitly or implicitly requires a
specific order.’” (/d. at 2 (citation
omitted).).

“During the Oct. 10, 2018
Teleconference, I denied the first part of
Comcast’s MIL No. 1, Motion Docket
No. 1093-042. I am not striking the
paragraphs identified above in Dr.
Balakrishnan’s Rebuttal Report or in
Rovi’ Pre-Hearing Brief that Comcast
asks be stricken. That Rovi did not
specifically make an ‘order of
performance’ argument for the pertinent
claims does not amount to either a “new
construction” or a waiver... . Rovi is

| not precluded from making any —

arguments with respect to the order of
the claims at issue.” (/d. at 5 (emphasis
in original).).

“Tn addition to portions of Dr.
Balakrishnan’s Rebuttal Expert Report,
Comcast contends that the errata sheet
to Dr. Balakrishnan’s Opening Expert
Report should be excluded because it is
an ‘unseasonable, substantive
supplementation of an expert report’ in
violation of Ground Rule 5.” (dd. at 3
(citation omitted).).

“During the Oct. 10, 2018
Teleconference, I granted the second
part of Comcast’s MIL No. | by striking
the words ‘some of’ from the errata to
Dr. Balakrishnan’s Rebuttal Expert
Report as a violation of Ground Rule 5
which prohibits “substantive
supplementation.”” (Id. at 5-6
(emphasis in original) (citations

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MIL No./Motion Caption/Issue Ruling
Docket No.
omitted).).
MIL No. 2 Comcast’s MIL to strike and | Denied without prejudice. (/d. at 9-10.).
(Motion Docket No. preclude expert reports and
1103-039) testimony beyond the scope
of Dr. Bovik’s expertise
MIL No. 3 Comcast’s MIL to exclude | Denied. (/d. at 13-14.).
(Motion Docket No. new validity arguments
1103-041) raised in Dr. Bovik’s and
Balakrishnan’s Rebuttal
Expert Reports
MIL No. 4 Comcast’s MIL to preclude | Denied without prejudice. (/d. at 16.).
(Motion Docket No. certain evidence, opinions, ,
1103-044) and argument regarding
Rovi’s unsupported
economic prong activities
and expenditures

The evidentiary hearing (“Hearing”) was held October 17-19, 2018, and October 22-24,

2018. During and immediately after the Hearing, the Private Parties filed motions to strike

(“MTSs”) evidence adduced during the Hearing. The Private Parties filed a total of three (3)

MTSs. The MTSs, and their respective rulings, are summarized in Table No. 4 below.

\

Table No. 4: Private Parties’ Hearing MTSs

Comcast’s withdrawal of the
disputed testimony

Party and Motion Issue Ruling
Rovi’s MTS MTS to strike certain of Dr. | Granted. (Order No. 45 (Feb. 5,
(Motion Docket No David Karger’s hearing 2019).).

1103-048) testimony based upon “Dr. Karger’s Hearing testimony at Hr.

Tr. 1522:23-1523:11, 1524:5-1525:19,
1527:1-23, 1528-17-19, and 1530:21-22
is withdrawn and effectively is stricken
from the record.” (/d. at 2.).

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Party and Motion Issue Ruling
Rovi’s MTS MTS undisclosed invalidity | Denied. (Order No. 49 (June 3, 2019).
(Motion Docket No. hoot an in Dr. Albonest's “First, demonstratives are not .
1103-049) earing testimony evidence. ... Rovi’s Motion to Strike Dr.

Albonesi’s testimony from the Hr. Tr. at
1823:5-1824:5; 1826:18-1827:4;
1879:20-1880:25; 1837:5-1838:19; and
1876:3-1879:13, and Demonstrative
Slides 31, 43-45, 61; 85-87, 129-130,
and 131-132, that is Motion Docket No.
1103-049, is denied.” (Id. at 3.).

Comcast’s MTS

(Motion Docket No.
1103-050)

MTS exhibit CX-1472C

Granted. (/d.).

“In sum, no foundation was laid for CX-
1472C. Mr. McCann’s testimony was
far more direct and specific in his quote
taken from CX-1472 which he gave
without any reference to CX-1472C.
The questions posed to Mr. McCann
about CX-1472C did not unequivocally
tie the contents of that document to Mr.
McCann’s testimony. . . . Finally,
Comcast did not misinterpret the
Ground Rules.” (dd. at 6.).

B. Related Investigation

This Investigation is the second action Rovi Corporation and Rovi Guides, Inc. have filed

with the Commission against Comcast to prevent Comcast’s alleged unlawful acts in violation of

Section 337. !°

The Commission instigated the first action, Certain Digital Video Receivers and

Hardware and Software Components Thereof, Inv. No. 337-TA-1001 (“Digital Video Receivers”

or the “1001 Investigation”), based on Rovi Corporation and Rovi Guides, Inc.’s complaint

‘0 Veveo was not a party in the first action, Inv. No. 337-TA-1001. |

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| (collectively, “1001 Complainants”), filed May 26, 2016. 81 Fed. Reg. 33547 (May 26, 2016).
In addition to Comcast, the Notice of Investigation NOP’) also named the following
respondents:'! (1) Technicolor SA; Technicolor USA. Inc.; and Technicolor Connected Home
USA LLC (collectively, “Technicolor”); and (2) ARRIS International plc; ARRIS Group Inc.;
ARRIS Technology, Inc.; ARRIS Enterprises LLC; ARRIS Solutions, Inc.; ARRIS Global Ltd.,
and Pace Americas, LLC (collectively, “ARRIS,” and with Comcast and Technicolor, the “1001
Respondents”)). Id. at 33548.

The additional Respondents named in the 1001 Investigation are Comcast’s subscribers
whose “Supply Agreements” with Comcast are discussed at length in the Parties’ summary
determination motions as well as in Order No. 47.

‘The Final Initial Determination (“1001 ID’) issued on May 26, 2017, in which a violation
of Section 337 was found with respect to U.S. Patent Nos. 8,006,263 (“the ’263 patent”) and
8,578,413 (“the ’413 patent”). (Doc. ID No. 612872 (May 26, 2017).).'? Specifically, the 1001
ID found that Comcast, ARRIS, and Technicolor imported the accused X1 STBs,!? but that

Comcast did not sell accused products after importation. (1001 ID at 9-14, 610.). However, the

?

'l Rovi accused the same Comcast respondents of infringement in this Investigation. See, e.g., 83 Fed.
Reg. at 11792.

'2 A public version of the 1001 ID also issued. (Doc. ID No. 615236 (June 26, 2017).).

'3 This Investigation and the 1001 Investigation both involve IPG-related technologies. In the 1001
Investigation, Rovi accused Comcast’s XG1, XG2, RNG150, Xi3, XiD, and Xi5 set-top boxes of
infringing the patents it asserted in that investigation. In this Investigation, Rovi initially accused, inter
alia, Comcast’s XG1, XG2, RNG150, Xi3, XiD, and Xi5 set-top boxes of infringing the Asserted Patents.
However, on August 1, 2018, Rovi filed a Notice of Withdrawal of Certain Accused Products,
specifically withdrawing the RNG150 and Xi3 STBs as Accused Products. Accordingly, the remaining
Accused Products are Comeast’s XG1, XG2, XiD, and Xi5 STBs. (See Section V.A, infra; see also n.26,
infra, regarding Xi6.).

XK

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evidentiary record on the “retail” price that Comcast charges its subscribers who do not return
their Comcast STBs was more extensively developed and discussed in this Investigation than in
the 1001 Investigation. (See MSD Hearing Transcript (“MSD Hr. Tr.”’); see also Order No. 47 at
4.).

The 1001 ID also found that Comcast’s X1 system practices the claims at issue,
Comcast’s subscribers directly infringed the relevant claims by using the accused system, and
Comeast induced infringement as a result. (See, e.g., id. at 610.). Additionally, the 1001 ID
found that ARRIS and Technicolor did not directly infringe or contributed to infringement. (See;
e.g., id. at 611.). On June 9, 2017, the Recommendation on Remedy and Bond (“1001 RD”)
issued, in which it was recommended that the Commission issue a Limited Exclusion Order
(“LEO”) and Cease and Desist Orders (“CDOs”), and that no bond was required during the
Presidential Review Period. (Doc. ID No. 613866, 1001 RD at 1 (June 9, 2017).).'4

On June 12, 2017, the 1001 Complainants and 1001 Respondents each filed a petition for
review of the 1001 ID. (Doc. ID No. 614000, 1001 Complainants’ Petition (June 12, 2017);
Doc. ID No. 614014, 1001 Respondents’ Petition (June 12, 2017)). On August 10, 2017, the
Commission reviewed some of the petitioned issues, which included, inter alia, the following:
(1) the 1001 “ID’s determination that Comcast is an importer of the accused products”: (2) the
1001 “ID’s determination that Comcast has not sold accused products in the United States after
the importation of those products into the United States”; and (3) “whether the X1 products are
‘articles that infringe,’ the issue of direct infringement of the ’263 and °413 patents by the XI

accused products, and the issue of ‘the nature and scope of the violation found[.]” (Doc. ID No.

'4 A public version of the 1001 RD also issued. (Doc. ID No. 616255 (July 6, 2017).).

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619655 (Aug. 10, 2017) (internal parentheticals omitted).). See also 82 Fed. Reg. at 38934-36
(Aug. 16, 2017).

On review, the Commission affirmed the 1001 ID’s conclusions (“1001 Commission
Opinion”) that the X1 STBs are “articles that infringe” the ’263 and *413 patents and that
Comcast imported the X1 STBs. (Doc. ID No. 629603, 1001 Comm’n Op. at 10, 18-22 (Nov.
21, 2017).).!5 The Commission also affirmed the 1001 ID’s finding that Comcast’s customers'6
directly infringed the ’263 and ’413 patents. (/d. at 16.). Thus, the Commission affirmed the
1001 ID’s conclusion that the 1001 Complainants had proven that Comcast violated section 337
as to the ’263 and ’413 patents. (/d. at 1.). Having found that Comcast violated Section 337, the
Commission issued the requested LEO and CDOs. (/d. at 2.).

On January 22, 2018, Comcast filed a notice of appeal to the U.S. Court of Appeals for
the Federal Circuit (“Comcast Appellants”). Comcast Corp. v. Int’l Trade Comm’n, No. 2018-
1450, Dkt. No. 1 (Fed. Cir. Jan. 22, 2018). The 1001 Complainants filed a motion for leave to
intervene in the action (“Rovi Intervenors”), which the Federal Circuit granted. Jd. at Dkt. Nos.
16 (Feb. 9, 2018), 24 (Feb. 12, 2018). The case was subsequently consolidated with ARRIS
Enterprises, Inc. v. Int’l Trade Comm’n, No. 2018-1653, and Technicolor, S.A. v. Int’l Trade
Comm'n, No. 2018-1667, filed by ARRIS and Technicolor (“ARRIS and Technicolor
Appellants”), respectively. Jd. at Dkt. Nos. 4h (Mar. 9, 2018), 53 (Mar. 20, 2018).

On March 19, 2018, the Comcast Appellants filed its opening brief, and the ARRIS and

_ Technicolor Appellants filed their joint opening brief. Comcast Corp. v. Int’l Trade Comm’n,

'5 A public version of the opinion also issued. (Doc. ID No. 630893 (Dec. 6, 2017).).

'6 The terms “customers,” “users,” and “subscribers” are used interchangeably throughout this ID.

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No. 2018-1450, -1653, Dkt. Nos. 57, 59 (Mar. 19, 2018). The Comcast Appellants, and the
ARRIS and Technicolor Appellants jointly, each filed a reply brief. Comcast Corp. v. Int’l
‘Trade Comm’n, No. 2018-1450, -1653, -1667, Dkt. Nos. 95 (June 29, 2018), 98 (July 2, 2018).
The Commission and the Rovi Intervenors also each filed a response brief. Jd. at Dkt. Nos. 108
(July 3, 2018), 109 (July 6, 2018).

The Federal Circuit heard oral argument from all parties, including the Commission, on
March 6, 2019. Jd. at 134, Notice of Oral Argument (Jan. 22, 2019). The Federal Circuit has not
yet issued an opinion.

Cc. The Parties
1. Complainants Rovi Corporation; Rovi Guides, Inc.; and Veveo, Inc.

Complainant Rovi Corporation is incorporated in Delaware and has a principal place of
business at 2160 Gold Street, San Jose, CA 95002. (Compl. at { 10.).

Complainant Rovi Guides, Inc. (f/k/a Gemstar-TV Guide International Inc.) is
incorporated in Delaware and has a principal place of business at 2160 Gold Street, San Jose, CA
95002. (Id, at J 11.). Rovi Guides, Inc. is a wholly-owned subsidiary of Rovi Corporation.

Rovi Guides, Inc. is the sole owner of the ’585 and the ’741 patents. (/d.; JX-0016; JX-0017.).

Complainant Veveo, Inc. is a Delaware corporation with a principal place of business at
40 Shattuck Road, Suite 303, Andover, MA 01810. (Compl at J 13.). Veveo, Inc., is a wholly-
owned subsidiary of Rovi Corporation and is the sole owner of the ’011 patent. 17 Ud.; JX-0014).

Rovi has described itself as follows:

Since the launching of TV Guide Magazine in 1953, the Rovi family of companies
(which include, through mergers, joint ventures, and acquisitions, United Video,

'7 Rovi acquired Veveo in February 2014. (CX-0249 (Rovi Corp. Form 10-K, Feb. 21, 2014); Tr.
(Koenig) at 462:6-11.).

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TV Guide Onscreen, StarSight Telecast, Prevue, TV Guide, Video Guide, Gemstar,
GuideWorks, Aptiv Digital, Macrovision, FanTV, and Veveo) has been a pioneer
and recognized leader in media technology, including the technology used to
facilitate consumer access to television and other audiovisual media. Today, Rovi’s
market leading digital entertainment solutions enable the proliferation of access to
media on electronic devices; these solutions include products and services related
to IPGs and other content discovery solutions, personalized search and
recommendation, advertising and programming promotion optimization, and other
data and analytics solutions to monetize interactions across multiple entertainment
platforms. Rovi’s solutions are used by companies worldwide in applications such
as cable, satellite, and internet protocol television (“IPTV”) receivers (including
digital television set-top boxes (“STBs’) and digital video recorders (“DVRs”));
PCs, mobile devices, and tablet devices; and other means by which consumers
connect to entertainment.

(Compl. at ¥ 14.).
2. Respondents Comcast Corporation; Comcast Cable Communications,
LLC; Comcast Cable Communications Management, LLC; Comcast

Business Communications, LLC; Comcast Holdings Corporation; and
Comcast Shared Services, LLC

Comcast Corporation is a Pennsylvania corporation with its principal place of business at
» One Comcast Center, 1701 JFK Boulevard, Philadelphia, PA 19103. (Resp. at | 34.). Comcast
Cable Communications, LLC (““CCCL”) is a Delaware limited liability company with its |
principal place of business at One Comcast Center, 1701 JFK Boulevard, Philadelphia, PA
19103. (/d.). Comcast Cable Communications Management, LLC (“CCCM_”) is a Delaware
limited liability company with its principal place of business at One Comcast Center, 1701 JFK
Boulevard, Philadelphia, PA 19103. (Ud.). Comcast Business Communications, LLC (“CBC”) is
a Pennsylvania limited liability company with its principal place of business at One Comcast
Center, 1701 JFK Boulevard, Philadelphia, PA 19103. (/d.). Comcast Holdings Corporation
(“CHC”) is a Pennsylvania corporation with its principal place of business at One Comcast
Center, 1701 JFK Boulevard, Philadelphia, PA 19103. (/d.). Comcast Shared Services, LLC

(“CSS,” and with CCCL, CCCM, CBC, and CHC, “Comcast”) is a Delaware limited liability

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company with its principal place of business at 30 Rockefeller Plaza, New York, NY 10112.
(Id.).

Comcast delivers cable programming under the Xfinity® brand and has become one of
the largest suppliers of cable TV services in the United States. (See, e.g., RPBr. at 5.).

Ill. JURISDICTION, IMPORTATION, AND STANDING ®
A. The Commission Has Jurisdiction

To have the authority to decide a case, a court or agency must have subject matter
jurisdiction and jurisdiction over either the parties or the property involved. See. Certain Steel
Rod Treating Apparatus and Components Thereof, Inv. No. 337-TA-97, Comm’n Op., 215
U.S.P.Q. 229, 231 (U.S.LT.C. 1981). For the reasons discussed below, the facts support a
finding that the Commission has jurisdiction over this Investigation.

1. Subject Matter Jurisdiction

Rovi alleged that Comcast violated 19 U.S.C. §1337(a)(1)(B) based upon the
importation, the sale for importation, and/or the sale of products within the United States after
importation of the Accused Products that infringe the asserted claims of the Asserted Patents.
(See Compl. at {J 1, 5-6, 104.).

Pursuant to Section 337 of the Tariff Act of 1930, as amended, the Commission
investigates alleged violations and decides actions involving those alleged violations. 19 U.S.C.

§ 1337; 83 Fed. Reg. 11791 (Mar. 16, 2018).

'8 The issue of importation is addressed in an Initial Determination granting Rovi’s Motion for Summary
Determination Regarding Importation (Motion Docket No. 1103-023 (July 27, 2018)) and Motion for
Summary Determination of Sale After Importation (Motion Docket No. 1103-031 (Aug. 17, 2018)
(“Importation ID”). (Order No. 47 (June 3, 2019); see also Oct. 16, 2018 Teleconf. Tr. (Doc. ID No.
659593 at 16:4-15 (Oct. 23, 2018).). Comcast’s Motion for Summary Determination of No Sale After
Importation (Motion Docket No. 1103-020 (July 27, 2018)) has been denied. (Order No. 47 (June 3,
2019); see also Oct. 16, 2018 Teleconf. Tr. at 16:16-17 (Doc. ID No. 659593) (Oct. 23, 2018).).

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Comcast has contested whether the Commission has subject matter jurisdiction.
Specifically, Comcast argued that: (1) the Accused Products are not “articles that infringe”.
under Section 337; and (2) Section 337 does not reach direct infringement of a method claim of a
patent, where the method is practiced in the United States. (See RPBr. at 6-10; RRBr. at 8-15.).

Relying upon its erroneous interpretation of Suprema, Inc. v. Int’l Trade Comm’n, 796
F.3d 1338 (Fed. Cir. 2015), Comcast contended that the accused X1 STBs are not “articles that
infringe” based upon an inducement theory because liability for inducement does not attach “at
the time of importation,” but rather, occurs “after importation, when Comcast ‘suppl[ies]’ the
STB to the subscriber and, according to Rovi, intentionally persuades the subscriber to infringe.”
(RRBr. at 9 (citing Suprema, 796 F.3d at 1349 (other citations omitted).).'? Comcast argued
“every Comcast action directed towards its customers that allegedly constitutes inducement
occurs entirely in the United States and implicates a given STB (if at all) only after its
importation.” (Id. at 10.). Comcast’s assertions are misguided for the following reasons.

_ As Staff contended, “Comcast’s argument conflates an analysis of the Commission’s
jurisdiction with an examination of whether Rovi has met its burden to prove a violation of
section 337.” (SPBr. at 8.). A clear distinction exists between whether Rovi alleged sufficient
facts to establish the Commission’ subject matter jurisdiction and whether Rovi established, on
the merits, a violation of 19 U.S.C. § 1337(a)(1)(B)()). See Certain Elec. Devices with Image
Processing Sys., Components Thereof, and Associated Software, Inv. No. 337-TA-724, Comm’n

Op. at 9 (Dec. 21, 2011) (“Electronic Devices’’).

19 Comcast made similar arguments in the 1001 Investigation, which the ALJ and Commission rejected.
(See 1001 ID at 7-8; 1001 Comm’n Op. at 10, 18-22.). As noted in Section II.B above, this issue is
currently on appeal before the Federal Circuit. See Comcast Corp. v. Int’l Trade Comm’n, No. 2018-
1450, -1653, -1667.

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The Federal Circuit set forth the framework for analyzing the Commission’s jurisdiction
in Amgen. The complainant in Amgen alleged a violation of 19 U.S.C. § 1337(a)()(B)(ii), an
analogous statutory provision to 19 U.S.C. § 1337(a)(1)(B)G@), which involves imported articles
made using a process covered by a valid and enforceable U.S. patent. Amgen, 902 F.2d at 1534.
The Commission determined that the asserted patent claims were directed to genetically altered .
cells, and not to a patented process for making an article as contemplated in Section 337
(a)(1)(B)(ii). Elec. Devices, Comm’n Op. at 9. Consequently, the Commission dismissed the
investigation for lack of jurisdiction, after concluding that “existence of a process patent claim
was a jurisdictional prerequisite for an investigation” under that section of the statute. Amgen,
902 F.3d at 1535.

The Federal Circuit reversed the Commission’s finding, holding that because “the
jurisdictional requirements of [Section 337] mesh with the factual requirements necessary to
prevail on the merits[,]” the Commission should first “assume jurisdiction” and then determine
“the merits of the case.” Id. at 1536; see also Certain Cardiac Pacemakers and Components
' Thereof, Inv. No. 337-TA-162, Order No. 37 (March 21, 1984) (unreviewed in relevant part)
(following a similar analysis, the ALJ drew a distinction between whether the Commission “has
jurisdiction over the subj ect matter of an investigation” and “whether there is a violation of the .
statute upon which a remedy can be based”). Here, Rovi alleged sufficient facts that have been
found to demonstrate that Comcast’s imported articles infringe the Asserted Patents. (See, e.g.,
Compl. at {J 118-31, 142-51, 161-69; see also Order No. 47 at 23; see also Section II.A, supra.).
Accordingly, the Commission properly has subject matter jurisdiction over this Investigation.

Comcast also mistakenly relied upon the holding of Suprema to support its assertions. In

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t

Suprema,”® the Federal Circuit resolved en banc the issue of whether goods are “articles that
infringe” when direct infringement does not occur until after importation, in Rovi’s favor.
Suprema, 796 F.3d at 1340-41. The Federal Circuit then vacated the panel decision in Suprema,
Inc. v. Int’l Trade Comm’n, 742 F.3d 1350 (Fed. Cir. 2013), and upheld the Commission’s
interpretation of the phrase “articles that infringe” “to cover importation of goods that, after
importation, are used by the importer to directly infringe at the inducement of the goods’ seller.”

Suprema, 796 F.3d at 1340-41 (emphasis added); see also id. at 1352-53. In so doing, the

Federal Circuit explained: ‘

The Commission’s interpretation recognizes that acts necessary for induced
infringement, including acts of direct infringement, may not occur simultaneously
at the time of importation. In many cases, such acts cannot occur at the time of
importation. In that context, the Commission’s interpretation that Section 337
grants it authority to prevent importation of articles that have been part of
inducement as an unfair trade act is consistent with the statutory phrase “ ‘articles
that infringe.”

Id. at 1349 (emphases added).
The Federal Circuit also stated:

Section 337 contemplates that infringement may occur after importation. The
statute defines as unlawful “the sale within the United States after importation . . .
of articles that—(i) infringe... .” § 337(a)(1)(B)(i). The statute thus distinguishes
the unfair trade act of importation from infringement by defining as unfair the
importation of an article that will infringe, i.e., be sold, “after importation.” Jd.
Section 337(a)(1)(B)’s “sale . . . after importation” language confirms that the
Commission is permitted to focus on post: importation activity to identify the
completion of infringement.

Td. (emphasis in original).

0 Specifically, the Federal Circuit reversed the panel’s reasoning that “Section 337’s language, ‘articles’
that infringe,’ is a temporal requirement and that infringement must be measured at the time of
importation.” Suprema, 796 F.3d at 1344 (citing Suprema, 742 F.3d at 1363); see also id. (rejecting the
panel’s “suggest[ion] that Section 337 must exclude inducement of post-importation infringement
because the acts that complete infringement have not all taken place at the time of importation”) (citing
Suprema, 742 F.3d at 1358).).

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Furthermore, the Federal Circuit acknowledged that “[t]his court has consistently
affirmed the Commission’s determination that a violation of Section 337 may arise from an act
of induced infringement,” and noted that the interpretation adopted by the vacated panel decision
in Suprema “weakens the Commission’s overall ability to prevent unfair trade acts involving
infringement of a U.S. patent. Jd. at 1351-52. The Federal Circuit also observed:

The panel’s interpretation of Section 337 would eliminate relief for a distinct unfair

trade act and induced infringement. There is no basis for curtailing the

Commission’s gap-filling authority in that way. Indeed, the practical consequence

would be an open invitation to foreign entities (which might for various reasons not

be subject to a district court injunction) to circumvent Section 337 by importing

articles in a state requiring post-importation combination or modification before
direct infringement could be shown.

Id. at 1352.

In the 1001 Investigation the Administrative Law Judge (“ALJ”) held that the
Commission had subject matter jurisdiction over Rovi’s complaint, (1001 ID at 7-8 (“Here, Rovi
has alleged sufficient facts that are expected to show that Respondents imported articles that
infringe Rovi’s patents.” (Shaw, J).). The Commission rejected Comcast’s arguments and
incorrect application of Suprema, upheld the 1001 ID and found that the X1 STBs were “articles
that infringe” under §337. (/d., Comm’n Op. at 21.). In so doing, the Commission concluded
that Comcast’s acts of inducement “took place overseas, prior to importation; it took place at
importation; and it took place in the United States, after importation.” (1001 Comm’n Op. at 21

n.13.).?!

21 The Commission discussed the timing and location of Comcast’s inducing actions in its analysis of

induced infringement:
}

[E]ven if the location of Comcast’s inducing conduct were legally relevant, and it is not, Comcast
designed the X1 STBs to be used in an infringing manner, and directed their manufacture
overseas—requiring, among other things, overseas installation of the relevant software onto the

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f

Comcast has been found to infringe in this Investigation based upon similar acts of
inducement that were found to constitute inducement in the 1001 Investigation. For example,
this ID finds that Comcast induces infringement before importation in its conception, design, and
control over the manufacture of certain Accused Products that infringe certain asserted claims of
the ’011 and ’585 patents. See Tegal Corp. v. Tokyo Electron Co., 248 F3d 1376, 1378-79 (Fed.
Cir. 2001); Forest Labs., Inc. v. Ivax Pharms., Inc., 501 F.3d 1263, 1272 (Fed. Cir. 2007). (See
Order No. 47 (Importation ID).). This finding does not explicitly rely upon the finding of Order
No. 47 that Comcast is an importer. (Order No. 47 at 23.). Accordingly, even under Comcast’s
mistaken view of Section 337, Comcast’s activities give the Commission jurisdiction. |

Comcast also has been found to induce infringement after importation by recommending,
encouraging, and promoting its customers to infringe certain asserted claims of the ’011 and 585
patents. See Takeda Pharm. U.S.A., Inc. v. W.-Ward Pharm. Corp., 785 F.3d 625, 631 (Fed. Cir.
2015). (See also Order No. 47 (Importation ID); see also Section X.D, infra.). Rovi presented
evidence during the Hearing that Comcast induces infringement after importation by providing
specific instructions to its subscribers that enable the infringing activity. See Arthrocare Corp. v.
Smith & Nephew, Inc., 406 F.3d 1365, 1377 (Fed. Cir. 2005). (See Section X.D, infra.).

Additionally, Comcast contended that Section 337 does not reach direct infringement of a

STBs. Final ID at 9-12, 232, 234; Wing Shing Pdts. (BVI), Lrd. v. Simatelex Manufactory Co., 479
F.Supp.2d 388, 409-11 (S.D.N.Y. 2007) (“[N]Jumerous courts have held that, in contrast to §§ 271
(a) and (c), § 271 (b) applies to extraterritorial conduct”); see also, e.g., Honeywell, Inc. v. Metz
Apparatewerke, 509 F.2d 1137, 1141-42 (7th Cir. 1975); MEMC Elec. Materials, Inc. v. Mitsubishi
Materials Silicon Corp[.], 2006 WL 463525, at *7 (N.D. Cal. 2006). Comcast then directed the
importation of those STBs to Comcast facilities in the United States. Final ID at 9-12. Comcast’s
inducing activity took place overseas, prior to importation; it took place at importation; and it took
place in the United States, after importation. See, e.g., id. at 9-12, 232-37, 399.

1001 Comm’n Op. at 21 n.13.

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method claim in the United States. (RPBr. at 9-10). Comcast primarily relied upon Electronic
Devices for the proposition that no violation can be shown because “domestic use of such a
method, without more, is not a sufficient basis for a violation of section 337(a)(1)(B)(i).” (RPBr.
at 9 (quoting Elec. Devices, Comm’n Op. at 19).). ‘The Commission in Electronic Devices held,
however, that it has jurisdiction to investigate the complaint alleging a violation of Section 337.
Elec. Devices, Comm’n Op. at 9-10 (“We, like the ALJ, find that [respondent] Apple’s argument
conflates an analysis of the Commission's jurisdiction with an analysis of whether [complainant]
S3G has met its burden to prove a violation of section 337.”).

To be clear, Electronic Devices predates the controlling decision in Suprema. Suprema
makes clear that “[i]f Congress meant to forbid the Commission from looking past the time of
importation in defining Section 337’s reach, Section 337 would not have reached even garden-
variety direct infringement. . . . [W]e cannot attribute that result to Congress.” Suprema, 796
F.3d at 1348. Since Suprema, the Commission has found violations of section 337 where a
respondent induced customers in the United States to directly infringe method claims recited in a
U.S. patent. (See, e.g., Certain Network Devices, Related Software & Components Thereof (II),
Inv. No. 337-TA-945, Initial Determination at 107-09 (Dec. 9, 2016) (finding that “Arista’s
customers directly infringe the 577 patent” and “Arista induces infringement of the 577
patent”); Doc. ID No. 613184 (June 1, 2017), Comm’n Op. at 29 (affirming “the Final ID’s
finding that Arista has induced infringement of the asserted claims of the 577 patent by
importing the Imported Components”’).).

Comcast also argued that the Accused Products have substantial non-infringing uses,
such as permitting a subscriber to watch television without using cable services, which the

Commission squarely dismissed in the 1001 Investigation. (RPBr. at 8-9.). “Because the

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concept of substantial non-infringing uses is applicable only in the context of contributory
infringement, it plays no role in the analysis of the direct and induced infringement that remains
at issue here.” (1001 Comm’n Op. at 21-22 (citing Toshiba Corp. v. Imation Corp., 681 F.3d
1358, 1364 (Fed. Cir. 2012) (explaining that “substantial non-infringing use” is relevant only to
contributory infringement); of Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 US.
913, 942 (2005)).). |

For the foregoing reasons, the Commission has subject matter jurisdiction over this
Investigation.

2. Personal J urisdiction

Comcast stipulated that the Commission has personal jurisdiction over it in this
Investigation. (See Doc. ID No. 656707, Stipulation of Undisputed Issues and Facts at 2 (Sept.
. 25, 2018).). At a minimum, Comcast appeared and responded to the Complaint and NOI, and
participated in discovery and the Hearing. Thus, the Commission has personal jurisdiction over
Comcast. See, e.g., Certain Windshield Wiper Devices and Components Thereof (“Wiper
Devices’), Inv. No. 337-TA-881, ID at 5 (May 8, 2014) (unreviewed in relevant-part) (Doc. ID
No. 534255).

3. _ In Rem Jurisdiction

Section 337(a)(1)(B) applies to the “[t]he importation into the United States, the sale for
importation, or the sale within the United States after importation” of articles that infringe a valid
and enforceable United States patent.” 19 U.S.C. § 1337(a)(1)(B). A single instance of
importation is sufficient to satisfy the importation requirement of Section 337. Certain Optical
Disc Drives, Components Thereof, and Prods. Containing the Same, Inv, No. 337-TA-897,

Order No. 101 at 3 (Sept. 22, 2014) (citations omitted) (Doc. ID No. 543438).

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For the reasons set forth in the Importation ID, there is no dispute that the Accused
Products are manufactured abroad and imported into the United States. (See Order No. 47 (June
3, 2019).). Thus, evidence presented in this Investigation establishes that the Commission has in
rem jurisdiction over the Accused Products. See, e.g., Wiper Devices, Inv. No. 337-TA-881,
Initial Determination at 5 (in rem jurisdiction exists when importation requirement is satisfied).

B. Complainants Have Standing in the Commission

In addition to subject matter jurisdiction and in rem jurisdiction, a complainant must also |
have standing to bring suit. See SiRF Technology, Inc. v. Int'l Trade Comm’n, 601 F.3d 1319, |
1326 (Fed. Cir. 2016) (standing to bring an infringement suit is the same under Commission -
Rules as it would be in a Federal District Court case); Certain Optical Disc Drives, Components
Thereof and Prods. Containing Same, Inv. No. 337-TA897, Opinion Remanding the
Investigation at 4 (Jan. 7, 2015). Commission Rule 210. 12 requires that intellectual-property
based complaints filed by a private complainant “include a showing that at least one complainant
is the exclusive license of the subject intellectual property.” 19 C.F.R. § 210, 12(a)(7).

Here, Rovi has standing to bring suit for infringement under Section 337 because Veveo,
Inc., a wholly-owned subsidiary of Rovi, is the sole owner of the 01 1 patent, and Rovi Guides,
Inc. is the sole owner of the *585 and ’741 patents. (See Compl. at [J 11-12; see also JX-0014
(assignment record of the ’011 patent); JX-0016 (assignment record of the 585 patent.): JX-
0017 (assignment record of the ’741 patent); Stip. of Undisputed Issues and Facts at 2.).

IV. THE ASSERTED PATENTS
A. Overview of the Technology

The technologies claimed in the Asserted Patents relate to interactive programming guide

(“IPG”) technology and related functionalities for subscription-based television broadcasting

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(“Pay-TV”). (Compl. at §§ 15-16; RPBr. at 3.). Generally, the 011 patent relates to the methods
and equipment that is used for searching databases and displaying the results on a screen through
the use of a STB and other equipment, such as remote controls (see, e.g., Compl. at { 61; JX-
0001 at Abstract); the 585 patent relates to storing content based on selected storage options
(see, e.g., Compl. at 75; JX-0004 at Abstract); and the ’741 patent relates to restarting a
program from the beginning while the program is being broadcasted (see, e.g., Compl. at 89;
JX-0006 at Abstract). |

The patented technologies at issue also provide for multi-screen entertainment across a
variety of user devices (eg, seamless access to the same media from multiple devices and device
types, such as a television and mobile device). (Compl. at { 19.). The patented technologies
provide customizable listings for televisions, receivers, game consoles, and mobile devices,
which permit viewers (i.e. the users) to find and enjoy the content of their choosing, at a time and
place most convenient and/or desirable. (/d.). According to Rovi, these and other advances have
helped viewers to navigate an increasingly vast amount of viewable content, and to discover and

to obtain access to desired entertainment on an array of platforms and devices. (/d.).

B. U.S. Patent No. 7,779,011 (“the ’011 Patent”)
1. Overview of the ’011 Patent

The ’011 patent, titled “Method and System for Dynamically Processing Ambiguous |
Reduced Text Search Queries and Highlighting Results Thereof,” was filed on December 20,
2005, as U.S. Patent Application Serial No. 11/312,908 (‘the 908 application”). (JX-0001 at
(21), (22), (54).). The ’908 application issued as the ’011 patent on August 17, 2010, and names
Sashikumar Vankataraman, Rakesh Barve, Murali Aravamudan, and Ajit Rajasekharan as the

inventors. (/d. at (10), (45), (75).). The ’011 patent claims priority to U.S. Provisional

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Application Serial Nos. 60/716,101, filed September 12, 2005, and 60/711,866, filed August 26,
2005. (id. at (60).). |

The ’011 patent generally relates to “a method and system of processing a search query
entered by a user of a device having a text input interface with overloaded keys.” (Id. at 2:13-
15.). A variety of devices with text input interfaces or a keypad have overloaded keys. (See,
e.g., id. at 4:20-22, Fig. 2.). These include a handheld device, a remote control, or a telephone
with a display. (See id. at 4:20-22, Fig. 2.).

An overloaded key is a single key that represents a number and at least one alphabetic
character. (Tech. Stip. at 2; JX-0001 at 1:39-43.). An example are the keys of a touchtone
telephone, where, for instance, the “2” key is associated with the number “2” as well the letters

. “A” “B.” and “C.” (Tech. Stip. at 2; JX-0001 at 1:39-43.). A keypad with overloaded keys is
shown below in Figure 1.

Figure 1: Keypad with Overloaded Keys

ABC DEF

Ghia SEL MN®

CLEAR| | space | | ENTER

(JX-0001 at Fig. 1.).
The problem with search queries using an overloaded keypad is that the queries generate
“unresolved” keystrokes. (CMBr. at 4.). A keystroke is “unresolved” because one keystroke

could signify more than one of the characters associated with an overloaded key. (/d.). For

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example, pressing the ‘“‘2” key could represent the number “2” or the letter “A” B,” or “C.” (JX-
0001 at 1:41-43.). As the 011 patent explains, an unresolved keystroke “can result in an
ambiguous text entry, which requires some type of a disambiguation action.” (Jd. at 1:43-45.).

The ’011 patent explains solutions taught by the prior art, which include a user
“press[ing] a particular key multiple times in quick succession to select a desired character (e.g.,
to choose ‘B’, [sic] the user would press the ‘2’ key twice quickly, and to choose ‘C’, [sic] the
user would press the key three times quickly).”. (/d. at 1:46-50.). The ’011 patent recognizes
that “[o]ne deficiency of the multi-press interface is that too many key strokes are needed,”
especially for a word having many letters. (/d. at 1:55-57.).

The ’011 patent also discloses prior art methods that require the user to provide the
completion choices for each word entered, that is, upon each entry of an overloaded key as part
of a search query, the system could return a list of all possible word matches, i.e., “vocabulary
based completion choices,” generated by the ambiguous text input. (/d. at 1:50-53; 1:57-60.).
The ’011 patent points out, however, that “[a] drawback of applying a vocabulary based word
completion interface is the need for the additional step of making a choice from a list of all
possible word matches[.]” (/d. at 1:57-60.).

The methods and systems described in the 011 patent purport to address these issues by
allowing the user to enter a search query using unresolved key strokes without the need for extra
steps entailed with disambiguation, as discussed above. (/d. at 2:15-17, 3:23-25.). The ’011
patent discloses that the “search query is directed at identifying an item from a set of items,”
where each item has a name containing one or more words. (dd. at 2: 15-17, 3:23-25.). These
searchable items are indexed, before the user enters any search query, “by performing a many-to-

many mapping from the alphanumeric space of terms to numeric strings corresponding to the

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various prefixes of each alphanumeric term constituting the query string.” (/d. at 3:44-53, 3:27-
29.). For example, in the index, “Tom” would be mapped to “8” and “86” and “Jerry” would be
mapped to “5,” “53,” “537,” etc. This mapping scheme allows the user to “incrementally
retrieve results matching the ambiguous alphanumeric input query, as the user types in each
character of the query.” (/d. at 3:53-56, see also id. at 5:26-29, 7:4-8:11.). An embodiment of
this search process is illustrated below in Figure 2.

' Figure 2: Flow Chart Illustrating a Method for Finding and Highlighting Results of an
Ambiguous Search Query

| START

y
USER ENTERS CHARACTER(S)
WITH SINGLE KEYPRESS FOR
EACH CHARACTER
402

v

DISPLAY RESULTS MATCHING
QUERY- HIGHLIGHT THE PREFIX
STRINGS IN THE RESULTS
THAT MATCH THE QUERY
404

USER FOUND
DESIRED RESULTS
406

(Id. at Fig. 4.).
The specification discloses that:
At step 402, the user enters a character using an ambiguous text input interface,
e.g., using a keypad with overloaded keys were a single key press is performed for

each character entered. At 404, an incremental search system determines and
displays at least some of the results that match the input character entered at 402.

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Since the input is ambiguous, the match of results would include the matches for
all the ambiguous input characters represented by the single key press (including
those not of interest to the user). To address this increased set of matches, an
ordering scheme is preferably used to order the results to improve accessibility to
results expected to be more of interest to the user. The ordering of results can be
based on a variety of criteria including, e.g., temporal relevance, location relevance,
popularity and personal preferences (that may have been determined implicitly or
explicitly) or some combination of these criteria.

> * OK +

If the user does not find the desired results at 406, he or she can continue to enter
more characters to the search query at step 402. Then at step 404, the system will
‘perform the search based on the cumulative substring of characters of the search
query entered by the user up to that point.

(d. at 5:29-44, 6:31-35.).
Figure 3 shows the results of a search query comprising the overloaded keys “866,”
illustrated in Figure 4.
f Figure 3: Exemplary Display Interface

603
t
TOON: Cartoon Network
The Tonight Show with Jay Leno

Tom Hanks
Tootsie(1982)
604+-8MIM (1999)

605 + Twelve Monkeys(1995)

606+—Teenage mutant ninja turtles

(d. at Fig. 6B.).

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Figure 4: Exemplary Text Input Interface

602
)

ABC DEF
1 2 3
GHI JKL MNO
4 5 6
PQRS TUV WXYZ
7 8 9
Clear Space VTap
0

- USER INPUT: 866
(Ud. at Fig. 6A.).

The results shown in Figure 3 above identify single-word term matches (603, 604) before
abbreviation matches (605, 606). (/d. at 7:9-12.). Because the “relationship between the
overloaded characters entered by the user and the match results is complicated and not
necessarily intuitive to the user[,] . . . the characters in the search result that match the
overloaded single-word search prefix characters are highlighted, providing the user with a visual
indication of the relationship between the key pressed and the incremental match results.” (Jd. at
7:41-48.). For example, as shown in Figure 3 above, the letters “TOO” in the word “TOON,”
which match the input unresolved overloaded keys “866,” are highlighted. The 011 |
| specification explains that “[t]his [highlighting] facilitates identification by the user of the item
of interest from the group of items displayed.” (/d. at 7:48-50.). |

Figure 5 below shows the results for a two-word search having the unresolved overloaded

keys “866 2,” shown in Figure 6. (/d. at 7:58-8:11.).

Page 32 of 325

(d. at Fig. 7B.).

(Id. at Fig. 7A.).
The ’011 patent informs that “[t]he difference between the single-word search illustrated
in FIG. 6B and the multi-word search illustrated in FIG. 7B is that the use of an explicit word —

separator in the user input (in this case a space character) before the ‘2’ entry, further limits

Public Version

Figure 5: Exemplary Display Interface

703

Tom Cruise

Tommy Boy

Tom and jerry

Tiny Toon Adventures
Too close for comfort

Yools and Techniques

Top of the world ... Alan Grier

Figure 6: Exemplary Text Input Interface

702
)

ABC DEF
1 2 3
GHI JKL MNO
4 5 6

7 8 9
Clear Space VTap
0

PQRS TUV WXYZ

USER INPUT. 866 2

results of the search.” (/d. at 7:62-66.).

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2. Asserted Claims of the ’011 Patent

The remaining asserted claims | and 9 of the 011 patent are recited below. 22 Claims |
and 9 are directed to a method and a system, respectively, for processing a search query entered

by a user of a device having a text input interface with overloaded keys. (See, e.g., JX-0001 at

Abstract.).

1. A method of processing unresolved keystroke entries by a user from a
keypad with overloaded keys in which a given key is in fixed association with
a number and at least one alphabetic character, said unresolved keystroke
entries being directed at identifying an item from a set of items, each of said
items being associated with information describing the item comprising one or
more words, said method comprising:

indexing said items by associating subsets of said items with corresponding
strings of one or more unresolved keystrokes for overloaded keys so that the
subsets of items are directly mapped to the corresponding strings of unresolved
keystrokes for various search query prefix substrings;

for at least one subset of items, determining which letters and numbers
present in. the information associated with and describing the indexed items of
said subset caused said items to be associated with the strings of one or more
unresolved keystrokes that are directly mapped to said subset;

subsequent to said indexing, receiving from a user a search query for desired
items composed of unresolved keystrokes, said search query comprising a
prefix substring for at least one word in information associated with the desired
item;

in response to each unresolved keystroke, identifying and displaying the
subsets of items, and information associated therewith, that are associated with
the strings of one or more unresolved keystrokes received from the user based
on the direct mapping of strings of unresolved keystrokes to subsets of items;

in response to each unresolved keystroke, as the identified items are
displayed, highlighting the letters and numbers present in the one or more words
in said information describing the identified items that were determined to have
caused the displayed items to be associated with the strings of unresolved
keystrokes that are directly mapped to said items so as to illustrate to the user
how the unresolved keystrokes entered match the information associated with

22 Bolded patent claim numbers indicate independent claims.

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the displayed items; and
ordering the displayed items in accordance with one or more given criteria.

9. A system for processing unresolved keystroke entries by a user from a
keypad with overloaded keys in which a given key is in fixed association with
a number and at least one alphabetic character, said unresolved keystroke
entries being directed at identifying an item from a set of items, each of said
items being associated with information describing the item comprising one or
more words, said system comprising a computer-readable medium comprising
instructions for causing a computer system to: ,

index said items by associating subsets of said items with corresponding
strings of one or more unresolved keystrokes for overloaded keys so that the
subsets of items are directly mapped to the corresponding strings of unresolved
keystrokes for various search query prefix substrings;

for at least one subset of items, determine which letters and numbers present
in the information associated with and describing the indexed items of said
subset caused said items to be associated with the strings of one or more
unresolved keystrokes that are directly mapped to said subset; |

subsequent to said indexing, receive from a user a search query for desired
items composed of unresolved keystrokes, said search query comprising a
prefix substring for at least one word in information associated with the.desired
item;

in response to each unresolved keystroke, identify and display on a display
device at least one of the subsets of items, and information associated therewith,
that are associated with the strings of one or more unresolved keystrokes
received from the user based on the direct mapping of strings of unresolved
keystrokes to subsets of items; .

in response to each unresolved keystroke, as the identified items are
displayed, highlight on the display device the letters and numbers present in the
one or more words in said information describing the identified items that were
determined to have caused the displayed items to be associated with the
unresolved keystrokes received so as to illustrate to the user how the strings of
unresolved keystrokes that are directly mapped to said items entered match the

_ information associated with the displayed items; and

order on the display device the displayed items in accordance with one or
more given criteria.

(JX-0001 at 8:40-9:13, 9:37-10:14; JX-0002 (Certificate of Correction) at 1.).

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Cc. U.S. Patent No. 7,827,585 (“the ’585 Patent”)
1. Overview of the ’585 Patent

The *585 patent, titled “Electronic Program Guide with Digital Storage,” was filed on
August 4, 2005, as U.S. Patent Application Serial No. 11/197,867 (“the ’867 application”). (JX-
0004 at (21), (22), (54).). The ’867 application is a continuation of U.S. Application Serial No.

10/383,281, filed March 5, 2003, which is a continuation of now abandoned U.S. Patent
Application Serial No. 09/157,256, filed September 17, 1998, to which the *585 patent claims
priority. The ’867 application issued as the ’585 patent on November 2, 2010, and names Joel G.
Hassell, Edward B. Knudson, L. Joe Hedges, Michael D. Ellis, and David M. Berezowski as the
inventors. (Id. at (10), (45), (75).).

The 585 patent generally relates to IPGs that provide a user with storage options for
storing a program on a random access digital storage device. (Tech. Stip. at 2.). The °585 patent .
discloses IPGs that are configured to display program listings, provide a user with an opportunity.
to choose a program to be recorded on a random access digital storage device, and provide the
user with an opportunity to select at least one storage option. (Compl. at § 75.). The ’585 patent
also teaches options for storing the program to be recorded on the digital storage device in
accordance with the storage option selected by the user. (/d.).

According to the ’585 patent, “[t]he use of a digital storage device associated with the
program guide provides the user with more advanced features than could be performed using an
independent analog storage device.” (JX-0004 at 2:22-25.). The asserted claims of the °585
patent cover two (2) different means of providing selectable storage options to users. The first
invention, at a high level, provides for the selection and setting of a storage option that is then

applied globally to programs selected for recording through an interactive television program

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guide. (See, e.g., id. at 2:25-39.). The second invention, at a high level, provides for the
selection of a program from a program listing followed by the selection and setting of a storage
option for the selected program. (/d.). An illustrative set-up screen is shown below in Figure 7.

Figure 7: Illustrative Set-up Screen

120
SET-UP v1
J
ENTRY INFORMATION DISPLAY OPTIONS
TITLE DESCRIPTION EPISODE CHANNEL
RECORD DATE RECORD TINE DURATION CAST MEMBERS
PARENTAL’ CTRL CATEGORYUIES ) LANGUAGE(S) VIDEO FORMAT
OTHER INFO VIEWED
cle2
STORAGE OPTIONS
LANGUAGES ENGLISH AVAILABLE LANGUAGES
VIDEO FORMAT HDTV :
ENFORCE PARENTAL CONTROL © YES - 5
GN STORAGE | FRENCH
AUTO-ERASE VIEWED ENTRIES YES SPANISH
“(33
PLAYBACK OPTIONS
DEFAULT LANGUAGE ENGLISH
DEFAULT VIDEO HDT
SKIP COMMERCIALS — YES

(Id. at Fig. 14.).

As the ’585 patent informs, “[t]he set-up feature allows a user to select options and set
user preferences. . . . Set-up screen 120 can be organized into parts. For example, one part may
be used to handle entry information display options, another may be used to handle storage

options, and another may be used to handle playback options.” (/d. at 15:35-16:2.).

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In both cases, the programs are recorded on the claimed “random access digital storage
device” and the storage option must relate to how programs are recorded. These user-selectable
how storage options include adding time before or after a recording (padding), HD/SD format,
and/or the ability to “keep [a recording] until.” (/d. at 16:29-43.). Figure 8 below illustrates the
steps involved in providing the user with the ability to define selectable options.

Figure 8: Flow Chart of Steps Involved in Providing User with Ability to
Define Selectable Options

408
DISPLAY SET-UP SCREEN
PROVIDE USER WITH OPPORTUNITY TO DEFINE haze
STORAGE: OPTIONS
DIGITALLY STORE PROGRAMS AND ASSOCIATEO DATA £26
ACCORDING TO LANGUAGE STORAGE OPTION
tL
DIGITALLY STORE PROGRAMS AND ASSOCIATED DATA 428
ACCORDING TO VIDEO FORMAT OPTION
a
DIGITALLY STORE PROGRAMS AND ASSOCIATED DATA | 430
ACCORDING TO ENFORGE PARENTAL CONTROL ON
STORAGE OPTION
AUTOMATICALLY DELETE PROGRAMS AND ASSOCIATED DATA | 432
ACCORDING TO AUTO-ERASE VIEWED ENTRIES OPTION |
i 434
PROVIDE USER WITH OPPORTUNITY TO DEFINE PLAYBACK OPTIONS
qj .
PLAY BACK PROGRAMS AND ASSOCIATED DATA p48
ACCORDING TO DEFAULT LANGUAGE OPTION
= 438
PLAY BACK PROGRAMS AND ASSOCIATED DATA q
ACCORDING TO DEFAULT VIDEO FORMAT OPTON
Z| .
PLAY BACK PROGRAMS AND ASSOCIATED DATA }- 440
SNPPING ADVERTISING ACCORDING TO SKIP COMMERCIALS OPTION

(Id. at Fig. 16.).

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2. Asserted Claims of the °585 Patent

Remaining asserted claims 1, 8, 11, 15, and 22 of the °585 patent are recited below.73
Claims 1, 8, and 11 are method claims directed to an interactive television program guide that
gives users the ability to store information associated with recorded programs in a directory in

the digital storage device thereby providing easy access to program information. (See, e.g., JX-

XN

0004 at Abstract.). Claims 15 and 22 are system claims directed to the same.

1. A method for allowing a user to select storage options for storing
programs using an interactive television program guide implemented on user
television equipment, the method comprising:

providing the user with an opportunity to select at least one storage option
for storing a program to be recorded, wherein the at least one storage option
relates to at least one storage setting configured to control how programs are to
be digitally stored on a random access digital storage device;

in response to a user selection of the at least one storage option, modifying
the at least one storage setting;

displaying in the interactive television program guide at least one program
listing related to at least one program;

providing the user with an opportunity to select a program listing from the
at least one displayed program listing for recording on the random access digital
storage device; and

\

recording the program on the random access digital storage device based on
the modification of the at least one storage setting.

8. A method for recording programs using an interactive television
program guide implemented on user television equipment, the method
comprising:

displaying in a display screen at least one program listing relating to at least
one program;

providing a user with an opportunity to indicate a program to be recorded
on a random access digital storage device by selecting a program listing from

23 Bolded patent claim numbers indicate independent claims.

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the at least one displayed program listing, wherein the selected program listing
corresponds to the program to be recorded;

providing the user with an opportunity to select at least one storage option
for storing the program to be recorded, wherein the at least one storage option
relates to at least one storage setting configured to control how the program is
to be digitally stored on the random access digital storage device;

in response to receiving the user selection of the at least one storage option,
modifying the at least one storage setting for the program to be recorded; and

recording the program on the random access digital storage device based on
the modification of the at least one storage setting for the program.

11. The method of claim 10 wherein the at least one video format
comprises at least one of high definition television, normal television and a
digital format.

15. A system for allowing a user to select storage options for storing
programs, the system comprising:

a display screen;
a random access digital storage device;

and an interactive television program guide implemented at least partially
on circuitry, wherein the interactive television program guide is programmed
to: .

provide the user with an opportunity to select at least one storage option for
storing a program to be recorded, wherein said at least one storage
option relates. to at least one storage setting configured to control how
programs are to be digitally stored on the random access digital storage
device; “

in response to a user selection of the at least one storage option, modify the
at least one storage setting;

display in the display screen at least one program listing related to at least
one program; .

provide the user with an opportunity to select a program listing from the at
least one displayed program listing for recording on the random access
digital storage device; and

record the program on the random access digital storage device based on
the modification of the at least one storage setting.

22. A system for recording programs, the system comprising:

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a display screen;
a random access digital storage device;

and an interactive television program guide implemented at least partially
on circuitry, wherein the interactive television program guide is programmed
to:

display in the display screen at least one program listing related to at least
one program;

provide a user with the opportunity to indicate a program to be recorded on
the random access digital storage device by selecting a program listing
from the at least one displayed program listing, wherein the selected
program listing corresponds to the program to be recorded;

provide the user with an opportunity to select at least one storage option for
storing a program to be recorded, wherein the at least one storage option
relates to at least one storage setting configured to control how the
program is to be digitally stored on the random access digital storage
device;

modify said at least one storage setting in response to said user selection;

in response to receiving the user selection of the at least one storage option, ~
modify the at least one storage setting for the program to be recorded;
and

record the program on the random access digital storage device based on
the modification of the at least one storage setting for the program.

(JX-0004 at 18:46-67, 19:21-43, 19:49-51, 19:64-20:20, 20:41-21:3.).

U.S. Patent No. 9,369,741 (“the 741 Patent”)

1. Overview of the ’741 Patent

The ’741 patent, titled “Interactive Television Systems with Digital Video Recording and
Adjustable Reminders,” filed on June 16, 2015, as U.S. Patent Application Serial No. 14/741,034
(“the ’034 application”). (JX-0006 at (21), (22), (54).). The ’034 application is a continuation of
US. Patent Application Serial No. 14/313,348, filed June 24, 2014, which issued as U.S. Patent

No. 9,071,872. (/d. at (63).). Through a series of continuations, the ’741 patent claims priority

to U.S. Patent Application Serial No. 10/357,001, filed January 30, 2004, which issued as U.S.

Patent No. 7,493,646. (Id.). The ’034 application issued as the ’741 patent on June 14, 2016 and.

Page 41 of 325

Public Version

names Michael D. Ellis as the inventor. (/d. at (72).).

The ’741 patent generally relates to enabling a viewer to start a program from the
beginning when, for example, the program has already started when the viewer first tunes in.
(See, e.g., JX-0006 at 21:40-57.). In such situations, the ’741 patent discloses that a screen such
as the one below in Figure 9 be shown to the viewer.

Figure 9: Ilustrative Display Screen Showing How Playback _
Controls May Be Displayed

a

n
T

WOEOOF
SELECTED WOEO RECORDER
* AEM

(/d. at Fig. 21.).

Figure 9 shows the video of the selected program (270) and a simultaneously displayed
indication (271) that some actions may be taken including restarting the program from the
beginning (the bottom left “restart” icon). (/d..at 21:40-22:3.).

2. Asserted Claims of. the ’741 Patent

The reemaining asserted claims 1, 8, and 14 of the ’741 patent are recited below.24 Claim
1 is a system claim, and claims 8 and 14 are method claims. All the claims are directed to an

interactive television system in which an interactive television application is used to support

24 Bolded patent claim numbers indicate independent claims.

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network-based or local personal video recorder capabilities.
1. A system comprising:
storage circuitry for storing archived copies of videos;
control circuitry configured to:
transmit a video to a plurality of user equipment, wherein the transmitting

begins at a start time and ends at an end time;

access a database to determine whether an archived copy corresponding to
the video is available to a user after the start time;

based on determining that the archived copy is available to the user after the
start time, cause an indication corresponding to the archived copy to be
displayed simultaneously with the video after a specified time after the
start time but before the end time, wherein the specified time was
configured prior to the start time;

receive a user response to the indication that is displayed; and

based on the received user response, retrieve, from the storage circuitry, the
archived copy.

8. A method comprising:

transmitting a video to a plurality of user equipment, wherein the
transmitting begins at a start time and ends at an end time;

accessing a database to determine whether an archived copy corresponding
to the video is available to a user after the start time;

based on the determining, causing an indication corresponding to the
archived copy to be displayed simultaneously with the video after a specified
time after the start time, but before the end time, wherein the specified time was
configured prior to the start time;

receiving a user response to the indication that is displayed; and

based on the received user response, retrieving from storage the archived
copy.

14. The method of claim 8, further comprising: removing the archived
copy from the storage device at an end of a retention period, wherein the
archived copy on the storage device is associated with the retention period.

(JX-0006 at 37:62-38:13, 38:39-54, 39:7-11.).

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V. THE PRODUCTS AT ISSUE.
A. Comcast’s Accused Products

Generally, Rovi alleged that all Comcast X1 STBs, IPG software, Comcast’s X1 remote
and streaming applications (“apps”), and Comcast voice remote controls initially imported after
April 1, 2016 infringe one or more claims of the Asserted Patents.*> (See, e.g., CPBr. at 5; CBr.
at 3.). |

Specifically, Complainants accused the Comcast Xfinity receivers or STBs with the
| following model numbers: ARRIS XGlvl MX011ANM, ARRIS XG1v3 AX013ANM, ARRIS
XGlvl MXO11ANC, ARRIS XGlv3 AXO13ANC, ARRIS XG1v4-A AX014ANM, ARRIS
XG1v4-A AX014ANC, Pace RNG150 PCRNG1ISOBNMD, Pace RNG150 PCRNGIS50BNCD,
Pace RNG150 PR150BNM, Pace RNG150 PRISOBNC, Pace XGlv1 PCX001ANMD, Pace
XGlv1 PCX001ANCD, Pace XG1v3 PX013ANM, Pace XGlv3 PXO13ANC, Pace XG2v2-P
PX022ANC, Pace XG2v2-P PX022ANM, Pace XiD- P PXDO1ANI, Pace Xi3v2 PX032ANI,
Pace Xi5-P PX051AEI, Cisco RNGISON, Cisco XiD-C CXDOIANI, Humax X13-H HX003AN,
Samsung RNGI50N SR1I50BNM, Samsung RNG150N SRISOBNC, Samsung XG2v2-S

SX022ANC, and Samsung XG2v2-S SX022ANM.?° (Compl. at § 52.).

25 Rovi stated that it “seeks no remedy as to any product that was initially imported during the term of the
parties’ license agreement that expired on March 31, 2016.” (CBr. at 3 n.4 (citing Compl. at { 9 n.2; Doc.
ID No. 651870, Complainants’ Notice of Withdrawal of Certain Accused Products (Aug. 1, 2018)).). On
July 27, 2018, Comcast filed a MSD of no violation as to any Comcast products initially imported prior to
April 1, 2016. (Motion Docket No. 1103-022 (July 27, 2018.). Rovi filed an opposition to Comcast’s
MSD. (Doc. ID No. 652469 (Aug. 8, 2018).). The ID resolves this issue by addressing in this
Investigation only the Accused Products imported after March 31, 2016.

26 Rovi also accused the Comcast Xi6 STB. (Compl. at J 52.). Rovi alleged that at the time it filed the .
Complaint, the Xi6 was available to Comcast employees only. Rovi stated that “[u]pon information and
belief, Comcast intends to release the Xi6 set-top box to the public in the near future.” (Compl. at 52
n.7 (citing id. at Exs. 87-88).). However, Rovi failed to present any evidence during the Hearing or

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On August 1, 2018, Rovi filed a Notice of Withdrawal of Certain Accused Products,
specifically withdrawing the RNG1S5ON and Xi3 STBs from this Investigation. (Doc. ID No.
651870, Complainants’ Notice of Withdrawal of Certain Accused Products (Aug. 1, 2018).).
Thus, the remaining accused products are Comcast’s XGI, XG2, XiD, and Xi5 STBs (“Accused
Products”).?’

Comcast’s X1 set-top boxes are the hardware that run the software-based X1 Guide or
Platform (collectively, the “X1 System”) Comcast provides to its customers. (CPBr. at 5; SPBr.
at 7.). The X1 STBs are manufactured and imported into the United States by companies such as
ARRIS Solutions Inc., Technicolor Connected Home USA LLC, and Universal Electronics Inc. ©
(RPBr. at 5). Comcast has also been held to be an “importer” with its suppliers, identified
above. (Order No. 47 at 23.). Comcast purchases them in the United States and generally rents
them to its customers when providing cable services. (/d.). As discussed in the Importation ID,
Comcast extensively controls the manufacture and importation of the Accused Products. (See

Order No. 47 at 14-15.).

otherwise that the Xi6 STB practices any of the asserted claims. Importantly, Rovi did not tie the Xi6
STB to any of the representative products to which the Private Parties stipulated. (JX-0163C; see also
Section V.A.4; Table No. 5.). To the extent that RNG150 is different from RNG150N, Rovi also failed to
tie this STB to any of the representative products. Thus, any argument on these STBs is deemed to be
waived. (See Ground Rule 10.1 (if “the party who raised the issue or made the argument did not adduce
evidence on the same during the evidentiary hearing, . . . it shall be deemed waived’’).). ‘

27 In its Complaint, Rovi also accused the following Comcast voice remote controls: Remote Solution
Co., Ltd. XR11v1 RC38A, Universal Electronics Inc. XR11v2 4350, and Universal Electronics Inc.
XR15 4352. (Compl. at J 52.). Additionally, Rovi accused Comcast’s X1 remote and streaming tv apps.
(/d. (citing https://www.xfinity.com/support/xfinity-apps/setting-up-the-cable-tv-app/;
https://www.xfinity.com/get-stream).). These products no longer appear to be asserted as a result of the
terminations of the ’394, ’799, ’363, 956, and ’014 patents from this Investigation. (See Section II.A,
supra.).

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1. Accused 011 Products

The Accused 011 Products are STBs, initially imported on or after April 1, 2016, that

implement the X1 Platform. Comcast’s X1 System includes} |
co | |
a ‘|, as shown below in Figure 10. (Tr. (Alan Bovik)”* at 560:3-
562:24.).

8 When he testified during the Hearing on October 18-19, 2018, Dr. Alan Bovik was a Professor at the
University of Texas at Austin. (CPSt. at 8:). His Appointments were in the Department of Electrical and
Computer Engineering, the Department of Computer Sciences, and the Department of Biomedical
Engineering. (/d.). Dr. Bovik was also the Director of the Laboratory for Image and Video Engineering
and held the Cockrell Family Regents Endowed Chair at the University of Texas at Austin. (/d.). Rovi
identified Dr. Bovik as an expert to testify: (i) about how the Accused 011 Products infringe the ’011
patent; (ii) about how the 011 DI Products satisfy the technical prong for the 011 patent; and (iii) in
rebuttal to Comcast’s invalidity contentions regarding obviousness and the written description

requirement. (/d.).

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Public Version

Figure 10: Depiction of Comcast’s X1 System

(CDX-0008C.0027 (introduced during Dr. Bovik’s testimony).).

i
(Bovik) at 560:3-23, 599:23-600:24.). [i

# (Tr. (Bovik) at 560:13-20.).

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Public Version

[ 8° Ud. at 561:8-

16; CDX-0008C.0038.).

[ ]

[ P! ee, e.g., CX-1019C (Entity Document for “Disney’s Descendants
2).f
CC - —|
(777 TTT). Ctr. Bovik) at 568:15-569:7, 586:13-22.).

——
1]
[ |” (Id. at 568:15-570:3; CDX-0008C.0040; CX-1019C.0003.). | |
|
| |

[ |. (Tr. (Bovik) at 568:9-21, 587:3-

590:23; RX-0137.).

Comcast’s XI users access the STB with a remote control to search for program content

20 - oo __] (Tr. (ovik) at 561:13-16.).

npoces _

[ (ir. ovik) at 568:22-569:3; see also,

2g, CX-1019C).

32 “TQ” is shorthand for text on 9 keys. (Tr. (Sree Kotay) at 506:13-21, 507:11-509:2.). Mr. Sree Kotay
was the former Chief Technology Officer at Comcast. (CPSt. at 6.). Rovi identified Mr. Kotay as a fact
witness to testify generally as to Comcast’s infringement of, inter alia, the ’011 patent and issues relating
to the validity of the ’011 patent, including Comcast’s relationship with the prior assignee of the ’011
patent. (/d. at 6-7.).

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by entering numbers on the remote' s keypad that has overloaded keys. (CDX-0008C.0030-31 ;
CX-0062.0001-3.). When a number is pressed, the STB relays the information to -
. (Tr.
----------------------------(Bovik) at 568:9-570:8; CDX-0008C.0041 ; JX-0107C (Srikanth Kallurkar Dep. Tr.) (June 21 ,
2018)) 33 at 154 :5-155:13.). Search results are returned with each overloaded key entry, and .
the letters in the title mapped to the string of
-----------------unresolved keystrokes, as shown in Figure 11 . (Tr. (Bovik) at 596: 17-597: 17.).
Figure 11: REX Search Results
1:J~p , ...F
ney Channel
I 1,t••, I f•.111 tt•i
J•,.. 	! I··
1,·, • I'
, I 	1-/'
(CDX-0008C.0042 (showing the Xl user entering the unresolved, overloaded keystrokes 3-4-7
in that order)).).
The displayed results are 	. (Tr. (Bovik) at
----------------597:25-598:24; RX-0541C; CDX-0008C.0044.). Although the algorithm runs on Comcast
33 At the time of his deposition on June 21 , 2018, Mr. Srikanth Kallurkar was the Vice President of
Procurement at Comcast. (RPSt. at 5.). Comcast identified Mr. Kallurkar as a fact witness to testify
about the Accused Products, the purchase ofSTBs from suppliers, and the rental and deployment of the
Accused Products to customers. (Id) .
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servers, X1 overloaded key searching would not work without the STB. No search could be
entered, and no results could be received or displayed, without the STB. (Tr. (Bovik) at 567:19-
25 (“Q. Would a number search or overloaded key search work without a set-top box? A. Not
in the consumer setting at all. Q. So if you remove the set-top box from the system, from the
consumer’s home, the user wouldn’t be able to do an overloaded key search? A. That’s
correct.”’).).

2. Accused 585 Products

The Accused 585 Products are STBs (hardware and software)| |

| |, which run Comcast’s X1

System and were imported on or after April 1, 2016. (Tr. (Ravin Balakrishnan)** at BTA 4-
738:15, 739:12-19, 745:9-19 (describing the Accused Products); Tr. (Steven Allinson)* a at’

1494:3-7 (Comeast’s engineer confirming that the STBs are Comcast-specific).). [

|

34 When he testified during the Hearing on October 19, 22, and 25, 2018, Dr. Ravin Balakrishnan was a
Professor of Computer Science in the Department of Computer Science at the University of Toronto,
where he was also the Chair of the Department. (CPSt. at 7.). Rovi identified Dr. Balakrishnan as an
expert to testify about: (i) the understandings of the disputed terms of the °585 and ’741 patents to one of
skill in the art in view of the intrinsic and extrinsic evidence, the specification, prosecution history, and
the knowledge of one of ordinary skill in the art; (ii) how the Accused Products infringe the ’585 and ’741
patents; and (iii) how the 585 and 741 DI Products satisfy the technical prong for the °585 and °741
patents.

35 When he testified during the Hearing on October 23,:2018, Mr. Steven A. Allinson was the Senior
Director of Product Management for Consumer Premise Equipment Software at Comcast. (Tr. (Allinson)
at 1467:23-1468:2; RPSt. at 5.). As Senior Director, Mr. Allinson’s duties included “specify[ing] for new
features the requirements to implement . . . those features and then work with the engineering teams to
prioritize the implementation of those features.” (Tr. (Allinson) at 1468:3-8.). Comcast identified Mr.
Allinson as a fact witness to testify about the accused STBs. (/d.).

36 ‘L(See, e.g., Tr. (Balakrishnan) at 740:16-18.).
| (CX-

0440C.0016; Tr. (Balakrishnan) at 740:19-741:9.).

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_ |. (Tr.
(Balakrishnan) at 739:12-743:14,).
3. Accused 741 Products
The Accused 741 Products are STBs (hardware and software), | |

-

_|, that run in Comcast’s X1

System and were initially imported on or after April 1, 2016. (Tr. (Balakrishnan) at 1032:8-20,

1034:10-1036:5, 1037:2-1038:9, 1040:1-4.).

4, Representative Accused Products

Representative Accused Products, to which the Parties stipulated, are identified in Table

No. 5 below.
Table No. 5: Representative Accused Products
Patent Representative Accused Accused Products
Product Represented by the
Representative Accused
Product
011 [J XG1, XG2, Xi5, and XiD
STBs
585 [| XG2 and XG1 STBs with
cloud DVR enabled
XG1 STBs with cloud DVR
disabled
{| Xi5 and XiD STBs
741 [ XG1 and XG2 STBs

[ ]

XiD and Xi5 STBs

(Doc. ID No. 657986, Stipulations of the Parties at Ex. 2C (Oct. 5, 2018); JX-0163C

(Representative Products).).

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Rovi’s experts, Dr. Bovik and Mr. Jim Williams,?’ testified that the i STB is
representative of the Accused 011 Products XG1, XG2, Xi, and XiD STBs, and confirmed that .
there is no difference among these Comcast products for X1 search functions using overloaded
key searches and resolution of ambiguous keystrokes. (Tr. (Williams) at 341:7-343:15; Tr.
(Bovik) at 567:5-18.).

Mr. Williams and Rovi’s expert, Dr. Balakrishnan, testifed that the
Po are representative of the corresponding Accused 585 Products
identified above in Table No. 5, and the || STB is representative of the Xi5 and XiD STBs.
(Tr. (Balakrishnan) at 737:4-739:2; Tr. (Williams) at 336:12-340:19, 344:15-348:5.). Mr.
Williams and Dr. Balakrishnan confirmed that each Accused 585 Product operates in the same
material way with respect to the infringement of the 585 patent so that if one product is found to
infringe, the other products should also be found to infringe. (Tr. (Williams) at 336:12-340:19,
344:15-348:5 (discussing JX-0163C, CX-1131C, CDX-0014C.0021); Tr. (Balakrishnan) at
738:9-739:2.).

With regard to the Accused 741 Products, Mr. Williams and Dr. Balakrishnan testified

that the P| STB is representative of the XG2, XG1 STBs with cloud DVR enabled; the | |

Pd is representative of the XG1 STBs with cloud DVR disabled; and

37 When he testified during the Hearing on October 18, 2018, Mr. Jim Williams was President and
Founder of Media Strategies and Solutions, LLC. (CPSt., App. F at 1-2.). Rovi identified Mr. Williams
as an expert to testify about: (i) the disputed terms of the ’799 and ’363 patents to one of skill in the art in
view of the intrinsic and extrinsic evidence, the specification, prosecution history, and the knowledge of
one of ordinary skill in the art; (ii) how certain accused products infringe the 799 and ’363 patents; and
(iii) how the relevant domestic industry products satisfy the technical prong for the 799 and ’363 patents.
(CPSt. at 11.). However, as mentioned in Section II.A, supra, these patents were terminated from this
Investigation before the Hearing commenced. Thus, Mr. Williams did not provide any testimony with
respect to these patents during the Hearing.

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the| | STB is representative of the Xi5 and XiD STBs. (JX-0163C; Tr. (Williams) at 337:25-
338:4; Tr. (Balakrishnan) at 1032:8-1034:3.). Mr. Williams and Dr. Balakrishnan confirmed that
there is no material difference between any of the Accused 741 Products. (Tr. (Williams) at
~ 340:20-341:2; Tr. (Balakrishnan) at 1036:6-23; CDX-0006C.0307.).

B. Comcast’s Design Alternatives

Comcast asserted that it has developed and disclosed two (2) alternative designs that
remove or replace the features accused of infringing the ’011 patent (“Design Alternatives”): (i)

the “| Design Alternative”; and (ii) the “ | Design Alternative.”°® (See, e.g., RPBr. at 6,

27; RRBr. at 44-46.). According to Comcast, the Design Alternatives eliminate what Rovi has

accused as “highlighting.” (RX-0547C (Kelly Reb. Rpt. at Ex. C); RPX-0240C (Comcast

a | Redesign Source Code); RPX-0241C (_| Redesign Source Code);

RPX-0198C( ——s—s—~—SsSCSCsS Redesign Source Code); RX-0547C (Keely Reb. Rpt. at
Ex. C); RPX-0201C (Comcast| _| Redesign Source Code); RPX-0202C (__| Redesign
Source Code).). |

, On June 8, 2018, Comcast made available to Rovi for inspection equipment that provides
access to the Design Alternatives and the source code to implement those designs. (/d.). On

‘June 11, 2018, Comcast explained in discovery responses why these designs do not infringe.

(See CX-1220C (Comcast’s 6th Supp. Rog. Resp.) at Nos. 36-37) Comcast supplemented its

responses on June 29, 2018. (See CX-1230C (Comcast’s 11th Supp. Rog. Resp.) at Nos, 36-37.).

Rovi’s expert, Dr. Bovik, did not present any non-infringement positions for either

38 Rovi filed a motion in limine seeking to exclude the Design Alternatives from this Investigation.
(Motion Docket No. 1103-037 (Sept. 7, 2018).). Rovi’s motion was denied without prejudice. (Order
No. 42 (Oct. 15, 2018); see also Table No. 2, supra.).

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Design Alternative. °° Rovi failed to address Comcast’s Design Alternatives in either its Pre-
Hearing or Initial Post-Hearing Briefs. Thus, Rovi has waived any opportunity to do so under
Ground Rules 7.2 and 10.2.

C. Rovi’s DI Products

Rovi asserted that the following DI Products practice one or more claims of the Asserted
Patents: i-Guide, Passport Guide, Advanced Search and Recommendation (“AS&R”), Next-Gen
Platform, and TiVo Bolt with Experience 4.0. (CPBr. at 6-7; CBr. at 4.).

Rovi’s AS&R software (f/k/a SmartRelevance, SmartSearch, and Reveal), which Rovi
argued practices the ’011 patent, provides an advanced television experience through features
directed at improving users’ ability to quickly search for content. (Tr. (Michael Koenig)“ at
427:20-435:7.). One such feature relates to the use of overloaded key index searching to provide

incremental and highlighted search results. (/d. at 430:6-434:10.). AS&R customers have

included a oo |, and Comcast. (/d. at 435: 12-20.). f

currently uses AS&R. (Jd. at 435:21-438:2.).
‘ Rovi’s iGuide and Passport (collectively, “Classic Guides”), which Rovi contended

practice the ’585 patent, are IPGs that operate on QAM networks“! (as opposed to newer IP

3° See Section VILA.4(f), infra.

4° When he testified during the Hearing on October 18, 2018, Mr. Michael A. Koenig was Vice President
of Business Development at Rovi, and formerly the Vice President of Sales, Service and Business
Development at Veveo before its acquisition. (CPSt. at 2; Tr. (Koenig) at 425:8-12, 425:15-426:3.).
Rovi identified Mr. Koenig as a fact witness to testify as to Veveo’s history with Comcast and Rovi’s
investments in search technology over time. (CPSt. at 2.).

4! Ms. Sarah Gaeta, Rovi’s Vice President and General:Manager in Guide Products and Professional
Services when she testified during the Hearing on October 17-18, 2018, confirmed that QAM is the
“traditional old technology deployed by U.S. cable systems.” (Tr. (Gaeta) at 262:7-9; see also id. at
232:20-233:2 (““Q. What are the differences between the classic guides that you managed and those new

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networks) and provide users with interactive discovery and navigation functions. (Tr. (Sarah
Gaeta)‘ at 200:22-202:8, 204:18-205:17; CX-1159 (i-Guide Video); CX-0640 (i-Guide Product
Details); CX-1162 (Passport Video); CX-0641 (Passport Product Details).). Approximately/]

|] U.S. subscribers use the Classic Guides in their homes. (CX-1379C (U.S. Revenue).).

Ms. Gaeta testified that [ 4. (Tr. (Gaeta) at 221:10-

_ 20, 225:3-11; CX-0488C (Roadmaps) at 8-9.).

Rovi’s Next-Gen Platform (“Next-Gen”), which Rovi asserted practices the ’011, 585
and ’741 patents, is Rovi’s newest IPG solution. Next-Gen delivers IP-based capabilities derived
from both FanTV and, TiVo elements. (/d. at 239:3-242:11.). The Next-Gen platform provides
users with guide and content discovery services, and can be run on a variety of hardware devices.
(Id. at 239:14-25.). Rovi first released Next-Gen( __}) in April 2018. (Id. at 248:6-8.).
|
|
[_]. Ud. at 248:9-252:21)). |
|. (la;

CX-0476C (Roadmap) at 2.).

IP guides that you just referred to? A. So classic guides are on that QAM technology, and that’s pretty
much the original cable infrastructure that was rolled out in the United States back when cable pay TV
started. And the newer guides are based on Internet protocol, or IP technology, which is exactly that. It’s
like getting onto the Internet to get your video streams. And the classic guides do not understand or speak
IP, so they can’t operate in that new environment.”), 291:6-11.).

42 When she testified during the Hearing on October 17-18, 2018, Ms. Sarah R. Gaeta was Vice President
and General Manager in Guide Products and Professional Services at Rovi, a position she from 2014.
(CPSt. at 1; Tr. (Gaeta) at 200:18-21.). Rovi identified Ms. Gaeta as a fact witness to testify generally as
to Rovi, Rovi’s domestic industry products, and the trajectory of Rovi’s product development from cable
to IP. (CPSt. at 1).

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-

Licensee TSI’s TiVo Bolt with Experience 4.0, which Rovi argued practices the °585 and

°741 patents, | _ |
| |

[____ }. (X-0096C (James Denney Dep. Tr. (June 15, 2018))* at 16:16-17:8, 58:15-

59:15; JX-0171C (Denney Dep. Tr. (Aug. 24, 2018)) at 26:17-27:9, 47:6-11; JX-0126C (Chris
_ Thun Dep. Tr. (June 27, 2018))™ at 15:11-22, 17:20-23.).

VI. CLAIM CONSTRUCTION

A. Legal Standard: Level of Ordinary Skill in the Art

The relevant time for assessing the level of ordinary skill in the art is the effective filing
date of the patent. Phillips v, AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (“We
have made clear, moreover, that the ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in question at the time of
the invention, i.e., as of the effective filing date of the patent application.”).

Factors to consider in determining the level of ordinary skill in the art include: (1) the
educational level of the inventor; (2) the type of problems encountered in the art; (3) the prior art

solutions to those problems; (4) the rapidity with which innovations are made; (5) the

sophistication of the technology; and (6) the educational level of active workers in the field. See

At the time of his deposition on June 15, 2018, Mr. James Denney was the Vice President of Product
and Strategy of TiVo Solutions, a position he held for 7-8 years. (JX-0096C (Denny Dep. Tr. (June 15,
2018)) at 8:20-9:2.). His responsibilities included running the product management team “for the service
part of the business,” which involved managing “‘a team that works on usability studies and a team that
works on media operations,” and then “coordinat[ing] product solutions across different groups.” (/d. at
9:3-9.).

#4 Rovi designated Mr. Chris Thun to testify on behalf of Rovi with regard to certain topics listed in

Respondent’s Notice of Corporate Deposition Directed to Complainants. (JX-0126C (Thun Dep. Tr.
(June 27, 2018)) at 7:17-8:7.).

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Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983). “These factors
are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.”
Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).

\

B. Definition of Person of Ordinary Skill in the Art

The Private Parties disagreed over the qualifications of a person of ordinary skill in the
art for the Asserted Patents.

-Rovi proposed that a person of ordinary skill in the art would have a bachelor’s degree in
electrical engineering, computer engineering, computer science, or applied mathematics as well
as two or more years of relevant industry experience, including in electronic content delivery,
electronic program guides, television video signal processing, graphical user interfaces, cable or
satellite television systems, set-top boxes, multimedia systems, or data search techniques.
(CMBr. at 1 (citing Madisetti Decl. at 7; Madisetti Decl. at {| 17-23; Balakrishnan Decl. at
4 12).).

Comcast proposed that a person of ordinary skill in the art would have a bachelor’s
degree in electrical engineering, computer engineering, computer science, applied mathematics,
or a similar discipline, as well as two or more years of relevant industry or research experience,
_ including in electronic content delivery, electronic program guides, television video signal
processing, graphical user interfaces, cable or satellite television systems, set-top boxes,
multimedia systems, or data search techniques. (RMBr. at 12, 27, 74),

Staff did not offer a definition.

It was determined that a person of ordinary skill in the art would have had a bachelor’s
degree in electrical engineering, computer engineering, computer science, or applied

mathematics as well as two or more years of relevant industry experience, including in electronic

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content delivery, electronic program guides, television video signal processing, graphical user
interfaces, cable or satellite television systems, set-top boxes, multimedia systems, or data search
techniques. (Markman Order at 11-12.).

C. Legal Standard: Claim Construction*

Claim construction begins with the plain language of the claims themselves. Claims
should be given their ordinary and customary meaning as understood by a person of ordinary
skill in the art, viewing the claim terms in the context of the entire patent. Phillips v. AWH
Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005), cert. denied, 546 U.S. 1170 (2006). In some
cases, the plain and ordinary meaning of the claim language is readily apparent and claim
construction will involve little more that “the application of the widely accepted meaning of

‘commonly understood words.” Jd. at 1314. In other cases, claim terms have a specialized
meaning and it is necessary to determine what a person of ordinary skill in the art would have
understood the disputed claim language to mean by analyzing “the words of the claims
themselves, the remainder of the specification, the prosecution history, and extrinsic evidence
concerning relevant scientific principles, as well as the meaning of technical terms, and the state
of the art.” Id. (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
1111, 1116 (Fed. Cir. 2004)).

The claims themselves provide substantial guidance as to the meaning of disputed claim
language. Jd. “[T]he context in which a term is used in the asserted claim can be highly
instructive.” Jd. Likewise, other claims of the patent at issue, “both asserted and unasserted, can

also be valuable sources of enlightenment as to the meaning of a claim term.” Jd. (citation

45 The claim constructions for the agreed upon and disputed claim terms are listed in Sections VII.A.3,
VIIIL.A.2, and IX.A.2, infra.

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omitted).

With respect to claim preambles, a preamble may limit a claimed invention if it: (i)
recites essential structure or steps; or (ii) is “necessary to give life, meaning, and vitality” to the
claim. Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (citations
omitted). The Federal Circuit has explained that a “claim preamble has the import that the claim
as a whole suggests for it. In other words, when the claim drafter chooses to use both the
preamble and the body to define the subject matter of the claimed invention, the invention so -
defined, and not some other, is the one the patent protects.” Jd. (quoting Bell Commc’ns |
Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)). When used in a
patent preamble, the term “comprising” is well understood to mean “including but not limited
to,” and thus, the claim is open-ended. CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356,
1360 (Fed. Cir. 2007). The patent term “comprising” permits the inclusion of other unrecited
steps, elements, or materials in addition to those elements or components specified in the claims.
Id.

In cases where the meaning of a disputed claim term in the context of the patent’s claims
remains uncertain, the specification is the “single best guide to the meaning of a disputed term.”
Phillips, 415 F.3d at 1321. Moreover, “[t]he construction that stays true to the claim language
and most naturally aligns with the patent’s description of the invention will be, in the end, the
correct construction.” Id. at 1316. Asa general rule, however, the particular examples or
embodiments discussed in the specification are not to be read into the claims as limitations. Jd.
at 1323.

The prosecution history may also explain the meaning of claim language, although “it

often lacks the clarity of the specification and thus is less useful for claim construction

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purposes.” Jd. at 1317.: The prosecution history consists of the complete record of the patent
examination proceedings before the U.S. Patent and Trademark Office (“PTO”), including cited
prior art. Jd. It may reveal “how the inventor understood the invention and whether the inventor
limited the invention in the course of prosecution, making the claim scope narrower than it
would otherwise be.” Id.
If the intrinsic evidence is insufficient to establish the clear meaning of a claim, a court
_Mnay resort to an examination of the extrinsic evidence.* Zodiac Pool Care, Inc. v. Hoffinger
Indus., Inc., 206 F.3d 1408, 1414 (Fed. Cir. 2000). Extrinsic evidence may shed light on the
relevant art, and “consists of all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and leamed treatises.” Phillips, 415 F.3d
at 1317. In evaluating expert testimony, a court should disregard any expert testimony that is
conclusory or “clearly at odds with the claim construction mandated by the claims themselves,
the written description, and the prosecution history, in other words, with the written record of the
patent.” Id. at 1318. Expert testimony is only of assistance if, with respect to the disputed claim
language, it identifies what the accepted meaning in the field would be to one skilled in the art.
Symantec Corp. v. Comput. Assocs. Int'l, Inc., 522 F.3d 1279, 1289 n.3., 1290-91 (Fed. Cir.
2008). Testimony that recites how each expert would construe the term should be accorded little
or no weight. Jd. Extrinsic evidence is inherently “less reliable” than intrinsic evidence, and Aig
unlikely to result in a reliable interpretation of patent claim scope unless considered in the

context of the intrinsic evidence.” Phillips, 415 F.3d at 1318-19.

46 “In those cases where the public record unambiguously describes the scope of the patented invention,
reliance on any extrinsic evidence is improper.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1583 (Fed. Cir. 1996).

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VIE. U.S. PATENT NO. 7,779,011
A. Literal Infringement*’
1. Legal Standard

“Determination of infringement is a two-step process which consists of determining the
scope of the asserted claim (claim construction) and then comparing the accused product . . . to
the claim as construed.” Certain Sucralose, Sweeteners Containing Sucralose, and Related
Intermediate Compounds Thereof, Inv. No. 337-TA-604, Comm’n Opinion at 36 (U.S.LT.C.,
April 28, 2009) (citing Litton Sys., Inc. v. Honeywell, Inc., 140 F.3d 1449, 1454 (Fed. Cir.
1998)).

An accused device literally infringes a patent claim if it contains each limitation recited in
the claim exactly. Litton, 140 F.3d at 1454. Each patent claim element or limitation is .
considered material and essential. London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538
(Fed. Cir. 1991).

A process or method claim is infringed only if each step of the claimed method is
performed. Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed. Cir. 2009);
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328 (Fed. Cir. 2008). The mere sale or
importation of an apparatus capable of performing the patented method does not constitute
infringement. Jn re Kollar, 286 F.3d 1326, 1332 (Fed.Cir.2002) (recognizing “the distinction
between a claim toa product, device, or apparatus, all of which are tangible items, and a claim to a
process, which consists of a series of acts or steps... . [A process] consists of doing something, and

therefore has to be carried out or performed.”); Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 775 (Fed.

47 Rovi did not argue that any of the asserted claims of the Asserted Patents are infringed under the
doctrine of equivalents.

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Cir. 1993) (“The sale of the apparatus is not a sale of the method. A method claim is directly
infringed only by one practicing the patented method.”).

“To prove an infringing ‘use’ of a system under § 271(a), a patentee must demonstrate
‘use’—that is, ‘control’ and ‘benefit’ of the claimed system by an accused direct infringer.”
Intellectual Ventures I LLC v. Motorola Mobility LLC, 870 F.3d 1320, 1328 (Fed. Cir. 2017).
The direct infringer must have obtained “benefit” from each and every element of the claimed
system. Id. at 1329 (citing Centillion Data Sys., LLC. v. Qwest Comm’ns Int'l, Inc., 631 F.3d
1279, 1284 (Fed. Cir. 2011)). In addition, the required “control,” whether direct or indirect, “is
the ability to place the system as a whole into service.” Jd. (quoting Centillion Data Sys., 631
F.3d at 1284).

In a Section 337 investigation, the complainant bears the burden of proving infringement
of the asserted patent claims by a preponderance of the evidence. Enercon GmbH v. Int’l Trade
Comm ’n, 151 F.3d 1376, 1384 (Fed. Cir. 1998). If any claim limitation is absent, there is no
literal infringement of that claim as a matter of law. Bayer AG v. Elan Pharm. Research Corp.,
212 F.3d 1241, 1247 (Fed. Cir. 2000). |

2. Infringement Overview

Rovi has argued that when operating in the X1 System, the Accused 011 Products satisfy
claims | and 9 of the ’011 patent. (See, e.g., CBr. at 10.). Litton, 140 F.3d at 1454. Claims 1
and 9 require a method and system, respectively, that process unresolved, overloaded keystrokes,
in which a key is in a fixed association with a number and at least one alphabetic character to
identify an item in a set of items, in which each item is associated with information comprising
one or more words, in accordance with the following limitations:

[la, 9a] Indexing the items by associating subsets with strings of one or more

Ns,

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unresolved keystrokes for the overloaded key such that the items are directly
mapped to the strings of unresolved keystrokes for various search query prefix
_ substrings.

[1b, 9b] Determining, for a subset of items, which letters and numbers in the
information associated with items, caused the items to be associated with the strings
of unresolved keystrokes that are directly mapped to the subset of items.

[1c, 9c] Receiving a user search query composed of unresolved keystrokes that
comprises a prefix substring for at least one word in the information associated \ with |
the desired item.

[1d, 9d] Identifying and displaying, in response to each unresolved keystroke, the
subsets of items and the associated information for the strings of unresolved
keystrokes based on the direct mapping of strings of unresolved keystrokes to
subsets for items.

[le, 9e] Highlighting, as the identified items are displayed, the letters and numbers
in the information that were determined to have caused the displayed items to be
associated with the strings of unresolved keystrokes that are directly mapped to the
items to show how the unresolved keystrokes entered match the information.

[1f, 9f] Ordering the displayed items in accordance with one or more criteria.

(JX-0001 at 8: 40-9:13, 9:37-10:15 (emphases added); see also Tr. (Bovik) at 558:12-559:5;
CDX-0008C.0024.).

Comcast contested that the Accused 011 Products practice the “determining” and
“highlighting” limitations recited in 1[b]/9[b] and 1[e]/9[e], respectively, and the “displaying”
limitation recited in 1[d]/9[d]. As discussed below in Sections V.A.4(a)-(g), Rovi presented ,
testimony and documentary evidence supporting its assertion that the Accused 011 Products
satisfy these limitations.

Accordingly, Rovi has met its burden and proven that the Accused 011 Products
operating in the X1 System satisfy each and every limitation recited in claims | and 9 of the ’011
patent, and that Comcast infringes these claims.

3. Relevant Claim Terms

The Private Parties agreed to the following construction of one of the claim terms recited

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in the asserted claims of the 011 patent, which this Court has adopted. (See Markman Order,

App. A at 1.).

Table No. 6: Construction of Agreed Upon Claim Term Relevant
to the ’011 Patent

Claim Term

Adopted Construction

“prefix substring(s)”
(Claims | and 9)

“a variable length string of characters that
contains fewer than all the characters making
up the word”

This Court construed the following constructions of the disputed claim terms.**

(Markman Order, App. A at 2-14.).

Table No. 7: Constructions of the Disputed Claim Terms Relevant
to the ’011 Patent

Claim Term

Adopted Construction

Preamble
(Claims | and 9)

The preamble is limiting, but it limits only the
“erivironment” in which the invention
operates and does not recite additional steps
or components in the claimed invention, per
Advanced Software Design Corp. v. Fiserv,
Inc., 641 F.3d 1368, 1375 (Fed. Cir. 2011)
(holding that the preamble steps limit only the
claimed environment, not the claimed method
or system).

“a computer readable medium comprising
instructions for causing a computer system
to:”

(Claim 9)

The preamble is limiting as explained above
(limits only the “environment” in which the
invention operates) per Advanced Software
Design Corp. v. Fiserv, Inc., 641 F.3d 1368,
1375 (Fed. Cir. 2011) (holding that the |
preamble steps limit only the claimed
environment, not the claimed method or
system).

‘8 The Private Parties disputed the meaning of additional claim terms recited in claims that have been
terminated from this Investigation. Those terms are not included in Table No. 7.

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\

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Claim Term Adopted Construction

The proper construction is “one computer
readable medium, or two or more computer-
readable media, individually or collectively
containing instructions for causing the
computer system to perform the recited
steps.”

“items” , “information units, each with a name
; , comprising one or more words”
(Claims | and 9) prising

“directly mapped” , “each alphanumeric character of a prefix
(Claims | and 9) substring associated with an item is matched

with its corresponding numeric key equivalent
on an overloaded keypad”

4. When Operating in the X1 System, the Accused 011 Products Practice
Claims 1 (Method) and 9 (System) of the ’011 Patent*®

a) Preambles [1, 9]: “A method of [system for] processing
unresolved keystroke entries by a user from a keypad with
overloaded keys in which a given key is in fixed association
with a number and at least one alphabetic character, said
unresolved keystroke entries being directed at identifying an
item from a set of items, each of said items being associated
with information describing the item comprising one or more
words, said method [system] comprising”

Rovi’s expert, Dr. Bovik, opined that the Accused 011 Products that implement the X1
Platform operate in the recited environment by permitting users to perform searches for items

(e.g., TV shows) with unresolved keystrokes on handheld remotes containing overloaded keys in

4 Italicized text in brackets refers to: (i) language recited in claim 9 that differs slightly from
corresponding language recited in claim 1, e.g., “method” (claim 1)/“system” (claim 9), “indexing” (claim
- 1)/“index” (claim 9); or (ii) language in claim 9 that is not recited in claim 1 (see {le] and [9e]). Text in
brackets that is not italicized refers to language in claim | that is not recited in claim 9 (see [le] and [9e]).

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i

which numeric keys are associated with one or more letters.*° (Tr. (Bovik) at 576:25-579: 18.).

|. Ud. at 555:14-

556:20.).

Comcast’s expert, Dr. John Kelly,°! did not dispute that the Accused 011 Products satisfy
the preamble language of claim 1 other than asserting the Accused 011 Products do not “display”
the results of unresolved keystroke searches, because Comcast does not provide its customers
with a television. (Tr. (Kelly) at 1770:3-1771 :4.). However, as Dr. Bovik pointed out, the
Accused 011 Products operate as part of a system, and no user can search Comcast’s X1 Guide
(or even see the guide) without an accused STB and display. (Tr. (Bovik) at 567:19-25 (“Q.
Would a number search or overloaded key search work without a set-top box? A. Not in the
consumer setting at all. Q. So if you remove the set-top box from the system, from the
consumer’s home, the user wouldn’t be able to do an overloaded key search? A. That’s
correct.”’).). |

With respect to the preamble language of claim 9 reciting “a computer-readable medium

°° The preamble was found to be “limiting, but only as to the ‘environment’ in which the invention
operates and does not recite additional steps or components in the claimed invention.” (Markman Order,
App. A at 2.).

51 When he testified during the Hearing on October 24, 2018, Dr. John Kelly was the President and CEO
of the Santa Barbara Technology Group, Inc. (Tr. (Kelly) at 1676:3-6; RPSt. atEx. C.). Comcast
identified Dr. Kelly as an expert to: (1) testify about matters relating to, at least, the technical background
of the Asserted Patents; the interpretation of the claims in those patents; issues relating to the alleged
infringement of the Asserted Patents by the Accused Products and Comcast’s Design Alternatives; the
design, structure, function, and operation of the Accused Products and Design Alternatives; issues relating
to the validity of the Asserted Patents; issues relating to whether the Rovi DI Products practice the
Asserted Patents and whether Rovi satisfies the technical prong of the domestic industry for the Asserted
Patents; and other issues in connection with the alleged infringement, validity, enforceability, and any
other technical issue that may arise with respect to the Asserted Patents; and (2) rebut the testimony of
Rovi’s experts or fact witnesses regarding any of these issues. (RPSt. at 3.).

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comprising instructions for causing the computer system to” process the unresolved keystrokes,

Dr. Bovik explained the} }

f |, to which Dr. Kelly offered no response. (Tr.

(Bovik) at 599:23-600:15; CDX-0008C.0100.).

With regard to claim 1, Comcast did not rebut the evidence Rovi adduced in its pre-
hearing or post-hearing briefing. Thus, any argument as to the preamble recited in claim | is
waived under Ground Rules 7.2 and 10.1.: With respect to claim 9, Comcast failed to present any
counterargument or evidence in its post-hearing briefing. Accordingly, any argument as to the
preamble recited in claim 9 is waived under Ground Rule 10.1.

For these reasons, Rovi has proven by a preponderance of the evidence that the Accused
011 Products meet the preambles recited in claims 1 and 9 of the 011 patent.

b) 1[a}/9[a]: “indexing [index] said items by associating subsets of
said items with corresponding strings of one or more
unresolved keystrokes for overloaded keys so that the subsets
of items are directly mapped to the corresponding strings of

unresolved keystrokes for various search query prefix
substrings”

Dr. Bovik testified that based on his review of relevant deposition testimony, source
code, and screenshots, the Accused 011 Products, operating in the X1 System, practice the
indexing limitations recited in claims 1 and 9. (Tr. (Bovik) at 584:11-15.). Specifically, Dr.
Bovik explained that X1 associates subsets of items with corresponding strings of one or more

‘

unresolved keystrokes for overloaded keys so that the subsets of items are directly mapped to the

corresponding strings of unresolved keystrokes for various search query prefix substrings. (/d. at

580:21-584:15.). Dr. Bovik testified that in this process, | |

— _

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—

|. (Id. at 582:17-583:7.). For example,
L
4

_

J

|. (id. at 582:17-

584:4; CDX-0008C.0060-61); see also FX-0107C (Kallurkar Dep. Tr. (June 21, 2018)) at
170:19-172:19; CDX-0008C.62.). Dr. Kelly did not dispute that the Accused 011 Products
satisfy this limitation. (Tr. (Kelly) at 1783:4-1784:2.).
Comcast did not rebut this evidence in its pre-hearing or post-hearing briefing. Thus, any
' argument on this issue is waived under Ground Rules 7.2 and 10.1.
For the foregoing reasons, Rovi has proven by a preponderance of the evidence that the
Accused 011 Products meet limitations 1{a].and 9[a] recited in claims 1 and 9 of the ’011 patent.
c) 1[b]/9[b]: “for at least one subset of items, determining
[determine] which letters and numbers present in the |
information associated with and describing the indexed items
of said subset caused said items to be associated with the

strings of one or more unresolved keystrokes that are directly
mapped to said subset”

During the Hearing, Dr. Bovik persuasively testified that based on his review of Dr.
Kelly’s expert report, relevant deposition testimony, source code, and screenshots, the Accused
011 Products, operating in the X1 System, practice the determining limitations recited in claims
1 and 9. (Tr. (Bovik) at 588:12-16.). Added during prosecution of the ’011 patent, the inventors
explained:

[This limitation] requires the determination of what letters and numbers in

information describing particular items (e.g., letters in words of the titles) caused

the items to be grouped in a particular subset that is directly mapped to a particular
string of unresolved keystrokes. It is these letters and numbers that are later

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highlighted upon identification and display of the subsets of items, not simply any
letters and numbers that correspond to the unresolved keystrokes. The Application
provides an example of this feature in Fig. 6B and the description at {{ 35-38, as
filed. Specifically, if a user enters the unresolved keystrokes “866”, the system
returns the subset of items shown in Fig. 6B that are directly mapped to that string.
The item “Twelve Monkeys(1995)” [sic] is one of the items included in the subset
directly mapped to “866”.

(Id, at 585:11-19; JX-0008.0882 (’011 file history).).

Based upon this understanding, Dr. Bovik opined that Comcast’s

L

L
|. (Tr.
(Bovik) at 586:13-587:2.). For instance, as part of the| |

L

- | (id. at 582:17-583:1, 586:2-587:2;

CDX-0008C.0066-68.). Similarly, the|

| .

[] Ud. at 582:17-583:1, 586:2-587:2; CDX-0008C.0066-68.).

Dr. Bovik testified that the}

[], as shown below in Figure 12.

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(Tr. (Bovik) at 586:13-587:2.).

Figure 12: “Determining” Step Performed by Comeast’s[ |

(CDX-0008C.0068.).

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For the| |

_ oo ]. (Tr. (Bovik) at 586:13-

§87:2.). Without the [_

[C _
[
[ | (Id).

Comcast’s expert, Dr. Kelly, asserted that{ _ |
L
L_ |.

(Tr. (Kelly) at 1694:3-25.). Referencing the search query “5205205263,” which yields, inter

alia, the title “La La Land,” Dr. Kelly testified that} {

|
f

|. Ud. at 1695:7-

1699:8; RX-1578C.0009 (Kelly Rebuttal Report Screenshots).). Dr. Kelly’s position fails for the
following reasons.

In almost all searches, there was no dispute that the letters and number highlighted{ |
L
Le _ | J

[ |. (Tr. (Bovik) at

597:8-16; Tr. (Kelly) at 1782:1-1784:2; CDX-0008C.0053 (citing CX-0952C.0040).). Dr.

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Kelly’s examples involved i 7 - 7 OO a |

oo]. Er. (Kelly) at 1695:7-1696:16, 1708:8-18.). Even in
such instances, the source code reveals what caused the highlighting. (/d. at 1708:8-1709:3.).
As Rovi noted, nothing in the claim language prohibits meeting the determining step by
reviewing source code. (CBr. at 22.). |

Dr. Kelly also based his non-infringement argument on a construction of “determining”
that was not adopted. According to Dr. Kelly, the determining step has nothing to do with —
grouping items into subsets but rather, is part of highlighting such that the later “highlighting”
step must be the “direct result of’ the earlier determining step. (Tr. (Kelly) at 1804:7-1806:7
(“[T]he highlighting has to be as a result of the -- it says here quite clearly in the, let me see,
‘highlighting the letters and numbers present that were determined to have cause[d].’ So it has to
be a direct result of that. It’s not sufficient that the determining happened at some point in the
past and then now completely disconnected there is highlighting.”).).

However, nothing in either the “determining” or “highlighting” limitation, or the adopted
claim constructions, require that the determining step directly result in the highlighting, with
which Dr. Kelly agreed. (/d. at 1806:2-7 (“Q. Dr. Kelly, you just said that claim le requires,
and I wrote it down, ‘the highlighting must be the direct result of determining.’ Those words,
‘the direct result of,’ don’t appear in le, do they? A. They do not.”).). The claims simply
require that, “in response to each unresolved keystroke,” the highlighted letters and number are
the same letters and numbers “that were determined to have caused” the association with the
unresolved key strokes. (IX-0001 at 9:3-11, 10:4-13; Tr. (Bovik) at 597:8-17; Tr. (Kelly) at
1780:25-1781:14.). |

Moreover, Dr. Kelly’s opinion that “[t]he determining step is not grouping,” which is

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incorrect for the reasons discussed directly above, conflicts with his application of the
determining limitation to the prior art. For purposes of invalidity, Dr. Kelly acknowledged that
the Gross and Smith references satisfy this limitation by grouping items into subsets with an

inverted index, which is how X1’s Solr/Lucene inverted index groups metadata items into

subsets.

Q. And for the determining, you understand that Dr. Bovik reads that limitation
differently?

A. I do indeed.

Q. And the way Dr. Bovik reads it, he reads it to apply -- in fact, if we can bring
up 8C.65, and you showed testimony from Dr. Bovik. And the way that he reads
this limitation is that it’s talking about grouping in particular subsets that are
directly mapped to particular screens of unresolved keys; right?

A. Yes. He says that the grouping is enough to provide the determination.

Q. And under that reading of this step, you believe that the Gross reference shows
1b through the use of an inverted index?

A. Gross and Smith in combination, I believe, renders this obvious with that type
of interpretation.

Q. And you pointed out that Gross uses an inverted index; right?

A. It does.

| )
|
Cd

(Tr. (Kelly) at 1772:11-24; see also Tr. (Bovik) at 587:8-588:11.).

For the reasons discussed above, Rovi has proven by a preponderance of the evidence
that the Accused 011 Products meet limitations 1[b] and 9[b] recited in claims | and 9 of the

°011 patent.

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d) —_ 1[c]/9[c]: subsequent to said indexing, receiving [receive] from
a user a search query for desired items composed of unresolved
keystrokes, said search query comprising a prefix substring for
at least one word in information associated with the desired
item”

Dr. Bovik testified that the Accused 011 Products, operating in the X1 System, receives
from a user (after indexing) a search query for desired items composed of unresolved keystrokes,
comprising a prefix substring for at least one word in a title associated with a show or movie.

(Tr. (Bovik) at 588: 17-590:16; CX-1054C.0005-7, 9 (Snapshot-01 1-1-2 Screenshots); CDX-

0008C.0075-78.). Dr. Bovik explained that|

|

a |. (Tr. (Bovik) at 569:4-570:10, 590:20-

591:10; CDX-0008C.0079.). Dr. Kelly did not contest that the Accused 011 Products satisfy this
limitation.

Comcast did not rebut this evidence in its pre-hearing or post-hearing briefing. Thus, any
argument on this issue is waived under Ground Rules 7.2 and 10.1.

Accordingly, Rovi has proven by a preponderance of the evidence that the Accused 011
Products meet limitations I[c] and 9[c] recited in claims | and 9 of the ’011 patent.

e) 1[d]/9[d]: “in response to each unresolved keystroke,
identifying [identify] and displaying [display on a display device
at least one of| the subsets of items, and information associated
therewith, that are associated with the strings of one or more
unresolved keystrokes received from the user based on the

direct mapping of strings of unresolved keystrokes to subsets
of items”

Dr. Bovik provided persuasive testimony that the Accused 011 Products, operating in the
X1 System, practice these limitations. (Tr. (Bovik) at 591:1 1-14, 596:1-16.). In response to

each successive unresolved keystroke received by the Accused 011 Products, Dr. Bovik

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explained that[ {

L | |

[ ‘|. (Ud. at 591:11-
592:11.). Dr. Bovik testified that| 7 |
[—} «| 1
[ |. (See CX-1054C.0009 (Snapshot-
011-1-2 Screenshots) (showing that| | |

t |); see also CX-1054C.0005-11 (Snapshot-01 1-1-2 Screenshots); Tr. (Bovik) at

591:11-592:11; CDX-0008C.0075-86.).
Dr. Kelly asserted that the accused STBs do not meet these limitations because they do

not “display.” (Tr. (Kelly) at 1714:9-11.). Dr. Kelly stated that the accused STBs [sd

[—__]. Ga. at 1714:14-1715:4.). However, as Dr. Bovik opined, Comcast’s STBs[_

| |. (Tr. (Bovik) at 595:25-

596:14.). Furthermore, the| |

| |, which Comcast’s fact witnesses,

Messrs. John McCann* and Steven Allinson, confirmed. (Tr. (McCann) at 1432:3-9, 1433:5-11,
1434:4-6, 1435:11-14, 1435:23-1436:1, 1436:22-1437:3, 1440:18-24, 1441:1-4, 1443:10-1,

1444:11-18; Tr. (Allinson) at 1492:22-25, 1493:10-17, 1494:3-20, 1496:17-1498:11, 1499:25-

52 When he testified during the Hearing on October 23, 2018, Mr. John McCann was the Vice President of .
Software Development and Engineering at Comcast. (RPSt. at 4.). His role in this capacity was to
“oversee software development, testing and operations of [Comcast’s] software services.” (Tr. (McCann)
at 1398:25-1399:2.).: Comcast identified Mr. McCann as a fact witness to testify about the X1 Platform
and the | as they relate to the accused functionalities and Comcast’s design alternatives. (/d.).

f

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1500:21.). Dr. Kelly also acknowledged that: ans ~ 7

“|. (fr. (Kelly) at 1763:19-1764:9.).
For the reasons discussed above, Rovi has proven by a preponderance of the evidence |

that the Accused 011 Products meet limitations 1{d] and 9[d] recited in claims 1 and 9 of the

°011 patent.

f) 1[e]/9[e]: “in response to each unresolved keystroke, as the
identified items are displayed, highlighting [highlight on the
display device] the letters and numbers present in the one or
more words in said information describing the identified items ,

\ that were determined to have caused the displayed items to be
associated with the [strings of] unresolved keystrokes [that are
directly mapped to said items] [received] so as to illustrate to
the user how the [strings of| unresolved keystrokes [that are

directly mapped to said items] entered match the information
associated with the displayed items”

i. Accused 011 Products

Evidence and testimony adduced in this Investigation demonstrate that the Accused 011
Products, operating in the X1 System, meet these limitations by highlighting letters and numbers
present in the displayed title that were determined to have caused the association between the
unresolved keystrokes and the direct mapping to the titles of the content items. (Tr. (Bovik) at
596:17-597:24.).

Screenshots taken using the Accused 011 Products with the X1 System show the
highlighting that results from entering overloaded keys on the STB remote. For example, as
shown below in Figure 13, when the user presses the unresolved overloaded “3” key followed by
the unresolved overloaded “4” key and then the unresolved overloaded “7” key, the search yields
results with “Disney” in the first word of the title, with the letters “D,” “i,” and “s” bolded or

highlighted.

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Figure 13: Snapshot of Highlighted Search Results

(CX-1054C.0009) (Snapshot-011-1-2 Screenshots); see also id. at CX-1054C.0005, 11; Tr.
(Bovik) at 596:21-597:24; CDX-0008C.0075-86.).

As Dr: Bovik ested,

(Tr. (Bovik) at 597:8-17.).
As discussed above in Section VII.A.4(c), Dr. Kelly contended that the Accused 011

Products operating in the X1 System do not satisfy the highlighting limitations because the

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highlighted letters and numbers are not necessarily the “direct result of” the earlier determining

step. (Tr. (Kelly) at 1804:10-22, 1806:2-7.). Rovi’s expert, Dr. Bovik, acknowledged that in

certain “special cases,” | |
C |

[
| |

(Tr. (Bovik) at 571:8-572:16 (emphases added).).

Dr. Bovik also clarified, however, that Dr. Kelly mainly relied upon such “special cases”

to support his non-infringement arguments.

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[ 7 7

(Id. at 572:16-573:8 (emphases added); see also Tr. (Kelly) at 1695:7-1696:16, 1708:8-18.).

As discussed above in Section VII.A.4(c), Dr. Kelly conceded that nothing in the claim
language requires the determining step to directly result in the highlighting. (Tr. (Kelly) at
1806:2-7.). Dr. Kelly also agreed that his interpretation of the “determining” and “highlighting”
limitations not only conflicted with how he applied them in his invalidity analysis, but also
required him to read requirements into the claim language that do not appear and were not part of

any claim construction. (Id. at 1782:22-1785:22.). Additionally, as discussed in Section

VILA.4(c),| |

Le

|. (Tr. (Bovik) at 573:22-574:1.).

Accordingly, Rovi has proven by a preponderance of the evidence that the Accused 011

Products meet limitations 1[e] and 9[e] recited in claims 1 and 9 of the ’011 patent.

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ii. Design Alternatives

Comcast presented two (2) independent Design Alternatives that it claimed do not
infringe the ’011 patent: at | Design Alternative; and ©) Design Alternative. (RPBr.
at 6, 27; RRBr. at 44.). Dr. Kelly testified that the Design Alternatives eliminate any possibility
of infringement by removing or preventing any highlighting in X1 search results. (Tr. (Kelly) at
1716:23-1722:17; RDX-0004C.0043-47). According to Dr. Kelly and Comcast’s fact witnesses,
both alternatives have been completed, tested, and are ready for deployment. (Tr. (Kelly) at
1716:23-1722:17; see also Tr. (McCann) at 1422:10-16; JX-0107C (Kallurkar Dep. Tr.) at
201:20-202:1, 202:7-15, 203:11-204:3, 204:10-17; RPX-0198C (__] design alternative source
code), RPX-0201C (| design alternative source code); RPX-0202C (same); Order No. 42 at
7-9 (Oct. 15, 2018) (denying Rovi’s MIL No. 4 to exclude the Design Alternatives).).

Dr. Kelly explained that the [] Design Alternative is implemented on the []

|

f 7 |. (Tr. (Kelly) at 1717:20-1719:16; RDX-

0004C.0043-44; RPX-0198C ¢ design alternative source code). Dr. Kelly and Mr. McCann

confirmed that|

i , |. (Tr. (McCann) at 1421:3-16; Tr. (Kelly) at 1718:16-21.).

Moreover, during the Hearing, Comcast demonstrated the effect of the [ ] design alternative

by presenting examples that showed] {

1 |. (RX-1589C (API response without{ —_] design alternative) at 1; RX-

1588C (API response with{ __ | design alternative) at 1; Tr. (Kelly) at 1717:15-1718:21.).

Dr. Kelly and Mr. McCann explained that thef_| Design Alternative implemented on

__ ]

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f ) ]. (Tr. (McCann) at 1421:17-1424:6; Tr. (Kelly) at

1719:18-1722:17; RDX-0004C.0045-46; RPX-0201C (XRE design alternative source code);

RPX-0202C (same). Specifically, | |

[ |. (Tr. (Kelly) at 1719:18-1722:17;

RDX-0004C.0045-46; RX-1589C (example API response) at 1.). As a result, there is no
highlighting. (Tr. (McCann) at 1421:3-1422:9; Tr. (Kelly) at 1720:4-16.).

Rovi’s own expert, Mr. Williams, confirmed that both Design Alternatives eliminate

highlighting in X1 search results. (Tr. (Williams) at 365:9-367:13 (“I’m going to enter some

- searches here with overloaded keys. I will enter 3, 4,7. And the distinction that used to exist
between the white and the light blue coloration, these are light blue and these are all white, we no
longer have the letters that correspond to the overloaded keys highlighted with the light blue. Pll
do another search. 5, 3, 3. So that’s an example of no highlighting.”); see also CX-1128C
(video of Mr. Williams entering searches with overloaded keys after the redesigns) at 0:30-1:16;
CX-1045C (screenshots taken by Mr. Williams after the redesigns) at 1-2.).

Dr. Kelly testified that because Comcast’s search functionality is based in the cloud,
these Design Alternatives work regardless of the STB model (or other client device) being used.
(Tr. (Kelly) at 1721:10-24 (“Q. Was there any difference in the operation of the different set-top
boxes with respect to these redesigns? .... A. No, no. This -- all of this happens in the cloud.
The set-top boxes would all behave the same way when it receives these -- these results to
display.”).). Dr. Kelly also explained that they operate independently of each other, and turning
on either “will have the same effect of removing all of the highlighting.” (Id. at 1722:10-17; see
also RX-0547C (screenshots from a display attached to a model RNGISON STB) at 9 (showing

no character highlighting after redesigns); RDX-0004C.0043-46.).

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Rovi bore the burden of proving that the Design Alternatives infringe if it sought a
remedy that would encompass them. However, Rovi made no attempt to do so. See Certain
Elec. Digital Media Devices & Components Thereof, Inv. No. 337-TA-796, Initial Determination
at 163, 233-34, 310, 383-84 (Oct. 24, 2012) (“Electronic Digital Media Devices’’) (finding that
complainant did not address the design alternatives and thus “failed to prove by a preponderance
of the evidence” that the design alternatives infringe). Rather than attempting to prove that the
Design Alternatives do not infringe, Rovi instead sought to exclude evidence of them entirely.
(See Motion Docket No.: 1103-037 (Sept. 7, 2018); Order No. 42 at 7-8 (Oct. 15, 2018).). That
motion was denied without prejudice because, inter alia, Rovi “had notice of Comcast’s
alternative designs as early as June 2018” and Rovi’s expert “had an opportunity to inspect,
observe testing, and discussed Comcast’s alternative designs in his expert rebuttal report.”
(Order No. 42 at 9.).

In addition to failing to meet its burden of proof with respect to Comcast’s Design
Alternatives, Rovi also waived its opportunity to do so by failing to address them in its Pre-
Hearing or Initial Post-Hearing Briefs. (See GR.72, 10.1; see also n.38, supra.). Furthermore,
as explained above, Comcast’s expert and fact witness provided clear and convincing testimony
that the Design Alternatives do not practice the “highlighting” limitation recited in claims | and
9 of the ’011 patent, which Mr. Williams confirmed.

Therefore, the Design Alternatives will be carved out of any remedy in this case. See,

e.g., GPS Chips Associated Software and Sys. and Prods. Containing Same, Inv. No. 337-TA-

596, Order No. 34 at 4 (Feb. 25, 2008).

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g) 1[f]/9[f]: “ordering [order on the display device] the displayed
items in accordance with one or more given criteria”

Dr. Bovik testified that the Accused 011 Products, operating in the X1 System, meet the
ordering limitations by displaying items in accordance with a formula used to compute a value

called | a . | (Tr. (Bovik) at 597:25-598:24; RX-0541C (Comcast Source Code) at

COMC_SDNY9278_SC000093; CDX-0008C.0095-96.). Dr. Kelly did not dispute that the
Accused 011 Products, operating in the X1 System, satisfy these limitations.
Additionally, with regard to claim 1, Comcast did not rebut this evidence in its pre-
. hearing or post-hearing briefing. Thus, any argument on this igsne as to claim 1 is waived under
Ground Rules 7.2 and 10.1. With respect to claim 9, Comcast did not present any
counterargument or evidence in its post-hearing briefing. Accordingly, any argument on this
issue as to claim 9 is waived under Ground Rule 10.1.
For the foregoing reasons, Rovi has proven by a preponderance of the evidence that the
Accused 011 Products meet limitations 1[f] and 9[f] recited in claims 1 and 9 of the ’011 patent.
B. Technical Prong of Domestic Industry
1. Legal Standard

A complainant in a patent-based Section 337 investigation must demonstrate that it is
practicing or exploiting the patents at issue. See 19 U.S.C. § 1337(a)(2) and (3); Certain
Microsphere Adhesives, Process for Making Same, and Prods. Containing Same, Including Self-
Stick Repositionable Notes, Inv. No. 337-TA-366, Comm’n Op. at 8, Pub. No. 2949 (U.S.LT.C.
Jan. 16, 1996) (“Microsphere Adhesives”). “In order to satisfy the technical prong of the
domestic industry requirement, it is sufficient to show that the domestic industry practices any

claim of that patent, not necessarily an asserted claim of that patent.” Certain Ammonium

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Octamolybdate Isomers (“Certain Isomers’’), Inv. No. 337-TA-477, Comm’n Op. at 55
(U.S.LT.C. Jan. 5, 2004).

The test for claim coverage for purposes of the technical prong of the domestic industry
requirement is the same as that for infringement. Certain Doxorubicin and Preparations
Containing Same, Inv. No. 337-TA-300, Initial Determination at 109, 1990 WL 710463
(U.S.LT.C. May 21, 1990), aff'd, Views of the Commission at 22 (October 31, 1990)
(“Doxorubicin”). “First, the claims of the patent are construed. Second, the complainant’s
article or process is examined to determine whether it falls within the scope of the claims.” Jd. ;
The technical prong of the domestic industry can be satisfied either literally or under the doctrine
of equivalents. Certain Dynamic Sequential Gradient Devices and Component Parts Thereof,
Inv. No. 337-TA-335, Initial Determination at 44, Pub. No. 2575 (U.S.LT.C. Nov. 1992).

“TT]o satisfy the technical prong with regard to a method claim, it must be shown the
method is in fact practiced by someone.” Certain Elec. Devices, Including Mobile Phones and
Tablet Computs., and Components Thereof, Inv. No. 337-TA-847, 2013 WL 5822559, at *131

n.33 (U.S.LT.C. Sept. 23, 2013) (“Electronic Devices’).

2. Technical DI Overview

Rovi asserted that two (2) of its products, the Veveo AS&R and Rovi’s Next-Gen
Platform (“011 DI Products”), practice claims 1 and 9 of the 01 1 patent. (CPBr. at 52; CBr. at
32.). Veveo AS&R is licensed to a, (Tr. (Koenig) at 435:21-
438:2.). As discussed in more detail below, Rovi has proven by a preponderance of the evidence
that Veveo AS&R practices claim 9 but not claim 1. The former (system claim 9) is drawn to
capabilities possessed by Veveo AS&R, whereas the latter (method claim 1) requires actual

performance of the recited steps. The Private Parties agreed that the latter has not occurred.

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Additionally, Rovi has proven by a preponderance of the evidence that its Next-Gen DI product
(pertaining to a domestic industry in the process of being established) practices claims | and 9 of
the ’011 patent.

3. Rovi’s Veveo AS&R DI Product Practices Claim 9 and Its Next-Gen
DI Product Practices Claims 1 and 9

a) Veveo AS&R Does Not Practice Claim 1 (Method)

Claim 1 of the 011 patent is a method claim. (JX-0001 at 8:40-9:13.). To satisfy the
technical prong of a method claim, each step of the claimed method must be performed by the
alleged DI product. See Elec. Devices, 2013 WL 5822559, at *131 n.33; see also cf. Lucent ©
Techs., Inc., 580 F.3d at 1317 (method claim is infringed only if each step of the claimed method
is performed).

Rovi conceded that Altice does not implement the overloaded key search feature.
Specifically, Mr. Koenig, Rovi’s Vice President of Business Development, confirmed not only
that Altice’s “end customers” do not use the overloaded key search as required by the claim 1 of.
the ’011 patent, but also that the Altice “user interface and the remote controls are not
implementing the number search at this time.” (Tr. Koenig) at 436:24-437:9 (“Q. | With the
Altice acquisition, do you know whether the number search feature is still utilized by -- by
customers? A. The end customers, the user interface and the remote controls are not
implementing the number search at this time, to the best of our knowledge.”).).

Rovi contended that the technical prong of the DI requirement is met nevertheless

because Veveo AS&R code| _

| despite the fact that Altice does not

implement the claimed feature and lacks a user interface or remote control for doing so. (CBr. at

35; Tr. (Koenig) at 437:12-21.). Even if, arguendo, this is the case, and Veveo would not have

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to do “anything if Altice decided to permit their customers to| }

| — as Mr. Koenig stated (Tr. (Koenig) at 437:22-438:2), itis not sufficient for purposes.
of infringement for the device to be capable of performing the overloaded key search without
actually performing it. See Elec. Devices, 2013 WL 5822559, at *131 n.33; see also cf, Lucent
Techs., Inc., 580 F.3d at 1317: NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1318 (Fed.
Cir. 2005), abrogated on other grounds, IRIS Corp. v. Japan Airlines Corp., 769 F.3d 1359,
1361 n. 1 (Fed.Cir.2014) (“A method or process consists of one or more operative steps, and,
accordingly, ‘[i]t is well established that a patent for a method or process is not infringed unless

399

all steps or stages of the claimed process are utilized.’””) (citation omitted).
Because Veveo AS&R does not perform every step of the method claim, Rovi’s

infringement contention and argument fails as a matter of law.

b) Veveo AS&R Practices Claim 9 (System)

Claim 9 of the ’011 patent is a system claim, which does not require the performance of
any method steps. (JX-0001 at 9:37-10:15.). See, e.g., NTP, Inc., 418 F.3d at 1318 (“[T]he use
of a process necessarily involves doing or performing each of the steps recited. This is unlike
use of a system as a whole... .”). Thus, as discussed below, the fact that Veveo AS&R does not
actively perform every limitation of claim 9 does not thwart Rovi’s argument that Veveo AS&R
practices claim 9 for purposes of the technical prong of the domestic industry requirement.

Based upon the testing that Mr. Williams conducted, the simulation of the Veveo AS&R

code[ | that Dr. Bovik reviewed, and Mr. Koenig’s testimony that the AS&R

code [ I, Rovi argued that it satisfied the technical prong of DI requirement for

claim 9 notwithstanding that Altice does not implement the overloaded key searching feature.

(CBr. at 35; Tr. (Koenig) at 435:21-438:2; Tr. (Bovik) at 608:8-609:11.). Rovi is correct. See

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Finjan, Ltd. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) (noting that “to
infringe a claim that recites capability and not actual operation, an accused device ‘need only be
capable of operating’ in the described mode,” and that “‘an accused device may be found to
infringe if it is reasonably capable of satisfying the claim limitations, even though it may also be
capable of noninfringing modes of operation’”’) (quoting Intel Corp. v. Int’l Trade Comm’n, 946
F.2d 821, 832 (Fed. Cir. 1991); Hillgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed.
Cir. 2001)).

Claim 9 is directed to a computer-readable medium with a specific capability:

“instructions for causing a computer system to” perform several functions. (JX-0001 at 9:37-

10:15.). The relevant computer-readable medium here appears to be| |

| . |. The critical issue for purposes of the technical prong analysis is whether the

Veveo AS&R code contains instructions for executing the recited functions so that the Altice
product is capable of performing them. See, e.g., F’ injan, 626 F.3d at 1204.

Rovi presented unrebutted evidence that the Veveo AS&R code possesses the capability
(in the form of computer code instructions) to execute all of the functions recited in claim 9. (Tr.

(Bovik) at 669: 14-671:5; Tr. (Koenig) at 436:23-438:2.). Dr. Bovik explained in detail that for

indexing, Veveo AS&R can| |

|. (Tr. (Bovik) at 620:22-621:7;

CDX-0008C.0124, 126.). He also explained that subsequent to indexing, Veveo AS&R can
| |
| | |

7 i. (See Tr. (Bovik) at 661:6-665:9; CDX-0008C.0133-35.).

Veveo AS&R can then!

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L

|, as
shown in Figure 14 below. (Tr. (Bovik) at 665:10-668:10; Fig. 14 (showing| |

a | respectively.).
Dr. Bovik testified that Veveo AS&R can also} |

) ‘|. (Tr. (Bovik) at 668:17-22; CDX-0008C.0154-55.).

Figure 14: Screenshot of the Veveo AS&R Highlighting Search Results Based on
Unresolved Keystroke Search Queries

(CX-1048C.0011; see also CDX-0008C.0145-151.).

Comeast did not rebut the evidence that confirmed Veveo AS&R’s capabilities. Instead,
Comcast focused on the overloaded key search capability Altice chose not to implement.
Relying upon Mr. Koenig’s testimony that “[t]he end customers, the user interface and the
remote controls are not implementing the number search at this time,” and that at least one of the

remote controls associated with the Altice product does not have overloaded keys, Comcast

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(

argued that Veveo AS&R does not practice claim 9 because the Altice product does not
implement, and its customers do not actually use, the searching feature. (RRBr. at 46-47; Tr.
(Koenig) at 436:24-437:9, 482:18-483:5.).

However, as explained above, claim 9 is a system claim directed to the capabilities of a
computer-readable medium, not a method claim that requires a particular recitation of steps.

The Federal Circuit’s Finjan decision explicitly contrasted method and system claims,
finding that “Finjan’s non-method claims describe capabilities without requiring that any
software components be ‘active’ or ‘enabled.’” F injan, 626 F.3d at 1204-05. Specivically, the

_ Court found that Finjan’s “system claims recite software components with specific purposes: ‘a

logical engine for preventing execution[,]’ . . . “a communications engine for obtaining a
Downloadable[,]’ . ... or ‘a linking engine . . . for forming a sandbox package[.]’” Jd. at 1205.
Similarly, system claim 9 of the 011 patent recites “a computer-readable medium comprising
instructions for” accomplishing specific purposes: “index[ing] said items”; “determin[ing]
which letters and numbers”; “receiv[ing] from a user a search query”; “identif[ing] and
display[ing] on a display device”; “highlighting the letters and numbers”; and “ordering the
displayed items[.]” (JX-0001 at 9:37-10:15.). However, there is no language anywhere in claim
9 that requires “a computer-readable medium” that actively performs these functions. Therefore
the holding in Finjan is germane and supports Rovi’s DI contention.

By contrast, Comcast’s reliance on Microsoft Corp. v. International Trade Commission,
731 F.3d 1354 (Fed. Cir. 2013), is misplaced. (RRBr. at 46-47.). _Comeast argued that
“Microsoft stands for the proposition that the DI technical prong requires an ‘actual article’ that

implements the patent.” (Id. at49.). Comcast’s interpretation of Microsoft is obviously and

without doubt wrong. As Rovi pointed out, in Microsoft, the complainant failed to produce any

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evidence showing that the practicing source code in question was actually implemented into the
alleged domestic industry product. (CBr. at 35.).

Although [Microsoft’s expert] purported to identify “client applications” in an
example application that Microsoft provides to third-party phone manufacturers,
Microsoft failed to show that any such “client applications” are actually
implemented on any third-party mobile device. According to the ALJ, because
Microsoft did not point to evidence that its expert examined client applications in
fact running on third-party mobile phones or confirmed how they operated,
Microsoft failed to show that there is a domestic industry product that actually
practices the [asserted] patent.

ek

[T]he evidence he cited in support of his opinion that Windows Mobile phones
practice the “client applications” limitation is the source code that Microsoft
provides to mobile-phone manufacturers, rather than specific.code actually
installed and run on a particular third-party mobile device.. Moreover, Microsoft
provided no evidence that “Windows Mobile” phones always contain the entirety
of Windows Mobile, rather than only portions.

Id. at 1361 (emphases added) (internal citation omitted).
That does not appear to be the case here. Dr. Bovik testified that he reviewed the Veveo
AS&R code on the Altice servers by means of a simulation’on a laptop computer.

Q. And what did you do to review AS&R?

A. Well,I operated the ASR system using a simulation. In that simulation, you
had to interact using a regular keyboard. |

|.

Q. When you said you used a simulation in a keyboard, was that on a computer?

A. That’s correct, the keyboard, laptop.
(Tr. (Bovik) at 608:8-17.).

That the Veveo AS&R code Dr. Bovik tested was not from an actual Altice product is
not, as Comcast argued, analogous to the evidentiary deficiency in Microsoft, where the code

that Microsoft’s expert analyzed was an “example application” sent to third-party manufacturers.

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Microsoft, 731 F.3d 1361. Here, the Veveo AS&R code Dr. Bovik accessed through an on-
screen interface using a laptop keypad was present in the Altice servers. (Tr. (Koenig) at
436:23-438:2.). Thus, the holding in Microsoft is inapposite.

For the reasons discussed above, Rovi has proven by a preponderance of the evidence
that the activities associated with the licensing of Veveo AS&R to Altice satisfies the technical
prong of the DI requirement.

c) Rovi’s Next-Gen Platform Practices Claims 1 (Method) and 9
(System)

Relying on Mr. Williams’ and Dr. Bovik’s examination of Rovi’s Next-Gen Platform
(“Next-Gen”), and testimony from Ms. Gaeta regarding the development of Next-Gen, Rovi
contended that this DI product practices claims 1 and 9 of the ’011 patent. (CBr. at 32-33.).
Specifically, Dr. Bovik testified that Next-Gen contains software performs searches for program
» content through an IPG using unresolved overloaded keys in accordance with the limitations of
the asserted claims, which Dr. Kelly did not dispute. (See, e.g., Tr. (Bovik) at 616:24-617:15,
621:17-622:20, 623:3-10, 661:6-668:10, 668:23-671:5.).

In rebuttal, Dr. Kelly only asserted that Next-Gen cannot satisfy the technical prong

because it does not|

7 7 — : |. (Tr. (Kelly) at 1788:1-19.). Based on this understanding, Dr. Kelly did not
analyze Next-Gen’s code or compare it with the elements of the asserted claims. (/d. at 1788:20-

24).

>3 Text in brackets that is not italicized refers to: (i) language recited in claim 9 that differs slightly from
corresponding language recited in claim 1, e.g., “method” (claim 1)/“system” (claim 9), “indexing” (claim
1)/index” (claim 9); or (ii) language in claim 9 that is not recited in claim 1 (see [le] and [9e]). Text in
brackets that is italicized refers to language in claim 1 that is not recited in claim 9 (see [1e} and [9e]).

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Contrary to Dr. Kelly’s view of the law, Section 337 covers patented articles that either
exist or are “in the process of being established.” 19 U.S.C. § 1337(a)(2). The legislative history
of Section 337(a)(2) that describes the purpose of the “in the process of establishing” language of
the statute.

[T]here may be situations where, under the [‘in the process of being established’]

definition an industry does not ‘exist’ but a party should be entitled to bring a 337

action. For example, if a new product is developed in the United States and is

protected by a U.S. intellectual property right, the owner of the intellectual

property right would not have to wait to bring an action under section 337 until

he can satisfy the definition of industry if he can demonstrate that he is taking
the necessary steps to establish such an industry in the United States.

H.R. Rep. 100-40, Pt. 1 at 157 (Apr. 6, 1987) (emphases added).

Accordingly, “there is no rigid rule that the Commission must consider only .. . the
investments in a domestic industry at the time of the filing of a complaint.” Certain Digital
Cameras, Software, & Components Thereof, Inv. No. 337-TA-1059, Order No. 52, at 3-4 (Feb.
20, 2018). Rather, a two-part test controls whether “an industry in the process of being
established.” Certain Stringed Musical Instruments & Components Thereof, Inv. No. 337-TA-
586, Comm’n Op. at 13 (May 16, 2008) (“Stringed Instruments”). The Commission has

\
determined that an industry is “in the process of being established” if: (1) the patent owner “can
demonstrate that he is taking the necessary tangible steps to establish such an industry in the
United States”; and (2) there isa “significant likelihood that the industry requirement will be
satisfied in the future.” Id. (quoting S. Rep. 100-71 at 130, H. Rep. 100-40 at 157). Both prongs
can be analyzed not only at the time the complaint is filed, but also at the close of fact discovery.

See Certain Digital Cameras, Software, & Components Thereof, Inv. No. 337-TA-1059, Initial

Determination at 45-48 (Aug. 17, 2018) (“Digital Cameras”).

At the close of fact discovery, Rovi adduced evidence that |

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—_ | |

| ]. (Tr. (Gaeta) at 249:15-250:21; CX-0776C (Hydra-7615).). Dr. Bovik also

provided testimony that he observed the| |

| 2 ]. (Tr. (Bovik) at 609:12-

616:23; see also JX-0096C (Denney Dep. Tr.) at 73:13-75:17.). Comcast did not dispute these
facts.

For the reasons discussed below, Rovi has met its burden and demonstrated by a
preponderance of the evidence that Next-Gen practices claims 1 and 9 of the ’011 patent. Thus,
Rovi has satisfied the technical prong of the DI requirement.

i. Preambles [1, 9]: “A method of [system for] processing
| unresolved keystroke entries by a user from a keypad with
overloaded keys in which a given key is in fixed association
with a number and at least one alphabetic character, said
unresolved keystroke entries being directed at identifying an
item from a set of items, each of said items being associated
with information describing the item comprising one or more
words, said method [system] comprising” .
Dr. Bovik provided persuasive, unrebutted testimony that Next-Gen operates in the
environment recited in the preambles of claims 1 and 9 by accepting and processing unresolved

overloaded keystrokes directed at identifying a television program from a set of programs, with

each program associated with a program title, which Comcast did not dispute. (Tr. (Bovik) at

661:21-662:4; CX-1034C.0002 (Screenshot).). Next-Gen| ) |

[ |, as shown below on the right of

Figure 15.

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Figure 15: Screenshot of Next-Gen’s iy

(CX-1034C.0002 (Screenshot of AME on the right).).

‘For claim 9, Dr. Bovik described the locations of media containing instructions for

overloaded key searching for Next-Gen, including the head-end servers. (Tr. (Bovik) at 669:14-

671:5.).

Because Comcast did not rebut this evidence in its pre-hearing or post-hearing briefing,

any argument on this issue is waived under Ground Rules 7.2 and 10.1.

Accordingly, Rovi has proven by a preponderance of the evidence that Next-Gen

practices the preambles recited in claims 1 and 9 of the ’011 patent.

ii.

1[a]/9[a]: “indexing [index] said items by associating subsets
of said items with corresponding strings of one or more =“
unresolved keystrokes for overloaded keys so that the subsets
of items are directly mapped to the corresponding strings of
unresolved keystrokes for various search query prefix
substrings”; 1[bj/9[b]: “for at least one subset of items,
determining [determine] which letters and numbers present in
the information associated with and describing the indexed
items of said subset caused said items to be associated with the
strings of one or more unresolved keystrokes that are directly

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mapped to said subset”

Dr. Bovik provided compelling, unrebutted testimony that Next-Gen uses C]

_I

we en ne

f

+

as recited in the indexing limitation. (Tr. (Bovik) at 621:17-622:20; CDX-0008C.0127.). Dr.

Bovik also explained that Next-Gen} 7

|. (Tr. (Bovik) at 623:8-14; CDX-

0008C.0130.).

Because Comcast failed to rebut this evidence in its pre-hearing or post-hearing briefing

any argument on this issue is waived under Ground Rules 7.2 and 10.1.

For the foregoing reasons, Rovi has proven by a preponderance of the evidence that

Next-Gen meets limitations 1[a]/9[a] and 1[b]/9[b] recited in claims 1 and 9 of the ’011 patent.

iii.

1f[cj/9[c]: subsequent to said indexing, receiving [receive]
from a user a search query for desired items composed of
unresolved keystrokes, said search query comprising a prefix
substring for at least one word in information associated with
the desired item”; 1[d]/9d]: “in response to each unresolved —
keystroke, identifying [identify] and displaying [display on a
display device at least one of/ the subsets of items, and
information associated therewith, that are associated with the
strings of one or more unresolved keystrokes received from the
user based on the direct mapping of strings of unresolved

. keystrokes to subsets of items”

Dr. Bovik testified that subsequent to indexing, Next-Gen can receive unresolved

keystroke search queries in the form of a numerical prefix substring for a word in a program title,

and then identify and display subsets of program titles than can be selected to access the program

content, as shown in Figure 16 below. (Tr. (Bovik) at 661:6-663:19, 664:16-665:9; CX-

1034C.0002-5 (Screenshots of search results for| |

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as)

Figure 16: Screenshot of Next-Gen’s Display of Search Results

(CX-1034C.0004.).

Comcast did not rebut this evidence in its pre-hearing or post-hearing briefing. Thus, any
argument on this issue is waived under Ground Rules 7.2 and 10.1.

Accordingly, Rovi has proven by a preponderance of the evidence that Next-Gen meets
limitations 1[{c]/9[c] and 1[d]/9[d] of claims 1 and 9 of the ’011 patent.

iv. I fej/{9e]: “in response to each unresolved keystroke, as the
identified items are displayed, highlighting [highlight on the
display device/ the letters and numbers present in the one or
more words in said information describing the identified items
that were determined to have caused the displayed items to be
associated with the [strings of] unresolved keystrokes [that are
directly mapped to said items] [received] so as to illustrate to
the user how the [strings of] unresolved keystrokes [that are
directly mapped to said items/ entered match the information
associated with the displayed items”

Evidence adduced in this Investigation demonstrates that Next-Gen incrementally yields

~ the identified program results, highlighting the letters and numbers in the program title that were

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A

determined to have caused the displayed results to be associated with the string of overloaded
keystroke entries that mapped to the program metadata. (Tr. (Bovik) at 665:10-18, 666:15-
668:10; CX-1034C.0002-5, 8 (Next-Gen Screenshots); CX-0972C.0014 (Next-Gen code); CDX
0008C.0148-51.).

Comcast did not rebut this evidence in its pre-hearing or post-hearing briefing. Thus, any
argument on this issue is waived under Ground Rules 7.2 and 10.1.

For these reasons, Rovi has proven by a preponderance of the evidence that Next-Gen |
meets limitations 1[e] and 9[e] recited in claims 1 and 9 of the ’011 patent.

v. 1f/9[f]: “ordering [order on the display device] the

displayed items in accordance with one or more given criteria”

Dr. Bovik provided persuasive testimony that Next-Gen a ee |

“|. (Tr. (Bovik) at 668:23-669:13;

CX-0972C.0014 (Next-Gen code); CDX 0008C.0155.).
| Comcast did not rebut this evidence in its pre-hearing or post-hearing briefing. Thus, any
argument on this issue is waived under Ground Rules 7.2 and 10.1.

Accordingly, Rovi has proven by a preponderance of the evidence that Next-Gen meets
limitations 1[f] and 9[f] recited in claims 1 and 9 of the °O11 patent.

C. Invalidity
1. Legal Standard: Obviousness

Under 35 U.S.C. § 103(a), a patent is valid unless “the differences between the subject
matter sought to be patented and the prior art are such that the subject-matter as a whole would

have been obvious at the time the invention was made” to a person having ordinary skill in the

art. 35 U.S.C. § 103(a). The ultimate question of obviousness is a question of law, but “it is well

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understood that there are factual issues underlying the ultimate obviousness decision.”
Richardson-Vicks, 122 F.3d 1476, 1479 (Fed. Cir. 1997) (citing Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 17 (1966)). |

After claim construction, “[t]he second step in an obviousness inquiry is to determine
whether the claimed invention would have been obvious as a legal matter, based on underlying
factual inquiries including: (1) the scope and content of the prior art, (2) the level of ordinary
skill in the art, (3) the differences between the claimed invention and the prior art, and (4)
secondary considerations of non-obviousness.” Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc.,
183 F.3d 1347, 1354 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17). The existence of
secondary considerations of non-obviousness does not control the obviousness determination, a
court must consider “the totality of the evidence” before reaching a decision on obviousness.
Richardson-Vicks, 122 F.3d at 1483.

- The Supreme Court clarified the obviousness inquiry in KSR Int’l,Co. v. Teleflex Inc.,

550 U.S. 389 (2007). The Supreme Court said:

When a work is available in one field of endeavor, design incentives and other

market forces can prompt variations of it, either in the same field or a different one.

If a person of ordinary skill can implement a predictable variation, § 103 likely bars

its patentability. For the same reason, if a technique has been used to improve one

device, and a person of ordinary skill in the art would recognize that it would

improve similar devices in the same way, using the technique is obvious unless its

actual application is beyond his or her skill. Sakraida and Anderson’s-Black Rock

are illustrative-a court must ask whether the improvement is more than the
predictable use of prior art elements according to their established functions.

Following these principles may be more difficult in other cases than it is here
because the claimed subject matter may involve more than the simple substitution
of one known element for another or the mere application of a known technique to
a piece of prior art ready for the improvement. Often, it will be necessary for a
court to look to interrelated teachings of multiple patents; the effects of demands
known to the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order to

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determine whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue. To facilitate review, this analysis should
be made explicit.

* ok O*
The obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by overemphasis on the importance
of published articles and the explicit content of issued patents. The diversity of
inventive pursuits and of modern technology counsels against limiting the analysis
in this way. In many fields it may be that there is little discussion of obvious
techniques or combinations, and it often may be the case that market demand, rather
than scientific literature, will drive. design trends. Granting patent protection to
advances that would occur in the ordinary course without real innovation retards
progress and may, in the case of patents combining previously known elements,
deprive prior inventions of their value or utility.

KSR, 550 U.S. at 417-19.

The Federal Circuit has since held that when a patent challenger contends that a patent is
invalid for obviousness based on a combination of several prior art references, “the burden falls
“on the patent challenger to show by clear and convincing evidence that a person of ordinary skill
in the art would have had reason to attempt to make the composition or device, or carry out the

claimed process, and would have had a reasonable expectation of success in doing so.”
PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007) (citations
omitted).
The TSM* test, flexibly applied, merely assures that the obviousness test proceeds
on the basis of evidence--teachings, suggestions (a tellingly broad term), or
motivations (an equally broad term)--that arise before the time of invention as the
statute requires. As KSR requires, those teachings, suggestions, or motivations

need not always be written references but may be found within the knowledge and
creativity of ordinarily skilled artisans.

Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed..Cir. 2008).

>4 TSM is an acronym that stands for teaching, suggestion, motivation.

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2. The Combination of Gross (RX-0180) and Smith (RX-0174) Does Not
Render Obvious Claims 1 and 9 of the ’011 Patent

a) Invalidity Overview

Comcast’s expert, Dr. Kelly, testified that it would have been obvious at the time of the
alleged invention to combine the incremental prefix searching disclosed in Gross with Smith’s
teachings regarding unresolved overloaded keystrokes and an inverted index, and that a person of
ordinary skill in the art would have expected that combination to succeed. (Tr. (Kelly) at
1731:25-1732:22, 1736:14-23.).

The main dispute is whether the prior art references disclose the term “directly
mapped”*> recited in the “indexing,” “determining,” “identifying and displaying,” and
“highlighting” steps of claims 1 and 9 of the 011 patent.°° (CRBr. at 4-8.). For the reasons
discussed below, Gross in combination with Smith teaches all the limitations recited in claims 1
and 9. However, Comcast failed to demonstrate that a person of ordinary skill in the art would
have had a motivation to combine the references. See, e.g., Dome Patent L.P. v. Lee, 799 F.3d
1372, 1380 (Fed.Cir.2015) (noting that even “[i]f all elements of a claim are found in the prior
art, as is the case here, the factfinder must further consider the factual questions of whether a

person of ordinary skill in the art would be motivated to combine those references, and whether

55 The term “directly mapped” was construed to mean “each alphanumeric character in a prefix substring
associated with an item is matched with its corresponding numeric key equivalent on an overloaded
keypad.” (Markman Order, App. A at 10-14.). The Parties’ agreed construction for the term “prefix
substring,” as “‘a variable length string of characters that contains fewer than all the characters making up
the word,” was also adopted. (/d., App. A at 1.).

56 In its Pre-Hearing Brief, Rovi argued that Gross in combination with Smith does not render claims 1
and 9 obvious because, inter alia, Gross does not disclose unresolved overloaded keys. (CPBr. at 55.).
Rovi failed to discuss this argument with regard to any of the claim limitations in its post-hearing
briefing. (CRBr. at 4.). Thus, any argument on this issue as to all claim limitations is waived under
Ground Rule 10.1.

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in making that combination, a person of ordinary skill would have had a reasonable expectation
of success”). Thus, claims | and 9 of the 011 patent are not invalid in view Gross and Smith.
b) The Combination of Gross and Smith Teaches “Directly
Mapped” as Recited in the “Indexing” 1[a]/9[a],
“Determining” 1[b]/9[b], “Identifying and Displaying”

1[d]/9[d], and “Highlighting” 1[e]/9[e] Limitations of Claims 1
and 9

As an initial matter, Rovi asserted that during Dr. Kelly’s cross-examination, he
“unambiguously testified that he does not rely on Gross (the primary reference) to satisfy the
‘directly mapped’ claim requirement.” (CRBr. at 5 (emphasis in original).). Rovi also pointed
out that during his deposition, Dr. Kelly “ma[de] no claim that Gross provides the direct
mapping of the unresolved keystrokes and to the various search query prefix substrings.” (Id.
(citing Tr. (Kelly) at 1806:8-23, 1792:18-1793:9).). Rovi thus concluded that the record is. -
“devoid of any evidence . . . that Gross discloses the ‘directly mapped’ limitation[.]” (Ud. |
(emphasis in original).). Rovi’s arguments are unavailing. For the reasons discussed below, as
Dr. Kelly consistent testified, the “directly mapped” limitation is disclosed by the combination of
Gross and Smith.

| With regard to the Smith reference, Rovi contended that Comcast’s sole reliance on this
reference concerns the “directly mapped” limitation recited in the asserted claims. (d. at 6.).
Specifically, Rovi argued that because Dr. Kelly “admitted that Smith does not disclose prefix

339

substrings under the parties’ agreed construction of ‘prefix substring, the combination of Gross
and Smith cannot meet the construction for this claim term, as it requires “each alphanumeric
character in a prefix substring associated with an item is matched with its corresponding

numeric key equivalent on an overloaded keypad.” (Ud. (emphasis in original) (citing Tr. (Kelly)

at J 793:24-1794:3; Markman Order, App. A at 10-14).). However, as discussed below, Rovi -

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cannot evade obviousness in view of the combination by attacking the references individually.
See, e.g., Inre Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the rejection is based upon the
teachings of a combination of references.”).

As Comcast asserted, Dr. Kelly testified, consistent with his expert report and deposition
testimony, that the “directly mapped” limitation is disclosed by the combination of references.
(Tr. (Kelly) at 1805:4-17; see also id. at 1739: 16-1740: 15, 1745:15-1746:19.). In particular, Dr.
Kelly opined that the prefix substring part of “directly mapped” is taught by Gross and the
overloaded keys aspect of “directly mapped” is taught by Smith. (Tr. Kelly) at 1805:4-17 (“Q.
Where do you look for the prefix substring part of that? A. The [p]refix substring comes from
Gross. Q. Where do you look for the overloaded keys? A. To the secondary reference, either
Smith or King.”); RX-0180 (Gross) at 7:26-37; RX-0174 (Smith) at Abstract, 1:20-30, 5:7-9,
Fig. 5B.). | |

Thus, Dr. Kelly established that the combination of Gross and Smith teaches every aspect
of the “directly mapped” term. For the same reasons, the combination of Gross and Smith meets
the “directly mapped” requirements of the “determining,” “<dentifying and displaying,” and
“highlighting” limitations.

c) The Combination of Gross and Smith Teaches the Remaining
Limitations of Claims 1 and 9°7

i. Preambles [1, 9]: “A method of [system for] processing
unresolved keystroke entries by a user from a keypad with
overloaded keys in which a given key is in fixed association

57 Text in brackets that is not italicized refers to: (i) language recited in claim 9 that differs slightly from
corresponding language recited in claim 1, e.g., “method” (claim 1)/“system” (claim 9), “indexing” (claim
1)/“‘index” (claim 9); or (ii) language in claim 9 that is not recited in claim 1 (see [le] and [9e]). Text in
brackets that is italicized refers to language in claim | that is not recited in claim 9 (see [le] and [9e]).

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with a number and at least one alphabetic character, said
unresolved keystroke entries being directed at identifying an
item from a set of items, each of said items being associated
with information describing the item comprising one or more
words, said method [system] comprising” -

Comcast provided compelling testimony and evidence that Gross in combination with
Smith discloses the preambles recited in claims 1 and 9, which Rovi did not dispute. (Tr. (Kelly)
at 1739:5-8; RX-0180 at 1:29-31, 3:34-36, 4:9-12, 9:14-18, 11:34-36, 12:39-48, 29:15-18; RX-
0174 at Abstract, 1:20-30, 4:26-31, 5:1-42, Figs. SA-SB.). Gross teaches “incremental or
reactive searching of a variety of search targets,” such as emails or files, in which the items (e.g.,
the emails or files) are associated with information describing them that comprises one or more
words, such as words in the title or subject line of an email. (RX-0180 at 2:9-13, 11:1-7; Tr.
(Kelly) at 1737:13-22.). Smith discloses that the data input interface may “correspond to more
than one alphanumeric character,” as shown below in Figure 17. (Tr. (Kelly) at 1737:13-22,

1744:19-23; RX-0174 at Abstract, 1:20-30, 5:7-9.).

Figure 17: Diagram for Mapping Alphanumeric Information
to Numeric Information

(RX-0174 at Fig. 5B.).
With respect to the preamble of claim 9, which requires “a computer-readable medium

comprising instructions for causing a computer system to” perform the claimed limitations,

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Gross teaches a user terminal with a local search engine, a local index engine, and a browser, and
discloses that servers in the cloud may have search engines, index engines, and web servers, as
shown in Figure 18 below. (Tr. (Kelly) at 1745:22-1746:10.).

Figure 18: Example Computer System Used in Accordance
with One Embodiment

fe
706 BROWSER Va 108
109—~T~e sani APPLICATION 14+ WEB SERVER
7O3~~-—~ LOCAL INDEX TS~ INDEX ENGINE
105 ENGINE
1074... (LOCAL SEARCH 770—~ SEARCH ENGINE
ENGINE

INOEX(es)

CONTENT

DATABASE INOEX
EMAIL

FILES
DATABASES USER TERMINAL

CACHED WES PAGES

(RX-0180 at Fig. 1.).

EMAIL INDEX 104

FILE INDEX =
HISTORY. SNDEX
FAVORITES INDEX 3

Rovi did not present any rebuttal to Comcast’s evidence in its pre-hearing or post-hearing

briefing. Thus, any argument on this issue is waived under Ground Rules 7.2 and 10.1.

For the foregoing reasons, Comcast has met its burden and proven by clear and
convincing evidence that the combination of Gross and Smith discloses the preambles recited in
claims | and 9 of the ’011 patent.

iii. ILfaj/9fa]: “indexing [index] said items by associating subsets
_ of said items with corresponding strings of one or more
unresolved keystrokes for overloaded keys so that the subsets of
items are directly mapped to the corresponding strings of
unresolved keystrokes for various search query prefix
substrings” .

Comcast provided compelling testimony and evidence that Gross in combination with

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Smith discloses the remaining aspects of the “indexing” limitations, which Rovi did not dispute.
(Tr. (Kelly) at 1740:12-15; RX-0180 at 4:63-66, 5:16-23, 6:3-16, 6:57-60, 7:26-32, 12:49-59,
22:47-55; RX-0174 at Abstract, 4:32-36, 4:41-5:62, Figs. 3, 4A-B, 5A-C.). Gross teaches that
the index stores “prefix entries” such as “‘d” or “do” in addition to complete words such as “dog.”
(Tr. (Kelly) at 1739:16-22; RX-0180 at 7:26-32,). Smith teaches an alphanumeric index which
may be used to generate an index for overloaded keys. (Tr. (Kelly) at 1739:16-1740:11; RX-
0174 at Figs. 4A, 5C.). For instance, the word “bar,” which corresponds to one document, and

- “car,” which corresponds to a second document, may be indexed as the overloaded keys “227,” .
which corresponds to both documents, as shown below (in red) in Figure 19. (Tr. (Kelly) at

1739:16-1740:11; RX-0174 at Figs. AA, 5C.).

Figure 19: Illustrations Depicting Three Documents

TERM LOCATION (DOCUMENT) TERM LOCATION (DOCUMENT)
;

3 DOCUMENT 1 3 DOCUMENT 1
BAR DOCUMENT 3

227 DOCUMENTS 14 AND 3
CAR DOCUMENT 1

242672463 DOCUMENT 3
CHAMPAGNE DOCUMENT 3

48367 DOCUMENT 3
ITEMS DOCUMENT 3

736825 DOCUMENTS 1 AND 2
RENTAL DOCUMENTS 1 AND 2 :

737247 : DOCUMENTS 1
REPAIR DOCUMENT 1

84336 DOCUMENT 2
VIDEO DOCUMENT 2
WINE DOCUMENT 3 8463 DOCUMENT 3

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(RX-0174 at Figs. 4A, 5C (annotated).).

Rovi did not rebut this evidence in its pre-hearing or post-hearing briefing. Thus, any
argument on this issue is waived under Ground Rules 7.2 and 10.1.

For these reasons, Comcast has met its burden and proven by clear and convincing
evidence that the combination of Gross and Smith discloses limitations 1[a] and 9[a] recited in
claims | and 9 of the ’011 patent.

iv. 1 [bj/9[{b]: “for at least one subset of items, determining
[determine] which letters and numbers present in the
information associated with and describing the indexed items
of said subset caused said items to be associated with the

strings of one or more unresolved keystrokes that are directly
mapped to said subset”

Comcast adduced persuasive testimony and evidence that Gross in combination with
Smith teaches the remaining aspects of the determining limitations, which Rovi did not dispute.
(Tr. (Kelly) at 1740:16-1741:1; RX-0180 at 3:34-36, 5:16-23, 22:47-55; RX-0174 at Abstract,
1:20-30, 5:1-42, Figs. 4A-B, 5A-C.). Smith teaches grouping entries such as “bar” and “car” to
the overloaded keys “227.” (Tr. (Kelly) at 1740:16-1741:1; RX-0174 at Figs. 4A, SC (Fig. 19,
supra).).

Dr. Kelly explained that this is an example of an inverted index. (Tr. (Kelly) at 1741: 13-
23; see also Tr. (Bovik) at 720:25-721 :6.). Gross also discloses the inclusion of in an index
prefix substrings for words describing items in the index, as described above. (Tr. (Kelly) at
1739:16-22; RX-0180 at 7:26-32.). Thus, Smith’s ambiguous, numeric inverted index with
Gross’s teaching of prefix substrings disclose the remaining aspects of the “determining”
limitation. (Tr. (Kelly) at 1739:16-1741:4.).

Rovi did not present any rebuttal argument to this evidence in its pre-hearing or post-

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hearing briefing. Thus, any argument on this issue is waived under Ground Rules 7.2 and 10.1.
For these reasons, Comcast has met its burden and proven by clear and convincing
evidence that the combination of Gross and Smith discloses limitations 1[b] and 9[b] recited in
claims 1 and 9 of the 011 patent. |
v. 1f[c]/9[c]: subsequent to said indexing, receiving [receive] from

a user a search query for desired items composed of unresolved
keystrokes, said search query comprising a prefix substring for

at least one word in information associated with the desired
item”
Evidence adduced in this Investigation demonstrates that Gross in combination with
Smith discloses these claim limitations, which Rovi did not contest. (Tr. (Kelly) at 1742:8-11;
RX-0180 at 5:16-23, 6:15-29, 6:56-67, 22:56-23:7, 28:15-29, Figs. 2B, 2C; RX-0174 at Abstract,
4:26-31, 5:1-42, Fig. SA.). For example, Gross teaches “receiv[ing] search query character(s)” .
where such search queries are incrementally sent to the server, as shown below in Figure 20.

(Tr. (Kelly) at 1741:24-1742:7; RX-0180 at 28:23-27.).

Figure 20: Example Search Process Using an Index

RECEIVE SEARCH QUERY L028

CHARACTER(s)
LOCATE SEARCH QUERY L048

CHARACTER(s) IN WORD FILE

LOCATE POINTERS IN £068
OCCUR-OFFSETS FILE ;

READ DOCUMENT OCCURRENCE
DATA FROM OCCUR FILE USING (7
POINTERS

2
[PRESENT searcH Resutts |“

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(RX-0180 at Fig. 2B.).

Smith also teaches “receiv[ing] numeric query” as a step in its search process, as shown

Public Version

in Figure 21 below. (Tr. (Kelly) at 1741:24-1742:11.).

Figure 21: Flow Diagram for Providing Search Results

in Response to Numeric Search Query |

START

GENERATE ALPHANUMERIC INDEX 510

:

~

TRANSLATE ALPHANUMERIC TERMS INTO

NUMBERS USING MAPPING INFORMATION 520

ft

GENERATE NUMERIC INDEX

&
ro)

:

RECEIVE NUMERIC QUERY

L

YS Tm) CO)

TYP Try

COMPARE NUMERIC QUERY TO NUMERIC INDEX 550
|
( GENERATE SEARCH RESULTS BASED ON

COMPARISON 560

~ I
(~

___ PROVIDE SEARCH RESULTS TO USER 570
q ;

(RX-0174 at Fig. 5A.).

Rovi did not rebut this evidence in its pre-hearing or post-hearing briefing. Thus, any

<=

argument on this issue is waived under Ground Rules 7.2 and 10.1.

Rovi only contended that Smith does not teach the use of “prefix substrings.” (CPBr. at

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55.). However, as Dr. Kelly convincing testified, Gross discloses prefix substrings. Tr. (Kelly)
at 1739:16-22; RX-0180 (Gross) at 7:26-32; see also Section VII.C.2(c)(ii), supra.).

Accordingly, Comcast has met its burden and proven by clear and convincing evidence
that the combination of Gross and Smith discloses limitations I[c] and 9[c] recited in claims 1
and 9 of the ’011 patent.

vi. Ifdj/9[d]: “in response to each unresolved keystroke,
identifying [identify] and displaying [display on a display
device at least one of] the subsets of items, and information
associated therewith, that are associated with the strings of one
or more unresolved keystrokes received from the user based on

the direct mapping of strings of unresolved keystrokes to
subsets of items”

Comcast presented unrebutted testimony and evidence that Gross in combination with
Smith discloses the remaining aspects of the “identifying and displaying” limitation. (Tr. (Kelly) |
at 1744:7-11; RX-0180 at 4:56-60, 6:57-67, 8:65-66, 10:9-13, 16:20-39, Fig. 2B; RX-0174 at
Abstract, 1:20-30, 4:32-36, 4:41-5:62, Figs. 3, 4A-4B, 5A-5C.). Gross teaches a user interface
with a list area that “lists the search results” and a view area that “displays an item or contents of
an item.” (Tr. (Kelly) at 1742:15-1744:6; RX-0180 at 4:56-60.). For example, Gross discloses a
list of emails, a web search, and a collection of favorites. (Tr. (Kelly) at 1742:15-1744:6; RX-
0180 at Figs. 3C, 3E, 3G.).

- Because Rovi did not rebut this evidence in its pre-hearing or post-hearing briefing, any

argument on this issue is waived under Ground Rules 7.2 and 10.1.>+

For the foregoing reasons, Comcast has met its burden and proven by clear and
convincing evidence that the combination of Gross and Smith discloses limitations 1[d]/9[d] of
claims | and 9 of the ’011 patent.

vii. ILfej/9fe]: “in response to each unresolved keystroke, as the

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identified items are displayed, highlighting /highlight on the
display device] the letters and numbers present in the one or
more words in said information describing the identified items
that were determined to have caused the displayed items to be
associated with the [strings of] unresolved keystrokes [that are
directly mapped to said items] [received] so as to illustrate to

the user how the [strings of] unresolved keystrokes [that are
directly mapped to said items/ entered match the information
associated with the displayed items”

Comcast provided persuasive testimony and evidence that Gross in combination with
Smith discloses the remaining aspects of the highlighting limitations, which Rovi did not dispute.
(Tr. (Kelly) at 1744:24-1745:2; RX-0180 at 15:66-16:4, 17:16-19, Fig. 3C; RX-0174 at Abstract,
1:20-30, 4:32-36, 4:41-5:62, Figs. 3, 4A-B, 5A-C.). Gross teaches that “search terms will be
highlighted.” (Tr. (Kelly) at 1744:12-18; RX-0180 at 15:66-16:4 (“The user can optionally
select a highlight process, wherein search terms will be highlighted in the list pane or area search
results and/or in the view pane or area content display. The highlighting can be in the form of a
different coloring, the use of different fonts, blinking test, and/or the like.”’), Fig. 3C.).

Rovi did not rebut this evidence in its pre-hearing or post-hearing briefing. Thus, any
argument on this issue is waived under Ground Rules 7.2 and 10.1. |

Accordingly, Comcast has met its burden and proven by clear and convincing evidence
that the combination of Gross and Smith discloses limitations |[e] and 9[e] recited in claims 1
and 9 of the ’011 patent.

viii. 1{f]/9[f]: “ordering [order on the display device] the displayed
items in accordance with one or more given criteria”

Compelling evidence adduced in this Investigation, which Rovi did not dispute,
establishes that Gross in combination with Smith discloses these claim limitations. (Tr. (Kelly)

at 1745:3-14; RX-0180 at 6:9-14, 7:38-8:28, 16:5-13.). Gross teaches that “sort files are cached

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sort orders for the documents or files in the fixed index,” such as sorting and ordering emails .
“according to date/time received.” (Tr. (Kelly) at 1745:3-14; RX-0180 at 7:38-40, 7:50-56.).

Rovi did not rebut this evidence in its pre-hearing or post-hearing briefing. Thus, any
argument on this issue is waived under Ground Rules 7.2 and 10.1.

For the reasons discussed above, Comcast has met its burden and proven by clear and
convincing evidence that the combination of Gross and Smith discloses limitations 1[f] and 9[f]
recited in claims ! and 9 of the ’011 patent. |

3. Comcast Has Not Proven by Clear and Convincing Evidence That a

Person of Ordinary Skill in the Art Would Have Been Motivated to,
or Had a Reason to, Combine Gross and Smith

Comcast contended that the motivation to combine Gross with Smith is evidenced by Dr.
Kelly’s testimony because Gross and Smith “are in the same field of art, they are related to
| searching, indexing, presenting information.” (Tr. (Kelly) at 1732:7-9; see also RBr. at 12.).
Contrary to Comcast’s argument, the mere fact that two references are in the same “field
of art” is not a sufficient basis to show that a person of ordinary skill in the art would have been
- motivated to combine the two references to prove obviousness.

When the references are in the same field as that of the applicant’s invention,
knowledge thereof is presumed. However, the test of whether it would have been
obvious to select specific teachings and combine them as did the applicant must
still be met by identification of some suggestion, teaching, or motivation in the prior
art, arising from what the prior art would have taught a person of ordinary skill in
the field of the invention.

Inre Dance, 160 F.3d 1339, 1343 (Fed. Cir. 1998); see also Intelligent Bio-Systems, Inc. v.
Illumina Cambridge, Ltd., 821 F.3d 1359, 1368 (Fed. Cir. 2016) (“When an obviousness
determination relies on the combination of two or more references, there must be some
suggestion or motivation to combine the references.”) (quoting WMS Gaming, Inc. v. Int'l Game

Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999)).

Comcast’s reliance upon Gross’s reference to a “computer networkable wireless phone”

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as one of the possible input “terminals” in order to assert that Mg person of ordinary skill in the

art would have recognized that wireless phones frequently feature overloaded keypads” is also

misguided. (RBr. at 12 (citing RX-0180 at 9:14-21).).

As an initial matter, Comcast appears to have conveniently omitted the term “unresolved”
j

in its description of Gross’s disclosure of wireless phones having overloaded keys in (/d.).

Comcast presented no evidence demonstrating that its “wireless phones” accepts unresolved

overloaded keystrokes using an overloaded keypad, which is the relevant inquiry for the asserted

claims of the ‘O11 patent. Specifically, Gross fails to describe indexing unresolved, overloaded

keystrokes associated with characters in a prefix substring and receiving unresolved overloaded

keystrokes as input search queries. Comcast’s expert, Dr. Kelly, also failed to provide any

credible testimony that Gross discloses, or even suggests, the use of unresolved overloaded

keystrokes. (Tr. (Kelly) at 1792:13-17 (“Q. Now when you looked at Gross, you would agree
_that Gross does not disclose direct mapping under this limitation; right? A. Well, it discloses-- it

doesn’t have overloaded keys.”).).

To the contrary, Rovi’s expert, Dr. Bovik, testified that in 2003, when Gross filed his
patent application, persons of ordinary skill in the art understood that “multi-tap” could be used
to input resolved overloaded keystrokes using overloaded keypads, such as those on “wireless
phones.” (Tr. (Bovik) at 549:10-550:1 (describing pre-existing methods of using overloaded |
keypads, like those on a “‘wireless phone” that do not include unresolved overloaded keys as
claimed).). The’011 patent specification discloses the inconvenience of the “multi-tap” method,
which requires a user to press a particular key multiple times in quick succession in order to

select a desire character. (JX-0001 at 1:46-50.). Without an explicit disclosure of unresolved

overloaded keystrokes in Gross—and the availability in 2003 of, for example, multi-tap to use

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overloaded keypads to input resolved keystrokes——a person of ordinary skill in the art would not
have readily understood Gross’s bare reference to “wireless phones” to disclose the use of
unresolved overloaded keystrokes. (Seé generally Tr. (Bovik) at 549:10-550:1; JX-0001 at 1:46-
50.).

Thus, Gross’s disclosure of a “computer networkable wireless phone” as a possible input
terminal, without more, is not clear and convincing evidence that a person of ordinary skill in the
art would have been motivated to combine Gross with Smith to arrive at the invention claimed in
the ’011 patent.

4. Rovi Failed to Meet Its Burden to Show Secondary Considerations of
Non-Obviousness

Rovi asserted two (2) secondary considerations: long-felt but unsolved need and
copying. (CPBr. at 57-58; CRBr. at 10-13.). Even assuming, arguendo, that Comcast met its
clear and convincing burden of proving that a person of ordinary skill in the art would have been
. motivated to combine the Gross and Smith references, which this ID finds it has not, Rovi has
not met its burden of showing secondary considerations of non-obviousness for the reasons set
forth below. See, e.g., ZUP, LLC, v. Nash Mfg., Inc., 896 F.3d 1365, 1373 (Fed. Cir. 2018).

a) _ Rovi Failed to Show Long-Felt but Unsolved Need

According to Rovi, the ’011 patent fulfilled a long-felt need for searches for television
content using an overloaded keypad that required fewer steps than prior searches that also used
an overloaded keypad. (CRBr. at 11; CPBr. at 57.). Rovi relied upon, inter alia, two (2)
documents that appear to be from two (2) Comcast internal PowerPoint presentations to show

“the importance of searching using overloaded keys and highlighting[.]” (Tr. (Bovik) at 574:11-

575:16; CX-0392C.0003; CX-0395C.0002; CRBr. at 12.).

Uv
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. However, as Comcast noted, and shown below in Figure 22, neither document addresses

the claimed invention of the 011 patent, which is narrower than simply “searching using

overloaded keys and highlighting.” (Fig. 22 ¢ _. |

L |
L , 3 a
[.

Figure 22: Comcast Presentations Regarding| |

|

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(CX-0392C.0003; CX-0395C.0002.).

“For objective evidence [of secondary considerations] to be accorded substantial weight,
its proponent must establish a nexus between the evidence and the merits of the claimed
invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (emphasis added)
(quoting In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)). Thus, Rovi’s broad contention
lacks the necessary nexus to the asserted claims, which Rovi did not rebut. (Tr. (Kelly) at
1752:12-1753:17.).

Moreover, “searching using overloaded keys and highlighting” was known in the prior art
before the ’011 patent. (See, e.g., Tr. (Kelly) at 1727:18-1728:23, 1729:5-15; RDX.0004C.0054-

.56; Tr. (Kotay) at 506:3-21, 507:11-509:5 (discussing the invention of T9 search and text entry
by a company known as Tegic); JX-0001 at 1:50-53, Fig. 1 (acknowledging T9 and overloaded

keypads as prior art); JX-0008 (’011 patent prosecution history) at 17, 154, 424, 477, 519, 567,

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875-77, 882 (amendments narrowing claim scope in view of rejections of attempts to broadly -
claim searching using overloaded keys and highlighting).). Rovi’s evidence does not support the
proposition that any need for such a feature generally was “unsolved” until the 01 1 patent
issued.

Accordingly, Rovi failed to demonstrate that there was a long-felt but unsolved need for
“searching using overloaded keys and highlighting,” or that there was any need for the specific
kind of indexing, searching, determining, highlighting, and display that the ’011 patent claims.

b) Comcast Did Not Copy Veveo’s Search Technology

There is no dispute that Comcast contracted with Veveo to provide number-key search
results for Comcast’s nascent X1 Platform and entered into a software license agreement with
Veveo in 2010. (JX-0034C (Veveo-Comcast Software License Agreement); Tr. (Koenig) at
439: 1-8, 454:13-455:23.). However, Rovi’s own witnesses agreed that Comcast never had
access to or saw any Veveo source code and that Comcast did not copy any Veveo source code.
(Tr. (Koenig) at 468:8-22 (“Q. You didn’t say that Veveo gave Comcast any source code; right?
A. Correct.... Q. Okay. And Rovi doesn’t contend that Comcast copied any Veveo source
code; right? A. Correct.”); Tr. (Bovik) at 696:18-25; JX-0108C (Koenig Dep. Tr. (June 14,
2018)) at 71:6-11; see also JX-0099C (Fennelly Dep. Tr. (June 12, 2018))** at 45:1-8, 48:13-16,

49:11-16 (“Q. So during this project that we’ve been discussing between Veveo and Comcast

°8 At the time of his deposition on June 12, 2018, Mr. Timothy Fennelly was a senior engineer for
production service at Rovi Guides. ((JX-0099C (Fennelly Dep. Tr. (June 12, 2018)) at 19:12-16.). His
role was to “set up, install our production services, manage those -- manage the infrastructure that hosts
those services, assist in the design and architecture of those services, and support our customers who are
using those services.” (Jd. at 19:21-20:4.). Prior to Rovi’s acquisition of Veveo, Mr. Fennelly worked for
Veveo in various positions. (/d. at 20:22-21:10.). Rovi designated Mr. Fennelly as a corporative
representative to provide testimony on certain topics as well as personal testimony regarding Rovi and
Veveo. (/d. at 11:1-15.). ,

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roughly in the time of 2010 to 2013, are you aware of any time when Veveo disclosed any source
code to 15 Comcast? A. Not that I’m aware of.”), 49:22-50:5 (“Q. And similarly, during this
time from roughly 2010 to 2013, are you aware of anyone at Veveo disclosing or discussing any
search algorithms with anyone at Comcast? ... A. Not that I’m aware of.”), 51:20-52:7, 52:10-
11 (Veveo’s primary liaison with Comcast confirming Comcast never saw or discussed any
Veveo source code or search algorithms).).

Comcast’s expert, Dr. Kelly, performed his own analysis of both codebases and found no
evidence that Comcast copied any code from Veveo. |

I believe that there's been no technical evidence of copying. And what did I was I

understand that the cutover from the Veveo Search to| 7 | happened in 2013. And

I have looked at the Veveo code that was provided, produced in discovery, that

Rovi has told us represents the search technology that was in place. And then the
first versions of __| in 2013. I’ve looked -- compared those two.

" (Tr. (Kelly) at 1755:3-24.).

Dr. Kelly also explained that there is no evidence that Comcast decompiled or reverse-
engineered Veveo object code. (/d. at 1757:18-1758:8.). Rovi did not contend in its Pre-Hearing
Brief, Post-Hearing Reply Brief or through any witness that any such reverse-engineering
occurred. (CPBr. at 44-45, 58.). Thus, any argument on this issue is waived under Ground
Rules 7.2 and 10.1.

Moreover, there is ample evidence of a number of key technical differences between the
Comcast and Veveo systems that also clearly demonstrate that Comcast did not copy the Veveo

system. For example, the systems are written in different computer languages: Veveo’s system

|; Comcast’s | system:

i. (Tr.

(Kelly) at 1758:9-13.). They also involve different underpinning search technologies,

architectures, and data structures. Veveo’s system is based on! |

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L |,°° while[ — 7. Ua.

at 1758:14-1759:1, Tr. (Bovik) at 568:9-14, 587:6-24, 620:22-25, 696:12-17; Tr. (Koenig) at

467:21-23 (noting Veveo| _|).). Additionally, the Veveo and Comcast systems

operate differently in several key areas. Veveo uses| |

F

further indicating that Comcast did not replicate or match Veveo.

* Ok O*

—

-——

(Tr. (Kotay) at 528:16-529:9; CX-0347C (email regarding search relevance) at 1.).

The “black box” manner through which Comcast accessed Veveo’s search service also ©
rules out any inference of copying. (Tr. (Kotay) at 517:18-518:16 (“Their software is a complete
black box to us... .Q. What view, if any, did Comcast have into how this black box solution at
Veveo worked? A. Very little.”); Tr. (Kelly) at 1759:2-13 (“[I]t’s a black box. Provide these

inputs, get these outputs. How it happens, what’s the algorithm underneath, you just don’t

59 Dr. Bovik explained that| ]

__| (ir Wovik) at 620:22-621:7; CDX-0008C.012S (illustration of tree

structure).).

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know.”).). Mr. Kotay testified that throughout the Comcast-Veveo relationship, Comcast
exclusively interacted with Veveo’s search software through application programming interfaces .
(APIs). (Tr. (Kotay) at 494:3-17, 516:7-12, 517:18-24.). He explained that an API, which
functions as a conduit or translator, permits one computer system or piece of software to call
another and request certain outputs while the underlying algorithms and source code involved in
supplying those outputs stay hidden and protected. (Jd. at 516:7-517:24; see also Tr. (Kelly) at
1759:2-13.).

For the foregoing reasons, evidence adduced in this Investigation demonstrates that
Comcast did not copy the Veveo search technology claimed in the ’011 patent.

VII. U.S. PATENT NO. 7,827,585
A. Literal Infringement
1. Infringement Overview

Rovi argued that, when operating in the X1 System, the Accused 585 Products practice
each limitation of asserted claims 1, 8, 11, 15, and 22 of the 585 patent. (CBr. at 39.). As
shown below in Table No. 8, Comcast disputed whether the Accused 585 Products satisfied only

two (2) limitations found in the asserted claims. (RRBr. at 56.).

First, Comcast asserted that the Accused 585 Products| |

fi __ | and thus that the “interactive television program

guide” was not “implemented on user television equipment.” (/d.). Second, Comcast argued that
the Accused 585 Products lacked a “storage option that relates to at least one storage setting
configured to control how programs are to be digitally stored” because “all of the ‘options’ Rovi
accuses dictate what gets recorded or kept, not how it is to be digitally stored.” (/d. (emphasis

added).).

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r

As explained below, Rovi has met its burden of proving by a preponderance of the

evidence that, when operating in the X1 System, the Accused 585 Products satisfy claims 1, 8,

11, 15, and 22 of the ’585 patent.

Table No. 8: Disputed Terms for Infringement of Claims 1, 8, 15 and 22 of the ’585 Patent

Element Limitation Resolution
“A method for allowing a user to select
storage options for storing programs
using an interactive television program | Rovi satisfied its burden of proof.
I[pre] guide implemented on user television
equipment, the method comprising” Claims | and 8 cover local and
distributed IPGs implemented, at
“A method for recording programs least in part, on user television
using an interactive television program | equipment.
8[pre] guide implemented on user television
equipment, the method comprising”
“providing the user with an opportunity
to select at least one storage option fogs .
Ifa] for storing a program to be recorded, Rovi satisfied its burden of proof.
8[c] wherein the at least one storage option The accused Auto Pad Recording.
15[d] relates to at least one storage setting . :
option relates to how programs are
22[f] ' configured to control how programs .
—. stored on a random access digital
are to be digitally stored on a random ;
—. ~~ 9960 storage device.
access digital storage device

(JX-0001 (°356 patent) at 20:43-61, 22:11-27.).

Rovi also contended that Comcast directly infringes®! the asserted claims. (CBr. at 39.).

6 While this exact language comes from limitation 1[a], Comcast acknowledged that “[e]ach asserted
claim of the 585 Patent’ substantively contains the [same] requirement.” (RRBr. at 57.).

61 Without citation to legal authority, Rovi wrote: “Comcast directly infringes the Asserted Claims
through its importation of each Accused Product. ... Comcast also directly infringes each of the Asserted
Claims by selling the Accused Products in the U.S. after importation by charging customers for
unreturned STBs. In addition, following importation of the STBs into the U.S., Comcast and its
customers directly infringe the Asserted Claims of the ’585 Patent by practicing the methods of claims 1
and 8 and by building the system of claims.11, 15, 22 (as directed and instructed by Comcast).” (CBr. at
39.). Rovi failed to explain how Comcast can directly infringe method and system claims by importing
and selling the Accused 585 Products. Those acts are usually associated with the infringement of
apparatus claims.

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Comcast denied this contention. (RRBr. at 73.). According to Comcast, while it provides
Accused 585 Products to customers, it does not “supply televisions to its customers” and thus
“cannot display anything, let alone a program guide, as the claims require.” (/d.). Comcast,
however, acknowledged (as it rightly should have) Rovi’s argument “that Comcast instructs its
customers to use display devices.” (Id. at 74.). However, Comcast rebutted this argument by
asserting that it “would go to whether Comcast’s customers directly infringe, not Comcast.”
(Id.). As explained below, Rovi has not met its burden of proving by a preponderance of the
evidence that Comcast directly infringed claims 1, 8, 11, 15, and 22 of the ’585 Patent.

Comcast also denied Rovi’s allegation that Comcast indirectly infringes the asserted
claims. (Id. at 21-26.). According to Comcast, it does not possess the specific intent to induce
infringement. (/d. at 21-24.). Comcast argued that instead of citing to “evidence to show that
Comcast’s customers actually performed the claim steps” in response to Comcast’s inducement,
“Rovi [mistakenly] argues [in a circumstantial manner] that because the customers allegedly
make use of the accused features, the customers must be practicing the claims.” (/d. at 75.).
Comcast contended that a single entity must perform all steps of an asserted method claim,
which Comcast cannot happen here given that a number of required steps are performed not by
users, but instead by Comcast’s servers. (Ud. at 25.).

As for the remaining asserted system claims, Comcast asserted that “Comcast's
customers cannot be said to ‘control’” the accused Comcast system (especially its server-based
operations) as required by law to show direct infringement. (Jd. at 26.). As explained below,
Rovi has not met its burden of proving by a preponderance of the evidence that Comcast

indirectly infringed claims 1, 8, 11, 15, and 22 of the 585 patent.

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2. Relevant Claim Terms

The Private Parties agreed to the following construction of the preamble recited in one of ©
the asserted claims of the 0585 patent, which this Court has adopted. (See Markman Order,
App. A at 14.).

Table No. 9: Construction of Agreed Upon Claim Terms Relevant
to the °585 Patent

Claim Term Adopted Construction

Preamble . The preamble is limiting.

(Claim 1)

This Court construed the following constructions of the disputed claim terms.
(Markman Order, App. A at 14-35.).

Table No. 10: Constructions of the Disputed Claim Terms Relevant
to the ’585 Patent

Claim Term - Adopted Construction

“random access digital storage device” “a digital storage device that can access memory
(Claims 1, 8, 15, and 22) locations in a non-sequential manner”

Preamble The preamble is limiting, but it limits only the
(Claim 8) “environment” in which the invention operates and

does not require additional steps or components in
the claimed invention, per Advanced Software
Design Corp. v. Fiserv, Inc., 641 F.3d 1368, 1375
(Fed. Cir. 2011) (holding that the preamble steps
can limit only the claimed environment, not the
claimed method or system).

“interactive television program guide” “an application that generates a display of
(Claims 1, 8, 15, and 22) television program listings on user television
2? equipment and that allows users to navigate

62 The Private Parties disputed the meaning of additional claim terms recited in claims that have been
terminated from this Investigation. Those terms are not included in Table No. 10.

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Claim Term Adopted Construction

through and interact with television program
listings based on user commands”

‘implemented on user television “implemented, at least in part, at a user site on
equipment” television equipment for receiving and processing
(Claims 1 and 8) television program listings and program data

“storage setting configured to control “storage setting configured to control how
how [programs are/the program is] to be | [programs are/the program is] to be digitally
digitally stored” stored”

in context of “providing the user with an
opportunity to select at least one storage
option for storing a program to be
recorded, wherein the at least one storage
option relates to at least one storage
setting configured to control how
programs are to be digitally stored on a
random access digital storage device”

“circuitry” “circuitry”
in context of “an interactive television
program guide implemented at least
partially on circuitry, wherein the
interactive television program guide is
programmed to”

3. When Operating in the X1 System, the Accused 585 Products Practice
Claims 1, 8, 11, 15, and 22 of the ’585 Patent

As shown below in Figure 23, the asserted claims naturally divide into two (2) groups in

terms of required claim limitations. The first group, consisting of claims | and 15, pertain to the

39 66

global selection of “storage options” controlling “how” “programs” (plural) selected from the

IPG® are stored. (JX-0004 (°585 patent), cls. 1, 15; CDX-0006C.0007.). The second group,

63 As explained above, IPG stands for “interactive program guide.” For example, Comcast’s XRE guide
“displays to the customer the shows that are available on live TV, the shows that are available on the
DVR and on-demand.” (Tr. (Allinson) at 1432:4-6.).

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consisting of claims 8, 22, and 11 , pertain to the program-specific selection of "storage options"
controlling "how" a "program" (singular) selected from the IPG is stored. (JX-0004 (' 585
patent), els. 8, 22, 11 ; CDX-0006C.0007.). The asserted claims remain in these two (2) groups
fo r the infringement and technical prong of domestic industry analyses that follow.
Figure 23: Rovi's Depiction of Groupings for the Asserted Claims ('585 Patent)
'585 Patent: Claims 1/15 and 8/22 Have Different Scopes
!9alll ■ II-I I
JX-0004
Global (1/15) 	Program Specific (8/22)
I . A methnd for 11l k,"in3Hu- erll"l&e loc1 11ontgeop1io nsfor
sloring f')f'OlVams using un inlcrac livc 1ek:Msion progrmn
a uidc implemented on user television eq uipment, the method
comprising:
providing th i' user" ith an opyn~o r lect at Wost one
&ion:igc option for 11tormg e 	m 10 bl: recordt;xl,
Whert'Jn lhe Bl l~a&I on.till).. Of)IIOO ntlat 10 UI .,
one ston.ge ~ling t,.'OOfigurod 10 control ho 	DJ
ore to be Wguully storud on a rondow occ , 1,11n
,tomgc device;
in response 10 a ui,er K-l«tion of the at le.ail ooe s1orag~
uptiun, mot.liryi1111 lhc 111 k:-.tit uuc slOrllgc Sc ll iui,
displuying in the in lllrnt.1ive lel'--v;sion program gtride ul
lca stoooprognun bslmg re.la led to 01l~i.t ooo program;
providing Lbc user with un oppo11u11ily to iela.1 u pn>jmm
list111g rmm thcut k.., lltl oncdi1pluycd proxrum li5tinK for
recording on 1hc modom occcss digikll siomgc device,
and
rt."C ordUlltbePfOBJ'81UOnthenuxklruaccessdigj1alsiorage
<L""'icc boscd on the modifica1 ia n o r lbc at lcas1 one
,1oragc sctlins,
"pro gram s" 	Plural
8. A method for recording programs using nn in 1emc1ive
1elevis,on program @Uide implemcoted on user 1elevision
equipmenl, the method c:om prising:
disph1yios in a disp lay icrb."1 1 m leas, one prosmm li 1ing
relating lo 111 lc:m one program:
prov idin¥ a u11cr wit.h au opponwiity hl indicnh: a program
10 bo reconled on o random occes1 dip.ilo l storogc device
by tclecling o program liiti~ from the UI least o ne
displayed program Iisling. wherein the xlcctcd prognun
lis1ins com.~pood:a 10 the prosnuo 10 be n.-.;ordcd ;
pro"idmg the usc.rwnhan Ol"'JK:l'l1Urutv to select 01 lcastonc
'i:lltr.lM¢ npl~)IJ for Sh1nng @hc rrui mm )to be recorded,
\\lwri."m the i. 1 k:as1oncsiorageop1,on rela"-'S to at least
one iloro~e k-tla11s cotlll@Ured to control how (the pro-
ii"r.iinl is In 1k: diijU;tll y i.1ored n11 dtt: r.mdnm acCds
~ lilOr'Jt!,C device;
in rcsponse t orcccivin_g theU$Ct'sclcction ortbeot ltusl one
stotage option. modifying Ult' at lenit oue 11orageseuing
lor the proivam to be ,u:ordcd ; and
n."a»'tling the progrnm on lhcrandom awcssdigi lttl tonigc
deYtce baaed otl the nxxlificahon o r the 111 least on~
SIOl"'JH~ !U!llif~ for the pn .~Jfll .
"the J> rogram" 	Singular
Contains Confidential Business Information Subject to Prot ect ive Order 	COX-0006C.8
(CDX-0006C at 8 (introduced during the testimony of Dr. Balakrishnan).).
a) 	Claims 1 (Method) and 15 (System)
As shown below in Figure 24, claims 1 and 15 are parallel in structure. (Tr.
(Balakrishnan) at 787:12-792: 12 (discussing CDX-0006C.0081-93 and similarities between
claims 1 and 15).). For the most part, when operating in the Xl System, the Accused 585
Products practice claim 15 for the same reasons, and based upon the same evidence, as set forth
for claim 1. (Id. at 788:3-20.). In addition to the limitations of claim 1, claim 15 requires only
"a display screen" and "an IPG implemented at least partially on circuitry." (Id. at 787: 12-	,
792:12.).
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Figure 24: Rovi's Depiction of the Similarity Between Claims 1 and 15
'585 Patent, Claim 1 and Claim 15 Comparison
1. A mcthod'for allm ing a u se rtn select stomgeoptionsJor
storing programs using an intcmctive television program
guide implemented on user television equipment the method
comprising;
IS. A system for all wing a user 10 select storage. options
for storing pro11,ram s. the system comprising:
roviding the user with an opportunity to select at least one
lilOrage option for 1toring a program to be reconled,
wherein the at least one storage option relates to at least
one storage setting configured to control bow programs
are 10 be digi 	stored:::.1111&.11...-11;a1;~access digltal
storage device;
io response to a user selection of the at least one s10ra e
option. modifying the at least one s10rage setting;
.... 	illleracClve 	DD~
~Hltidil,.id'••ut~~in~ I
providing the user with an opportunity 10 select a program
listing from the at least one displayed program listlng for
recording oo the random access digital storaae device;
and
Contains Confidential Business I nforma tion Subject to Prot ective Or der
a display sc ree n;
a ra ndo m access d igital sto ra ge device; a nd
an in teractive television progrnm guide implement ed at
least partia ll y on ci rcuitry, wherein the interactive te le-
vision program guide is progran uu ed t o:
P!'OVide 1he userwilli an opportunity 10 select at least one
storage option for SlOring a program lo be recorded,
wherein 1111id at least one storage option relatea to al
1....t one storage setting configured lo control bow
programs are to be digitally lloied oo the nmdom
access digital storage device;
m respoose to a u-selection of the at leatt one storage
lion, modify the at last one llorap Nlling;
(CDX-0006C.0082 (introduced during the testimony of Dr . Balakrishnan).).
CDX -0006C.82
i. 	Preamble [claim 1): "A method/or allowing a user to select
storage options for storing programs using an interactive
television program guide implemented on user television
equipment, the method comprising"; Preamble [claim 15]: "A
system for allowing a user to select storage options for storing
programs, the system comprising"; 15/a]: "a display screen";
15/c]: "an interactive television program guide implemented
at least partially on circuitry, wherein the interactive television
program guide is programmed to"
The Private Parties appeared to agree that the preambles of claims 1 and 15 are limiting.
(Order No. 41 (Claim Construction) at 28; CBr. at 39; RRBr. at 70.). However, the Private
Parties disputed whether, when operating in the XI System, the Accused 585 Products satisfy all
of the elements found in the preambles of claims 1 and 15 in addition to limitations 15[a] and
15[c]. Rovi contended that the Accused 585 Products satisfy all of these elements. (CBr. at 39-
47, 51-52.). Comcast asserted that "there is no interactive television program guide
---------------------------- as required by the preamble of
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claim 1 and limitation 15[c]. (RRBr. at 70-71.).

The evidence proves otherwise. For the reasons stated below, Rovi has satisfied its
burden of proving by a preponderance of the evidence that the Accused 585 Products implement
such a guide. The remaining, undisputed limitations oa set forth in the preambles of claims 1 and
15, in addition to limitations 15{a] and 15[c], are also satisfied.

The Accused 585 Products are STBs (including hardware and software) that facilitate the
running of Comcast’s X1 Guide. (Tr. (Balakrishnan) at 737:4-738:15, 745:9-19 (describing the

‘Accused Products); Tr. (Allinson) at 1494:3-7 (Comcast engineer confirming that the STBs are

Comcast-specific).). As shown below in Figure 25, ;

| — |, (Balakrishnan Tr. 739:12-740:6.).

L scam eiee imine

Hardware and software found on each of the Accused 585 Products is present in the Accused 585

Products at importation. (/d.). The Private Parties’ dispute here focuses only on the software.

6 Comcast’s only non-infringement argument here was that “no interactive television program guide [is]
implemented, even in part, on X1 STBs[.]” Pursuant to Ground Rule 10.1, Comcast waived argument on
whether, when operating in the X1 System, the 585 Accused Products satisfy the remaining elements
found in the preambles of claims 1 and 15 as well as limitations 15[a] and 15[c].

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Figure 25: Comcast’s

(CDX-0006C.0015 (introduced during the testimony of Dr. Balakrishnan).).

As shown below in Figure 26, each 585 Accused Product [iis
EE. (cx-0443C.0009 (Xfinity X1 Architecture Presentation); Tr.
(Allinson) at 1481:13-23,). [AA
NS 1400500) 2¢ 1482:5.17),
(2.2 492:15.145:15),
201 279-25-1580:5,

65 RDK stands for “reference design kit.” (Tr. (Allinson) at 1479:18-1480:8.). A “reference design kit” is
a “collection of open source components developed by community members for a variety of consumer
premise equipment.” (/d.). There are over 300 members of the RDK community. (/d.).

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1481:5-12, 1483:20-22.).

Figure 26: Software Architecture of Comcast’s X1 System

(CX-0443C.0009 (Xfinity X1 Architecture Presentation).).

The Private Parties’ dispute appears to implicate| |
[__]. (Wr. (Allinson) at 1483:23-1484:7.). [ }
[__]. Ud. at 1484:8-13.3). | ~]
| | (Tr. (McCann)® at 1433:5-11, 1404:23-1405:10; Tr. (Allinson) at
La7i.21-1473s, 1486:2-12.). As shown below in Figure 27,| |
|. (Tr.

(Allinson) at 1484:14-1487:11.). In other words, } |

66 When he testified at the Hearing on October 23, 2018, Mr. McCann was “vice president of product
engineering at Comcast.” (Tr. (McCann) at 1398:20-21.). In that role, he “overs[aw] software
development, testing and operations of our software services.” (/d. at 1399:1-2.). Comcast identified Mr.
McCann as a witness testifying about “the X1 platform and the XRE Server as they relate to the accused
functionalities and Comcast’s design alternatives.” (RPSt. at 4.).

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(1.06 cCan) at 1406:109-1407 5
MM), 1455:17-1456:13, 1488:25-1489:5 SS

Figure 27: Architecture of Comcast’s X1 System with Highlighting from Rovi

(CDX-0006C.0017 (introduced during the testimony of Dr. Balakrishnan).).

According to Dr. Balakrishnan,
NS (1. (821okisnnan) 2

741:4-746:21, 750: 16-752:5, 754:7-758:20, 761:1-762:18; see also CX-0718C.0006-7.).

Comcast’s expert agreed‘ I 1. (David

Albonesi)® at 1928:19-20.). Comcast engineers Mr. McCann and Mr. Allinson testified

67 When he testified during the Hearing on October 24, 2018, Dr. David H. Albonesi was a “full professor
of EC at Cornell University.” (Tr. (Albonesi) at 1811:5-6.). Comcast identified Dr. Albonesi as an expert
witness testifying about “the technical background of the Asserted Patents; the interpretation of the claims

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collectively that| |

a

[~ |. (Tr. (McCann) at 1432:3-9,

1440:18-24, 1444:15-19; Tr. (Allinson) at 1492:22-25; see also Tr. (Balakrishnan) at 741:4-

746:21, 750:16-752:5; 754:7-16 (testifying that] |
[ |). Comcast engineers also testified that| |
L
C ]. (Tr. (McCann) '
at 1448: 16-1449:7, 1449:15-22; Tr. (Allinson) at 1496:17-1498:11, 1499:25-1500:21).

As compared with Rovi’s description, Comcast characterized] |
| |. Comcast engineer Mr. Allinson testified that[ |

| | ]. (Tr. (Allinson) at

1485:7-21, 1486:13-1487:11.). | |
L _|
7]. Gd).
Allinson’s point, and indeed Comcast’s raison d’étre for asserting non-infringement, was
that, for the Accused 585 Products,} |.
For example, | |
[ ]. (Tr. (McCann) at 1407:22-1408:19 (testifying that/ ]

in those patents; issues relating to the alleged infringement of the Asserted Patents by the accused
products and Comcast’s design alternatives; the design, structure, function, and operation of the accused
products and Comcast’s design alternatives; issues relating to the validity of the Asserted Patents; issues
relating to whether the Rovi DI products practice the Asserted Patents and, relatedly, whether Rovi
satisfies the technical prong of the domestic industry for the Asserted Patents; other issues in connection
with the alleged infringement, validity, enforceability, and any other technical issue that may arise with
respect to the Asserted Patents.” (RPSt. at 1-2.).

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:
Ll
[}).). Similarly,[—_ ;

{__]. (Tr. (Allinson) at 1475:20-23.). |

LL |
[____] (RRBr. at 8 (citing Tr. (Karger) at 1532:23-1533:13, 1534:9-22).).[
{ |

a |. (Tr. (McCann) at 1420:23-1421:5; Tr.

(Allinson) at 1477:9-19 ( - |
CT p. |

However, in its depiction of = |
[ ~ —|, Comcast appeared to read “interactive television

program guide implemented on user television equipment” too narrowly. Comcast attempted to
import claim limitations not mandated by the ’585 patent, such as requiring the performance of
sophisticated IPG operations, onto the STB. The Markman Order explained that the
“specification of the ’585 patent teaches a distributed ‘interactive television program guide
system’ in which ‘television distribution facility,’ separated from user television equipment,
provides display components in the form of ‘television program listings and additional data.”
(Order No. 41, App. A at 27 (citing (JX-0004 (’585 patent) at 3:18-19)) (emphasis added).). .
The Markman Order illuminated that “the ’585 patent treats ‘interactive television
program guide’ in a holistic manner, inclusive of functions that occur within ‘[a]n interactive
television program guide system’ but not necessarily on user television equipment.” (Jd. at 28.).

In so doing, the Markman Order appeared to draw a favorable comparison between, and

expressly not distinguish, the “interactive television program guide implemented on user

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television equipment” found in the ’585 patent, on the one hand, and| |
[- | found in the Accused 585 Products, on
the other hand.

Comcast’s argument that the accused | |

| is a red

herring. (RRBr. at 71.). Claims 1 and 15 of the 585 patent cover a centralized or distributed

' “interactive television program guide” “application that generates a display of program listings
on user television equipment[.]” As discussed above, and explained in the Markman Order, the
claims do not require that the “interactive television program guide” application reside solely on

a STB or that that the particular “generates a display” function necessarily occur on the STB.

Here, the evidence appears to show that| |
L_ 7

| |. That is enough to satisfy the claim

language in question.

Thus, Rovi has proven by a preponderance of the evidence that, when operating in the X1
System, the Accused 585 Products practice an “interactive television program guide”
“implemented, at least in part, at a user site on television equipment for receiving and processing
television program listings and program data.” Unrebutted evidence above proves that[
= ]
[ |

= ee

| functions depicted in the screenshots of the Comcast X1 System's S user interface

displayed immediately below in Figure 28.

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Figure 28: Rovi's Screen Shots of Comcast's Xl System's User Interface
'585 Patent, Claim l[pre]: User Selection of Auto Pad Storage Option
Claim l[pre]
A method for allowi ng
a user to select storage
option s for storing
programs
11
EnhallCed Texl Readability Ott
Auto Pad Recordings: On
Wt.o1 ....,.1,ibil•, 1.-..u11l•1og1, "Ill t. s.<IWduled wHh a llltla a.1U• llme at Ina tlell end al"d M ■ n&Qe 5111ft, 5top I m•1 Ir ,
a-°'"d 0pu.,.
CX-1051C.l (XGlvl) ; see al so CX -1056C.1 (XG1v3), CX-1063(.1 (XG2v2), CX·1066C.1 (XiD)
Conta ins Confldentlal Bu si ne ss Informat i on Subject to Pr otect ive Order
'585 Patent, Claim l[pre]: "Interactive Television Program Guide"
Claim l[pre]
u si ng an
interactive television
program gu ide
COX 0006C. 24
CX· lOSlC.20 (XGlvl) ; see also CX - 1056C.22 (XG1v3); CX-1063( . 18 (XG2v2); CX -1066C. 28 (XI O)
Con ta ins Confldentlal Bu si ness I nfo rmation Subje ct to Protecti ve Order 	COX -0006 C. 25
(CDX-0006C0024-25 (introduced during the testimony of Dr. Balakrishnan).).
As reiterated below in Figure 29, Comcast engineer John Robinson 68 stated very clearly
68 When he testified during his deposition on August 29, 2016, Mr. Robinson was a Comcast engineer
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that,|

[ |. (CX-1302C at
166:2-22.).
Figure 29: Rovi’s Depiction of the Importance of | to the X1 System

(CDX-0006C.0037 (introduced during the testimony of Dr. Balakrishnan).).

When operating in the X1 System, the Accused 585 Products also satisfy the remaining
limitations presented in this section. The limitations “a display device” and “allowing a user to
select storage options” are evident from the screen shots displayed above in Figure 28. The first
screen shot in Figure 28 shows a display screen interface that presents a user with the storage

options of “Auto Pad Recordings,” such that “recordings will be scheduled with a little extra

who worked “for Labeeb Ismail, which he owns all of the CPE software development for all of the RDK
devices.” (CX-1302C at 42:9-11.). In this role, Mr. Robinson had a “fairly broad engineering
responsibility. So, I have the XRE native receiver. I have like all of the IP video playback components. I
have pretty much all of the application runtimes that have, you know, been on the device.” (/d. at 42:12-
20.). Mr. Robinson was not called to testify at the Hearing..

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time at the start and end.” Collectively, the screen shots in Figure 28 show Comcast’s X1
System implemented on user television equipment (including a STB and a display screen) at a
user site (in the most common use case, a user’s home). (Tr. (Balakrishnan) at 741:4-746:21,
750: 16-756:22, 824:5-833:7; Tr. (Albonesi) at 1909:5-10 (Comcast expert agreeing that “each of
the XG1, XG2 and X;> AAA
): Tr. (McCann) at 1432:7-9 (same).).

Consequently, Rovi has satisfied its burden of proving by a preponderance of the
evidence that the Accused 585 Products satisfy the preambles of claims.! and 15 in addition to
limitations 15[a] and 15[c].

ii. I[a]: “providing the user with an opportunity to select at least
one storage option for storing a program to be recorded,

' wherein the at least one storage option relates to at least one
storage setting configured to control how programs are to be
digitally stored on a random access digital storage device”;
15[b]: “a random access digital storage device”; 15[d]:
“provide the user with an opportunity to select at least one
storage option for storing a program to be recorded, wherein
said at least one storage option relates to at least one storage

setting configured to control how programs are to be digitally
stored on the random access digital storage device”

Rovi alleged that, when operating in the X1 System, that the Accused 585 Products
satisfy claim limitations 1[a], 15[b], and 15[d]. (CBr. at 41-47 (emphasis added).). These
limitations permit a user to select a storage option that pertains to how programs are stored on a
random access digital device. (/d. (emphasis added).). In rebuttal, Comcast argued that the
Accused 585 Products fail to practice a “storage option that relates to at least one storage setting
configured to control how programs are to be digitally stored” because “all of the ‘options’ Rovi
accuses dictate what gets recorded or kept, not how it is to be digitally stored.” (RRBr. at 56

(emphasis added).). Comcast did not raise additional arguments with respect to these limitations

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in its Post-Hearing brief and has thus waived any such arguments pursuant to Ground Rule 10.1.

As an initial matter, there is no dispute that the Accused 585 Products provide users with
program storage options and facilitate the storage of programs. As shown above in Figure 28,
each 585 Accused Product presents users with a Comcast’s X1 IPG, including a
“Settings/Preferences/General” screen that permits users to toggle the “Auto Pad Recordings”
setting “On” or “Off.” (Tr. (Balakrishnan) at 763:16-766:16 (discussing this evidence).). Dr.
Balakrishnan explained that, when the “Auto Pad Recordings” is set to “On,” recordings of
programs will be scheduled with extra time before the scheduled start time and after the
scheduled end time. (/d. at 764:17-766:6 (discussing how the Auto Pad Recording function will
globally add time before and after all scheduled recordings); CX-0156.0002 (X1 Web Page
instructing how to “Turn on Auto Pad Recordings”).). “Auto Pad Recordings” is a storage
option applied globally to all recordings of programs selected for recording by the user. (Tr.
(Balakrishnan) at 764:2-10 (emphasis added).).

Dr. Balakrishnan also explained the relationship between the user’s selection of the Auto
Pad Recording “storage option” and the resulting modification of an underlying “storage
setting.” (Id. at 765:1-766:16.). Specifically, “storage options are what the user selects on the -
on the guide. Like here, for example, in this example I’ve chosen, the user would select that auto
pad recording storage option to either on or off. And then subsequently, when the program is
actually recorded, the recording part of the system will check for what these options and what
they have been set to. And based on those option settings, will actually do the storage according
to those settings.” (Id. at 916:9-919:1; CX-0156.0002.). In other words, based on his use of the
Comcast X1 System’s IPG and his general expertise in this field, Dr. Balakrishnan concluded

that the user’s selection of an Auto Pad Recofdings “‘storage option” results in modification of a

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“storage setting” in the X1 System. (/d. at 776:18-780:25, 916:9-919:1; CX-1051C.0021.).

Comcast characterized Dr. Balakrishnan’s testimony in this regard as an inference, not
formal proof, ofa “storage setting.” Comcast is correct that Dr. Balakrishnan inferred the
presence of a “storage setting” for the “Auto Pad Recordings” feature. Dr. Balakrishnan did not
examine source code for the X1 System. (Tr. (Balakrishnan) at 849:21-853:19.).

However, Dr. Balakrishnan’s inference as a technical expert, in conjunction with his
explanation of the user experience of turning the “Auto Pad Recordings” options on and off, is
adequate circumstantial evidence of a “storage setting” related to Comcast’s Auto Pad
Recordings feature. Comcast could have rebutted Dr. Balakrishnan’s circumstantial evidence of
a “storage setting” with direct evidence from the source code or expert testimony about the same.

Comcast did not do so. Instead, it offered evidence that bolsters Balakrishnan’s inference.

For example, Comcast offered evidence that, in the X1 System, Zz |

| |

[ |. (Tr. (McCann) at 1408:35-1409:21; Tr. (Allinson) at

1487:21-1488:6.). In other words, | ]

]. (CX-1051C.0001

[ |; see also Tr. (Albonesi) at 1889:5-21; Tr.

(Balakrishnan) at 765:12-22.). Consequently, Rovi has proven by a preponderance of the
evidence that Comcast’s X1 System satisfies the “storage setting” limitation.
Next, there is no dispute that, in Comcast’s X1 System, “programs are to be digitally

stored on the random access digital storage device.” Dr. Balakrishnan testified that each of the

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Accused 585 Products makes use of a “random access digital storage device” that “can access
memory locations in a non-sequential manner,” as shown below in Figure 30, to record
program(s) according to user-selected storage options. (Tr. (Balakrishnan) at 770:18-25, 771:1-
776:12.). Comcast’s expert, Dr. Albonesi, agreed that hard drives are “random access digital -
storage devices.” (Tr. (Albonesi) at 1908:11-14, 1913:10-14.). |

Figure 30: Rovi’s Depiction of the “Random Access” Feature of Comcast’s Hard Drives

(CDX-0006C at 53 (introduced during the testimony of Dr. Balakrishnan).).
That said, the Accused 585 Products do differ in terms of the location of hard drives
within the X1 System. As shown below in Figure 31, Accused 585 Products include either a

local hard drive (in the case of the representative XG1 or representative XiD paired with an

XGI){_ |

69 Based on the Markman Order, hard drives utilized by the 585 Accused Products are “random access
digital storage devices” because they “can access memory locations in a non-sequential manner.”
(Markman Order, App. A at 15.).

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= )). (Tr. (Balakrishnan) at 746:4-21,

768:12-770:24, 767:19-23, 771:1-776:12; Tr. (Albonesi) at 1909:8-10, 1913:4-21, 1917:16-

1918:1; JX-0133C (Young Dep. Tr.) at 33:5-9 (Comcast engineer testifying aboutt |

L_ | })-).

Figure 31: Rovi’s Depiction of Location of Hard Drives in X1 System

(CDX-0006C.0056 (introduced during the testimony of Dr. Balakrishnan).).

Comcast contended, unpersuasively, that the location of the hard drives affects Rovi’s
infringement analysis. Comcast asserted that the representative XG2 and the XiD (when paired
with an XG2) STBs do not meet this limitation because there is no hard drive physically present
in the XG2 STB. (RRBr. at 76; Tr. (Albonesi) at1902:17-1903:4.). However, Rovi is correct
that “no part of any Asserted Claim limits the scope of infringement (including post-importation
induced infringement) to STBs that physically contain hard drives.” (CBr. at 46-47 (citing Tr.

(Balakrishnan) at 746:4-21, 768:12-770:24).).

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As mentioned above, the specification of'’585 patent “teaches a distributed ‘interactive
television program guide system’ in which ‘television distribution facility,’ separated from user
television equipment, provides display components in the form of ‘television program listings
and additional data.’” (Order No. 41, App. A at 27 (citing (JX-0004 (585 patent) at 3:18-19
(“Television distribution facility 16 distributes the television program listings and additional data .
to multiple users via communications paths 20. Each user has user television equipment 22 for
displaying[.]”)) (emphasis added).). The 585 patent also suggests that programs recorded for
users are sometimes stored in a distributed fashion: “digital storage device 31 can be contained
in STB 28” (as it is with the XG1) “or it can be an external device connected to the STB 28 via
an output port and appropriate interface” (as it is with the XG2). (JX-0004 (’585 patent) at 4:1-
3.). Contrary to Comcast’s assertion, from the perspective of the °585 patent, the location of the
claimed hard drive (whether local to the user on a STB or situated “in the cloud”) appears
irrelevant to whether, when used as intended, the Accused 585 Products satisfy claims | and 15.

With respect to the primary dispute in this section, the Private Parties contested the scope
of “storage setting configured to control how programs are to be digitally stored.” Rovi
contended that the “Auto Pad Recordings” option (recording additional, padded time on both
ends of a scheduled program) satisfied this limitation. (CBr. at 43.). In rebuttal, Comcast
asserted that the “Auto Pad Recordings” option pertains to the selection of what will be recorded
(i.e., more content before and after the scheduled program), not how the selected programs will
be recorded (i.e., actually store that data onto a hard drive). (RRBr. at 59.). To emphasize this
distinction, Comcast offered two examples of storage settings that allegedly affect how a

663

program is recorded: (1) “’recording quality’ option which has a related setting of ‘megabits per

second;’” and (2) “an encryption option, which would cause the 1s and Os to be stored in a

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different manner depending on whether or not a user chose to encrypt the recording.” (/d. at 63-
64.).

| Comcast cited the prosecution history in support of its narrow interpretation of “storage
setting configured to control how programs are to be digitally stored.” Comcast is correct that .
this claim language was added to claims 1 and 15 to allow the applicants to overcome a rejection
of existing claims in view of the prior art, as shown below in Figure 32. Before amendment,
precursors to issued claims | and 15 recited a “storage option for storing a program to be
recorded, wherein the at least one storage option relates to at least one storage setting” with no
mention of controlling “how” to store a program. (See JX-0010.0109-16 (’585 patent
prosecution history) (original claims 106, 113, 120, 127 issued as claims 1, 8, 15, and 22).).
Figure 32: “How” Language Added to Claim 1 to Overcome Prior Art (September 1, 2010)

providing the user with an opportunity to select
at least one storage option for storing a program to be
recorded, wherein the at least one storage option relates to at

least one storage setting configured to control how programs

are to be digitally stored on a random access digital storage

device;
(Id. at 5271.).

Those claims were rejected by the examiner as obvious in view of the prior art, as shown .
below in Figure 33. Specifically, the examiner rejected the applicants’ argument that the Young
prior art reference addressed program speeds for pre-recorded programs and failed to teach user
selection of “a storage option for storing a program to be recorded.” (/d. at 5271.). The
examiner explained that Figure 13 of Young disclosed multiple recording speeds and that “a

selection must have been made in order to record at that [speed and] quality level.” (/d. at

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5271.). In response, the applicants made the above-mentioned amendment requiring a “storage
setting configured to control how programs are to be digitally stored on a random access digital
storage device.” (See id. at 5256-60.).

On this basis alone, Comcast concluded that the “limitation requiring a storage setting
that controls ‘how’ a program is to be digitally stored on a random access storage device is ...
the only reason [the ’585 patent] issued.” (RRBr. at 57.). Comcast is mistaken. As shown
below in Figure 33, in making their amendment, the applicants explicitly stated that Young in

. combination with prior art reference Barton would not disclose “the provision of a storage option
that relates to ... storage of programs on a random access digital storage device.” (JX-
0010.5280 (’585 patent prosecution history) (emphasis added).). The claim requirement of
storage on a random access digital storage device, and not controlling how programs are stored,
could have been the reason why the amended claims issued. This is because the applicants
added the “random access digital storage device “ language by amendment at the same time they
added “control how programs are to be digitally stored,” without identifying one limitation over

the other, or the two in combination, as the decisive point of novelty over the prior art.

\

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Figure 33: Examiner’s Rejection of Claims (March 25, 2010)

Applicant argues that independent claims 106/120 are directed to allowing a user
to carry out global configuration of storage settings for programs to be recorded. (Page
2) Young at figure 13 and column 8, lines 40-43 refers to program speeds for programs
already recorded and fails to show “providing the user with an opportunity to select at
least one storage option for storing a program to be recorded, wherein at least one
storage option relations to at least one storage setting.” "In response to a user selection
of at lease one storage option, modifying the at least one storage setting,” and
“recording the program on the digital storage device based on the modification of the at

least one storage setting.” (Page 3).

The Examiner respectfully disagrees. The Examiner notes that figure 13 shows
the availability multiple recording speeds (EP=Extended Play=4 hours per tape at lower
quality, SP=Standard Play =2 hours per tape, higher quality). Figure 12:shows an
express recording screen which includes recording speed. As the playback figure 13
shows that multiple playback speeds are available, a selection must have been made in

order to record at that quality level.

(JX-0010.5271 (3 85 patent prosecution history).).

Comcast nevertheless has a valid point here that a claim scope disavowal of some sort
occurred with respect to amendment of the claims at issue to include “storage setting configured
to control how programs are to be digitally stored.” The critical inquiry is what the applicants
disavowed. A careful examination of the prosecution history shows that the applicants
underlined text in their “Reply to Office Action” filed on August 4, 2005, in order to highlight
two reasons why they amended rejected claims. (IX-0010.5280 (’585 patent prosecution

history).). As shown below in Figure 34, and as mentioned briefly above, it appears that the first

va

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reason, indicated by the underlining of “random access,” was to distinguish the “random access
digital storage device” of the invention from the “sequential access storage device” of the prior
art. (Id.). It appears that the second reason for the amendment, indicated by the underlining in

“control storage of programs,” was to distinguish “control[ling] the recording speed at which ‘

programs are stored” from “‘control[ling] storage of programs[.]” (/d.).

The applicants appear to associate the latter, “control[ling] storage of programs ona...
digital storage device,” with “how programs are to be digitally stored.” (/d.). In other words, the
applicants juxtapose: (1) a setting that relates to the speed (and, by implication, quality) at which
a program records on a “sequential access storage device” with (2) a setting that pertains to the
particulars of actually storing the recording on a random access digital storage device. The
applicants appear to retain coverage of the latter while disavowing the former.

What also appears clear, as both Private Parties noted in their briefing, is that, based on
the prosecution history of the ’585 patent, mere specification of the program to record and store,
without more, does not satisfy the “setting configured to control how programs are to be digitally
stored” limitation required by the claims. (CRBr. at 15 (“the °585 Patent makes an explicit
distinction between what is being recorded (e.g., the program or programs to be recorded) and
__ user-selectable storage options related to how those program(s) are digitally stored on a hard
drive.””); RRBr. at 58 (“both Rovi’s and Comcast’s experts agreed that the ‘control how’

language of the claims cannot be met by the selection of what data to record”).).

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Figure 34: Reply to Office Action (September 1, 2010)

Applicants respectfully submit that Young and Barton,
whether taken alone or in combination, fail to show or suggest
selection of a storage option that relates to a storage setting
configured to control how programs are to be digitally stored
on a random access digital storage device, as defined by
applicants' amended independent claims 106, 113, 120 and 127.
In particular, taking the Examiner's combination of applying
digital storage to the teachings of Young, the digital
recording mode disclosed in Young, would enable a user to

control the recording speed at which programs are stored on a

digital video tape or other sequential access storage device.

The amended independent claims require the digital storage
device to be a random access digital storage device.

Therefore, even if Young were modified with the digital storage
of Barton, the modified device would not discloge the provision
of a storage option that relates to a storage setting

configured to control storage of programs on a random access

digital storage device.
(JX-0010.5280 (585 patent prosecution history).).

The above interpretation of claim scope disavowal does not comport with Comcast’s non-
infringement argument. Whereas the applicants differentiated between recording speed on a
“sequential access storage device” and storage options on a random access digital storage device,
Comceast’s non-infringement argument attempted to differentiate between two types of storage
options on a random access digital storage device: (1) non-program buffer storage (e.g., padding
before and after a program in the X1 System); and (2) the manner in which it is stored (e.g., high

v. low quality, encryption options). (RRBr. at 61 (Comcast taking the word “how” out of context

to assert that| a |

oe Cd, 63-64.). Contrary to Comcast’s position, the applicants

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did not clearly disavow either of these examples of “control([ling] storage of programs on a...
digital storage device.”

Comcast’s position was also at odds with the specification of the °585 patent. The ’585
patent accords broad treatment to “how” in the context of program storage options. With respect
to “providing the user with the ability to define selectable options,” the specification teaches, as
shown below in Figure 35: “FIG. 16... At step 424, the program guide provides the user with
the opportunity to define storage options. If language, video format, enforcement of parental |
control, and auto-erase storage options are provided (FIG. 15), the program guide stores the
programs and associated program data on digital storage device 49 according to how the storage
options are defined as set forth in steps 426, 428, 430, and 432 respectively.””° (Ud. at 16:28-36
(emphasis added).). Likewise, as shown below in Figure 36, Figure 14 of the °585 patent
presents a “set-up screen” with “storage option area 122” that “allows the user to select options

relating to storage” that correspond to “storage options” set forth in Figure 16. (dd. at Fig. 14.).

7° Comcast is technically correct that the statement “how the storage options are defined as set forth in
steps 426, 428, 430, and 432,” on its face, relates to how users define storage options, not necessarily
“how programs are to be digitally stored” as required by claims 1 and 15. (RRBr. at 65.). However, these
two uses of “how” are inextricably linked. For example, if a user choses the HDTV video format option
shown in Figure 35, the system will store the recorded program in high-definition (“HD”) format.
Tellingly, Comcast has already admitted that such a “’recording quality’ option” (e.g., HD versus
‘standard definition (“SD”)) affects “how programs are to be digitally stored,” even under Comcast’s
narrow construction of “how” as meaning “the manner in which.” (/d. at 63-64 (emphasis added).).

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Figure 35: Figure 16 of the ’585 Patent

408
DISPLAY SET-UP SCREEN
PROVIDE USER WITH OPPORTUNITY TO DEFINE Lang
STORAGE OPTIONS r
DIGITALLY STORE © PROGRAMS AND ASSOCIATED DATA 426
ACCORDING TO LANGUAGE STORAGE OPTION .
“J
DIGITALLY STORE PROGRAMS AND ASSOCIATED DATA L 49g
ACCORDING TO VIDED FORMAT OPTION
q
DIGITALLY STORE PROGRAMS AND ASSOCIATED DATA | 430
ACCORDING TO ENFORCE PARENTAL CONTROL ON
STORAGE OPTION
AUTOMATICALLY DELETE PROGRAMS ANO ASSOCIATED DATA 432
ACCORDING TO AUTO-ERASE VIEWED ENTRIES OPTION r
, i , + 434
PROVIDE USER WITH OPPORTUNITY TO DEFINE PLAYBACK OPTIONS
4
PLAY BACK PROGRAMS AND ASSOCIATED DATA 4%
ACCORDING TO DEFAULT LANGUAGE OPTION
4 438
PLAY BACK PROGRAMS AND ASSOCIATED DATA ~
ACCORDING TO DEFAULT VIDEO FORMAT OPTION
4
PLAY BACK PROGRAMS AND ASSOCIATED DATA |. 440
SKIPPING ADVERTISING ACCORDING TO SKIP COMMERCIALS OPTION

FIG./6

(JX-0004 (°585 patent) at Fig. 16.).

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Figure 36: Figure 14 of the ’585 Patent

12

SET -UP a
ENTRY INFORMATION DISPLAY OPTIONS |
TITLE DESCRIPTION EPISODE CHANNEL
RECORD DATE RECORD TINE DURATION CAST MEMBERS
PARENTAL CTRL CATEGORY(IES ) LANGUAGE(S) VIDEO FORMAT
OTHER INFO VIEWED
_¢lee
STORAGE OPTIONS
LANGUAGES AVAILABLE LANGUAGES
VIDEO FORMAT HDI LISK
ENFORCE PARENTAL CONTROL YES Hey
ON STORAGE ITALIAN
AUTO-ERASE VIEWED ENTRIES YES Spuntst
133
PLAY BACK OPTIONS
DEFAULT LANGUAGE ENGLISH
DEFAULT VIDEO HOT
SKIP. COMMERCIALS YES
FIG. 14

(Id. at Fig, 14.).

Comcast was correct that embodiments or features of a purported “invention” disclosed
in a patent specification might be disavowed during patent prosecution by applicants seeking to
overcome the prior art. (RRBr. at 64-65.). However, that is not the case here. As discussed

above, during the prosecution of the ’585 patent, the applicants disavowed recording speed of a

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program on a “sequential access storage device,” not “control[ling] storage of programs” on a
random access digital storage device. (JX-0010.5280 (585 patent prosecution history).). The
applicants appear to have retained within the scope of claims 1 and 15 of the ’585 patent settings
that pertain to storage of programs of interest on a digital storage device. Examples include
storage options presented in Figures 14 and 16 of the °585 patent.

Based on the discussion of prosecution history and the discussion above, the Auto Pad
Recordings feature of Comcast’s X1 System is clearly a “storage option [that] relates to at least
one storage setting configured to control how programs are to be digitally stored on a random
access digital storage device.” As Comcast acknowledged, Auto Pad Recordings “allows a user
to select what is to be recorded” and stored, along with the program of interest, on the front and
tail ends of the program of interest. (RRBr. at 63.). As Dr. Balakrishnan explained: “It’s
_ basically telling the user, if you use this auto pad, the way in which the program will be stored,
how it’s going to be stored, will include a little extra time before and after.” (Tr. (Balakrishnan)
at 765:12-766:1.).

Another way to conceptualize the Auto Pad Recordings feature is to ask, “How is the
program of interest stored when Auto Pad Recordings is ‘on’? The answer: it is stored in a
digital recording sandwich, with padding as bread slices and the program of interest as the
sandwich filling. That is enough to satisfy the “configured to control how programs are to be
digitally stored” claim requirement. That the Auto Pad Recordings option is also enlarging what
to store is of no consequence.

Thus, based on the above, Rovi has proven by a preponderance of the evidence that,

- when operating in the X1 System, Comcast’s X1 System’s satisfy limitations 1 [a], 15[b], and

15[d]} of the ’585 patent.

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t

iii. 1[b]: “in response to a user selection of the at least one
storage option, modifying the at least one storage setting”;
15[e] “in response to a user selection of the at least one
storage option, modify the at least one storage setting”

Rovi argued that, when operating in the X1 System, the Accused 585 Products satisfy
these limitations. (CBr. at 47-49.). Comcast disputed only whether Rovi had proven that user
selection of the Auto Pad Recordings option resulted in the modification of a storage setting, an
issue discussed and resolved above in relation to limitations 1{a] and 15[d]. (RRB. at 65-66.).
Comcast did not raise additional arguments with respect to limitations 1[b] and 15[e] in its Post-
Hearing Briefs and has thus waived any such argument pursuant to Ground Rule 10.1. (/d. at 56-
74.).

As explained above, the record contains ample evidence that user selection of the Auto
Pad Recordings option results in the modification of a storage setting. The screen shots set forth
in Figures 37 and 38 below constitute persuasive evidence that Comcast’s X1 System modifies a
setting when a user toggles the Auto Pad Recordings option from “on” to “off’ and vice versa.
To provide useful evidence, Dr. Balakrishnan did need not review Comcast source code and
‘point to a specific variable or flag in the code as proof of modification of a “storage setting”

corresponding to user selection of the Auto Pad “storage option.” (/d. at 917:3-918:1 (explaining

that he “[d]id [not] need to see the code because [ |
= )).).
Moreover, in addition to Dr. Balakrishnan’s expert inference that a setting modification
occurs, Comcast engineers elaborated that the X1 System|_ |
| |. (Tr.

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(McCann) at 1408:35-1409 :2 1; Tr. (Allinson) at 1487:21-1488:6.) .
. (Tr. (McCann) at 1409:14-1411 :1.).	..________________, 	-------
- 	· (CX-1051C.0001 (XI lM-585-1-26 Screenshots); Tr . (Albonesi) at 1889:5-21 ; Tr.
(Balakrishnan) at 765 : 12-22.). In this context, it is clear that these the start and end variables
correspond to the modified "storage settings" of the asserted claims.
Figure 37: Rovi's Depiction of Toggling the Auto Pad Recordings Option in the IPG of the
Xl System
'585 Patent, Claim l[b]: Selection of Global Storage Option
Claim l[b)
in response to a use r
selection of the at least
one storage opt io n,
CX-l 0S lC.18 ( Le ft), 19 (Rle ht ) (X Glvl) ;
see als o CX-1 056C.l , 2 (X G1 v3 ); CX - 1063 C.1, 17 (XG2v2); CX- 1066C.18, 19 (X iD)
Contains Conf ide ntial Bus iness Information Subject to Protective Or d er 	CDX·0006C.60 I	__ ,
(CDX-0006C.0060 (introduced during the testimony of Dr. Balakrishnan).).
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Figure 38: Rovi Depicting Modification of the Auto Pad Recordings Setting (When a User
Turns "On" the Auto Pad Recordings Option) in the IPG of the Xl System
'585 Patent, Claim l[b]: Modifying the Global Storage Setting
Claim l[b]
modifying th e at least
one storage setti ng ;
CX- 1051C.21 (XGlvl) ; see also CX-1056C. 27 , 28 (XG1v3); CX-1063C.25 (XG2v2); CX -1 06 6C. 29 (X ID)
Conta ins Confiden t la l Business Informat ion Subje ct to Protective Or~er 	<DX -0006C 61
(CDX-0006C.0062 (introduced during the testimony of Dr. Balakrishnan).).
Comcast attempted to resuscitate its "lack of storage settings" argument by citing to case
law about the perils of inferring the presence of a claim limitation in an accused product. (RRBr.
at 66.). Most of the cases to which Comcast cites are non-binding. The one Federal Circuit case
Comcast cited is inapplicable here. That is because the expert in the Federal Circuit case, who
addressed infringement under the doctrine of equivalents, "did not supply any of the details
necessary to identify an infringing device." Intellectual Sci. and Tec h. , In c. v. Sony Elecs ., Inc.,
589 F.3d 1179, 1186 (Fe d. Cir. 2009). 	The expert in that case failed to state whether a "signal
selector" was a multiplexer that possessed a specific feature required by the asserted claims, that
is, whether the "signal selector" outputted a signal that "simultaneously transmitted a plurality of
information sets," as required for infringement. (Id. at 1185.).
Her e, by contrast, in the context of Comcast's alleged literal infringement, Dr.
Balakrishnan specifically addressed the presence of the claimed modified "storage setting,"
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'

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offered observed evidence of its existence, and effectively stated, "I know as a computer scientist
that the system must contain this setting." Moreover, unlike in Intellectual Science and
Technology, here engineers of the accused infringer, Comcast, have bolstered an already
adequate evidentiary record by revealing specific variables of the Auto Pad Recordings feature
modified within the Xl System that correspond to the claimed "storage settings."
Against this backdrop, it is apparent that Comcast's "lack of storage settings" argument is
illusory. Comcast did not dispute Rovi's screenshot, in Figure 37, showing the Auto Pad
Recordings option. (See also CX-1051C.0018-21; CX-1056C.0001-2, 22, 27-28; CX-
1063C.0001, 17-18, 25; CX-1066C.0018-19, 28-29.). Comcast did not dispute Rovi's
screenshot, in Figure 38, showing that, when a user turns "on" the Auto Pad Recordings option,
the IPG verifies that extra recording time is added to the start and end of the program targeted for
recording. Comcast did not dispute that start and end variables are settings that change when a
user toggles the Auto Pad Recordings option from "one" to "off' and vice versa. Thus, Comcast
cannot reasonably dispute that the weight of the evidence proves, by a preponderance of the
evidence, that, when operating in the Xl System, the Accused 585 Products satisfy limitations
1[b] and 15[e].
iv. 	lfc}: "displaying in the interactive television program guide at
least one program listing related to at least one program";
15fj]: "display in the display screen at least one program
listing related to at least one program"
Dr. Balakrishnan testified that, when operating in the Xl System, the Accused 585
Products satisfy this limitation. (Tr. (Balakrishnan) at 781 : 1-782: 19.). Screenshots in evidence
show display, in the IPG, of at least one program listing related to at least one program. (Id. at
781:16-782:15; see also CX-0161; CX-1051C.0020; CX-1056C.0022; CX-1063C.0018; CX-
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1066C.0028.).
Figure 39: Rovi's Depiction of Displaying At Least One Program Listing in Xl System
'585 Patent, Claim l[c]: The Display of Program Listings in the Guide
Claim l[c]
displaying in t he
int era ctive t elev isi on
progr am guide at least
one program l is t in g
rel at ed t o at lea st one
program;
CX · 10 51 C.20 (XG l v l ); see also CX- 105 6C .22 (XG1v3); CX - 1063C . 18 (XG2v2 ); CX- 106 6C.28 (Xi D)
Co ntains Confidential Bu sin e ss Information Subject to Protective Order 	CDX-0006(.66
(CDX-0006C.0066 (introduced during the testimony of Dr. Balakrishnan).).
Comcast did not offer rebuttal arguments or evidence with respect to limitations 1[c] and
l5[f] in its Post-Hearing Briefs and has thus waived any such argument pursuant to Ground Rule
10.1. (Id. at 56-74.).
Thus, Rovi has proven by a preponderance of the evidence that, when operating in the Xl
System, the Accused 585 Products satisfy limitations l[c] and 15[f] of the '585 patent.
v. 	l[d): ''providing the user with an opportunity to select a
program listing from the at least one displayed program listing
for recording on the random access digital storage device";
15[g): ''provide the user with an opportunity to select a
program listing from the at least one displayed program listing
for recording on the random access digital storage device"
Dr. Balakrishnan testified that, when operating in the Xl System, the Accused 585
Products satisfy this limitation. (Tr. (Balakrishnan) at 782:20-784: 18. Screenshots in evidence
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show that the Accused 585 Products provide a user with an opportunity to select a program
listing ("Living Single-Whose Date Is It Anyway?") for recording on the hard drive from the
program listings displayed in the grid guide. (Id. at 783:11-784:14; CX-1051C.0020; CX-
1056C.0022; CX-1063C.0018; CX-1066C.0028.). Screenshots in evidence also show that the
selected program is recorded on the hard drive. (Tr. (Balakrishnan) at 783: 14-22 ("If the user
selects that record button, that record option, recording will occur off that listing"); CX-
1051C.0018-21; CX1056C.0001-2, 22, 27-28; CX-1063C.0001, 17-18, 25; CX-1066C.0018-19,
28-29.). The recording-including with the additional user-specified time added before and after
the scheduled broadcast time in connection with the "Auto Pad Recordings" storage option-is
performed on a hard drive (which is random access digital storage device): either locally on an
XGl STB or remotely in the case of the XG2 STB. (Id. at 784:3-14 (testifying regarding the
location and functionality of recording programs on hard drives on an XG 1 STB or in the
cloud).).
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Figure 40: Rovi's Depiction of Selection of Program Listing in Xl System
'585 Patent, Claim l[d]: Selection of Program Listing for Recording
Claim l[d)
providing the user with
an opportunity to
se lect a program listing
from the at least one
displayed program
listing for recording
CX- 1051C.20 (XG l vl ); see al so CX- 1056C.22 (X G1v3); CX-1063C.18 (XG2v2); CX-1066C.28 ( XI D)
Co ntains Co nfident ial Busine ss In for mat ion Subject to Pr ote ctive Order 	CDX-0006C. 70
(CDX-0006C.0070 (introduced during the testimony of Dr. Balakrishnan).).
Comcast did not offer rebuttal arguments or evidence with respect to limitations 1[ d] and_
15[g] in its Post-Hearing Brie fs and has thus waived any such argument pursuant to Ground Rule
10.1. (Id. at 56-74.).
Thus, Rovi has proven by a preponderance of the evidence that, when operating in the Xl
System, the Accused 585 Products satisfy limitations l[d] and 15[g] of the ' 585 patent.
vi. 	l[e): "recording the program on the random access digital
storage device based on the modification of the at least one
storage setting"; 15/h): "record the program on the random
access digital storage device based on the modification of the
at least one storage setting"
Dr. Balakrishnan testified that, when operating in the Xl System, the Accused 585
Products meet this limitation. (Tr. (Balakrishnan) at 784:19-787:6 (discussing CX-1051C.0020-
21 (X Gl) , CX- 1063C.0018, 25 (XG2), CX-1066C.0028-29 (XiD)).). Screenshots in evidence
show that the normal broadcast time of the "Living Single" program is from 8:30 a.m. to 9:00
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a.m. and, that after the "Auto Pad Recordings" option is selected, the recording time changes to
be from 8:29 to 9:01 a.m. {Tr. (Balakrishnan) at 785:12-786:13; CX-1051C.0018-21; CX-
1056C.0001-2, 22, 27-28; CX-1063C.0001, 17-18, 25; CX-1066C.0018-19, 28-29.). The Xl
system performs the recording with user-selected padding on a hard drive (random access digital
storage device) either locally on an XGI STB or remotely. (Tr. (Balakrishnan) at 784:3-14.).
Figure 41: Rovi' s Depiction of Selection of Program Listing in Xl System
'585 Patent, Claim l[e]: Recording Based on Modification of Storage Settings
Claim l[e]
recording t he program
,,
b as ed on th e
mod ification of the
at l ea st one st or age
setting.
CX·1 05 1C .21 (XG1v1); see also CX·1 05 6C . 27 , 28 (XG1v3); CX· 106 3C .25 (XG2v2); CX· 1066C. 29 (XI D)
Co ntains Con f idential Business Informat ion Su bject to Protective Order 	CDX-0006C. 76
(CDX-0006C.0076 (introduced during the testimony of Dr. Balakrishnan).).
Comcast did not offer rebuttal arguments or evidence with respect to limitations 1[e] and
15[h] in its Post-Hearing Briefs and has thus waived any such argument pursuant to Ground Rule
10.1. (Id. at 56-74.).
Thus, Rovi has proven by a preponderance of the evidence that, when operating in the Xl
System, the Accused 585 Products satisfy limitations l[e] and 15[h] of the '585 patent.
Based on the discussion of the evidence and the weight of the evidence, Rovi has proven
by a preponderance of the evidence that, when operating in the XI System, the Accused 585
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Products satisfy claims 1 and 15 of the ' 585 patent.
b) 	Claims 8 (Method) and 22 (System)
As shown below in Figure 42, claims 8 and 22 are parallel in structure. (Tr.
(Balakrishnan) at 819:2-921 : 19 (discussing similarities between claims 8 and 22 and evidence
supporting both).). As discussed below, for the most part, the Accused 585 Products satisfy
claim 22 for the same reasons, and based upon the same evidence, as set forth for claim 8. (Id. at
788:3-20.). In addition to the limitations of claim 8, claim 22 requires "a display screen" and "an
IPG implemented at least partially on circuitry." (Id. at 819:12-24.).
Figure 42: Rovi's Depiction of the Similarity Between Claims 8 and 22
'585 Patent, Claim 8 and Claim 22 Comparison
8. A method for recording programs osin!I an interactive
television program guide iJnplcmtl!ltcd 011 ser te levision
e uipmenf. the method comprisi ng:
displaying in a display screen al leaa~ t o~oe~=='-=""~ ..I
relating to el least one program:
providing e user with an opportunity to indicale a program
to be reconled one random access digital storage device
by selecting a progn,m listing from the at least one
displayed program listing, wherein the selected program
listing corresponds to the program 10 be recorded;
~~witlianeppq.illiii_iijtdaelecta leait.one
st6rigeiopdmi b: storiDg fbe ~'-recorded,
wberebi,1bi:a~Olle ~aoonllltea to at least
i;iie 8IOl8ge ~c:eaft~ (oJcoilliil how tbepro-
sfanl is » be digi 	siomt on die rimilom
cligic.1'&10rage device
in response to receiving the user selection of the at least one
storage option, modifying the at least one store e sett in
for lhe program to be recorded; end ..__,,.____
reeordiagtheJIIOIP'lllllottdulrandom 	di11talstorege
devic:c based CJll die modlficatioJ1 of die at least one
lltonl 	seal 	tor the
Contains Con fi dent ia l Bu siness Infor mat ion Subject to Protect ive Order
22 . A sysfemJar n..>cording programs the system compris-
ing : 	.
a di spl ay sc re en;
a ra ndom access digital storage device; a nd
"an in terac ti ve television program guide impleme nt ed at
least patt ia ll y on circui try, where in th e in teracti ve tele-
vision program guide is programmed to:
dis pl ay in th e display screen at least one program lis ti ng
related to at least one ro!!!:..am;;;-· --.,-,,,----
rovide a user with the opportunity to indicate a program
to be reconled on the random access diailal storage
device by selecting a program listing from the at least
one displayed program listing, wherein the selected
program list!!}g corres ods to the row.!!!! to be
recorded;
providethelli«with an opportunity to select at least one
storage option fur storing a program to be m:orded,
wherein the at least one storage option relales to at
least one storaae sening configuredtooontrol bow the
program is to be digitall stored on the random access
.,.1 d,!8_i_!al stores_e device
moc&Ji sid4 &t,leut O 	BID
'du,erM)eotion;
in response to receiving the user selection of the at least
one storage option, modify the at least one stora c
setting for the program to be recorded; end
(CDX-0006C.0132 (introduced during the testimony of Dr . Balakrishnan).).
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1. 	Preamble [claim 8]: "A method/or recording programs using
an interactive television program guide implemented on user
television equipment, the method comprising"; Preamble
[claim 22]: "A system for recording programs, the system
comprising"; 22/a]: "a display screen"; 22/c]: "and an
interactive television program guide implemented at least
partially on circuitry, wherein the interactive television
program guide is programmed to"
Claim S' s preamble is satisfied by the Accused 585 Products for the same reasons as the
Accused Products satisfy claim l 's preamble. (Tr. (Balakrishnan) at 794:21-796:20 (discussing
CX-1063C.0002 (XG2), CX-1051C.0020 (XGl) , CX-l056C.0022 (same), and CX-1066C.0002
(XiD)).). The preamble of claim 22 and limitations 22[a] and 22[c] are satisfied by the Accused
585 Products for the same reasons as articulated with respect to claim 8 and as described above
in the context of system claim 15. (Id. at 819:12-24 (discussing CDX-0006C.0131-43).).
With respect to these limitations, Comcast did not offer additional rebuttal arguments or
evidence in its Post-Hearing Briefs and has thus waived any such argument pursuant to Ground
Rule 10.1. (Id. at 56-74.).
Thus, Rovi has proven by a preponderance of the evidence that, when operating in the XI
System, the Accused 585 Products satisfy the preambles of claims 8 and 22, and limitations
22[a] and 22[c], of the '585 patent.
11. 	8/a]: "displaying in a display screen at least one program
listing relating to at least one program"; 22/d]: "display in the
display screen at least one program listing related to at least
one program"
When operating in the XI System, the Accused 585 Products satisfy these limitations for
the same reasons as discussed above for claim l[c]. (Tr. (Balakrishnan) at 794:21-797: 17
(discussing CX-1063C.0002 (XG2), CX-1051C.0020 (XGl), CX-1056C.0022 (same), CX-
1066C.0002 (XiD)).). Figure 43 below shows the program listing "Live with Kelly and Ryan,"
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is related to the program "Live with Kelly and Ryan," that is displayed on a display screen. (Id.
at 793:21-797: 17.).
Figure 43: Rovi's Depiction of Displaying Program Listing in Xl System
'585 Patent, Claim S[a]: Displaying a Program Listing in a Display Screen
Claim S[a]
displaying in a d is pl ay
screen at least one
progra m listing relating
t o at least one program;
Same as Claim B[pre]
XOD "'"" • :r;i ,i
1!
tli "'"' 	I,, ,'.,t I'
-·"""
~ HD 100,
CX -1063C.2 (XG2 v2 ); see al so CX - 1051C .20 (XGlvl ); CX -1 056C.22 (X G1v3); CX-1 0 66C.2 ( Xi D)
Contains Confidential Business Informat ion Subject to Protective Order 	CDX·0006C.102
(CDX-0006C.0102 (introduced during the testimony of Dr . Balakrishnan).).
With respect to t~ese limitations, Comcast did not offer rebuttal argument in its Post-
Hearing Briefs and has thus waived any such argument pursuant to·Ground Rule 10.1. (Id. at 56-
74.).
Thus, Ravi has proven by a preponderance of the evidence that, when operating in the Xl
System, the Accused 585 Products satisfy limitations 8[a] and 22[d] of the ' 585 patent.
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111 . 	8/b]: "providing a user with an opportunity to indicate a
program to be recorded on a random access digital storage
device by selecting a program listing from the at least one
displayed program listing, wherein the selected program listing
corresponds to the program to be recorded"; 22/e] ''provide a
user with the opportunity to indicate a program to be recorded
on the random access digital storage device by selecting a
program listing from the at least one displayed program listing,
wherein the selected program listing corresponds to the
program to be recorded"
When operating in the Xl System, the Accused 585 Products satisfy these limitations for
the same reasons discussed above with respect to limitation 1[d]. (Id. at 797: 18-799:21
(discussing CX-1063C.0003 (XG2), CX-1051C.0022 (XGl), CX-1056C.0023 (same), CX-
1066C.0003 (XiD)).).
Figure 44 below shows that Comcast Grid Guide users have the option to select a
program for recording, in this case "Live with Kelly and Ryan." (Id. at. 765:12-766:6, 798:10-
799:6, 800:21-808:3, 809: 12-812: 17.). Once selected, the program records to a hard disk locally
on a STB ( e. g. , XG 1 STB) or remotely to a XRE server (e.g., hard drives in Comcast's cloud).
(Id. at 799:7-21.).
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Figure 44: Rovi's Depiction of Indicating a Program to Record in Xl System
'585 Patent, Claim S[b]: Indicating Program to Be Recorded
Claim S[b]
providing a use r w it h an
oppo rtu n ity to indicate a
progr am to be recorded
by sel ecti ng a pr og ram
list ing fro m t he at l eas t
one displayed program
listing, wh erein t he
selected progr am listing .
correspond s to th e
progr am t o be re corded;
1'011
I RC'u•c.>1••u"'
j\ ! '.'. 1' I f\t I
I
Jus• lh ~ ep1soJe
(i (·, !ii
CX-1063C,3 (XG2v2); see also CX- 1 05 1C ,22 (X G lvl) ; CX - 1056C,23 (X G 1v3) ; CX-1 066 C.3 (X i D)
Contains Confidential Business Information Subject to Pr otective Order 	CDX-OOOGC.106
(CDX-0006C.0106 (introduced during the testimony of Dr. Balakrishnan).).
With respect to these limitations, Comcast did not offer rebuttal arguments in its Post-
Hearing Briefs and has thus waived any such argument pursuant to Ground Rule 10.1 . (Id. at 56-
74}
Thus, Rovi has proven by a preponderance of the evidence that, when operating in the XI
System, the Accused 585 Products satisfy limitations 8[b] and 22[e] of the ' 585 patent.
1v_ 	8{c]: ''providing the user with an opportunity to select at least
one storage option for storing the program to be recorded,
wherein the at least one storage option relates to at least one
storage setting configured to control how the program is to be
digitally stored on the random access digital storage device;";
22[b]: "a random access digital storage device"; 22{.i:
''provide the user with an opportunity to select at least one
storage option for storing a program to be recorded, wherein
the at least one storage option relates to at least one storage
setting configured to control how the program is to be digitally
stored on the random access digital storage device"
The Accused 585 Products satisfy these limitations for many of the same reasons
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discussed above with respect to limitations l[a] , l[b], and l[d]. (Tr. (Balakrishnan) at 799:22-
913 :7 (discussing CX-1063C.0005, 7, 11 , 13 (XG2), CX-1051C.0005-7, 10 , 12 , 25-26 (XGI) ,
CX-1056C.0006-8, 10 , 12 , 29-30 (same), CX-1066C.0005-8, 11 , 13 (XiD)).).
Here, however, "storage options" are not "global" in terms of applying to multiple
programs, as they were in the context of claim 1. Instead, limitations 8[ c] and 22 [b] require
program specific storage options. (JX-0004 ('585 patent) at els. !("control how programs are to
be digitally stored"), 8(control how the program is to be digitally stored) (emphasis added).).
Dr. Balakrishnan testified that the "Start" (specified start time), "Stop" (specified stop time),
"Keep" (kept until the time expires) and "HD Preferred" (recording a HD stream) are user-
selectable, program-specific "how" storage options in the Accused 585 Products. (Tr.
(Balakrishnan) at 765 :12-766:6, 800:21-808:3, 809:12-812:17; CX-1063C.0005, 7, 11 , 13.).
Figure 45 below provides an example of the "Start" and " Stop" options.
Figure 45: Rovi's Depiction How Storage Option Selection Pertaining to
One Program in Xl System
'585 Patent, Cla im 8[d] : User Selection of the "How" Storage Option
Claim S[d)
in response t o re ceiv in g
the use r selection of the
at least one sto ra ge
optio n,
. 	'
CX-1063C.1 2 (l eft ), 13 (ric ht) (X G2v2);
se e al so CX -10 51 C.11, 12 (XG l vl) ; CX- 1056C . 11, 12 (XG 1v3); CX- 1066C.12, 13 (XiD )
Same rationale applies to other storage options shown for Claim B[c}
Contains Confidential Busine ss Inf orm ation Subject lO Pr otecthl e OrdN 	COX--0006C. Ul
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'585 Patent , Cla im 8[d]: Modification of the "How" Storage Setting
Cla im S[d)
, t
modifyi ng t he at
least one storage settin g
for the program t o be
recorded; an d
CX-1 06 3C .16 (X G2v2)
Same rat ionale applies to other storage options shown for Claim B{c]
Contains Confidenti• Busine ss nform•tion Su bject to Protectiv e Order 	COX-0006C.123
(CDX-0006C.01 2 1, 123 (introduced during the testimony of Dr. Balakrishnan).).
In rebuttal, Comcast argued that these are "what" storage options, not "how " storage
options. (RRBr. at 67-70.). Comcast also asserted that Rovi "failed to show that there are any
storage settings to which these storage options relate." (Id. at 70.). For this second point,
Comcast appears to resurrect its argument that Rovi and Dr . Balakrishnan must examine source
code to prove the existence of a storage setting that relates to a storage option. (Id. ; CBr . at 54.).
Comcast's non-infringement arguments here are not persuasive. For example, Comcast
acknowledges the "Start" and "Stop" storage options as "similar to 'Auto Pad Recordings' in that
they can be used to change the start and stop time of a particular recording." (RRBr. at 67.). As
explained above in Section VIIl.A.3(a)(ii), Auto Pad Recordings is both a "what" and "how"
storage option and thus the "Start" and "Stop" options identified by Dr. Balakrishnan satisfy
limitations 8[c] and 22[f] of the ' 585 patent. Likewise, recording a stream in HD versus another
video format is a quintessential example of a " how " storage option, as shown in Figure 14 of the
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°585 patent. (JX-0004 (°585 patent) at Fig. 14.).

That said, Comcast made a persuasive argument that the “Keep” option identified as
infringing by Rovi “specifies only whether to continue to store all or a subset of recordings, but
does nothing to control how the recordings are to be digitally stored on hard drives.” (RRBr. at
| 68 (citing Tr. (Albonesi) at 1896:13-1897:4; id. (McCann) at 1408:25-1409:21).). In the context
of the ’585 patent and its prosecution history, what to keep in storage (kept until the time expires
or how long to keep it) is clearly distinct from how to store something. Therefore, while “Start,”
“Stop,” and “HD Preferred” are “how” storage options in the context of the asserted claims, the
weight of the evidence proves that “Keep” is not a “how” storage option.

As for Comcast's argument that Rovi omitted evidence of settings relating to “Start,”
“Stop,” and “HD Preferred” “how” storage options, to meet its burden of proof, Rovi did not
necessarily need to provide source code evidence. As explained above, source code is not the
only evidence of settings relating to these storage options. Instead, the IPG itself provides
adequate circumstantial evidence of such settings in terms of displaying settings in the IPG and
displaying modifications of the settings, as shown above in Figure 45. (Ti. (Balakrishnan) at
813:8-817:1; CX-1063C.0012-13). If these settings did not exist, Comcast could have rebutted
Rovi’s admittedly circumstantial evidence of settings related to “how” storage options with
citations to the source code showing the absence of such settings. Comcast did no such thing.

Thus, Rovi has proven by a preponderance of the evidence that, when operating in the X1

System, the Accused 585 Products satisfy limitations 8[c], 22[b], and 22[f] of the °585 patent.

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v. 8d]: “in response to receiving the user selection of the at least
" one storage option, modifying the at least one storage setting
for the program to be recorded”; 22[g]: “modify said at least
one storage setting in response to said user selection”; 22[h]:
“in response to receiving the user selection of the at least one
storage option, modify the at least one storage setting for the
program to be recorded”

When operating in the X1 System, the Accused 585 Products satisfy these limitations for
the same reasons as discussed above for limitation 1[b]. (/d. at 813:8-817:1 (discussing CX-
1063C.0002, 12-13, 16 (XG2), CX-1051C.001 1-12, 20 (XG1), CX-1056C.0011-12 (same), CX-
1066C.0002, 12-13 (XiD)).). As indicated above in Figure 45, upon receiving user selection of a
“storage option” such as start time and end time, the underlying “storage setting” corresponding _
to this selected option will be modified such the program is recorded with the user selected start
and stop times (as opposed to at the scheduled broadcast time). (/d. at 813:8-817:1; see also CX-
1063C.0016) (“Live with Kelly and Ryan” program selected by the user will be recorded
according to the user selected start time (“2 minutes early”) and stop time (“3 minutes late”)).).

With respect to these limitations, Comcast did not offer additional rebuttal arguments or
evidence in its Post-Hearing Briefs other than that addressed and rejected above, and has thus
waived any such argument pursuant to Ground Rule 10.1. (/d. at 56-74.).

Thus, Rovi has proven by a preponderance of the evidence that, when operating in the X1
System, the Accused 585 Products satisfy limitations 8[d], 22[g], and 22[h] of the ’585 patent.

vi. 8fe]: “recording the program on the random access digital
storage device based on the modification of the at least one
storage setting for the program”; 22[i]: “record the program
on the random access digital storage device based on the
modification of the at least one storage setting for the
program” 7

When operating in the X1 System, the Accused 585 Products satisfy these limitations for

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the same reasons as discussed above for claim 1[e] . (Tr. (Balakrishnan) at 817 :2-818: 17
(discussing CX-1063C.0014, 16 (XG2), CX-1051C.0011-12, 20 (XGl) , CX-1056C.0011-12
(same), CX-1066C.0002, 12-13 (XiD)).). As shown above in Figure 44, the normal broadcast
time for "Live with Ryan and Kelly" is 9:00 a.m. to 10:00 a.m. (CX-1063C.0014, 16.).
However, after modifying the " Start" and "Stop" storage settings for "2 minutes early" and "3
minutes late," respectively, the recording of "Live with Ryan and Kelly" starts at 8:58 a.m. and
ends at 10:03 a.m. (Id). At least for the "Start," "Stop," and "HD Preferred" storage options,
Rovi presented evidence that user selection of each results in the modification of a storage
setting controlling "how" programs are to be digitally stored on a hard drive. (Tr. (Balakrishnan)
at 818: 1-7.).
Figure 46: Rovi's Depiction of Recording Based on Storage Setting Modification in Xl
System
'585 Patent, Claim S[e]: Recording Based on the Modification
Claim S[e]
recordi ng the program
on the random acc ess
digita l storage device
based on the
modification of the at
least one storage sett ing
for the program.
CX - 1063C.14 (le ft ), 16 (right) (XG2v2)
Same rationale applies to other storage options shown for Claim B[c]
Cont ains Confidential Business Informa tion Subject to Protective Ord er 	lDX-0006C. 127
(CDX-0006C.0127 (introduced during the testimony of Dr. Balakrishnan).).
With respect to these limitations, Comcast did not offer rebuttal arguments or evidence in
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its Post-Hearing Briefs and has thus waived any such argument pursuant to Ground Rule 10.1.
(Id. at 56-74.).
I
Thus, Rovi has proven by a preponderance of the evidence that, when operating in the X 1
System, the Accused 585 Products satisfy limitations 8[e] and 22[i] of the '585 patent.
Based on the above, Rovi has proven by a preponderance of the evidence that, when
operating in the XI System, the Accused 585 Products satisfy claims 8 and 22 of the '585 patent.
c) 	Claim 11 (Method)
i. 	"The method of claim 10 [The method of claim 8 wherein the
at least one storage option is for selecting at least one video
format for recording.] wherein the at least one video format
comprises at least one of high definition television, normal
television and a digital format. "
When operating in the XI System, the Accused 585 Products satisfy these limitations for
the same reasons as discussed above for claims 8 and 22. (Tr. (Balakrishnan) at 821 :20-823:24
(discussing CX-1063C.0005-6 (XG2), CX-1051C.0005, 25-26 (XGl) , CX-1056.0006, 29-30
(same), CX-1066C.0005, 6 (XiD)).). In particular, as shown below in Figure 47, the Accused
585 Products provide a HD Preferred video format storage option, as required by claim 11. (Id.
at 822: 13-823: 19 (testifying how HD preferred storage option allows the user to select a video
format and thus modify the related video format storage setting).).
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Figure 47: Rovi's Depiction of SD and HD Storage Options in Xl System
'585 Patent, Claim 11: High Definition Video Format
Claim 10
The method of cl aim
8 wherein the at least
one storage option is for
selecting at least one
video format for
recording.
Claim 11
Same as "HD preferred" in Claim B[c}
The method of cla im
10 wherein the at least
one video format
compri ses at least one
of high defini tio n
telev is ion, normal
television and a digital
format. CX· 1063C.5 (XG2v2); s ee al so CX·1051 C. 5, 25, 26 (XGlv l) ; CX - 1056 .6, 29, 30 (XG 1v3); CX·1066C.5, 6 (Xi D)
Contains Con(ldential Bu si ne ss lnforrna tJ on Subject to Protective Order
'585 Patent, Claim 11: Standard Definition Video Format
Claim 10
The method of cl aim
8 where in the at least
one storage option is for
se lecting at least one
video for mat for
re cording.
Claim 11
COX-0006C. 148
The method of cla im
10 wherein the at least
one video format
compri ses at least one
of high definition
television, normal
television and a digita l
fo rmat. CX - 1063 C. 6 (XG2 v 2) ; see also CX· 1051C.5, 25 , 26 (XGlv l) ; CX · 1056C.6, 29, 30 (XG1v3); CX ·1066C.5, 6 (XiD)
Conta ins Confidential Bus iness Information Subject to Protective Order 	CDX-0006C. 149
(CDX-0006C.0148-49 (introduced during the testimony of Dr. Balakrishnan).).
With respect to claim 11 , Comcast did not offer rebuttal arguments or evidence in its
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Post-Hearing Briefs and has thus waived any such argument pursuant to Ground Rule 10.1. (d.
at 56-74.).

| Thus, Rovi has proven by a preponderance of the evidence that, when operating in the X1
System, the Accused 585 Products satisfy claim 7 of the °585 patent.

B. Technical Prong of the Domestic Industry
1. Technical DI Overview

As shown below in Figure 48, Rovi asserted that four domestic industry products practice
claims 8, 11, and 22 of the ’585 patent. (CBr. at 60-61.). These products are: Rovi’s i-Guide,
' Passport, and Next-Gen Platform, and TSI’s TiVo Bolt with Experience 4.0 (collectively, “585
DI Products”). (Tr. (Balakrishnan) at 833:22-834:2; CDX-0006C.0167.). |

Figure 48: Rovi’s Depiction of 585 DI Products

(CDX-0006C.0167 (introduced during the testimony of Dr. Balakrishnan).).

As an initial matter, Comcast’s expert, Dr. Albonesi, admitted that if Comcast’s Accused

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585 Products were found to infringe the asserted claims of the ’585 patent, the 585 DI Products
would practice at least one asserted claim for the same reasons. (Tr. (Albonesi) at 1905:5-14,
1907:9-14, 1907:24-1908:3; see also Tr. (McCann) at 1438:23-1439:8 (testifying that the current
Comcast X1 platform and the TiVo environment “share architectural similarities”).). As
explained above, the Accused 585 Products satisfy the asserted claims of the ’585 patent. Thus,
the evidence is clear that Rovi’s 585 DI Products also satisfy at least certain of these claims and
that Rovi has satisfied the technical prong of the domestic industry requirement for the °585
patent. Nevertheless, for the sake of completeness, below is a limitation-by-limitation analysis

' presenting evidence proving that the 585 DI Products satisfy claims 8, 11, and 22.

2. Rovi’s 585 DI Products Practice One or More Claims of the °585
Patent :

a) Claims 8 and 22

i. Preamble [claim 8]: “A method for recording programs using
an interactive television program guide implemented on user
television equipment, the method comprising;” [claim 22]: “A
system for recording programs, the system comprising”; 22[a]:
“a display screen”; 22[c]: “and an interactive television
program guide implemented at least partially on circuitry,
wherein the interactive television program guide is
programmed to”

As shown below in Figure 49, when operating in the X1 System, the 585 DI Products |
satisfy these limitations. (Tr. (Balakrishnan) at 835:8-837:11; CX-1071.0006 & CX-1028C.0001
(i-Guide); CX-1071.0024 & CX-1038C.0001 (Passport); CX-1071.0044 & CX-1035C.0001
(Next-Gen); CX-1071.0058 & CX-1024C.0002 (TiVo Bolt).). The 585 DI Products are IPGs
implemented on STBs. (Tr. (Balakrishnan) at 835:8-837:11.). The 585 DI Products are

applications that STBs store and run at user locations. (/d. at 836:1-837:2.).

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Figure 49: Rovi's Depiction of 585 DI Products Satisfying Preambles of Claims 8 and 22
'585 Patent, Claim 8[pre]: Interactive Television Program Guide
Claim S[pre)
A met hod for recording
progra ms using an
interactive television
program guide
implemented on user
televisi on equipment,
the method compr is ing:
I-Gulde
Passport
Contains Con fidential Business Information Subject to Protective Order
'585 Patent, Claim 8[pre] : Interactive Television Program Guide
Claim S[pre)
A me t hod for recording
progr ams us ing an
interactive t elevis ion
program guide
implemente d on user
televisi on equipment,
th e method comprising:
NextGen
Bolt
Contains Confidential Business Information Subject to Protective Order
iD·, • 9(:as
I • • •
... . c,.
::=::.'.-:!:':':'=-~ - •
-~ ~·--- ·-
.:· •• 	...,... __• •O•
11 ••-- 	~-- ··
•II -- 	- ---	,, . • qaa .....
-.. ..... - ·----
·- llri~	.-·.·~~ lllillllil
,___... ___ _
CX-107 1.6; see also
CX-1028C.1
CX -1 071 .24; see
also CX- 1 038(. 1
LOX 0006< .! JI
CX- 1071.44; see
also CX -1035C.1
CX- 1 071 .58; see
also CX- 1024C.2
COX -0006C .173
---- --~ ---------~
(CDX-0006C.0171 , 173 (introduced during the testimony of Dr. Balakrishnan).).
With respect to these limitations, Comcast did not offer any new rebuttal arguments in its
Post-Hearing Bri efs that have already been addressed and rejected above in the context of
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infringement. Comcast has thus waived any such arguments pursuant to Ground Rule 10.1. (Id.
at 56-74.).
Thus, Rovi has proven by a preponderance of the evidence that, when operating in the X 1
System, the 585 DI Products satisfy the preambles of claims 8 and 22, and limitations 22[a] and
22[c] of the ' 585 patent.
11. 	8/a): "displaying in a display screen at least one program
listing relating to at least one program;" 22/d): "display in the
display screen at least one program listing related to at least
one program"
When operating in the Xl System, the 585 DI Products satisfy these limitations. (Tr.
(Balakrishnan) at 837:12-838:10 (discussing CX-1071.0006 & CX-1028C.0001 (i-Guide); CX-
1071.0024 & CX-1038C.0001 (Passport); CX-1071.0044 & CX-1035C.0001 (Next-Gen); CX-
1071.0058 & CX-1024C.0002 (TiVo Bolt)).). As shown below in Figure 50, the 585 DI
Products display at least one program listing relating to at least one program in a grid guide. (Id.;
CDX-0006C.0173.).
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Figure 50: Rovi's Depiction of 585 DI Products Displaying Program Listings
'585 Patent, Claim S[a]
Claim S[a]
d is playing in a d is play
screen at least one
program li sting relat in g
to at least one program;
I-Gulde
Passport
Contains Confidential Business Information Subject to Protective Order
'585 Patent, Claim 8[a]
Claim S[a]
d is pla yi ng in a d is play
sc reen at least one
prog ram listing relat ing
to at least one prog r am ;
NextGen
Bolt
Contains Con fidential Business Information Subject to Protective Order
CX- 1071 .6; see also
CX-1028C. 1
CX -1 071.2 4; see
also CX -1038C.1
CX -10 71 . 44 ; see
also CX- 103SC. l
CX-1071.58; see
also CX- 1024( .2
COX-0006C.178
(CDX-0006C.0177-78 (introduced during the testimony of Dr. Balakrishnan).).
With respect to these limitations, Comcast did not offer any new rebuttal arguments or
evidence in its Post-Hearing Briefs that have already been addressed and rejected above in the
context of infringement. Comcast has thus waived any such arguments pursuant to Ground Rule
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10.1. (Id. at 56-74.).
Thus, Rovi has proven by a preponderance of the evidence that, when operating in the Xl
System, the 585 DI Products satisfy limitations 8[a] and 22[d] of the '585 patent.
111. 	8[b]: "providing the user with an opportunity to indicate a
program to be recorded on a random access digital storage
device by selecting a program listing from the at least one
displayed program listing, wherein the selected program listing
corresponds to the program to be recorded,·" 22[e]: "provide a
user with the opportunity to indicate a program to be recorded
on the random access digital storage device by selecting a
program listing from the at least one displayed program listing,
wherein the selected program listing corresponds to the
program to be recorded"
When operating in the Xl System, the 585 DI Products satisfy these limitations. (Tr.
(Balakrishnan) at 838:11-840:8; CX-1071.0009 & CX-1028C.0002-3 (i-Guide); CX-1071.0026
& CX-1038C.0002 (Passport); CX-1071.0046 & CX-1035C.0002 (Next-Gen); CX-1071.0060 &
CX-1024C.0003 (TiVo Bolt). ). As shown below in Figure 51, the 585 DI Products provide a
user the opportunity to indicate a program to be recorded on a random access digital storage
device by selecting a program listing from the at least one displayed program listing, wherein the
selected program listing corresponds to the program to be recorded. (Id.; CDX-0006C.0182.).
The 585 DI Products store programs on hard disk drives. (Id.; CX-0860C.0082 (i-Guide
contains a hard drive); CX-0859.0019, 333, 518, 523 (Passport contains a hard drive); CX-0854
(Next-Gen contains a hard drive); CX-0229 (TiVo Bolt contains a hard drive).).
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Figure 51: Rovi's Depiction of585 DI Products and User Selection of a Program to Record
'585 Patent, Claim S[b]: Indicating a Program to Be Recorded
Claim S[b]
pro vi d in g a user wi th an
opportunity to indicate a
program to be recorded
on a random access
digital storage device by
se lect ing a program
li sting from the at least
one displayed program
li sting, wherein the
se lected program listing
corresponds to the
program to be recorded;
I-Gulde
Passport
Contains Confiden t ial Bu siness Information Subject to Protective Order
'585 Patent, Claim B[b]: Indicating a Program to Be Recorded
Claim S[b]
pro vi ding a user with an
opportunity to indicate a
program to be recorded
on a random access
digital storage de vic e by
selecting a program
listing from the at least
one displayed program
li sting, wherein the
selected program listing
corresponds to the
program to be recorded;
NextGen
Bolt
Contains Confidential Bu siness Information Subject to Protective Order
(CDX-0006C.0181-82 (introduced during the testimony of Dr. Balakrishnan).).
CX- 1071 .9; see also
CX-1028C.2-3
CX - 1071.26; see
also CX-1038C.2
lOX-0006C.181
CX- 1 07 1.46; see
also CX- 1035C.2
CX- 1 071 . 60 ; see
also CX-1024C.3
CDX-0006C. 182
With respect to these limitations, Comcast did not offer any new rebuttal arguments or
evidence in its Post-Hearing Briefs that have already been addressed and rejected above in the
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context of infringement. Comcast has thus waived any such arguments pursuant to Ground Rule
10.1. (Id. at 56-74.).
Thus, Rovi has proven by a preponderance of the evidence that, when operating in the XI
System, the 585 DI Products satisfy limitations 8[b] and 22[e] of the '585 patent.
1v. 	8/c]: "providing the user with an opportunity to select at least
one storage option for storing the program to be recorded,
wherein the at least one storage option relates to at least one
storage setting configured to control how the program is to be
digitally stored on a random access digital storage device;"
22/b]: "a random access digital storage device"; 22UJ:
"provide the user with an opportunity to select at least one
· storage option for storing a program to be recorded, wherein
the at least one storage option relates to at least one storage
setting configured to control how the program is to be digitally
stored on the random access digital storage device;"
When operating in the XI System, the 585 DI Products satisfy these limitations. (Tr ..
(Balakrishnan) at 840:9-843:6; CX-1071.0010 & CX-1028C.0007 (i-Guide); CX-1071.0028 &
CX-1038C.0005 (Passport); CX-1071.0046 & CX-1071.0047, CX-1035C.0003, 6 (Next-Gen);
CX-1071.0060, CX-1071.0061, CX-1024C.0003, 6 (TiVo Bolt).). As shown below in Figure 52,
a user can select storage options that each relate to at least one storage setting configured to
control how the selected program is to be digitally stored on a random access digital storage
device (i.e., the hard disk drive of the 585 DI Products). (Id.; CDX-0006C.0186-90 (citing CX-
1071.0046 showing the Next-Gen guide "how" storage options of "start recording," and "stop
recording" are applied to the program).). Comcast agreed that "the settings found in [the 585 DI
Products] are similar to the 'record options' in Comcast's system." 71 (RRBr. at 76-77.). Finally,
71 By way ofreview based on the analysis provided above in the context of infringement, while "Start
recording," "Stop recording," and "Record as" are "how" storage options that each satisfy the asserted
claims, "Save Until" is merely a "what" storage option and thus does not satisfy the asserted claims.
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the 585 DI Products include hard drives for storing programs as discussed above with respect to
limitation 8[b]. The 585 DI Products thus meet these limitations for the same reasons that the
Accused 585 Products infringe. (Tr. (Balakrishnan) at 840:9-843:6.).
Figure 52: Rovi's Depiction of 585 DI Products and User Selection of Storage Options
'585 Patent, Claim S[c]: Selection of "How" Storage Options
I-Gulde
Claim S[c]
providing the user with
an opportunity to select
at least one storage
option for storing the
program to be recorded,
wherein the at least one
storage option relates to
at least one storage
setting configured to
control how the
program is to be digitally
stored on the random
access digital storage
de vic e; 	CX -1 071 . 10; s ee also CX -1028C.7
Contains Confidential Bu siness Information Subject to Protective O<der 	CDX-0006C.1 86
(CDX-0006C.0186 (introduced during the testimony of Dr. Balakrishnan).).
With respect to these limitations, Comcast did not offer any new rebuttal arguments or
evidence in its Post-Hearing Briefs that have already been addressed and rejected above in the
context of infringement. Comcast has thus waived any such arguments pursuant to Ground Rule
10.1. (Id. at 56-74.).
Thus, Rovi has proven by a preponderance of the evidence that, when operating in the XI
System, the 585 DI Products satisfy limitations 8[c], 22[b], and 22[f] of the '585 patent.
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v. 	8/d]: "in response to receiving the user selection of the at least
one storage option, modifying the at least one storage setting
for the program to be recorded;" 22/g]: "modify said at least
one storage setting in response to said user selection;" 22/h]:
"in response to receiving the user selection of the at least one
storage option, modify the at least one storage setting for the
program to be recorded;" and
When operating in the XI System, the 585 DI Products satisfy these limitations. (Tr.
(Balakrishnan) at 843:7-846:5; CX-1071.0010 & CX-1028C.0007 (i-Guide); CX-1071.0028 &
CX-1038C.0005 (Passport); CX-1071.0046, CX-1071.0047 & CX-1035C.0003, 6 (Next-Gen);
CX-1071.0060, CX-1071.0061 & CX-1024C.0003, 6 (TiVo Bolt).). As shown below in Figure
53, in response to receiving the user selection of a "how" storage option ( e.g., "start recording,"
"stop recording"), the 585 DI Products modify the corresponding storage setting for the program
to be recorded. (Id.; CDX-0006C.0193-99 (citing CX-1028C.0021 showing the i-Guide
modified storage settings for "Eyewitness News").). Comcast agreed that the "settings found in
the [585 DI Products] are similar to the allegedly infringing 'record options' in Comcast's
system." (RRBr. at 76-77.). It appears that the 585 DI Products satisfy these limitations for the
same reasons that the Accused 585 Products infringe. (Tr. (Balakrishnan) at 843:7-846:5.).
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Figure 53: Rovi's Depiction of 585 DI Products Modifying "How" Storage Settings
'585 Patent, Claim S[d]: User Selection of "How" Storage Option
Claim S[d]
rece ivi ng
the user selection of the
at least one storage
option,
I 	•
I-Gulde
Passport
Contains Confidential Busine ss Information Subject to Protective Order
'585 Patent, Claim S[d]: User Selection of "How" Storage Option
Claim S[d]
receiving
the user selection of the
at least one storage
option,
NextGen
Bolt
Contains Confidential Bu siness Information Subject to Protective Order
Page 180 of 325
CX -1071.10; see
also CX·1028C.7
CX -1071.28; s ee
also CX·1038 C. 5
COX-0Xl6C.193
CX - 1071 . 46 ; s ee
also CX-1071.47;
CX-1035C.3, 6
CX-1071. 60 ; see
a lso CX- 1 071 . 61 ;
1024C.3, 6
CDX - 0006C.194

Public Version
'585 Patent, Claim S[d]: Modification of Storage Setting (i-Guide Example)
Claim 8[d]
in re sponse to 	r
t1P
mod if yi ng the at
lea st one storage s ett ing
fo r the program to be
recorded; and
CX- 1028C.21
Contains Confident ial Busi ness Information Subject to Protective Order 	CDX-0006C.199
(CDX-0006C.0193-94, 199 (introduced during the testimony of Dr. Balakrishnan).).
With respect to these limitations, Comcast did not offer any new rebuttal arguments or
evidence in its Post-Hearing Briefs that have already been addressed and rejected above in the
context of infringement. Comcast has thus waived any such arguments pursuant to Ground Rule
10.1. (Id. at 56-74.).
Thus, Rovi has proven by a preponderance of the evidence that, when operating in the Xl
System, the 585 DI Products satisfy limitations 8[d], 22[g], and 22[h] of the '585 patent.
Vt. 	8/e]: "recording the program on the random access digital
storage device based on the modification of the at least one
storage setting/or the program;" 22/i]: "record the program
on the random access digital storage device based on the
modification of the at least one storage setting for the
program;"
When operating in the XI System, the 585 DI Products satisfy these limitations. (Tr.
(Balakrishnan) at 846:6-846:24; CX-1071.0010 & CX-1028C.0007 (i-Guide); CX-1071.0028 &
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CX-1038C.0005 (Passport); CX-1071.0046, CX-1071.0047 & CX-1035C.0003, 6 (Next-Gen);
CX-1071.0060, CX-1071.0061 & CX-1024C.0003 (TiVo Bolt).). As shown abave in Figure 53,
the 585 DI Products record the program on a random access digital storage device (hard drive)
based on the modification of the at least one storage setting. (Id.; CDX-0006C.0203 (citing CX-
1071.0046 showing Next-Gen modified storage settings for "Jeopardy").). The 585 DI Products
include hard drives for storing programs as discussed above in the context oflimitation 8[b].
With respect to these limitations, Comcast did not offer any new rebuttal arguments or
evidence in its Post-Hearing Briefs that have already been addressed and rejected above in the
context of infringement. Comcast has thus waived any such arguments pursuant to Ground Rule
10 . 1. (Id. at 56-74.).
Thus, Rovi has proven by a preponderance of the evidence that, when operating in the XI
System, the 585 DI Products satisfy limitations 8[e] and 22[i] of the '585 patent.
Based on the above, Rovi has proven by a preponderance of the evidence that, when
operating in the XI System, the 585 DI Products satisfy claims 8 and 22 of the '585 patent.
b) 	Claim 11
1. 	The method of claim 10 wherein the at least one video format
comprises at least one of high definition television, normal
television and a digital format.
When operating in the XI System, the 585 DI Products satisfy claim 11. (Tr.
(Balakrishnan) at 847:5-848: 12 ; CX-1071.0014 (i-Guide); CX-1071.0043 (Passport); CX-
1071.0050 (Next-Gen); CX-1071.0061 (TiVo Bolt). In addition to the analysis above showing
that the 585 DI Products satisfy claim 8, one of the storage options provided in the 585 DI
Products is recording in the "High Definition" or "HD" video format. (Id.; see CX-1024C.0006
(Screenshots ofTiVo Bolt Operation); CX-1028C.0007 (Screenshots ofRovi Guides
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Operation).).
Figure 54: Rovi's Depiction of 585 DI Products Offering Storage in HD Video
'585 Patent, Claim 11
Claim 10
The method of claim
8 wherein the at least one
storage option is for
selecting at least one video
format for re cording.
Claim 11
The method of claim
10 wherein the at least one
video format comprises at
lea st one of high definition
television, normal
television and a digital
format.
I-Gulde
Passport
Cont ains Co nfid en ti al Business Informatio n Subject to Pro tect ive Order
-- 	-
'585 Patent, Claim 11
Claim 10
The method of cla im
8 wherein the at lea st one
storage option is for
selecting at least one video
format for recording.
Claim 11
The method of claim
10 wherein the at least on
video format comprises at
least one of high definition
telev is ion, normal
television and a digital
format.
NextGen
Bolt
Contains Co nfidential Bu siness Information Subject to Protec.live Order
(CDX-0006C.0208-09 (introduced during the testimony of Dr. Balakrishnan).).
CX- 1071 .14
CX- 1071.43
CDX-0006C. 208
CX - 1071 .50
CX- 1071.61
CDX-0006C. 209
With respect to claim 11 , Comcast did not offer any new rebuttal arguments or evidence
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in its Post-Hearing Briefs that has not already been addressed and rejected above in the context
of infringement. Comcast has thus waived any such arguments pursuant to Ground Rule 10.1.
(d. at 56-74.).

Thus, Rovi has proven by a preponderance of the evidence that, when operating in the X1
System, the 585 DI Products satisfy claim 11 of the ’585 patent.

C. Invalidity
1. Legal Standard: Anticipation

A determination that a patent is invalid as being anticipated under 35 U.S.C. § 102
requires a finding, based upon clear and convincing evidence, that each and every limitation is
found either expressly or inherently in a single prior art reference. See, e.g., Celeritas Techs. Inc.
v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Anticipation is a question of fact,
including whether a limitation, or element, is inherent in the prior art. In re Gleave, 560 F.3d
1331, 1334-35 (Fed. Cir. 2009). The limitations must be arranged or combined the same way as
in the claimed invention, although an identity of terminology is not required. /d. at 1334 (noting,
“the reference need not satisfy an ipsissimis verbis test”); MPEP § 2131.

. In addition, a prior art reference’s disclosure must enable one of ordinary skill in the art

to practice the claimed invention “without undue experimentation.” Gleave, 560 F.3d at 1334-
35. A prior art reference that allegedly anticipates the claims of a patent is presumed enabled;
however, a patentee may present evidence of non-enablement to overcome this presumption.
Impax Labs., Inc. v. Aventis Pharms. Inc., 468 F.3d 1366, 1382 (Fed. Cir. 2006). “[W]hether a

prior art reference is enabling is a question of law based upon underlying factual findings.”

Gleave, 560 F.3d at 1335.

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2. Invalidity Overview

Based on the analysis that follows, Comcast has proven by clear and convincing evidence
that the asserted claims of the 585 patent are invalid. They are anticipated by ReplayTV 893
and, in the alternative, obvious in light of ReplayTV 893 in combination with ReplayTV 338.

3. Examining the Crowded Prior Art Field Reveals the Strength of
Comcast’s Invalidity Case and the Weakness of Rovi’s Rebuttal

Comcast asserted that claims 1, 8, 11, 15, and 22 of the °585 patent are invalid as
anticipated and/or obvious in light of the prior art. (RBr. at 24-53.). Comcast relied on three
prior art references: (1) U.S. Patent Application No. US 2002/0057893 (“ReplayTV 893”), (2)
U.S. Patent No. 6,324,338 (“ReplayTV 338”); and (3) the U.S. Patent No. 6,016,348 (“Blatter”).
(ad.). Comcast contended that each of these publications anticipated the asserted claims, that
each of these publications independently rendered obvious the asserted claims, and, finally, that
ReplayTV 893 and ReplayTV 338 in combination rendered the asserted claims obvious. (/d.).

In response, Rovi contended that claims 1, 8, 11, 15, and 22 of the 585 patent are valid.
(CRBr. at 16-43.). Rovi lumped the Replay references together and argued that neither
disclosed: (1) user specification of “global storage” settings from the IPG as required by claims
1 and 15; and (2) using an IPG for selecting storage options controlling how a program is to be
digitally stored. (Jd. at 16-32.). Rovi also argued that Blatter failed to disclose: (1) an “IPG”
implemented on “user television equipment;” (2) “the global storage settings from claims | and
15 of the ’585 Patent;” and (3) the “high-definition television, normal television [or] a digital
format” storage options required by claim 11. (/d. at 37-42.). Finally, Rovi argued that
Comcast’s obviousness combination of ReplayTV 893 and ReplayTV 338 failed for lack of

motivation to combine them and the likelihood of success. (/d. at 42-43.).

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7

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a) | Overview of the Prior Art
(1) ReplayTV 893
ReplayTV 893 “relates to digital recording and playback of audio and video streams.”
(JX-0008 (ReplayTV 893 patent application) J 1.). ReplayTV 893 teaches that “a digital VCR
10 acts as a central station for recording and playback of analog and digital audio and video” and
that using “remote control 22 and on-screen menus displayed by the digital VCR 10 on the ©
television 18” “the user may control all connected audio and video devices using a simple,
natural, and unified interface provided by the digital VCR 10.” (dd. ¥ 18.). |

Advantages of the “invention” include that a “user can exercise centralized control over

33 ce 29 66

multiple video sources,” “exercise VCR-style control over live television shows,” “specify a
show to record based on the content of the show and information associated with the show,” and
access “show information ... stored along with each recorded show.” (/d. ff] 6-8.). As shown
below in Figure 55, “a channel guide display 500 presents the user with a visual representation of
information contained in the channel guide database and of content recorded in personal
channels.” (Id. J 87.). “The information about ... personal channels that is displayed by the
channel guide display 500 is derived from the show information that is recorded in the personal
channels.” (/d.). For example, in Figure 55 below, “a user might create a ‘Finance’ personal

channel whose record criteria specify all episodes of the shows ‘Moneyline’ and ‘Your Money.””

(Id. 4 95.).

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Figure 55: “Channel Display Guide” of ReplayTV 893.

FIG. 5
yx” 500
[> 8:45pm
- \si2 \610.
| FOX Scooby-Doo (30 minutes) 8:30-9:00
Scooby and the gang tearn up with a lonesome poi maker in onfer
508 ta solve the mystary behind Mono Tik! Tia. Animated,
Channels 8:30pm «[S:0Opm (9:30pm
1003 TBS Scooby Doo —|Car Crashes 7
1004 NBC ER ©.-514 ; News
1005 Nick The Big Help Cy 516 [Doug
1006 Fashion [Swimsuits = =‘ [FallPreview =
1007 Game [Card Sharks2000 [Lucky Streak
1008 Food [iron Chef Marathon 7
wosSVCR ff _
1010 Finance |Moneyline 6/1 Spm |Your Monay 6/1: 9pm
ts

s02/

(Id. at Fig. 5.).

504-7

(2) ReplayTV 338

ReplayTV 338 is a “video data record[er] having integrated channel guides allowing a

playback and viewing.” (JX-

that “[v]ideo data recorders”

user to control recording and storage of television signals into personal channels for later

and [c]hannel guides are well-known in the art” and remarked that

“there has not been sufficient integration of the channel guides with the record and playback

Page 187 of 325

0006 (ReplayTV 338 patent) dt Abstract.). ReplayTV 338 observed

Public. Version

capabilities of video data recorders.” (/d. at 1:12-55.). The ReplayTV 338 system allows a user
to “specify criteria for recording of shows from an input source ... and shows are then selected
based on the user specified criteria and recorded for later playback.” (/d. at Abstract.). “Storage
of the shows may be organized into personal channels in order to facilitate later playback, e.g.,
the user may specify a channel of action movies, a channel of nature programming, a channel for
sports, etc.” (Id.). As shown below in Figure 56, “personal channels may be displayed, similar
to other channels, in the user interface.” (/d. at 7:27-28.).

Figure 56: “Channel Display Guide” of ReplayTV 338

ct | | ] 8:45pm

Friends recorded 11/17 (Personal Channel)
The friends hang out and have fun at their upscale New

personal York apartment.

TV_Chonnels 8:30pm 9:00pm 19:30pm
1003 TBS Sceoby Doo Car Crashes

1004 NBC |ER News

1005 Nick |The Big Help Doug
P100 Friends Friends 11/17 | Friends v7 Friends 11/24
P101 Tonight) Tonight iW? 7 —_ Tonight 11/13
P102 Science Nature 11/15 | Wild Discovery 11/15

FIG, lO

(Id. at Fig. 10; see also 7:30-33 (describing Figure 10 as “showing personal channels for the
series ‘Friends’ (P100 30 Friends), for ‘Tonight’ (P101 Tonight) and for science shows (P102
Science) is integrated in the same display with the channel guide).).

ReplayTV 338 is cited on the face of the °585 patent. (JX-0004.0003-4 (°585 patent) at

2-3 (listing references considered by the examiner); JX-0010.5125-26 (’585 patent prosecution

‘ Page 188 of 325

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history); Tr. (Albonesi) at 1945:9-1946:9 (admitting ReplayTV 338, along with other ReplayTV-
related prior art, are cited on the face of the ’585 patent as references considered by the USPTO
during prosecution).).

(3) — Blatter

Blatter teaches a “decoder conditional access system [that] incorporates different
encryption systems for providing access to programs derived from different sources.” (RX-0004
(Blatter) at Abstract.). “The data content of premium program channels such as HBO™,
Cinemax™ and Showtime™, for example, is usually protected from unauthorized access by
methods such as encryption and scrambling.” (id. at 1:27-32.). “The processing of encrypted
~ and non-encrypted program data and the management of associated encryption and 50
scrambling codes for storage, billing and other applications presents a number of problems.” (Jd.
at 1:49-52.). Blatter proposes to solve these problems with two-algorithm decoder conditional
access. (Id. at 2:16-21.). “A conditional access processor for processing encrypted program data
and an encryption code includes a first algorithm means for decrypting the encryption code to
provide an encryption key. The conditional access processor also includes a second algorithm
means for encrypting the encryption key and the second encryption algorithm is different to the

first encryption algorithm.” (/d. at 2:23-28.).

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F igure 57: “Channel Display Guide” of Blatter

10 "FIGURE 1.
INPUT = 15
ROCESSOR
70
EMODULATOR TRANSPORT SYSTEM
- 25
aa ee ee a ee ee ee Pe =_»[HIGH SPEED
NRSS 1 DATA PORT
40 . BUFFER | | c
DECRYPTION +
a 75
7 mi — __ > CONTROL AUDIO
i o ee _4 65 DECODE
_SS-S pecope pip ES TANS 1. yy ' 80
oor | oe PORT ||. [PACKET |__, [APPLICATION
1 SELECTION F--Mpecrvprionif™| pecopen. [Tt surrer tf] wirenence the | MOEe.
Tepe 7 > nine 7 5 L T-PIQEGODER
tpe[MUX Fy 45° 47 + 11 80° 58 t eo 4. | 707 & 85
| 3775 STORAGE PID, - — os!
1 Lu | jt c 790
I Cc SE Foren TY a i store |_| . Istonace
| TT + + MUX} > INTERFACE! | DEVICE_|
| ee > ;
Lo. SERVICE DETECT 1102 h j
Tae ~ 38 rico |
|
$20 cus S| ef POAT} +
nave’ REMOTE PS! GENERATOR oe ro y
oaaca ya UNIT bm) & SYSTEM +> + | [SMART Cee
eccos r a LK,
cosee |j__INTEREACE] | CONTROLLER Oe LARD S30 ) [MEDIUM

saace REMOTE
CONTROL UNIT
125

(Id. at Fig. 1.).

.b) Rejecting Rovi’s Invalidity Rebuttal Argument that Claims 1
and 15 Require Steps Performed in the Exact Order Recited

Even before reaching their dispute whether the asserted claims read on these prior art
references, as an initial matter, the Private Parties raised a dispute over the scope of asserted
claims 1 and 15. The Private Parties disputed, particularly in the context of “global storage
settings,” whether claims 1 and 15 require the performance of a specific sequence of “storage
option selection” and “program selection” or, alternatively, cover those steps performed in any
sequence. |

Rovi appeared to assert that the asserted claims require performance of steps in the order

recited, such that:

Page 190 of 325

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° claims 1 and 15 require “global” storage options that apply to multiple programs
and are set in advance of the selection of a program for recording; and

e claims 8 and 22 require storage options that apply to a single program and are set
after the program has been selected for recording.

(RBr. at 34.).

For example, Rovi argued, in the context of Replay893, that there is no “disclosure
related to user selection of global storage settings from the IPG that are then applied to all future
recordings that control how those programs are to be digitally stored as required by claims 1 and
15 of the 585 Patent.” (CRBr. at 20 (emphasis added); see also id. at 41 (Blatter fails to disclose
“global storage options that apply to all programs selected for recording after the options are
selected’) (emphasis added).). In rebuttal, Comcast disputed whether the asserted claims require
performance of “storage option selection” and “program selection” in any particular order, or
(“an order of steps” argument).’* (RBr. at 34-36.). Comcast also indicated it should prevail
regardless of the outcome on this issue (Rovi’s narrow, order-matters view v. Comcast’s broad, .
order-neutral view) because “ReplayTV 893 discloses ‘global’ storage options selected prior to
selecting the program as well as settings applicable to only one program that are selected after
that program is chosen.” (/d. at 36.).

Comcast’s position is correct. “Als a general tule, [a] claim is not limited to
performance of the steps in the order recited.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512
F.3d 1338, 1345 (Fed. Cir. 2008). Whether an exception to that rule applies must be assessed on

a limitation-by-limitation basis because some limitations may compel a particular order while

others may not. Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1399 (Fed.

? To be clear, Comcast did not dispute that, in the asserted claims, modification of a storage setting must
occur prior to the recording based on that modification. (RBr. at 35 n.11.). That is axiomatic.

Page 191 of 325

‘ Public Version

Cir. 2014); Goff'v. Harrah’s Operating Co., 412 F. Supp. 2d 1090, 1104 (D. Nev. 2005) (holding

- that steps B and C need to be performed sequentially but step A could be performed before or
after B and C); SSL Servs., LLC v. Citrix Sys., 816 F. Supp. 2d 364, 374 (E.D. Tex. 2011)
(holding that certain steps must be performed in order but could be performed before or after
other steps).

Here, the asserted claims do not compel a particular order for the “storage option
selection” and “program selection” steps. Nothing in the language of the claims (e.g., an
antecedent) requires performance of the “storage option selection” and “program selection” steps
in a particular order. This interpretation comports with the specification of the ’585 patent,
which discloses that the steps of “selecting a storage option” and “selecting a program to be
recorded” can be “performed in any order.” (JX-0004 (°585 patent) at 16:3-7, Fig. 15; Tr.
(Albonesi) at 1876:3-1877:6.). During prosecution of the "585 patent, the examiner applied prior
art to pending claims without observing a particular order for the “storage option selection” and
“program selection” steps. (JX-0010.5254 (585 patent prosecution history).). °

4. ReplayTV 893 Application (RX-0008) Anticipates Claims 1, 8, 11, 15
and 22 of the ’585 Patent .

Given the large number of asserted claim elements, and Comcast’s large number of
invalidity arguments, it makes sense to group asserted claim elements across patents in a

different manner than used above in the context of infringement.

Page 192 of 325

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a) ReplayTV 893 Application (RX-0008) Teaches Limitations
1[pre]/8[pre}/15[c]/22[c] — 1 [Pre] A method for allowing a user
to select storage options for storing programs using an
interactive television program guide implemented on user
television equipment, the method comprising; 8[Pre] A method
for recording programs using an interactive television
program guide implemented on user television equipment, the
method comprising; 15[c] and an interactive television
program guide implemented at least partially on circuitry,
wherein the interactive television program guide is
programmed to; 22[c] and an interactive television program
guide implemented at least partially on circuitry, wherein the
interactive television program guide is programmed to:

As shown below in Figure 58, ReplayTV 893 teaches an interactive program guide
implemented on user television equipment or on circuitry, as recited in the equipment-based
preambles of claims | and 8 and the circuitry limitations of claims 15 and 22. (Tr. (Albonesi) at
1815:24-1819:9: RDX-0001C.0014-21.).

ReplayTV 893 discloses a “digital VCR application 330” implemented on a “digital
VCR” in a user’s home. (RX-0008 (ReplayTV 893) {ff 13, 14, 18, Figs. 1-3; Tr. (Albonesi) at
1816:21-1817:19; RDX-0001C.0017-18.). ReplayTV 893 teaches a “block diagram of digital
VCR circuitry,” including a Philips central processing unit, and explains that the “digital VCR 10
includes circuitry 100.” (RX-0008 (ReplayTV 893) at Fig. 2, ff 13, 20; Tr. (Albonesi) at
1816:21-1818:5; RDX-0001C.0019.) The digital VCR circuitry receives and processes MPEG
program streams and channel guide information. (RX-0008 (ReplayTV 893) ¥ 58, Figs. 2, 3;

RDX-0001C.0018-19.).

Page 193 of 325

Public Version
Figure 58: Comcast's Depiction of How ReplayTV 893 Discloses a Program Guide
Implemented on Circuitry
ReplayTV 893 Discloses A Digital VCR For Recording Digital Video
8. A method for :coii:hng progra111s using an 111lcmct1ve
tckvision progmm guide implemclllcd on user television
equipment. the method compnsillt!'
'll 	• lcu ,t O rr,,!ff•ll' II 1111 t
lilt u ll I f II U J rt ~J Ill
111 t ll'-4. \ It I pp lJ 111111\ I• 111d11. 1tc.: 	n ~ ,Ull
h 1.\.1,, Ii... I ••, i.11 h Ill u,:t: -. 1 g11.il .. 1,11ug1. de\ 11.:
\ "'-h \.!Ill• ,1 pn1~1 11 h:-.llllil l 111 th" ti L:,l'sl 0111.:
l1 pl,I\ tlp1 'l ru, ~ling hL·n:111tfic A.'h:lh.·t.lpr,g11m
1111~.,:111r1.• out~ ,~,h~_p~•:_g.r~n: ht.'l\"hllk~t·-
,r 	dmtlh u 1..r,, 	,11 <ppnrlu!lll\t 1.,.4,.)1,. 1,11h ,t.1r1.•
h 1 ~1.. ,pr , n lor :,lunn~ ll11. pru}; un 11 't.: ""', n.h.xJ.
c.:rl.tll th'-· t k,hl 1111'- h .. ~1:1 p11, n •11111 ... ll · I! 1 1
IA ,1 , 1 i.: -.«.:lllfl~ 1..,1111 .uu.:d 11 JJ uni hn\l, 1,tt.: ,,n
r,1111 1 11) h'- 1g1r 1II~ hll\: ..I ,,, th r.11hJ, m ,1Cl ·~)
dl!,1,H,11 h1r. ~L Ji.:" IU·
11 It,; r~ fl 11 ... u:1 II 'i, rlii.: u~r ~t.•k ·un: t I lhL ,ti .... I om.
,11 el'- 	11 1. ,i, d11\in the t c.. 1\ rn.. -.h111~c.. ,-..·11111
1 ,li1.. prt •r,. 11 	tx """nnJ..., 	h.
I\. n Ill~ ilk prow II 1 1 I} Ull r1nd01 .1 1,.C,S J~ll..tl !\h I 1p.c
I \ n· 	"'d ,11 111... 1od11J1.. 111 u , I th..: t .._•,1i.t on ..
,11 1tzl.' dt 1l)L trlhi.. 1ir
585 Pa tenrot Claim 8 (JX-0004 .41)
FIG . 1
e n
1-c:o,,,,,i ,
,.
"	-IV
-VCR
[0018] Referring to FIG. 1, a digit.al VCR 10 acts as a
ceotral tatioo for recordio 	aod playback of aoalo and
digit.al audio and video.
Rcplay1V 893 11 18 (RX-0008 .14)
ik
COMCAST
ReplayTV 893 Discloses Implementing The Application On Circuitry
8. A method for reco rding~rograms u in an iJ11erac1ive
te lev is ion progrom gu ide implcmentc-d on user television
equipment, th e me lhod co mpri ing :
II'
" I · r1 lgfllU 1111'
n.::l.tlllll: 1o .it h It Ill pro~ UP
pr• 1\ 11 mg ,1 tt~,r \\ 1l1, H 1pp, t1Ullll} to Hhlu.. \,ll..'. 1pwt1:n1111
11 h1.• ri..·t.'l•rd ...• l 11 1 r.11 ltim 11.:(L"i!\ U1;ut.tl )lo1 •~'-· k"Jt.:~
h\ sclc ling 	pr ,.,_rdm 11~1111 1mm llk:- 11 k 1~~ 4- nc
. pll\t.:dp }l 1nl1 1111)1. \\hcrr..•m[ !k..'k(cJr1 li,l.fltlll
h,1111g i.; 11Tt.."')p1 1K !; ti_ tlu.· P"'\¥nun ll h,• T\..'Cl rJ...,J ____ _
J'f \1ulll lltt.: u i..'f\\.11h,u \ rr, r1 nttvh s k I ti k ..1 t JllC
s1l rJ •4, ,1pt1011 11 h,ru,~ 1h~ rm gmm u bt• n.x: , J\..: I
"lh..' ... 111 the..• JI l ,~, l IIC IOI 111-c ,,rt11JIJ rdntcs l•l. 1 1,.-·1· t
ni. -.ill! l~t· ,~u lhl nHl ~UJ1,.< 111 LUJlltP1 hn'w tlu...• pru
er 1 1 1t1 Ix d1~1t,1II~ trn J nu 111~ r,ullh II dl·r..es
'II 11 !\I Iii: dl.:'.'ll-C
II fl r,~ll'JL l (.'( l\lllllh(US1..f~,cl(J nllh\: tli.:' 'flt.
101 ,1: 1pt1111. 1. hhu~1h~.i1I 11 ll\: ltr.,)I ... ttm
I, r ,Iii..· ph 	1111 to he.· r1.,tm.l'ul u J
I roo1J J
FI<,,2..
" 111hn~ th-.; p1t tL• un llll 1hl' r.1r. J1 111 1~u.: ht-,l,1 stL lll,t 	Rq,fayTV 893 at Fis . 2 ~"X-0008 .3)
,h., n: h,hl..'t 111 tlu.: 111cd1ti4,• UH 11 ,t th.._• ,II k 1 • {lf\t
"" 1 ' ' !111)11, ,. • the 11 " 	See also, e.g., Replo yT V 893 (RX -000 8) a t ,i,i 28 , 30, 42-43, 47, 51, 56,
su Pa ,.,, u, Claim 8(JX-0004.41) 68, 70, 85, 87 -88, 91, 93-94; Fig . 5; Abstn 1ct
(RDX-000IC.0017-19 (introduced during the testimony of Dr. Albonesi).).
Page 194 of 325
A
COMCAST

Public Version
As shown below in Figure 59, the "digital VCR application 330" is an "interactive
television program guide" as construed in the Markman Order. "[D]igital VCR application 330"
generates a "channel guide display" that presents the user "with a visual representation of
information contained in the channel guide database" (i.e., "television program listings"). (RX-
0008 (ReplayTV 893) ,r 87, Fig. 5; Tr. (Albonesi) at 1816:12-1817:5, 1819:16-1820:6.).
"[D]igital VCR application 330" also "forwards commands received from the user," allowing a
user to navigate through and interact with those television program listings. (RX-0008
(ReplayTV 893) ,r,r 46, 82, 93; RDX-000lC.0019, 23; Tr. (Albonesi) at 1818:23-1820:11,
1838: 1-19.). "[D]igital VCR application 330" provides a "list of options" to a user including, for
example, whether to record one episode or all episodes of the selected show. (RX-0008
(ReplayTV 893) ,r 93 ("While the channel guide display 500 is on the screen, pressing the Select
button 256 on the remote control 22" displays "a list of options ... (e.g., tune to the highlighted
show's channel, record one episode of the highlighted show, record all episodes of the
highlighted show)."); Tr. (Albonesi) at 1838:1-19.). "[T]he user issues all commands using the
remote control 22," and the remote control is used to "select choices in on-screen menus." (RX-
0008 (ReplayTV 893) ,r,r 18, 82.).
Page 195 of 325

Public Version
Figure 59: Comcast's Depiction of How ReplayTV 893's Program Guide Is An
"Interactive Television Program Guide"
ReplayTV 893 Discloses An Application That Generates A Display Of
Program Listings On The Digital VCR
8. A me th od fo r 	1i'<hng programs usrng rn1 mteracti,c
telC\ i ion program guide implemen1ed on user televl ion
equipment, the method co mp rising :
n:1,t 1 'lg I 1 (t: ~I l 1lC. 1 I U
pr !\-1(1tng I u .er \ th n ) pt r1 IJ I) Iii 111Jh. 1h. 'Jlfl t;.r un
HJ 1.·rLr,:d'-•l 11, 1r111d11111..,\,1,.s J, 11 1 tt. ~i.:d.:\ILL"
h" ~kt..lll1l' 1 p1\ 1m m h, 1ng Ir, ,1 rhi t I, .1._t l•lle
Jisrla\t..·-d ptt ~ Ill 11 t111:,1. \\ l1l'rLJfl Ith" ,•I\._,._ t"l ,,~ p.r nn
11~11lg Lllrfl.~r" mls l tl,i.: pm~1 u11 h l,c r~ ,r~k-J
P'"' ..,,dm!.1 thi..• iscr"' 11h II np~H II v t ..cl 1 ,,. 1~ , nc;
:>t1 1r &: •rl1011 J, I lonn lhc PMJlf, II h ~ 11.: JI .t.-J
,,h1..Tt.11 l1 ~ ,t 1.:H:')11 m: !)toraμ1. ,11, 	"'·ltth.!t h 1t k. 'ti
, nt.• ~• r.1:Je 11111!,l, conf.l_l n:1 tn i.. 11111ri I lh " Ilk.• p1
t-fJJ 1 1~ ti bt.. h\l.ll~1lh ~tu•,.. I l n _._ ltH l~ 1u I t t.•).~
,.h,t-11.:il h.. ir.:1p,; cJ..., h. c
in. p1.11.,1.11 r1.."-· 1,111 1h1.•11"r C1,..\. 111, l 1h1...,1k. t,11L'
I • 1g1,.; pl1 I. ,, 1J1h 111 th,· 1l kd I 111.! ,tnJ.1)11.. c..... 1 Ill',
~ h,· 1 n1 1 111 fl ~ ''-"-' k-J w~I
11.. nlm 111'-' fHl JI 1 1t 1 1,..: r 11 Jt m h-'-'- 	1 • ii urc.g1-
d1 	, h 1 ttl 1111 1h,: .n1 d1hc 111, n 	, 1t t le,..;: . 1 1 llL"
l,1 ,. 1111 I rltk p 	I 11
585 P at ent 11 Claim 8 ( JX--0004 . 41 )
,.
Id I.( I ( 1()1! 18	
·,
[0014) 	FIG. 3 is a block diag ram of digital VCR system 	I
softwar · 	Rcpt.,yTV &9J . , 14 ( RX -OOOS . 14 )
-	Rcpta yTV 893 Al F11 . J (RX -0008.4)
A
COMCAST
(RDX-000lC.0018 (introduced during the testimony of Dr. Albonesi).).
With respect to these limitations, Rovi did not offer rebuttal argument or evidence in its
Post-Hearing Briefs and has thus waived any such argument pursuant to Ground Rule 10.1.
(CRBr. at 16-42.).
Based on the discussion and explanation above, Comcast has proven by clear and
convincing evidence that ReplayTV 893 satisfies limitations l[pre], 8[pre], 15[c], and 22[c] of
the '585 patent.
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\

b) ReplayTV 893 Application (RX-0008) Teaches Limitations
1[a}/15[{d]/8[c}/22[f]—1[a] providing the user with an
opportunity to select at least one storage option for storing a
program to be recorded, wherein the at least one storage

_ option relates to at least one storage setting configured to
control how programs are to be digitally stored on a random
access digital storage device; 15[d] provide the user with an
opportunity to select at least one storage option for storing a
program to be recorded, wherein said at least one storage
option relates to at least one storage setting configured to
control how programs are to be digitally stored on the random
access digital storage device; 8[c] providing the user with an
opportunity to select at least one storage option for storing the
program to be recorded, wherein the at least one storage
option relates to at least one storage setting configured to
control how the program is to be digitally stored on the
random access digital storage device; 22[f] provide the user
with an opportunity to select at least one storage option for
storing a program to be recorded, wherein the at least one
storage option relates to at least one storage setting configured
to control how the program is to be digitally stored on the
random access digital storage device:

ReplayTV 893 teaches these storage option and storage setting limitations. (Tr. °
(Albonesi) at 1828:19-1834:2, 1837:5-1839:2; RDX-0001C.0035-46.). For example, ReplayTV
893 discloses that a “user can specify a recording quality (in, e.g., megabits per second) at which
content should be recorded on a personal channel.” (RX-0008 (ReplayTV 893) ¥ 105; see also
id. § 108 (“For example, the user can specify . . . a recording quality”).).

The MPEG encoder subsystem of ReplayTV 893 uses the megabits-per-second setting to
determine the storage format for the particular program selection. (Tr. (Albonesi) at 1840:5-
1840:20; RX-0008 (ReplayTV 893) ¥ 74.). Rovi’s expert agreed that this disclosure is a storage
setting configured to control how programs are to be digitally stored. (Tr. (Balakrishnan) at _
2120:7-12 (“Q. And you will agree with me that by configuring the system to set a preferred

encoding bit rate, that could affect how the program is stored into the hard drive; right? A. Ina

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general sense, yes, it's a part of the configuration.").). Thus, as shown below in Figure 60, these
passages expressly teach that a user is given the opportunity to select an option, "quality," that
has a related setting, "megabits per second," and that controls how a program is digitally stored
to "hard disk space" on a random access digital storage device. (Tr. (Albonesi) at 1829:4-
1831 :3; RDX-000lC.0037-40.).
Figure 60: Comcast's Depiction of ReplayTV 893's Disclosure of a Storage Options That
Relates to a Setting That Controls "How" a Program Is Stored
ReplayTV 893 Discloses Providing A User With An Option
To Select A Recording Quality
th
---- -------------------------------------	provtd uttt lhcu r"nhano 	11un 11 yll, cl Utica tone
,1ora c o '°" for s10 nng the program 10 be recoroed ,
wherein . eat lcasl one , 1orage op t ion relates to at leas1
one slorage setting configured 10 conuol how 1he pro-
gmm is to be digita ll y stored on u,e ra ndom acces
dig il nl s1o mge device;
-----------------------------------------	l\u. ,11 I .t 1t 11i.:
m1111lkra1 m,r\.1...,Jhu~11s,,11•i:
1t ~ I l,.,•t-.1 1 I •
l8' PalUllatCllim l(JX-0004.41)
[0105] The user can s ecif the uality (in , e.g., megabits
per sea:md) at which content should be recorded on a
personal channe l. The user can also specify that a particular
number of episodes of a show are to be reoorded on a
personal channel. When a personal channel is created, the
user can be notified of the hard disk space that will be needed
to store all shows that are scheduled to be reoorded on the
personal channel. R,pbyTV 193 " 105 (RX.0008.ll)
, 	For example, the user can specify a show to be
recorded on a personal channel by specifying the show' s
start time, end time, live television channel, and a recording
quality. I 	I ~ 0 	,
Rq,layTV 893 at 108 (RX.0008 .ll)
afk
MCA T
(RDX-000IC.0037 (introduced during the testimony of Dr. Albonesi).).
Rovi asserted that ReplayTV 893 fails to disclose these limitations for two (2) reasons.
First, according to Rovi, "there has been no showing that the ReplayTV References teach (or
otherwise suggest or disclose) using an IPG to select how storage options [i.e., options relating
to settings that control 'how' programs are stored] ; rather, the ReplayTV References only discuss
selecting a program (or programs) for recording (the what) from the IPG and nothing more."
(CRBr. at 21 (emphasis added).). Second, "[t]he ReplayTV References do not teach the global
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storage settings of claims | and 15 of the 585 Patent,” which pertain to “user selection and
setting of a storage option that is then applied globally to all programs (plural) selected for
recording thereafter through an IPG.” (Jd. at 18-19.). Rovi is wrong on both counts.

(1) ReplayTV 893 Discloses Using an IPG to Select
“How” Storage Options

ReplayTV 893 teaches use of the IPG to select a “how” storage option. ReplayTV 893
explains that, “regardless of the input device[],” the “digital VCR application 330” (i.e., the
“interactive television program guide” or “TPG’’) receives and processes all user commands, as
shown below in Figure 61. (RX-0008 (ReplayTV 893) { 68; RDX-0001C.0019.). ReplayTV
893 elaborates that “[i]n general, the user issues all commands using the remote control 22””*
and that “remote control 22 and on-screen menus, displayed by the digital VCR 10 on the
television 18 may be used to select audio and video from one or more of the attached audio and
video sources to be output to a single display device such as the television 18.” (/d. J 18; RDX-
*0001C.0017.). Given this disclosure in ReplayTV 893 that users use a remote control to navigate
on-screen menus and make choices, and that the IPG processes all user commands “regardless of .
the input device,” it is clear that ReplayTV 393 teaches that it provides users with the
Opportunity to select storage options of every ilk using a IPG, including “how” storage options
such as recording quality. (RDX-0001C.0037-45; Tr. (Albonesi) at 1828:19-1834:2, 1837:5-
1839:2; JX-0004 (585 patent) at Fig. 3 (showing IPG (“digital VCR application 330”) as

overarching hub for “all” user commands).). In short, “all” means “all.”

® ReplayTV 893 also teaches receiving user input using the “front panel” of the digital VCR, a modem, a
pager, a keyboard, a mouse, or a microphone. (RX-0008 (ReplayTV 893) { 19, 68.).

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‘

Figure 61: ReplayTV 893’s “Interactive Television Program Guide” Application Is a Hub
for “All” User Commands, Regardless of Input Device

300
—
FIG. 3
330
APPLICATION
| 334 [
~ - 2D Pin
Video Rendering 3
M
input ~ 328 Module odule
Select (
Encoder / 297} | Decoder} | 358
7 Streamer Streamer |
\ c
342
Channel | 326
: 350.
Command] | Guide -~ /| OsD vai
Ne) Database Programmer \
4 Interpreter — AFS IOMES DVD File
1924 [ 3407 System
VBI Data (- 322 351 - 7
: [aR Data interpreter 354
_4interpreter \ 318 346 )
320 — Bl Frewiel
Driver Stack Debug
316 ~ { VF
IR Video 344 L
a
3141 Driver | | Driver 338 \ | $48) | | 382, rc 353
TT MPEG | » ; \
MPEG FireWire Serial
. Encoder D * IDE Modem
12C Driver Driver ||Decoder| | Driver || priver || Port Pion
3127 360 7 Driver Driver
| Lo 336
KERNEL
NTSC j| NTSC || MPEG || MPEG . Hard || Serial
IR Tuner Decoder|| Encoder}! Encoder} | Decoder FireWire Drive Port Modem
1487

302 1087 1097 3047 1147 1567 3067 1427 3087

(JX-0004 (°585 patent) at Fig. 3.).

Tellingly, as shown below in Figure 62, ReplayTV 893 also appears to disclose selection

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of the same “how” storage option, program padding, that Rovi accuses of infringement in
Comcast’s X1 System. ReplayTV 893 discloses that “the digital VCR 10 can begin recording a
show at a selected time (e.g., three minutes) before the show is scheduled to be broadcast and
stop recording the show at a select time after the show is scheduled to finish broadcasting.”
(RX-0008 (ReplayTV 893) { 96 (emphasis added); see also id. { 108; Tr. (Albonesi) at 1832:16-
1833:3; RDX-0005C.0041.). This disclosure poses a serious challenge to Rovi’s attempt to rebut
Comcast’s anticipation argument because Rovi cannot have it both ways in terms of calling a
feature infringing in an accused product, on the one hand, while denying that the same feature is
anticipatory when found in the prior art, on the other hand. See White v. Dunbar, 119 US. 47,
51 (1886) (“A patent may not, like a ‘nose of wax,” be twisted one way to avoid anticipation and
another to find infringement.”’); Cordance Corp. v. Amazon.com, Inc., 658 F.3d 1330, 1337 (Fed.
Cir. 2011) (holding claims anticipated as a matter of law where an expert mapped each element
of the asserted claims to the functionality of a prior art system in a manner that mirrored the

patentee’s infringement theories).

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Figure 62: Comcast's Depiction of How ReplayTV 893's Discloses in the Prior Art
Features that Rovi Accuses of Infringement in Comcast's Xl System
ReplayTV 893 Also Discloses What Rovi Accuses
• 	Record a single episode or all episodes
20 18 -0 7-0l B111ak:ri1hna.n Op. Rpc . 11 i, s
• 	When to delete recordings
2018..07-02 Balakrilhnatt Op . Rpt. at 1.! 8. 159-160
Padding: add time to start and end of
recording
2018--07 .0 2 Balakridlnan Op . Rp1 . al 158 . 159-160
. ,
f(! )I. 1}0(11! 11 	,'
•. ,
,,,
Rcpla yTV 893 at 129 ( R..'X -0008.2 5)
I Similarly, Ibo user can specify 1h11 lhe
oldest content reco 	on a pe r oooal cbaooel be deleted
when oecessary to make room fo r new oo o teo t.
Rcpla yTV 89l ot 102 (RX -000 8.l l)
00 96) Opuona y, !hi dig11a 	can gm recordmg
a ow 11 a selected tlllJe (• -a-, lhru minutt/5) before lhe
show is sch<duled to bt broadcast aod stop recordmg lhe
show at a lected ume after the show IS scheduled to 6n1Sh
broadcuun
~Ii
C OMCAST
(RDX-000IC.0041 (introduced during the testimony of Dr. Albonesi).).
To sidestep what appears to be a fatal analytical inconsistency, Rovi attempted to draw
distinctions between program padding in the accused XI System and program padding in
ReplayTV 893. Rovi asserted that ReplayTV 893 disclosed "program padding" as a feature of
personal channels and that personal channels are separate from the claimed IPG. (CRBr. at 22
("ReplayTV 893 describes personal channels at length in paragraphs 95 through 111, including
setting and evaluating recording criteria, naming and numbering personal channels, managing
personal channel storage, and viewing personal channels- 	but none of these paragraphs
n;ientions or otherwise discloses accomplishing any of this functionality from the IPG."). Rovi
applied the same "personal channel" argument to the above-mentioned "how" storage option that
a "user can specify a recording quality (in, e.g., megabits per second) at which content should be
recorded on a personal channel." (RX-0008 (ReplayTV 893) ,r 105.). In other words, although
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Rovi acknowledged that ReplayTV 893 teaches users how to customize personal channels, Rovi
maintained that “personal channels—and any user selection of a ‘finance’ [personal] channel or a
‘default recording quality’ [or the program padding feature] have not been shown ... to be
selected by the user from the IPG as required by the Asserted Claims of the ’585 Patent.” (dd. at
26.).

Rovi is mistaken. As explained above, ReplayTV 893 teaches the IPG (“digital VCR
application 330”) processing all user commands “regardless of the input device.” (RX-0008
(ReplayTV 893) { 18, 42-51, 68, Fig. 3; RDX-0001C.0017, 19, 37-45; Tr. (Albonesi) at
1828:19-1834:2, 1837:5-1839:2.). ReplayTV 893 does not carve out an exception for user
commands related to personal channel customization. (RX-0008 (ReplayTV 893) 4 96 (padding
feature) (“the digital VCR 10 can begin recording a show at a selected time (e.g., three minutes) 7
before the show is scheduled to be broadcast and stop recording the show at.a selected time after
the show is scheduled to finish broadcasting.”), 105 (recording quality feature) (“[t]he user can
specify the quality (in, e.g., megabits per second) at which content should be recorded on a
personal channel”).).

Moreover, as shown above in Figure 62, ReplayTV 893 clearly discloses personal
channels not as separate from the IPG, but instead as integrated into the IPG display with other
program and channel information. (/d. at Fig. 5.). ReplayTV 893 expressly states that “a
channel guide display 500 presents the user with a visual representation of information contained
in the channel guide database and of content recorded in personal channels.” (/d. { 87.). “For
example, as shown in FIG. 5, the ‘Finance’ [personal] channel is assigned channel number 1010,
and is displayed in the channel list display 502 like any other channel.” (id. §99.).

Thus, ReplayTV 893 discloses using an IPG to select “how” storage options.

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(2) ReplayTV 893 Discloses Settings for the Global and
Individual “How” Storage of Programs

In contravention of Rovi’s second anticipation rebuttal argument, ReplayTV 893 teaches
“global storage settings of claims | and 15 of the 585 Patent.”’* Indeed, ReplayTV 893
discloses setting “how” storage options globally and individually for recorded programs. For
example, ReplayTV 893 discloses providing a user with an opportunity to select default, global
recording quality options that apply to “shows” in the plural.’° (RX-0008 (ReplayTV 893) 4 117
(“The user can specify default recording qualities with which shows are to be recorded into the
rewind buffer and into personal channels.”); Tr. (Albonesi) at 1837:15-25; RDX-0005C.0044;
see also Tr. (Albonesi) at 1878:21-1879:4,). Rovi’s expert appeared to concede that ReplayTV
893 taught “default,” “global” settings made for multiple programs: °

Q. The last sentence of paragraph 117 says, “the user can specify default recording
qualities with which shows‘are to be recorded.” Do you see that?

A. Yes. -
Q. And that’s shows in the plural, isn’t it?
A. Yes.

Q. ' And these are default settings, which would be those that are set for shows, in

74 As explained above, the order in which users select storage options and select programs for storage is
irrelevant from the perspective of the asserted claims. This Initial Determination rejects Rovi’s argument
that all steps of the claims must be performed in the order recited. By way of review of a topic addressed
above, Rovi appears to interpret claims 1 and 15 as applying to a “global” storage option set in advance of
selection of programs (plural) for recording. By contrast, Rovi appears to interpret claims 8 and 22 as
applying to storage options set after a program (singular) has been selected for recording. This
differential treatment of claims 1 and 15, on the one hand, and claims 8 and 22, on the other hand is not
warranted by the intrinsic evidence.

™ For what it is worth, ReplayTV 893 discloses setting these “global” recording quality options before
selecting programs for recording. (RX-0008 (ReplayTV 893) { 117; Tr. (Albonesi) at 1837:15-25; RDX-
0005C at 44; see also Tr. (Albonesi) at 1878:21-1879:4.). This disclosure would satisfy claims 1 and 15
even under Rovi’s now-rejected interpretation requiring the setting of a “global” storage option in
advance of selection of programs (plural) for recording.

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the plural, in the default as a global setting. Would you agree with that?

A. I would say these are default recording qualities with which shows are to be
recorded, yes. But it doesn’t say anything about doing it through the program guide,
as required by the claims.

(Tr. (Balakrishnan) at 2134:9-22; see also id. at 2134:9-2135:6 (“These are setting up default
recordings before the shows are to be recorded. I agree with that part.”).

ReplayTV 893 also teaches selecting storage options, including selecting recording
quality, after selecting a particular program for recording. (Tr. (Albonesi) at 1838:1-19; RX-
0008 (ReplayTV 893) f] 58, 105, 108 (‘the user can specify a show to be recorded on a personal
channel by specifying the show’s start time, end time, live television channel, and a recording
quality.”).).”° Thus, Rovi fails to undermine ReplayTV 893’s disclosure of global storage
settings (or, for that matter, storage settings that pertain to a selected individual program).

Faced with persuasive evidence that ReplayTV 893 discloses limitations 1[a], 15[d], 8[c],
and 22[f] of the 585 patent, Rovi appeared to argue that ReplayTV 893 did not disclose the
exact embodiments required by the asserted claims (namely, a user setting, globally and for
individual programs, a “how” storage setting using the channel guide display 500). That is not
how anticipation works. “[A] reference can anticipate a claim even if it ‘d[oes] not expressly
spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art,

reading the reference, would ‘at once envisage’ the claimed arrangement or combination.”

76 Rovi moved to strike Hearing testimony and demonstrative slides of Comcast’s expert, Dr. David
Albonesi, which concern the difference in scope between claims | and 15 (global storage options) and
claims 8 and 22 (program specific options). According to Rovi, “[i]f the ALJ grants Rovi’s motion to
strike, then Comcast has presented no evidence that either ReplayTV Reference anticipates or renders
obvious the ‘global’ storage settings claimed by claims 1 and 15 of the °585 Patent.” (CRBr. at 19-20.).
Rovi is mistaken. ReplayTV 893 and ReplayTV 338 stand as independent pieces of evidence of the
invalidity of the asserted claims of the ’585 patent. Dr. Albonesi’s testimony was not stricken. (Order
No. 49 (June 3, 2019).).

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Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting Jn
re Petering, 301 F.2d 676, 681 (C.C.P.A. 1962)); see also Eli Lilly & Co. vy. Los Angeles
Biomedical Research Institute at Harbor-UCLA Med. Center, 849 F.3d 1073, 1074 (Fed. Cir.
2017) (“the dispositive question regarding anticipation is whether one skilled in the art would
reasonably understand or infer ... that every claim element is disclosed in that reference”).

Here, in the context of very approachable and intuitive technology, given ReplayTV
893’s teachings that the “digital VCR application 330” is a hub for all user commands
“regardless of the input device,” it is apparent that a skilled artisan would recognize easily, if not
“immediately envisage,” using the “digital VCR application 330” to select how storage options
such as recording quality and to create corresponding settings globally and for individual
programs. (RDX-0001C.0037-45; Tr. (Albonesi) at 1828:19-1834:2, 1837:5-1839:2.).

Rovi also argued, without sufficient supporting evidence, that ReplayTV 893 would not
enable a person of ordinary skill in the art “to implement an IPG for selecting storage options
controlling how a program is to be digitally stored.” (CRBr. at 24.). “A prior art reference
cannot anticipate a claimed invention ‘if the allegedly anticipatory disclosures cited as prior art
are not enabled.’” Jn re Antor Media Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012). According to
Rovi, based on attorney argument, “[t]here is no disclosure of how a person of ordinary skill in
the art—over twenty years ago—would engineer the software and hardware required to
implement such advanced guide functionality.” (CRBr. at 24.).

This argument fails for two (2) reasons. First, Rovi never mentioned the argument in its
Pre-Hearing Brief and, thus, waived that argument pursuant to Ground Rule 7.2. Additionally,
Rovi failed to support its argument with persuasive evidence. Dr. Balakrishnan did testify to the

lack of disclosure in ReplayTV 893 with respect to “how the user interface would need to be -

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modified to implement any [how storage options and settings] functionality,” “how the buttons
on a remote would be mapped,” or “how source code of the guide application, source code of the
set top box code, or source code of a remote server would need to be modified:” (Tr.
(Balakrishnan) at 2085:1-2092:3, 2090:12-2091:8.). However, Rovi’s expert, Dr. Balakrishnan
did not testify that these supposed deficiencies in ReplayTV 893 would prevent a personal of
ordinary skill in the art from practicing the asserted claims based solely on the ReplayTV 893
reference.
Based on the above, Comcast has proven by clear and convincing evidence that
ReplayTV 893 satisfies limitations 1[a], 15[d], 8[c], and 22[f] of the °585 patent.
c) ReplayTV 893 Application (RX-0008) Teaches Limitations
1[b]/8[d]/15[e]/22[g]/22[h] — 1[b] in response to a user
. Selection of the at least one storage option, modifying the at
least one storage setting; [d] in response to receiving the user
selection of the at least one storage option, modifying the at
least one storage setting for the program to be recorded; [e] in
response to a user selection of the at least one storage option,
modify the at least one storage setting; [g] modify said at least
one storage setting in response to said user selection; and [h] in
"response to receiving the user selection of the at least one

storage option, modify the at least one storage setting for the
program to be recorded

As shown below in Figure 63, ReplayTV 893 teaches a user to modify at least one “how”
storage setting in response to user selection of a corresponding “how” storage option. (Tr.
(Albonesi) at 1839:3-1842:11; RDX-0001C.0047-50.). ReplayTV 893 discloses preference files
that make modifications to recording settings, such the bit rate (a “storage setting”), in response
to a user’s selection of a preferred recording quality (a “storage option”). (Tr. (Albonesi) at
1839:3-17; RX-0008 (ReplayTV 893) 4 58 RDX-0001C.0048.). ReplayTV 893 also discloses

that its MPEG encoder subsystem responds to user commands to change the encoding bit rate for

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storing programs to a hard driv e. (Tr. (Albonesi) at 1839:18-1842:5; RX-0008 (ReplayTV 893)
174 ; RDX-000lC.0049; see also RX-0008 (ReplayTV 893) 1118 , 61 , Figs. 3, 5.).
Figure 63: Comcast's Depiction of ReplayTV 893's Disclosure of Modifying a Setting in
Response to User Selection of a "How" Storage Option
ReplayTV 893 Discloses Preference Files That Contain Modifications To
Recording Settings , Like Encoding Bit Rate, In Response To User Selection
I thll h.'I 	,111
I ll>I
inrcspon:ictorcccivmgrhcu er •1 ltono lhcul l\.'a,tonc
1tlorngeup11on, moJ 1f} ing the 1.11 lca~t one :.1,1ragc ~umg
IOr the ru~m lo be recorded ; and
-- ----- --- ----- - ----- ------ --------------	g ,I •• • • -
'>l 11 ~ l I~ r ~
$15 Pat cn1a1 Claim 8 ( JX--0004 . 4l )
HI I\ ill)( 'I 411 	'~
,.
, (0058) 	Tiie file s stored on the bard disk drive 142 include
MPEG program streams, database files, preferences files,
and program code files. The MPEG program streams can
contain recorded broadcast data, stored as MPEG-2 Program
ystem treams, with video and audio Packetised Elemen-
tary 	treams (PES) multiplexed together. Preferences files
can contain data describmg 	e way in which the user has
configured the system, such as the preferred encoclin 	bit
rate, favorite channels, and ersonal channels. Program code
files contain binary code for applications, system modules,
DLI.s, etc. The OMFS 350 supports filenames that are long
enough to provide differentiation between files, e.g ., 16
characters. 	Rq,layTV 891" 58 (RX-0008. t8J I
llfll
MCA T
ReplayTV 893 Discloses The MPEG Encoder Changing Settings , Like
Recording Bit Rate and Encoding Resolution, In Response To User Selection
l tr I r
... 11 I ~, 1
1 11 	I. fl The
co m onents of the MPEG encoder subsystem respond to
external commands to stop and stan recording, change the
recording bit rate, cban e the encodin resolution, save the
current stream position as a bookmark, and res 	nd to other
user actions. 	R.cplayTV89l ar 4 (RX-0008.19)
See als o, e.g., Re pl ayTV 893 (R..X-0008) al 	18, 61; Figs. 3, 5
Ilk
MCAST
(RDX-000IC.0048-49 (introduced during the testimony of Dr. Albonesi).).
During the Hearing, Rovi 's expert, Dr. Balakrishnan, did not contest that ReplayTV 893
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teaches these limitations. The testimony of Dr. Albonesi, Comcast's expert, went unchallenged
on cross-examination. Rovi did not rebut Dr. Albonesi 's evidence in Post-Hearing Briefs. Thus,
Rovi waived any argument on this issue under Ground Rule 10. 1.
Based on the above, Comcast has proven by clear and convincing evidence that
ReplayTV 893 satisfies limitations l[b] , 8[b], 15[e], 22[h], and 22[g] of the '585 patent.
d) 	ReplayTV 893 Application (RX-0008) Teaches Limitations
l[c]/8[a]/1S[a]/1S[t]/22[a]/22[d]-l[c] displaying in the
interactive television program guide at least one program
listing related to at least one program; 8[a] displaying in a
display screen at least one program listing relating to at least
one program; lS[a] a display·screen; lS[t] display in the
display screen at least one program listing related to at least
one program; 22[a] a display screen; 22[d] display in the
display screen at least one program listing related to at least
one program:
ReplayTV 893 discloses a display screen that displays an interactive television program
guide and program listings. (Tr. (Albonesi) at 1819:10-1820:16; RDX-000lC.0022-24.). As
shown above in Figure 55 , ReplayTV 893 discloses a "channel guide display" that is displayed
"on screen." (RX-0008 (ReplayTV 893) at Fig. 5, 1182 , 46, 87; Tr. (Albonesi) at 1819:10-
1820: 11. ). The channel guide display includes various program listings such as " ER" and "The
Big Help." (Tr. (Albonesi) at 1819:25-1820:6; RX-0008 (ReplayTV 893) at Fig. 5.).
Page 209 of 325

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Figure 64: Comcast's Depiction of ReplayTV 893's Disclosure of Displaying a Program
Listing in an Interactive Television Program Guide
ReplayTV 893 Discloses A Channel Guide Displayed On A Screen
1 f I 	Hill "ll /I 11 I,
,I I UI I II 1rkm ·nh, I 	kl 	~ I
displaymg m a d, play scrc 'n al le a I one P"'l!"'ffi II ling
___ _ _ relaung 10 ut leahl one rro8J;_~n ;__ ___ _ __ _ ______ _
m, pp nmrn, ti. 11111 '- 11. ,1 1ru~r.iu:
1 11 1 , 1t<.I n " l , h 	I h r v ,!...•~ l i.
... , 	I !Uh! 	ri 	I I 11 1111~ fri 	J ,1 '- 	u~
i'i , t ,r 'r 111 -.1111· , ·rl: 11th1 l'lu_J<. l r Ir m
111 , 111 	111.1-.11 II\ p1 1.1.r 11 , 	Ju. tlL'J
f I l lh1. r 	11 1,: 1,1 J 11 l\.l.:1..• 	UI hl-.:
h, h ~ h I d 	d1 	II I I 	11 t· I 01"
r 	., 11 1 1 r11, ...
l85 Pol< oll l Claio1 8 ( JX-0004 . ◄ l )
-	l,U lX IJl}OI( ) I 	:
A Meou bu u oo 4 52 display a main menu from which
oub -meous can be selecled. A Ouide buuoo 450 causes a
channel 	Ide d~la 10 be d,spl1)-ed on screen, and a
o· la bUIIOO 448 CIUSU an OO·ICTUO dJOP.l•y to be
d 	a • on-scr~ as desc ribed below. A lecl bution 256
is used IO select choices in on- run menus, u described
be low. A Replay Ouidc butioo 454 causes a rep lay meo u lo
be displ ayed on-screen. ReplayTV 893 11 82 (RX-0008.20)
I 	C> I 	I ~	t:.::; ,, 	0
... G 	'=('°_,,..,.. 	·I	..... ..,.-. .. ,........,.... .....	.. ... .. ~ ......... "',..,__._
~
- • "'-_,.. ... .,.__
-- .. .A l4
--- .... 	..	,... ,_ - ,.. _,..,_ -- 	--- 	-	----	tOIO,.__ .....,...,..,_--iv.. 	.,, ....,,,,/ 	,../
ReplayTV OJ at FiJ l (RX-0008.6)
See also, e.g., Re pl.a yTV 893 (R,'X - 00 08 ) at 1 46 , 86- 88 , 91 , 93-94
A
CO MCAST
(RDX-000lC.0023 (introduced during the testimony of Dr. Albonesi).).
During the Hearing, Rovi ' s expert, Dr. Balakrishnan, did not contest that ReplayTV 893
teaches these limitations. Instead, Dr. Balakrishnan agreed that Figure 5 teaches an "interactive
television program guide" that displays program listings. (Tr. (Balakrishnan) at 2114: 15-19).
The testimony of Dr. Albones i, Comcast's expert, went unchallenged on cross-examination.
Rovi did not rebut Dr . Albonesi ' s evidence in Post-Hearing Briefs. Thus, Rovi waived any
argument on this issue under Ground Rule 10.1.
Based on the discussion of the evidence and arguments above, Comcast has proven by
clear and convincing evidence that ReplayTV 893 satisfies limitations l[c] , 8[a] , 15[a], 15[f],
22[a] and 22[d] of the '585 patent.
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e) 	ReplayTV 893 Application (RX-0008) Teaches Limitations
l[d]/8[b]/15[g]/22[e]-l[d] providing the user with an
opportunity to select a program listing from the at least one
displayed program listing for recording on the random access
digital storage device; 8[b] providing a user with an
opportunity to indicate a program to be recorded on a random
access digital storage device by selecting a program listing
from the at least one displayed program listing, wherein the
selected program listing corresponds to the program to be
recorded; 15[g] provide the user with an opportunity to select a
program listing from the at least one displayed program listing
for recording on the random access digital storage device; and
22[e] provide a user with the opportunity to indicate a
program to be recorded on the random access digital storage
device by selecting a program listing from the at least one
displayed program listing, wherein the selected program listing
corresponds to the program to be recorded:
ReplayTV 893 provides the user with an opportunity to select a program listing for
recording on a random access digital storage device. (Tr. (Albonesi) at 1820:17-1824:5,
1826:18-1828: 18 ; RDX-000lC.0025-34.). ReplayTV 893 teaches that a user can select program
listings for recording by selecting a program displayed in the guide. (RX-0008 (ReplayTV 893)
,r,r 88 , 91 , 93-94, 101 , 128-129, Fig. 5; Tr. (Albonesi) at 1821 :2-1822:11, 1828:9-15.).
ReplayTV 893 records selected programs to a hard drive, which is a "random access digital
storage device." (RX-0008 (ReplayTV 893) ,r 105; Tr. (Albonesi) at 1827:23-1828:8.).
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Figure 65: Comcast's Depiction of ReplayTV 893's Disclosure of User Selection from a
Display of a Personal Channel Program for Recording
ReplayTV 893 Discloses Using The Channel Guide To Select Programs
For Personal Channels
,,I ,,; 1,I llik.' r, 	Ill 111 ll
prov1CHng a u~r wiin au oppo rtw1 ity to iudica1e a program
to be recorded on n mod m accei,s dlg11al 11 1orn¥c device
by sc lcctmg u prop.rum hstm~ from the al least one
displnycd pJ'Oll,nml li!illn@ , \\ hcrcm lh ~ :;ek-c l'-"ll progrnm
_____ ll stll1¥ co rre spond IO t hl! pn ram to he l\.'Cordc<L ___ _
1,,; .. 11 liL· k 	I .t::, 11 ·~~- 1pl11 11 ...: 11\,; h • I Ii,;: l
h 1 	11 .. 1,li 	'ti 1 	11n I h, \\ h,: pri
r.1 	I .. 1 i,: t,il\ I r1,: I .1 h 	,1 m ,.
11r\ , ,. 	1.c.1\ ,, 111~Lh1,. .:11 11111 lu,; I,: .. I m.:
I 1.;111 l 1/l Ill 1ht11i1,lh, ,Ilk 11111,q,,l"h.:'.1.: ~11111),L
1). ,, 1 1 t -... ..'\: ,ukd md
- 	-	rl 	1,1 1, 	h 1 111 u 	I I, r1 c
I h t- 	I Ill.. 	\l 	11 	! I 	I ..: t~I I •
1 r
n, Pll<UI II c.n I (JX-000,.4 1)
0101] 	Record criteria for a ersonal channel can include
criteria such as sbow title, keywor 	e.g., actor, director),
show category, escription text, and rating. For example, a
user can specify that all shows named "National Geo-
graphic" be recorded on a personal channel. A show nam
can be selected by entering the name of the show using real
or virtual alphanumeric keys, y selecting a show from th
Channel 	uide 	rid by selecting a show name from an
alphabetized list of every known show in the channel
database, or by selecting a show name from a hierarchical
directory of shows. I 	" , 	r IRq,l,yTV 893 at 101 ( RX -0008.n - 23 )
-----------··· 	,1r.	~
HI lX !k~/11 1'J 	"!,
CO MCAST
(RDX- 000lC.00 30 (introduced during the testimony of Dr. Albonesi). ).
Rovi argued that "there is no re fe rence to user selection of a how storage option using the
remote control while the IPG is displayed." (CRBr. at 17-18, 23.). Rovi is mistaken. For
starters, the asserted claims say nothing of remote controls. Additionally, as shown above in
Figure 62, paragraph 108 ofReplayTV 893 explicitly states that "a user can specify that all
shows named 'National Geographic ' be recorded on a personal channel.
A show name can be selected by ... selecting a show from the Channel Guide grid."
(RX-0008 (ReplayTV 893) ,r 101.). Moreover, in the context of a discussion of "interface
states," and, in particular, a user tuning "to a live television channel" and pressing record,
paragraph ReplayTV 893 states that "after pressing the Record button 408, the digital VCR 10
(1 ) assigns a p ersonal channel to the current channel; (2) saves the data that has been recorded
in the rewind buffer, so that the entire show being viewed on the current channel can be
recorded, and (3) changes the interface state to Recording 600d." (Id. at 129.). In other words,
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Public Version
ReplayTV 893 explicitly discloses two ways in which a user selects a program from a guide
display, such that the program is subject to personal channel "how" storage options and settings
such as image quality.
'	Based on the discussion and evidence above, Comcast has proven by clear and
convincing evidence that ReplayTV 893 satisfies limitations l[d], 8[b], 15[g], and 22[e] of the
'585 patent.
t) 	ReplayTV 893 Application (RX-0008) Teaches Limitations
l[e]/8[e]/15[b]/15[h]/22[b]/22[i]-l[e] recording the program
on the random access digital storage device based on the
modification of the at least one storage setting; 8[e] recording
the program on the random access digital storage device based
on the modification of the at least one storage setting for the
program; 15[b] a random access digital storage device; 15[h]
record the program on the random access digital storage
device based on the modification of the at least one storage
setting; 22[b] a random access digital storage device; and 22[i]
record the program on the random access digital storage
device based on the modification of the at least one storage
setting for the program:
ReplayTV 893 discloses recording the program to a random access digital storage device.
(Tr. (Albonesi) at 1843:4-1844:25; RDX-000lC.0051-56.). ReplayTV 893 teaches that the
I
MPEG encoder subsystem "save[s] the program to the hard drive," which is a "random access
digital storage device." (RX-0008 (ReplayTV 893) 174; RDX-000lC.0053; Tr. (Albonesi) at
1843:8-17.). ReplayTV 893 also discloses that, in the alternative, the digital VCR could store
programs to random access memory. (Tr. (Albonesi) at 1843:18-1844:4; RX-0008 (ReplayTV
893) 1143; RDX-000lC.0054.).
Additionally, ReplayTV 893 discloses the recording of personal channel programs based
on the modification of a storage setting, such as recording quality in terms of megabits per
second. (Tr. (Albonesi) at 1844:5-15; RX-0008 (ReplayTV 893) 174; RDX-000lC.0055; see
Page 213 of 325

Public Version
also RX-0008 (ReplayTV 893) ,r,r 5, 51, 56-57, 60, 95-96, 102-103, 105, 108, 128-129, 145,
Figs. 2-5; Tr. (Albonesi) at 1844:16-21; RDX-000lC.0054.). In the context of the "how"
storage option related to recording quality and the corresponding setting of "megabits per
second" at which to record, ReplayTV 893 discloses that "[t]he components of the MPEG
encoder subsystem [which control 'sav[ing] the program stream to the hard disk drive'] respond
to external commands to stop and start recording, change the recording bit rate, change the
encoding resolution, save the current stream position as a bookmark, and respond to other user
actions." (RX-0008 (ReplayTV 893) ,r 74.).
Figure 66: Comcast's Depiction of ReplayTV 893's Disclosure of Recording a Program
Based on the Modification of a "Personal Channel" Storage Setting
ReplayTV 893 Discloses Recording The Program Based On The
Modification Of The At Least One Storage Setting
I l ! h. ll
ti . 1., 1 111 11,1 , uc.:1,..:1 • , k..i • ,w r 	111, 1,-..1 1w
h:l.11111 t,, .,1 h 1 1/11,; n r"f,Ull
pn 	1, I~ I 11· I\ 11 Ill O!"lp( r1llllll\ 	lll 1
h. 	pr ru 1
1 b, ru i !",I 111 11 I 1 1, 	d1 11 I I< r 11..: dl Ill
d ... 1u , ., 'n r 11 h,11111 In , ii 	II L I I )1 1
11 1!1•c.:dpll~J111h 	l\h1.: ~11'.lu.' (.'1.'l'll•ipt f,'fl I
U l-' ,.. • n.:,r 	I , 1h1.: pr i,,, 11 h h fll. rd ...
\ 1, 111 1ti.. , 1 ,, L II r, 11, rttu111, , 1 1 "l 11 I J--1 l 11 •
r1.t 	11111 !i11 1111),! 1h" 11 ~r.11\ It h•ni. 	h.\.l
1\h •1 11 h: 11 I 	n t11t,11 l'l pl ,11 l,IIL' 	1! IL 1:-..1
r I \; ' 	l Oil~ m.d 11 I I Ii I h, \ L r•
1 l I 	h,. d1 ,.i II\ , ru1 1 11 ,. 	1, 11, .. -...·,
11 ti 11 I I~! 	\ l'
"' 1 1 r '-'- 1 th,.; 1
I 11 1 1 	t, '
I 	d
reco rding ihe rogram 0 11 th e rand om access digital storn e
dev ic e baS<.-d on 1hc modification of 1hc al lca,,1 one
slorage i,.c tu ng for 1hc program.
S&S Pa1enrat Claim 8 ( JX.()()(M. 41 )
I I 	'iO Th e
com onents of th e MPEG encoder subsystem respo nd to
external commands to stop and start recording, change the
recording bit rate, chan e the encodin 	re50]ution, save the
current st.ream position as a bookmark, and res pond to o th er
user actions. 	Rq,layTV 893 at 4 (RX-0008.19)
See also, e.g., ReplayTV 893 ( RX-0008) at 1 5, 51 , 56-57, 60, 95-96,
102-103, 105, 108, 128-129, 145; F igs. 2-5
aflL
COMCAST
(RDX-000lC.0055 (introduced during the testimony of Dr. Albonesi).).
During the Hearing, Rovi 's expert, Dr. Balakrishnan, did not contest that ReplayTV 893
teaches these limitations. Rovi did not rebut Dr . Albonesi's evidence in Post-Hearing Briefs.
Thus, Rovi waived any argument on this issue under Ground Rule 10.1.
Page 214 of 325

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Comcast has proven by clear and convincing evidence that ReplayTV 893 satisfies
limitations l[e], 8[e], 15[b], 15[h], 22[b], and 22[i] of the '585 patent.
Based on the discussion and evidence, Comcast has proven by clear and convincing
evidence that ReplayTV 893 anticipates claims 1, 8, 15 and 22 of the '585 patent.
g) 	ReplayTV 893 Application (RX-0008) Teaches the Additional
Limitations Required by Claim 11 (which depends from claim
10)-10. The method of claim 8 wherein the at least one
storage option is for selecting at least one video format for
recording; 11. The method of claim 10 wherein the at least one
video format comprises at least one of high definition
television, normal television and a digital format:
As shown below in Figure 67, ReplayTV 893 discloses a storage option for selecting "at
least one video format" including "at least one of a high definition television, normal television,
and a digital format" as required by claim 11. (Tr. (Albonesi) at 1845:12-1847:24; RDX-
000lC.0058-63.). In the context of personal channels with "how" storage options and settings,
ReplayTV 893 discloses allowing a user to specify a recording quality "e.g., megabits per
second)." (RX-0008 (ReplayTV 893) 11105, 74; Tr. (Albonesi) at 1845:17-1846:5; RDX-
000lC.0059.). In addition, ReplayTV 893 teaches receiving video in NTSC, PAL, and HDTV
video formats (of varying quality), and the digital VCR displaying a HDTV video output. (RX-
0008 (ReplayTV 893) 11147; Tr. (Albonesi) at 1845: 17-1846:5.). 77
77 To the extent that the order in which users select storage options and programs is relevant (which it is
not according to this Initial Determination, for the reasons set forth above), ReplayTV 893 appears to
disclose the selection of this record quality option after program selection. (Tr. (Albonesi) at 1846: 12-
1847: 11; RX-0008 (ReplayTV 893) ,r,r 93, 108; RDX-000lC.0037-43, 45 .).
Page 215 of 325

Public Version
Figure 67: Comcast's Depiction of ReplayTV 893's Disclosure of the Opportunity of a User
to Select a Video Format as a "Personal Channel" Storage Setting
ReplayTV 893 Discloses Providing The User With An Opportunity To
Select The Digital Video Format Of A Recording
10. The melhodof claim8 wherein 1he at lea st o ne s1orj c.
op 11 on 1s fo r M:lcc,;llng a1 Jcw,1 one \-ick.'tl !Omli.II for recording.
11 . The mc1h.od ofclalm JOwhc.rcm the at ll"lbl one v id eo
Jormat compnses Iii lea.st one of lu gh cklin,11011 1c:lc\. 1~1on.
nonnal 1clcv1sion and a d1g11al fo nnm
I[0105 ] The user can specify the quality (in, e.g ., megabits Iper second) at which content should be recorded on a
personal channel. 	1,
Rq,loyTV 893 01 105 (RX-0008.23) )
I 4 Video can be received in NTSC, PAL, IHDTV, or any other broadcast standard format. The digital
VCR 10 can display video output on a high-definition
television (HDTV). I 	I 	' IO 	I
Rq,loyTV 193" 14 7 (RX-0008 27)
II The
I
components of the MPEG encoder subsystem respond LO
external commands LO stop and start recording, chan e the
recordin bit rate, chan e the eocodin resolution save the
current slream po sition as a bookmark, an d res 	od LO other
user actions.
m P11a,1• Claim, 10-11 (JX--000<.◄ I J See also, e.g., ReplayTV 893 (RX-0008) ot 	30, 58, 83, 103, 108, F i g. 3
(RDX-000lC.0059 (introduced during the testimony of Dr. Albonesi).).
afk
COMCAST
During the Hearing, Rovi ' s expert did not contest that ReplayTV 893 teaches these
limitations. Ravi did not rebut Dr. Albonesi ' s evidence in Post-Hearing Briefs. Thus, Ravi
waived any argument on this issue under Ground Rule 10. l.
Based on the evidence and the discussion of it, Comcast has proven by clear and
convincing evidence that ReplayTV 893 satisfies and therefore anticipates claim 11 of the ' 585
patent. 78
78 Given th e above analysis, it is apparent that th e asserted claims of the ' 585 patent are invalid. The ' 585
patent was a prime candidate for withdrawal from Rovi 's case in the weeks preceding the Hearing.
Rovi 's withdrawal of the ' 585 patent from the Investigation would have streamlined the Hearing and
spared everyon e's re source s.
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5. 	ReplayTV 338 (RX-0006) Does Not Anticipate Claims 1, 8, 15, and 22
of the '585 Patent Because ReplayTV 338 Fails To Disclose "How"
Storage Options and Related Settings
Comcast asserted that, much like Replay 893, ReplayTV 338 anticipates claims 1, 8, 15 ,
and 22 of the '585 patent. 79 (RBr. at 40.). In rebuttal, Rovi argued that "Comcast does not argue
or provide any evidence that ReplayTV 338 teaches any "how" storage options- 	much less a
how storage option being selected from an interactive television program guide." (CRBr. at 29
n.8.).
Rovi is correct. As shown below in Figure 68, Comcast identifies two (2) purportedly
"how" storage options disclosed by ReplayTV 338: (1) the number of shows in a series to
record; and (2) whether to record reruns or , alternately, record new episodes only. (RX-0006
(ReplayTV 338) at 4:66-5:6, 5:59-65, 3:21-26, 7:15-20; Tr. (Albonesi) at 1855:10-1857:21;
RDX-000lC.0084.).
However, as explained above, "how" storage options pertain only to the particulars of
actually storing a program on a digital storage device. It appears clear that, based on the
prosecution history of the ' 585 patent, mere specification of the "what," the program to record
and store, without more, does not satisfy the "setting configured to control how programs are to
be digitally stored" limitation required by the claims. (CRBr. at 15 ("the '585 Patent makes an
explicit distinction between what is being recorded (e.g., the program or programs to be
recorded) and user-selectable storage options related to how those program(s) are digitally stored
on a hard drive."); RRBr. at 58 ("both Ravi's and Comcast's experts agreed that the ' control
79 ReplayTV 338 is cited on the face of the ' 585 patent and ostensibly was considered by the examiner
during prosecution of the '585 patent. (JX-0004 at 3-4 (' 585 Patent) at 2-3 (listing references); JX-0010
('585 Patent Prosecution History) at 5125-26; Tr . (Albonesi) at 1945:9-1946:9.). However, there is no
mention of ReplayTV 338 in the prosecution history. (RBr. at 44 n.13.).
Page 217 of 325

Public Version
how' language of the claims cannot be met by the selection of what data to record").).
Here, ReplayTV 338 discloses only "what" storage options. The number of shows in a
series to record pertains exclusively to "what" gets recorded, not how those shows get recorded.
Likewise, whether to record reruns or only new episodes pertains exclusively to "what" gets
recorded, not how those shows get recorded.
In other words, Comcast has failed to prove by clear and convincing evidence that
ReplayTV 338 discloses the "how" storage option and setting limitations found in claims 1, 8,
15 , and 22 of the ' 585 patent (and downstream limitations that refer back to "how" storage
option and setting limitations).
Therefore, ReplayTV 338 does not anticipate these claims based on the present record.
Figure 68: Comcast's DepictiJn of ReplayTV 338's Disclosure of "How" Storage Options,
Selected by a User, That Relate to a "How" Storage Settings for Recorded Programs
ReplayTV 338 Discloses Storage Options Accused Of Infringement By Rovi
l\:lllHfll ~Hll 1,1 Li, ti Ilk Rll\l
1 \.'\ 1 n pi ~r. Jll ILlllL · m1 lcm1.: h: ui1 s1-:r ck·, 1Mrn
'-"11 1 'Jlh. Jh 	~ mc'h1 ~ t m;,ri II g
h pi 1 u g 11 J J1 t I,!\ 'l\..fl.,.'\: i .11 i.:,1 t rn.. (lh~rJlll 11s1111
rlcLtm I h :11 1.• ,t n1.· pr,1)1.f,1111
-r1 	du 	'1, 	i.11h I irp, rlllt1!1) [I illdll,lh.' lpr1lll.fdll1
t,l fr..'l( I 1.. ,1 ,11 I II h Ill H.\.r.. 	1μ. sl\lr t.1-'- ,J,.•.t~l
\ l..'ll•l llll' 	pro r: in l, llJl~ 1 l m 1 1 li.:..,~1 , nt.
l:i>f I 1 • In 	h..: JI lh1 ~ Ice I. VI l ' r.im
I 	1, 	J
--------·------ --------------------------	providing the uscrwi1h an oppo n uni 1y 10 sc lcc 1a1lca•1one
s1oragc pt io n for s1o ri ng 1hc program ro be recordc<l ,
wherein the at least one &toragc op t io n re la tes tout l~t
one s1orngc selling configu re d 10 comro l how lhc pro-
gram is 10 be d1gi1n ll slorcd on 1he ra n dom access
dign aJ ~torngc device'
ll; 	,.-~ 	U ll t 11 ,.,ti h.,.:.I lh.
11 ll,lt 01 1, 11 1 11r-•Il111c1 I, i.: /,)rl\.tC.: dfu•
Ii r tlti.. r1 l r..11 to I ,. ti ~ J 1,.
ft..L 11 1111 1h1. ruJ,t r111 >1111l:111 I, n 1.t•-.; :\OI~ ,H hli }Z.t..'
,k\ c1. h.1sc..'li II iii-: n, d1h1. 1! 011 it ,1, ,11 k 1.., nn1.•
;.,1111 11,u: :,i..•ll mi. h11 lh1.: p
l8l Patent at Claim 8 (JX-0004.41 )
( I) whe 1h er 10 record new cpb odcs o nl y;
(4 ) whether 10 store one or more episod e,:
2018-07-02 Balolcria hnau Opcuiug Rp 1. at l l 9
The user can also specify the priority of the show. If two
shows are scheduled to be recorded at the same time, the
higher 	riority show will take 	recedent. The user may
spec · 	tlie number of shows in a series to record (e.g ., keep
the most recent two shows). In addition, the user ma
s ~· 	whether reruns are to be recorded and whether
syndicated reruns are to be recorded (e.g., record reruns, b ut
not syndicated reruns, record all reruns, etc.).
RcplayTV 338 at 4:66-l:6 (RX-0006. 11 -12)
See also, e.g., R et> lay TV 338 (RX-0006) at A bst.-acl, 1:32-35, 1:37-52, 2: 36-
55, 4:8-18, -t :59-5:6, 5:42-6:7, 7:1-56, Figs. 1-J , 7-9
~k
COMCAST
(RDX-000IC.0084 (introduced during the testimony of Dr . Albonesi).).
Page 218 of 325

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6. _ Blatter (RX-0004) Does Not Anticipate Claims 1, 8, 11, 15, and 22 of
the °585 Patent Because Blatter (RX-0004) Fails to Disclose an
Interactive Television Program Guide (Claims 1, 8, 11, 15, and 22)
and User Selection of a Video Format (Claim 11)

Comcast asserted that Blatter anticipates claims 1, 8, 11, 15, and 22 of the ’585 patent.
(RBr. at 44.). In rebuttal, Rovi contended that Blatter failed to disclose an “interactive television
program guide implemented on user equipment,” as required by all asserted claims, and
“Te]ncryption and selection of a storage medium ... to be one of high-definition, normal
television, or a digital format as required by claim 11.” (CRBr. at 37-42.). Rovi characterized
Blatter as “addressed to a different problem than that addressed by the °585 Patent.” (Jd. at 37.).

In general, Rovi’s critique of Blatter as mismatched to the ’585 patent is well founded.
Blatter addresses “the need to maintain encryption code security when a program is stored by a
consumer in either encrypted or non-encrypted form for viewing at a later time” and “providing a
system that permits billing on the storage or playback of a program and that permits copy
protected processing of encrypted and non-encrypted program data.” (RX-0004 (Blatter) at
1:52-59.). By contrast, the ’585 patent recognizes the limitations of “interactive program guides
have been developed that allow for storage of programs selected within the program guide on an
independent storage device, typically a videocassette recorder” and addresses “provid[ing] an
interactive television program guide” in the context of “digital storage” to overcome those
limitations. (JX-0004 (‘585 patent) at 1:39-50.).

That said, Blatter appears to disclose several limitations of the asserted claims. For
example, as shown below in Figure 69, Blatter teaches “[a] video receiver user selects the

program he wishes to view, the programs he wishes to store, the type of storage media used and

whether the programs are to be stored in encrypted or non-encrypted form by on-screen menu

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selection using remote control unit 125” and that “the invention appl[ies] to any system using an
MPEG or non-MPEG compatible electronic program guide for conveying any of the information
described herein.” (RX-0004 (Blatter) at 3:25-29, 14:47-50.). Blatter also appears to disclose
storage settings that corresponded to the “how” storage, user-selectable option of whether to
encrypt stored programs: “user generated data (SP, SM, SE) identifying the programs a user
wishes to store, as well as those programs that are to be stored in encrypted form, and 65 the
media and device to be used for storage, is input to controller 115 (FIG. 1). A user may select
encrypted storage in preference to non-encrypted storage ....” (/d. at 8:62-66.). Blatter also
teaches that “storage unit 90 may be any type of storage unit,” including “a solid state or
nonlinear type device for storing data in RAM or on a nonlinear medium.” (Jd. at 12:35-38.).

However, Blatter fails to disclose by clear and convincing evidence at least two (2)
limitations found in the asserted claims.®° First, while Blatter appears to disclose, in cursory
fashion, an “interactive television program guide” of sorts, there is no clear and convincing
evidence from Blatter that the guide is “an application” or “implemented, at least in part, at a
user site on television equipment for receiving and processing television program listings and
program data,” as required by the Markman Order.

As shown below in Figure 69, Comcast argued that Figure 1 of Blatter and associated text

disclose these limitations. However, while Figure 1 teaches “a video receiver system ... for

8° Rovi also argued that “Blatter only talk[s] about program-specific actions,” whereas asserted claims 1
and 15 require selection of a “global” storage option before selection of a program to record. (CRBr. at
41; RX-0004 at 7 (Blatter) at 3:25-28 (‘A video receiver user selects the program he wishes to view, the
programs he wishes to store . . . and whether the programs are to be stored in encrypted or non-encrypted
form.”).). In other words, in Blatter, “choosing whether to store the program in encrypted or non-
encrypted form is only done following selection of the program.” (CRBr. at 41 (citing RX-0004 at 2-3, 6-
7 at Figs. 1-2 & 2:66-3:12; 3:14-32.). This required “order of steps” argument was already rejected
above.

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adaptively generating a program representative datastream in user selectable, encrypted or
nonencrypted form," neither Figure 1 nor text describing Figure 1 addresses whether the above-
mentioned "guide" or "on-screen menu" in Blatter is implemented as an application or, in part,
"at a user site on television equipment .... "
By contrast, Figure 3 of the clearly anticipatory ReplayTV 893 reference clearly discloses
an "interactive television program guide" application running on a "digital VCR" in a user's
hotne. (R.X-0008 (ReplayTV 893) at Fig. 3, ,r 19 ("The digital VCR 10 includes a modem 148
(FIG. 2) (RC336ACFA) which is connected to a telephone line 20 and which may be used to
send and receive information about upcoming television shows and other information, as
described in more detail below.").).
Figure 69: Comcast's Depiction of ReplayTV 338's Alleged Disclosure of the Claimed
Interactive Television Program Guide
Blatter Discloses An On-Screen Menu (Program Guide)
For Selecting Programs To Record
8 • .'\ met 	(lf rcco rd1n1 p l'O@r.i!lb U::.11\P, an tn lCnJC(J\~
1e levis,on pmjt ram 1rn1d un p7cn ued on u 	televis ion
eq ufpru ent , the melhoaco mp rising:
di lit) layi ng in • dii pla y • rcc n 1 least o ne prognun ll tin g
rela 1ing 10 o'l I l one p.-o grum t
-----------------------------------------	pro vid in g a user with"" oppommi1y 10 in dic 1c a program
10 be recorded one rand om ocx,ess dlgl tal torage device
by se lec 1in11 1 p rogra m li sting ~ m the at l east one
dis pla yed program Ii ting, whe rein th e lec ted progr.un
__ ___ li sting oo ne pond,; 10 tbc program 10 be rocoro..--d ; ___ _
•t ll
,r
1il• k:n~tnh.i. 	-~t11l,1 ,i.
LI i.; ,,, 1,1 '-•'1 I ,1 11 1, , l kJ:\I '
SU Pal ralt lf Claim I (JX -0004 41 )
Ii()~ I" I 1111
----- -
A video r eiver user 	lects the program he wishe to
view, the 	co rams be wishe to tore, the type of storage
media used and whether the program are to be tored in Iencrypted or non -encrypted form by on-screen menu selec-
tion using remote control unit US . ystem 25 also provides
a mechanism for permitting real time or non-real time
removal of encryption codes from a oon-encrypled program
da t astream .
In addition, the principl 	of th invention apply IO
any system using an MPEG or oon-MPEG compatible
ele trooic program guide for conveymg any of 	e info rm a-
tion described herein as being conveyed in MPEG PSI
tables. The invention rinci~I 	arc not re trict 	t 	ro am
guide or PSI conveyed in MP G compatibl e, P I tables.
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BL,ncr •r 14:4 1-Jl ( RX.O (l(M . ll )
~II,
COMCAST

Public Version
Blatter Discloses An Application Running On Circuitry For Generating
Program Information On The Video Receiver System
8. A method for reco rd ing programs u ing an int eractive
te levision program guide ,m pl cnn:. nt c on UM!r 1clc\f1~ion
L"qt11pm cnt t.hc method co mp riiing:
-- -- -- -- -------- ---- --- --- -- ---------- ---	di pla y in g in a di spl ay screen at least one program lis ti, ig
relati ng to at lcus t one pru gmm i
-----------------------------------------	prov idin g a user with on op po rtunit y 10 indi ca te a p rogra m
to be reco rded on • ra ndom ncccss di gi tnl sromge devl e
by se lec tin g • program lis ti ng fro m tl1 e at least one
dis pl ay ed progrwu Ii ting, wh rein tl1 e ..1 ted J!IOl!l1lll1
___ __ bsting correspo nd s to t he program to be recorded ; ___ _
\ '.:r 11 I 1 1, rw h 1 )if.!' 1 "114 u rd 111.; 1, I .,•~~ t
1rn: ,1<1 t}t'-' ~·\\JIil -.01 11 Jn.-J 	mnd m h• nr1
!'I IIH I h •1, ~h~ 1,111\ ,h,1.. 	11 If 1. 1111 11 h.:i.,C 'I.
I,. kd I ll 11K: ,I h ,,, . l
I I,. -.t:lt n
Bla lttl' al FiJ . 1 (RX-0004 . l) ,
FIG. 1 shows a video receiver ystem according IO I.he Iinvention, for adaptively geneming a program representa-
tive dalastream in user selectable, encrypted or ooo-
eocrypted form . 	Blan-er at 2:.5:!~H (RX-0004 6)
See also, e.g., Bla tt er (RX-0004) a l I :1 4-3 1, 2:66-3: 12, 3 : 14-50, 4: 14-43,
mPa rc nu,a..m 1 (1X-0004.4t) 	8:8 - 17,8 :62-9: 17, 12:40-44, 12:49-67, 14:40-52 , Flgs. 1-3
(RDX-000lC.0103 , 107 (introduced during the testimony of Dr . Albonesi).)
A
COMCAST
Blatter also fails to disclose the limitation of claim 11 because encryption is not a "video
format. " Claim 11 requires "one storage option[] for selecting at least one video format" and "at
least one video format comprises at least one of high definition television, normal television and
a digital format. " (JX-0004 ('585 patent) at els. 10-11.). The '585 patent teaches that a "user
may also set . .. video formats for playback" and that "[t]he program guide will either store all of
the supplied video formats and languages, or store only the variant that matches the current
viewer profile preferences." (Id. at 9:27-29, 16:1-2.). The ' 585 patent does not mention security
or encryption and appears to distinguish "video format" from encryption by presenting the
former in terms of something that affects "playback" and can be specified by a user with an
interactive television program guide. In the context of the '585 patent, it seems farfetched that
user would use a guide to select a particular type of encryption for storage and "playback."
Therefore, Blatter does not anticipate claims 1, 8, 11, 15, and 22 of the '585 patent.
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7. Claims 1, 8, 11, 15, and 22 Are Not Obvious In View of ReplayTV 893,
ReplayTV 338, or Blatter, Individually

Comcast took the “six ways from Sunday” approach to invalidate the asserted claims of
the ’585 patent by raising no fewer than seven (7) invalidity theories. It is apparent from the
analysis above that Comcast could have reached its desired invalidity result with far fewer
invalidity theories. It should have focused on anticipation by ReplayTV 893.

The plethora of remaining invalidity theories, while potentially understandable from a
strategic or client relations perspective, did little for Comcast’s invalidity case here and, frankly,
risked wasting precious resources.* Each of Comcast’s obviousness theories is addressed
below.

a) © ReplayTV 893 Application (RX-0008) and ReplayTV 338 (RX-

0006) Do Not Individually Render Obvious Claims 1, 8, 11, 15,
and 22 of the ’585 Patent

Assuming arguendo that ReplayTV 893 does not anticipate the asserted claims, Comcast
asserted that ReplayTV 893 at least renders these claims obvious. (RBr. at 49.). According to
Comcast, “ReplayTV 893 discloses each of the limitations of the asserted claims individually,
and all that would be necessary is to combine adjacent disclosures of the user specified storage
options for personal channels and the interactive television program guide.” (Jd.). Comcast
asserted that the same is true for ReplayTV 338> (d. at 51.).

As an initial matter, Comcast is incorrect to assert that ReplayTV 893 and ReplayTV 338
each disclose every limitation of the asserted claims. As discussed above, ReplayTV 893 does

disclose every limitation of the asserted claims. That is a foundational requirement for the

8! Parties in every 337 investigation before the Commission are encouraged to trim their cases as much as
possible prior to the evidentiary hearing.

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finding above that ReplayTV 893 anticipates the asserted claims. However, as discussed above,
ReplayTV 338 does not disclose every limitation of the asserted claims. Instead, based on the
evidentiary record, ReplayTV 338 fails to disclose selection of a “how” storage option, as
construed in this Initial Determination. Nowhere does Dr. Albonesi opine that ReplayTV 338
renders the asserted claims obvious notwithstanding this critical “how” storage omission.

In addition to raising this omission, Rovi contended that Comcast’s obviousness
argument fails due to lack of proof. (CRBr. at 32-37.). Rovi argued that Comcast’s expert, Dr.
Albonesi, never explicitly disclosed in his expert report: (1) an argument (for obviousness or
anticipation) that addressed the purported difference in scope between claims 1 and 15 (global
storage options) and claims g and 22 (program specific options); and (2) an argument that it
would be obvious to one of skill in the art to use the IPG in either ReplayTV 893 or ReplayTV
338 in isolation (not in combination) to select “how” storage options. (d.).

Against this backdrop, only one of Rovi’s failure of proof arguments is compelling.
Rovi’s first failure of proof argument fails. As explained in Order No. 49, in his expert report, .
Dr. Albonesi recognized Rovi’s contention “that there is a distinction in any of the claims with
respect to ‘global’ and Jocal’ configuration of storage settings,” while stating his opinion that
the distinction was inconsequential. Dr. Albonesi also cited to sections of ReplayTV 893 and
ReplayTV 338 that satisfied Rovi’s “order of operations” requirements (rejected above) for
global and local storage settings (first select program and then select setting, or vice versa). That
put Rovi on notice that Dr. Albonesi might testify during the Hearing about how the ReplayTV
reference discloses program selection and storage setting limitations of the asserted claims even
under Rovi’s narrow and faulty interpretation of the order in which those limitations occur.

However, Rovi’s second failure of proof argument is legitimate. Nowhere in Dr.

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Albonesi’s expert report is there an adequate disclosure of an argument that a person of ordinary
skill in the art would find it obvious to use the IPG in ReplayTV 893 to select “how” storage
options. Dr. Albonesi nevertheless testified during the Hearing that “one of skill in the art would
understand” that “you could use the grid guide to select programs for recording to personal
channels.” (Tr. (Aibonesi) at 1826:18-1827:4.). That testimony and associated demonstratives
are waived and not considered here pursuant to Ground Rule 9.5.6.

Lastly, Dr. Albonesi did not specifically testify to a motivation to combine disclosures
within ReplayTV 893 or ReplayTV 338 to render the asserted claims obvious. “Whether a
rejection is based on combining disclosures from multiple references, combining multiple
embodiments from a single reference, or selecting from large lists of elements in a single
reference, there must be a motivation to make the combination and a reasonable expectation that
such a combination would be successful, otherwise a skilled artisan would not arrive at the
claimed combination.” Jn re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017).

In sum, Comcast failed to satisfy its burden of proving by clear and convincing evidence
that ReplayTV 893 or ReplayTV 338 separately render the asserted claims obvious. ‘More is
needed in terms of evidence with respect to what a person of ordinary skill in the art would find
obvious, particularly motivation to combine features within a single prior art reference and
likelihood of success in making any such combination.

b) Blatter (RX-0004) Does Not Render Obvious Claims 1, 8, 11,
15, and 22 of the °585 Patent

Comcast next asserted that Blatter, standing alone, renders the asserted claims obvious.
According to Comcast, “storage options for multiple programs [specified before program

selection] would have been immediately apparent or obvious in view of the disclosures in Blatter

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because there are only a limited number of possible arrangements for providing the opportunity
to select storage options, there are no technical barriers to selecting an option for multiple
programs before selecting a program, and such an arrangement would have known benefits
including that the option could be applied to multiple programs in advance.” (RBr. at 51 (citing
Tr. (Albonesi) at 1876:3-1879:4; 1873:24-1875:11; RDX-0001C.0128-130).). However, as Rovi
noted, “Comcast’s argument puts the cart before the horse ... Blatter does not disclose an IPG.”

Rovi is correct. Comcast failed to offer evidence that a person of ordinary skill in the art
would find the asserted claims obvious in the event that Blatter failed to disclose an IPG. (RBr.
at 51.). Moreover, as Rovi explained, Comcast failed to offer evidence with respect to
motivation to combine features within Blatter and likelihood of success in making any such
combination. (CRBr. at 42-43.). Thus, Comcast has failed to meet its burden of proving by clear
and convincing evidence that Blatter renders obvious the asserted claims.

8. The Combination of ReplayTV 893 Application (RX-0008) and

ReplayT V338 (RX-0006) Renders Obvious Claims 1, 8; 11, 15, and 22
of the ’585 Patent

Comcast next argued that ReplayTV 893 in combination with ReplayTV 338 renders
obvious asserted claims 1, 8, 11, 15, and 22 of the ’585 patent. (RBr. at 51-52 (ReplayTV 338
“expressly discloses that users can select ‘recording criteria’ through the ‘user interface” of the
IPG and a “personal channel function’ that sets up a personal channel by ‘selecting a show from
the channel guide.””) (citing RX-0006 (ReplayTV 338) at 3:22-23, 7:17-20; Tr. (Albonesi) at
1879:5-1 880:25).). According to Rovi, Comcast’s obviousness combination fails due to the
“rudimentary and limited nature of software program IPGs in September 1998 and the
corresponding lack of proof from Comcast that user selection of storage options from the IPG

was conventional, routine, or otherwise expected.” (CRBr. at 34.).

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Rovi mischaracterized the record and failed to acknowledge Comcast’s strong evidence
that, together, ReplayTV 893 and ReplayTV 338 disclose all the elements of the asserted claims.
As explained above, ReplayTV 893 and ReplayTV 338 do not erect a firewall between the IPG
and the use of personal channels. Instead, the two appear integrated, giving rise to only a
glimmer of doubt at best with respect to whether users employ the IPG to select storage settings
for programs recorded on personal channels. To the extent ReplayTV 893 falters in terms of an
unambiguous disclosure of user selection of personal channel “how” storage options within the
IPG, ReplayTV 338 (which focuses on personal channels) discloses using the IPG to “set up” a
personal channel by selecting a show from the IPG. (RX-0006 (ReplayTV 338) at 3:22-23, 7:17-
20.). In terms of Rovi’s purportedly required and different “order of steps” for global versus
single program storage options, selecting options both before and after selecting programs for
recording is disclosed in the two ReplayTV references. (Tr. (Albonesi) at 1874:25-1875:11,
1876:3-1879:4.). Also, as Dr. Albonesi explained, it would have been obvious to take teachings
from one Replay TV reference and apply them to the other Replay TV reference. (/d.).

Comcast offered clear and convincing evidence of motivation to combine ReplayTV 893
and ReplayTV 338 and the likelihood of success of doing so. Dr. Albonesi testified that a person
of ordinary skill in the art would have been motivated to combine ReplayTV 893 and ReplayTV
338 because the references are essentially siblings. (RDX-0001C.0134-139; Tr. (Albonesi) at
1881:21-1883:7.). They have “numerous overlapping inventors, were filed four days apart by
the same company, and describe[] inventions that were intended for the same product with the
same software and hardware.” (RBr. at 52.). Dr. Albonesi also testified that a person of ordinary
skill would have been able to combine these references with a reasonable expectation of success.

(Tr. (Albonesi) at 1183:8-13.).

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Rovi failed to offer compelling rebuttal evidence. In rebuttal, Dr. Balakrishnan testified
about what "the authors or writers" of the "ReplayTV references" had or had not contemplated
and opined that selecting "how" storage options "through an IPG would not have been well
known, because that did not exist prior to that time frame." (Tr. (Balakrishnan) at 2095: 1-
2096: 14.). However, this testimony is oflimited value because it omits a nuanced analysis of
what each ReplayTV reference discloses and what a person of ordinary skill in the art would
have or have not found obvious based on a combination of the ReplayTV references.
Figure 70: Comcast's Depiction of Motivation to Combine the ReplayTV References
Motivations To Combine ReplayTV 338 and ReplayTV 893:
Same Guide
ReplayTV 893 	ReplayTV 338
...
t> I 	I ~	'612 	0
_G _ _ !10_,_ 	·I
lc:ooll,I ... ,... ...... ... ....... ,. ........	
tot..N~--Mlflllnllll...,.,.. ,
t> I 	I 	I 	I 	4:~ pm
[H Scooby Doo (JO mhuln ) &JO - t.ilO
Scool,yondUN- IMlm up wflll •-poi-	inorw1oso1w u.. myr1..,.l»/lind - 	1illlroa.Altltnattd.
TV Dlo nne tl 	lljl : lJUDffl 	N'
- .,_ ., 	1003 TBS 	Scooby Ooo a I Car Cro1h • •
1003 TIIS 	Doo
...,_
1004 N8C 	~ - • 14 	-	,... _ Thllllg.,_ _ ..A, . 	JOoug
100• NBC 	E:11 	JN....
1= N ick 	n,., 1119 Half> 	!Doug,... ........ - 	l"ol ,_
10070omo
--- I.....,,_ 	IOOII r-Jon SWim ~• 	Iran Prwvle w
1006Food 	... a.r .........
100tVC R 	1007 Go me Co rd Shorb 2000 	I Lucl\y s 1,...,k
10tO Finlnc9 ~ 8'1 IJDffl fTOU" - 	111 lpm 	I OOII rood 	Iron Clulf Moro thon
IIQ> ,/ RcplayTV 891 at Flf, S (RX.0008 .6) 	RcplayTV JJI at Flf , 8 (RX-0006.9)
~~:()1)()1( 11/ 	i.
(RDX-000lC at 137 (introduced during the testimony of Dr. Albonesi); see also id. at 133-40.).
In short, Comcast met its burden of providing clear and convincing evidence that
ReplayTV 893 and ReplayTV 338 collectively disclose all the elements of the asserted claims of
the ' 585 patent and that a person of ordinary skill in the art would have been motivated to
combine ReplayTV 893 and ReplayTV 338.
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9. 	Secondary Considerations Support an Obviousness Finding
With respect to secondary considerations of non-obviousness, Rovi bore the burden of
production. ZUP, LLC v. Nash Mfg ., Inc., 896 F.3d 1365, 1373 (Fed. Cir. 2018). Rovi failed to
meet that burden. Rovi did not produce any evidence of secondary considerations of non-
obviousness.
Figure 71: Comcast's Depiction of Secondary Considerations
Secondary Considerations
Obviousness
✓contemporaneous invention by others
✓Technology or market changes
,-
fd 1;< 1~11,11 14,1 	~
(RDX-000lC.0142 (introduced during the testimony of Dr. Albonesi).).
A
COMCAST
On the other hand, Comcast adduced some secondary consideration evidence in support
of a finding at the asserted claims are obvious. With respect to technology or market changes,
Dr. Albonesi testified that combining an "electronic program guide with digital storage" as
described in the ' 585 patent was driven by the density and reduced the cost of digital storage
devices, and was not the product of any leap of inventiveness made by the inventors of the '585
patent. (Tr. (Albonesi) at 1886:11-1887:13.). With respect to the contemporaneous "invention"
by others, Dr. Albonesi testified that the ReplayTV inventors and others arrived at the same
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alleged invention prior to and contemporaneous with the filing of the *585 patent. (Tr.
(Albonesi) at 1886:11-1887:13; see also Geo. M. Martin Co. v. All. Mach. Sys. Int'l LLC, 618

| F.3d 1294, 1305 (Fed. Cir. 2010) (‘Independently made, simultaneous inventions, made ‘within
a comparatively short space of time,’ are persuasive evidence that the claimed apparatus ‘was the
product only of ordinary mechanical or engineering skill””) (citations omitted).

Dr. Albonesi’s testimony stands uncontested. An analysis of the evidentiary record on
secondary considerations supports the finding that the asserted claims of the ’585 patent are
invalid in general and, in particular for our purposes here, as obvious.

Based on the above, the asserted claims of the ’585 patent are obvious in light of
ReplayTV 893 in combination with ReplayTV 338. The asserted claims are also anticipated by
ReplayTV 893 as discussed above. However, in the event that the Commission reverses this
anticipation finding on review, Comcast has proven obviousness as a second ground for

invalidation of the asserted claims of the ’585 patent.

IX. U.S. PATENT NO. 9,369,741
A. Literal Infringement
1. Infringement Overview

Rovi asserted that the Accused 741 Products satisfy each limitation of method or system
claims 1, 8, or 14* of the 744 patent. (CBr. at 65-66.). As shown below in Table No. 11,
Comcast disputed whether, when operating in the X1 System, the Accused 741 Products satisfy
only one limitation found in the asserted claims. (RRBr. at 56.). Comcast argued that the
asserted claims require the display of an “indication ... after a specified time after the start time”

of a program where the specified time is “configured prior to the start time” and that “Comcast’s

82 Claim 14 depends from independent claim 8.

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accused ‘indications’ appear when a user happens to press a particular button, not at a specific
preconfigured time.” (/d. at 77.). According to Comcast, “[n]Jeither the time of the user’s button
press, nor the miniscule and variable amount of time the system takes to process it, is a ‘specified —
time’ that is ‘configured prior to the start time.’” (/d.).

As explained below, Comcast is correct. Rovi has not met its burden of proving by a
preponderance of the evidence that the Accused 741 Products satisfy the asserted claims.

Table No. 11: Disputed Terms for Infringement of Claims 1, 8, and 14 of the ’741 Patent

Element Limitation Resolution
“based on determining that the archived
copy is available to the user after. the
start time, cause an indication

I[e] corresponding to the archived copy to
be displayed simultaneously with the Rovi failed to satisfy its burden of
video after a specified time after the proof.
start time but before the end time,
wherein the specified time was The variable, elapsed time taken by
configured prior to the start time;” Comcast’s X1 System to process a

user action (which triggers the
“based on the determining, causing an __| display of a restart indicator) is not “a

indication corresponding to the specified time” “configured prior to
archived copy to be displayed the start time” as required by claims 1
simultaneously with the video after a and 8.

8[c] specified time after the start time, but

before the end time, wherein the
specified time was configured prior to
the start time;”

(CBr. at 67-70; RRBr. at 77-89; JX-0006 at cls. 1, 8.).

Rovi also contended, without citation to legal authority, that Comcast directly infringes
the asserted claims. (CBr. at 65.). Notwithstanding that these claims cover methods and a
system, Rovi nonetheless argued that “Comcast directly infringes [them] by importing the ’741
Patent Accused Products” and “by selling the Accused Products after importation.” (/d.).

Appearing to conflate direct and indirect infringement, Rovi also asserted that

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“[c]ustomer use of the claimed ‘Restart’ or ‘Start Over’ functionality is also evidence of
Comcast’s use of the claim 1 system and performance of each and every step of claims 8 and
14.” (Id.). Comcast did not appear to address Rovi’s contentions that Comcast directly infringed
the asserted claims of the ’741 patent. (RRBr. at 17-93,). Nevertheless, as explained below,
Rovi has not met its burden of proving by a preponderance of the evidence that Comcast has
directly infringed the asserted claims.

Rovi next argued that Comcast indirectly infringed the asserted claims by inducing :
customers to infringe them. (CBr. at 81-85.). In rebuttal, Comcast asserted that it does not
indirectly infringe the asserted claims. (RRBr. at 90-92.). According to Comcast, “Rovi has
adduced no evidence that any customer performs each and every step of the claimed methods.”
(Id. at 90.). Comcast contended that a single entity must perform all steps of an asserted method
claim, which Comcast argued cannot happen here because a number of steps are performed not
by users, but instead by Comcast’s servers. (/d.). As for the remaining asserted system claim,
Comcast asserted that its customers cannot control the accused Comcast system (especially its
server-based operations) as required by law to show direct infringement. (Jd. at 91.).

Comcast also argued that it did not possess the requisite specific intent to induce
infringement because it removed one of the three (3) accused embodiments of the X1 System
(“Restart Reminder notification”) within 24 hours of Rovi filing its Complaint in this
Investigation. (/d. at 91-92.). Without citation to legal authority, Comcast stated that “this was
the only feature Rovi accused prior to this investigation, and thus the only feature on which its
allegations of inducement may be based.” (/d. at 92.).

As explained below, Rovi has not met its burden of proving by a preponderance of the

evidence that Comcast indirectly infringed those claims.

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2. Relevant Claim Terms

The Private Parties agreed to the following construction of one of the claim terms recited
in one of the asserted claims of the ’741 patent, which this Court has adopted. (See Markman
Order, App. A at 35.).

Table No. 12: Construction of Agreed Upon Claim Term Relevant
to the ’741 Patent

Claim Term Adopted Construction

“storage circuitry for storing archived copies — | “a circuit or system of circuits for storing
of videos” archived copies of videos”
(Claim 1)

~

This Court construed the following constructions of the disputed claim terms.®°
(Markman Order, App. A at 36-52.).

Table No. 13: Constructions of the Disputed Claim Terms Relevant
to the ’741 Patent

Claim Term Adopted Construction

“archived copy” / “archived copies” ) “a real or virtual copy of a program retained
(Claims 1, 8, and 14) by the system / real or virtual copies of
7 programs retained by the system”

“specified time” “a specific duration of time or at a clock time”

(Claims 1 and 8)

“a specified time after the start time but “a specified duration of time or at a clock
before the end time” time that falls after the start time but before

(Claims 1 and 8) the end time”

“configured prior to the start time” “set prior to the start time”

83 The Private Parties disputed the meaning of additional claim terms recited in claims that have been
terminated from this Investigation. Those terms are not included in Table No. 13.

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Claim Term ‘Adopted Construction

(Claims | and 8)

“control circuitry configured to” “a processor or processors [configured to]”
“control circuitry”

in context of “control circuitry configured
to:”

(Claim 1)

3. The Accused 741 Products Do Not Practice Claims 1, 8, and 14 of the
°741 Patent

As an initial matter, Rovi asserted that no fewer than three (3) “embodiments” of
Comcast’s X1 System satisfy the asserted claims. As shown below, these “embodiments” are:
(i) Grid Guide (Figure 72); (ii) Mini Info Overlay (Figure 73): and (iii) Restart Reminder (Figure
74). (Tr. (Balakrishnan) at 1051:25-1052:11 (Grid Guide), 1054:17-1055:17 (Mini Info
Overlay), 1056:16-1057:8 (Restart Reminder).). According to Rovi, each of these embodiments
separately and independently infringes the asserted claims. (CDX-0006C.0334-40.). |

To clarify, two (2) of these three (3) embodiments remain in the X1 System, while one
embodiment has been removed by Comcast. The “Grid Guide” (Figure 72 below) and “Mini
Info Overlay” (Figure 73 below) “embodiments” remain in the X1 System, and Comcast disputes

whether these “embodiments” satisfy the asserted claims. (Tr. (David Karger)** at 1514:25-

84 When he testified during the Hearing on October 23, 2018, Dr. David Karger was a professor at the
Massachusetts Institute of Technology. (Tr. (Karger) at 1505:1-2.). Comcast identified Dr. Karger as “an
expert in the field of computer science, which includes digital video receivers and related hardware and
software components.” (RPSt. at 2.). According to Comcast, “Dr. Karger is expected to testify regarding
matters relating to, at least, the technical background of the Asserted Patents; the interpretation of the
claims in those patents; issues relating to the alleged infringement of the Asserted Patents by the accused
products and Comcast’s design alternatives, the design, structure, function, and operation of the accused
products and Comcast’s design alternatives; issues relating to the validity of the Asserted Patents; issues

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1515:6 (specifically constraining non-infringement opinion to "Comcast's mini info screen and
grid guide restart features").).
Figure 72: Rovi's Depiction of the "Grid Guide" Embodiment
'741 Patent, Claim l[d]: Comcast's Xl System Accesses a Database
Claim l[d]
access a database to
determine whether
an archived copy
corresponding to the
video is ava il able to a
use r after the start
time
CX-1052C.2 (XGlvl) ; see also e .g ., CX-1064C.2 (XG2v2); CX -1069C.2 (XiD); CX -1132C (XG l vl
Video); CX-1137( (XG1v3 Video); CX-1149( (XG2v2 Video); CX-1155( (XiD Video)
Contains Confidential Busine ss Informatio n Subject to Prot ective Order 	CDX 0006C.H5
(CDX-0006C.0335 (introduced during the testimony of Dr. Balakrishnan).).
relating to whether the Rovi DI products practice the Asserted Patents and, relatedly, whether Rovi
satisfies the technical prong of the domestic industry for the Asserted Patents; other issues in connection
with the alleged infringement, validity, enforceability, and any other technical issue that may arise with
respect to the Asserted Patents. Dr. Karger may also be called to rebut the testimony of Complainant's
experts or fact witnesses, should any be presented, regarding any of the areas described above." (Id.).
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Figure 73: Rovi's Depiction of the "Mini Info Overlay" Embodiment
'741 Patent, Claim l[d]: Comcast's Xl System Accesses a Database
Claim 1[d]
ac cess a database to
determine whether
an ar ch ived copy
corresponding to the
video is available to a
user after the start
time
CX -1 052 C.4 (XG l v l) ; s ee al so CX- 1064( .4 (XG2 v 2) ; CX- 106 9( .5 (XiO)
Contains Confidential Bu si ness Information Su bject to Pro te ctive Order 	CDX-0006C.337
(CDX-0006C.0337 (introduced during the testimony of Dr . Balakrishnan).).
However, shortly after Rovi filed its Complaint in this Investigation, Comcast removed
the "Restart Reminder" embodiment (Figure 74 below) from the XI System. (RRBr. at 91-92.).
Rovi nevertheless argued that "Comcast presented no evidence disputing Rovi' s ... showing that
this embodiment infringes" the asserted claims. (CBr. at 68.). Although Comcast has removed
the "Restart Reminder" embodiment, Rovi seeks remedies directed at this embodiment. (Id.).
(CDX-0006C.0337 (introduced during the testimony of Dr. Balakrishnan).).
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I
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Figure 74: Rovi's Depiction of the "Restart Reminder" Embodiment
'741 Patent, Claim l[d]: Comcast's Xl System Accesses a Database
Claim l[d]
access a database to
determine whether
an archived copy
corresponding to the
video is ava ilable to a
us er after the start
time
CX -8 1 5C .71 (Comcast Xt C______.......__......,........,.................,......,] ; see also CX -8 15 C. 72-73
Contains Confidential Bu siness Information Subject to Protective Ord er 	CDX-0006C. 3 38
(CDX-0006C.0338 (introduced during the testimony of Dr. Balakrishnan).).
a) 	Claim 1
1. 	Preamble: "A system comprising"
The preamble of claim 1 is not limiting. The preamble defines claim 1 as a system claim.
(Tr. (Balakrishnan) at 1039:21-1040:4.).
11. 	l[a}: "storage circuitry for storing archived copies of videos"
The Accused 741 Products satisfy this limitation. By agreement of the parties, this
phrase means "a circuit or system of circuits for storing archived copies of videos." (Markman
Order at 35.). The Markman Order construed "archived copies" to mean "real or virtual copies
of programs retained by the system." (Id. at 36.). Rovi ' s expert, Dr . Balakrishnan, testified that
Comcast's XI system 	. (Tr. (Balakrishnan) at 1040:25-
---------------1041:19; CDX-0006C.0318-21.). According to Dr. Balakrishnan, ------------
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(Tr. (Balakrishnan) at 1042:7-10; CX-0815C.0069
system
------------------------------
-----------------86 (Tr. (Balakrishnan) at 1043:12-1045:5.).
In its Post-Hearing briefs, Comcast did not present any argument in rebuttal and thus has
waived any such argument pursuant to Ground Rule 10.1.
Thus, Rovi has proven by a preponderance of the evidence that the Accused 741 Products
satisfy limitation 1[a] of the '7 41 patent.
111. 	l[b]: "control circuitry configured to"
The Accused 7 41 Products satisfy this limitation. The Markman Order construed
"control circuitry configured to" to mean "a processor or processors configured to." (Markman
Order at 45.). There is no dispute that the Accused 741 Products include
-----(Tr. (Balakrishnan) at 1045:20-1046:12 (identifying
------ 	-----------
_________, ); CDX-0006C.0324-325.). Dr. Balakrishnan testified that ■
(Tr. (Balakrishnan)
at 1045:20-1046:12.).
In its post-hearing briefs, Comcast did not present any argument in rebuttal and thus has
waived any such argument pursuant to Ground Rule 10.1.
85 The acronym 	(CBr. at iv.).
---------------86 According to Dr. Balakrishnan,
(Tr.
.......------------------------	(Bala kri shnan) at 1045:1-5.).
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Thus, Rovi has proven by a preponderance of the evidence that the Accused 741 Products
satisfy limitation 1[b] of the ' 7 41 patent.
1v. 	1/c]: "transmit a video to a plurality of user equipment,
wherein the transmitting begins at a start time and ends at an
end time"
The Accused 741 Products satisfy this limitation. As shown below in Figure 75, the
Accused Products include
{Tr. (Balakrishnan) at 1047:14-1048:13;
CDX-0006C.0329-31; CX-1052C.0004; CX-1064C.0004; CX-1069C.0005.). Dr. Balakrishnan
testified that 	(Tr.
(Balakrishnan) at 1048: 14-1050: 14 (describing
------------------_________. ; CDX-0006C.0330.).
Figure 75: Rovi's Depiction of the Xl System Transmitting Video
'741 Patent, Claim l[c]: Comcast's Xl System Transmits Video
Claim l[c]
transm it a video to a
plurality o{ user
equ ipment, wherein
the transmitti ng
begins at a start
time and ends at an
end time;
Video :
"Southern Charm "
Scheduled start time:
S:OOp
Scheduled end time :
6:00p
CX-1052 C. 4 (XGl v l) ; see also CX -1064C.4 (XG2v2); CX-1069C.5 (XiD)
Contains Confidential Business Information Subject to Protective Order 	COX 0006( . 329
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(CDX-0006C.0329 (introduced during the testimony of Dr. Balakrishnan).).
In its post-hearing briefs, Comcast did not present any argument in rebuttal and thus has
waived any such argument pursuant to Ground Rule 10.1.
Thus, Rovi has proven by a preponderance of the evidence that the Accused 741 Products
satisfy limitation 1[c] of the °741 patent. | |
v. I[d]: “access a database to determine whether an archived

copy corresponding to the video is available to a user after the
start time”

The Accused 741 Products satisfy this limitation. This is true for each of the three
embodiments identified by Dr. Balakrishnan: (1) Grid Guide; (2) Mini Info Overlay; and (3)
Restart Reminder. (Tr. (Balakrishnan) at 1051:25-1052:11 (Grid Guide), 1054:17-1055:17 (Mini

Info Overlay), 1056:16-1057:8 (Restart Reminder).). The Accused 741 Products includef

[ |. (id. at 1058:17-19] |

i |.). Control circuitry includes

| | ]. (id. at 1058:18-24.).

With respect to the “Grid Guide” embodiment, shown in Figure 72, above, {sd

| (Tr. (Balakrishnan) at

1055:15-17; see also id. at 1051:25-1052:25 (discussing CX-1052C.0002), 1053:18-1054:16

(discussing CX-1052C.0001), 1054:5-16; CDX-0006C.0335-336). Dr. Balakrishnan testified

that| |
C_

[ _|. (Tr. (Balakrishnan) at 1058:11-24.).

With respect to the.“Mini Info Overlay” embodiment, shown in Figure 73, above, Dr.

Balakrishnan testified that a "

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f | Ud. at 1055:24-

1056:3.). The STB processors} |
, [ i. (Id. at 1058:11-24.). Restart indications on the Comcast STB’s

display of the “Mini Info Overlay,” depicted in Figure 73, above, reflect the availability to the
Comcast customer of the archived copy. (/d. at 1054:17-1056:15; CX-1052C.0004; CDX-
0006C.0337.).

Finally, with respect to the “Restart Reminder” embodiment, depicted in Figure 74,

above, the STB processors| .

7 : (Id. at 1058:11-24.). This process occurs when a user tunes to a

channel. (Tr. (Balakrishnan) at 1056:16-1058:10; CX-0815C.0071-73 ¢ Overview)

Cp.

In its post-hearing briefs, Comcast did not present any argument in rebuttal and thus has |
waived any such argument pursuant to Ground Rule 10.1.

Thus, Rovi has proven by a preponderance of the evidence that the Accused 741 Products
satisfy limitation 1[d] of the °741 patent.

vi. . fe]: “based on determining that the archived copy is available
to the user after the start time, cause an indication
corresponding to the archived copy to be displayed
simultaneously with the video after a specified time after the
start time but before the end time, wherein the specified time

was configured prior to the start time”

There is no dispute that the Accused 741 Products satisfy the first part of limitation 1[e].

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(Tr. (Balakrishnan) at 1061:6-1063:14 (Mini Info Overlay), 1069:25-1072:15 (Grid Guide),
1075:7-24 (Restart Reminder).). Processors within each of the Accused 741 Products, []

a |. (Ud. at 1076:14-21.). Simultaneously with the

video of interest, each of the three accused embodiments display restart indicators corresponding
to the availability of an archived copy, as shown in Figures 72-74 above. In each of Comcast’s
X1 System embodiments at issue here, the indicator is labeled “Restart.” (CDX-0006C.0334-
40.).

In its post-hearing briefs, Comcast did not present any argument in rebuttal and thus has
waived any such argument pursuant to Ground Rule 10.1.

Thus, Rovi has proven by a preponderance of the evidence that the Accused 741 Products
satisfy the first half of limitation I[e] of the ’741 patent.

As for the second half of the 1[e] limitation, the main dispute between the Parties is
whether the indication is “displayed after a specified time after the start time but before the end
time, wherein the specified time was configured prior to the start time.” (Tr. (Karger) at
1513:24-1514:3.). |

As discussed below, the evidence suggests that Rovi should not have asserted claim 1 (or
claims 8 or 14, for that matter) against Comcast's Xl System. This is because it is clear that the

Mini Info Overlay, Grid Guide, and Restart Reminder®’ embodiments do.not cause an archived

87 Rovi made no mention of the Restart Reminder embodiment in its Pre-Hearing Brief in the context of
limitation 1[e] or 8[c]. By contrast, Rovi explicitly cited to the Grid Guide and Mini Info Overlay
embodiments with respect to each of these limitations. (See CPBr. at 76 (citing CX-1052C.0004 (X11M-
741-1-14 Screenshots) and CX-1132C (X11M-741-vl (MVI_0364 (’741 XGlv1).mov Video)).). Rovi
thus waived argument with respect to the Restart Reminder embodiment under Ground Rule 7.2.

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copy indication to appear after a “specified time” that “was configured prior to the start time.”

The Markman Order should have put this matter to rest. During claim construction, for
the terms “specified time” and “a specified time after the start time but before the end time,”
Rovi proposed the following construction: “a non-zero amount of time after the start time but
before the end time.” (Markman Order, App. A at 39.). It was apparent then, as it is now, that
Rovi’s proposed construction attempted to broaden the asserted claims of the ’741 patent, such
that a “specified time” was any “‘non-zero amount of time,” whether “specified” or not. It
appears that Rovi’s proposed construction would have read on the Accused 741 Products.
However, the Markman Order rejected Rovi’s proposed construction (and infringement theory)
and instead adopted a construction that preserved the plain and ordinary meaning of “specified
time” as presented in the context of the specification of the ’741 patent: “a specific duration of
time or at a clock time.” (Id).

As reflected below in Figure 76, the evidence proves that the X1 System does not post

restart indicators at a “specified time after the start time but before the end time.” (Tr. (Karger)

at 1519:9-14 (testifying that| |

| |), 1530:3-20 (testifying | ‘|).).

N

First, it is axiomatic that user actions are spontaneous, not “specified.” Second, Comcast

~

has not; J

i |,**| ]

| al
[ | ] (Tr. (Karger) at

\
88 Dr. Karger described latency as “variability in the time that it will take to process a particular request
for a mini info screen.” (Tr. (Karger) at 1530:10-12.).
4

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1522:12-15.):

In addition to ae. Dr. Karger described timing in the display of
restart indicator
(22. 2 1530:3-17, 1620:11-23.).
Comcast engineers testified abou (ie
e
BE). 1416:24-14:7:5 ERD.) Taken together, this

testimony puts to rest any misconception that the Accused 741 Products satisfy the asserted
claims. In short, in the context of the timing of restart indicators in the X1 System, nothing gets
formally set or configured, and nothing gets truly “specified.”

Figure 76: Comcast’s Depiction of the X1 System Failing to Post Restart Indicators at a
“Specified Time” Due to Randomness of Key Presses and System Latency

(RDX-0003C.0012 (introduced during the testimony of Dr. Karger).).

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At best, Rovi for the very first time®’ makes an equivalency argument here that stands at
odds with the concept of specificity. Rovi has asserted that Comcast engineers baked a
“specified” time into the X1 System by writing code for the Mini Info Overlay, Grid Guide, and
Restart Reminder embodiments that is deterministic in terms of the amount of elapsed time
passing between a user action and the appearance of an archived copy indication. (CBr. at 76.).

To achieve its tortured reading of the asserted claims onto the Accused 741 Products,
Rovi slices the time it takes for the X1 System to display a restart indicator into engineered,
computation delays and random, latency delays. (/d. at 73-75.). Rovi argued that the former is
all that is needed to satisfy the asserted claim language. (/d. at 74.).

Rovi’s argument in this regard is not entirely fantastical or inaccurate. Comcast did
. a

| |. (Tr. (McCann) at 1450:5-16,

1461:14-1462:3.).

However, | j | is distinct

fron specifying a display response time. The ’741 patent describes “specified times” as specific
durations or clock times “‘configured [not recommended] prior to the start time.” Tellingly, the
’741 patent does not describe an embodiment in which “specified times” are dependent on the
speed of code execution, network latency, or the slicing of time segments. Instead, what the
asserted claims require is straightforward: culmination of the restart indicator display process
(i.e., display of a restart indicator) occurring after a pre-configured “specified time.” The

asserted claims do not appear to cover how the Accused 741 Products actually operate, whereby

89 Rovi did not raise a doctrine of equivalents argument in its post-hearing briefs. Thus, any such
argument here is waived pursuant to Ground Rule 10.1.

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part (yet not all) of restart indicator display process appears to have some deterministic
tendencies with the culmination of the process occurring in a non-deterministic fashion.
Moreover, “[t]he ’741 Patent discloses ‘configuring’ in the context of ‘profile or

preference settings” and that.the time is “set” and “not defined” or otherwise partially baked

into technological machinery) __ . I (Markman Order, App. A at 44

(citing ’741 patent at 16:17-18).). Thus, Rovi’s infringement case against restart indicators in the
X1 System displaying after a brief but indeterminate amount of time is simply out of step with
the teachings of the ’741 patent.

In essence, Rovi contorted the asserted claims to read on any system with archived copy
indicators (e.g., in the form of restart indicators in the Accused 741 Products) that is somewhat
deterministic in terms of the speed at which indicators are displayed to users. (See Tr.
(Balakrishnan) at 1135:17-1136:5, 1099:4-14.). The ’741 patent requires more.

As the applicant on the face of the ’741 patent, Rovi could have could have attempted to
modify claim 1 during prosecution to achieve the claim scope Rovi now seeks through its
litigation. For example, Rovi could have amended limitation |[e] as follows: “cause an

indication corresponding to the archived copy to be displayed simultaneously with the video
after-a-specifiedtime after the start time but before the end time, wherein the specified time-was
configured prierte the -starttime.” Rovi did not achieve this broadening of claim scope during |

prosecution and cannot do so now.
Consequently, Rovi has failed to prove by a preponderance of the evidence that the

Accused 741 Products satisfy limitation 1[e] of the °741 patent.

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v11. 	lfD: "receive a user response to the indication that is
displayed"
The Accused 741 Products satisfy this limitation. As shown below in Figure 77, the
Accused 741 Products
--------------------- . (Tr. (Balakrishnan) at 1077:7-
1080:4 (discussing CX-1052C.0004 (Mini Info Overlay), CX-1052C.0002 (Grid Guide), and
CX-1074.0002 (Restart Reminder)); CDX-0006C.0359 (Mini Info Overlay); CDX-0006C.0360
(Grid Guide); CDX-0006C.0361 (Restart Reminder).).
------------
(Id. at 1077:21-1078:17; CX-1027C.0001 (XI Setup).).
Figure 77: Rovi's Depiction of Indications Eliciting User Responses in the Xl System
'741 Patent, Claim l[f]: Response to the Indication
Claim l[f]
receive a user
response to the
indication that is
displayed
CX- 1052C.4 (XGlvl); see also CX- 1064C.4 (XG2v2); CX-1069C.5 (XiD)
Contains Confidential Bu si ness Information Subject to Protective Order 	COX-0006C.359
(CDX-0006C.0359 (introduced during the testimony of Dr. Balakrishnan).).
In its post-hearing briefs, Comcast did not present any argument in rebuttal and thus has
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waived any such argument pursuant to Ground Rule 10.1.
Thus, Rovi has proven by a preponderance of the evidence that the Accused 7 41 Products
satisfy limitation 1[fJ of the ' 7 41 patent.
v 111. 	l[g]: "based on the received user response, retrieve,from the
storage circuitry, the archived copy"
The Accused 741 Products satisfy this limitation. As illustrated below in Figure 78, the
Accused 7 41 Products
(Tr. (Balakrishnan) at 1080:19-1083:4; CX-
1052C.0008; CDX-0006C.0366, 368; CX-1137C.).
Figure 78: Rovi's Depiction of User Retrieval of an Archived Copy in the Xl System
'741 Patent, Claim 1[g]: Control Circuitry in X1 System for Claim 1[g]
control circuitry
configured to :
Claim l[g]
based on the received
user response,
retrieve, from the
storage circuitry, the
archived copy
Contains Conf id ent i al Busin es s In format ion Subject to Pro te ctive Or der
(CDX-0006C.0370 (introduced during the testimony of Dr. Balakrishnan).).
CDX -0006C.370
In its post-hearing briefs, Comcast did not present any argument in rebuttal and thus has
waived any such argument pursuant to Ground Rule 10.1.
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Thus, Rovi has proven by a preponderance of the evidence that the Accused 7 41 Products
satisfy limitation 1[g] of the '7 41 patent.
Based on the above, Rovi has not met its burden of proving by a preponderance of the
evidence that the Accused 741 Products satisfy claim 1 of the ' 741 patent.
b) 	Claim 8
1. 	A method comprising: transmitting a video to a plurality of
user equipment, wherein the transmitting begins at a start time
and ends at an end time; accessing a database to determine
whether an archived copy corresponding to the video is
available to a user after the start tim.e; based on the
determining, causing an indication corresponding to the
archived copy to be displayed simultaneously with the video
after a specified time after the start time, but before the end
time, wherein the specified time was configured prior to the
start time; receiving a user response to the indication that is
displayed; and based on the received user response, retrieving
from storage the archived copy.
As shown below in Figure 79, claim 1 contains each limitation found in claim 8. (Tr.
(Balakrishnan) at 1083: 10-17.). If the Accused 7 41 Products satisfy claim 1, they also satisfy
claim 8. (Id. at 1083:14-20.). However, as discussed above, the Accused 741 Products do not
satisfy every limitation of claim 1. Specifically, they fail to satisfy limitation l(e], which
requires display of an indication "after a specified time after the start time, but before the end
time, wherein the specified time was configured prior to the start time ." Consequently, the
Accused 741 Products also fail to satisfy limitation 8[c], limitation l[e]'s counterpart.
Thus, Rovi has not met its burden of proving by a preponderance of the evidence that the
Accused 741 Products satisfy claim 8 of the ' 741 patent.
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Figure 79: Rovi's Depiction of Similarities Between Claims 1 and 8
'741 Patent, Claim 1 and Claim 8 Comparison
Contains Confidenti al Bus iness Information Subject to Protective Order 	COX-0006C.373
(CDX-0006C.0373 (introduced during the testimony of Dr. Balakrishnan).).
c) 	Claim 14
i. 	"The method of claim 8, further comprising: removing the
archived copy from the storage device at an end of a retention
period, wherein the archived copy on the storage device is
associated with the retention period. "
As shown below in Figure 80, the Accused 741 Products satisfy this additional limitation
required by claim 14 . In some instances, the Accused 741 Products
-----------
. (Tr. (Balakrishnan) at 1084:12-1085:2; CX-
0815C.0075 	Overview) (evidencing --------------------
--------------------- ).).
However, claim 14 depends from claim 8, which the Accused 741 Products do not satisfy
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as explained above. Thus, Rovi has not met its burden of proving by a preponderance of the
evidence that the Accused 741 Products satisfy claim 14 of the '741 patent.
B. 	Technical Prong of Domestic Industry
1. 	Technical DI Overview
Based on the analysis below, the 741 DI Products do not satisfy the technical prong of
domestic industry for the same reasons that the Accused 741 Products do not·infringe.
2. 	Rovi's 741 DI Products Do Not Practice Claim 1 or 8 of the '741
Patent
Rovi asserted that the 741 DI Products practice claims 1 and 8 of the '741 patent. (CBr.
at 85-90.). The 741 DI Products consist ofRovi's Next-Gen and TSI's Bolt with Experience 4.0
systems. (Id. at 85.). Comcast disagreed that the 741 DI Products practice claims 1 and 8 for the
same reason it contended that the Accused 741 Products did not infringe, namely that the 741 DI
Products failed to satisfy limitations l[e] and 8[c]. (Id. at 89-90.).
For the reasons discussed below, Rovi has proven by a preponderance of the evidence
that the 7 41 DI Products satisfy every limitation of claims 1 and 8 except limitations 1[ e] and
8[c] . (CBr. at 85-90.). Rovi presented unrebutted evidence to this effect. (Id.) . Comcast did not
dispute Rovi's arguments or evidence or assert a contrary position in its post-hearing briefs and
has thus waived any such opportunity pursuant to Ground Rule 10.1.
With respect to limitations l[e] and 8[c], there also appears to be no dispute as to how the
restart indicators operate in the 741 DI Products. As shown below in Figure 81 , the Next-Gen
and Bolt systems present "A start over" indication corresponding to the archived copy of a video
that is displayed simultaneously with the video. (Tr. (Balakrishnan) at 1092:18-1093:12; CDX-
0006C.0417-18; CX-1036C.0002 (Next-Gen Screenshot); CX-1025C.0001 (Bolt Screenshot).).
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The Next-Gen and Bolt systems display the relevant restart indication automatically after
a user tunes into a program. (Tr. (Balak:rishnan) at 1094: 1-4 ("Q. In this example, what
triggered the display of the indication? A. The enter key that resulted in the tuning to that video,
and then that indication shows up afterwards.").). Additionally, the Next-Gen and Bolt systems
display restart indications following the user pressing the "Info" button on the remote. (Id. at
1094: 19-22 (after "the user presses the info button, and when the info button is pressed, this
overlay shows up after a specific duration of time that also displays the restart indicator at the top
right."); CX-1119C (Next-Gen Video) at 0:41-0:44; CX-1112C (Bolt Video) at 0:34-0:38.).
Figure 81: Rovi's Depiction of 741 DI Products Displaying Restart Indicators
'741 Patent, Claim l[e]: Restart Indication+ Video
Claim l[e]
based on determining
that the archived copy is
available to the user
after the start t ime,
cause an indication
corresponding to the
archived copy to be
displayed simultaneously
with the video
I 	01 t
11 t 	t
Contains Confidential Business Information Subject to Protecti ve Order
(CDX-0006C.0417 (introduced during the testimony of Dr. Balak:rishnan).).
CX - 1036 C. 2 (Next-Gen)
CX-1025C.l (Bolt)
CDX·0006C.4l 7
With respect to the satisfaction of limitations l[e] and 8[c] by the 741 DI Products, Rovi
and Comcast have equated the manner in which the Accused 741 Products and 741 DI Products
operate. In other words the Accused 741 Products and the 741 DI Products rise and fall together
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in terms of practicing the ’741 patent.

According to Rovi, the Next-Gen and Bolt systems| |

L
_ | (CBr. at 87-88 (citing Tr. (Balakrishnan) at 1094:9-11[7 ]

r—

L

that{ | ]

{ ] (id. at 88.). Likewise,

|.). Rovi asserted

Comcast and its expert argued that the Next-Gen and Bolt systems do not satisfy claim 1 for the

same reasons Comcast’s Accused 741 Products do not. (RRBr. at 89| |

J

‘; Tr. (Karger) at 1536:12-13

(“Well, it’s for the same reasons as I’ve already explained with regard to the Comcast
products”).).

For the same reasons set forth above in the context of infringement, the Next-Gen and
Bolt systems fail to satisfy limitations 1[e] and 8[c]. The evidence supports a finding that Rovi
has failed to prove that each system fails to cause an indication corresponding to an archived
copy to be displayed simultaneously with the video after a specific duration of time falling after
the start time but before the end time, wherein the specified time was configured prior to the start
time.

As explained above in the context of infringement, spontaneous user actions that cause
the display of a restart indicator and variable elapsed times for system processing (including

unpredictable latencies) thwart Rovi’s narrative that its 741 DI Products display restart indicators

after a preconfigured “‘specified time” as required by claims 1 and 8.

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Therefore, as both Comcast and Rovi argued, and unfortunately for Rovi, the Accused
741 Products and 741 DI Products fall together. Rovi has failed to prove by a preponderance of
the evidence that either category satisfies claim | or claim 8 of the ’741 patent.

C. Invalidity
1. Invalidity Overview

According to Comcast, Rovi stretched the ’741 patent to read on the concept of restarting
any program currently in progress. (RBr. at 53-54.). Comcast asserted that this concept
appeared only in the claims of the patent and was not disclosed in the specification of the °741
patent, which addresses “[i]nteractive television systems with digital video recording and
adjustable reminders.” (JX-0006 (’741 patent) at Title, cls. 1, 8, 14.). Thus, Comcast concluded,
the asserted claims were invalid for lack of adequate written description. (RBr. at 54.).

| Comcast also contended that the asserted claims are invalid as: (i) anticipated by U.S.
Patent Publication No. 2002/0095510 (“Sie”); and (ii) anticipated by U.S. Patent No. 7,073,189
(“McElhatten”) “when the ALJ 's constructions are applied in the manner Rovi applies them for
infringement.” (/d.). Comcast pointed out that Rovi did not provide any anticipation rebuttal
testimony from its expert, Dr. Balakrishnan, who limited his rebuttal testimony only to
Comcast’s written description challenge. (Id.). Comcast also noted that, with respect to
anticipation, Rovi cross-examined Comeast’s expert, Dr. Karger, on the presence of only one
claim limitation in Sie and no limitations in McElhatten. (/d.).

While Rovi did not dispute that Sie and McElhatten were prior art, Rovi asserted that
Comcast failed to meet its burden of proving by clear and convincing evidence that either of
these references anticipated an asserted claim of the ’741 patent. (CRBr. at 44.).

With respect to written description, Rovi contended that “Dr. Balakrishnan identified -

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embodiments in the ’741 Patent[] ... where the inventor described the usage of an indicator
(including a restart indicator) for a currently displayed program or video.” (Jd. at 56.). Rovi also
argued that “Figure 18, Figure 21, and the underlying descriptions in the specification teach the
display of an indication (including a restart indication) relevant to the program being watched
simultaneously with the program.” (Jd. at 57.).

As explained below, Comcast has not proven by clear and convincing evidence that the
asserted claims are anticipated by prior art or by lack of written description.

The appropriate analytical starting points are the plain and ordinary meanings of the
asserted claims, as illuminated by the Markman Order. Against this backdrop, Sie lacks the
disclosure of an important claim limitation, and Comcast admits that McElhatten does not
anticipate. As for written description, Comcast is correct that Rovi provides little to no support
for its expansive interpretation of the asserted claims. However, the specification of the °741
patent contains adequate support for the asserted claims as interpreted in conformance with the
law (ie, covering plain and ordinary meaning as understood by a person of ordinary skill in the
art).

2. Comcast Failed to Demonstrate that the Asserted Claims Are Invalid

a) RX-0069 (Sie) Does Not Anticipate Claims 1, 8, and 14 of the
°741 Patent

Sie is undisputed pre-AIA § 102(b) prior art. (RX-0069 (Sie) at Cover; JX-0173 (Stip.
re: Undisputed Issues) at § 9.). ‘Sie discusses systems and methods for providing what it calls
“club programs.” (Tr. (Karger) at 1540:5-21; RX-0069 (Sie) {{ 46, 85, 87.). Club programs are
copies of broadcast programs stored “in the cloud” at a cable-system headend, locally ona user’s

device, or both. (RX-0069 (Sie) 9 95, 118-119; Tr. (Karger) at 1543:18-1545:3.).

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Club programs allow a user to access “special playback control[s]” including a restart

function. (RX-0069 (Sie) at 87-88; Tr. (Karger) at 1538:19-1540:23.). To denote when these

playback controls are available, Sie discloses presenting a “club notification symbol” in a

program grid or when an “info” button is pressed by the user, as shown below in Figure 82.

(RX-0069 (Sie) at Fig. 8B; Tr. (Karger) at 1557:25-1559:10; RDX-0003C.0037.). Moreover,

Sie’s system also appears to present a club notification at a “preconfigured” “specified time,”

such as a set number of seconds after tuning to the program or at 15-minute intervals. (RX-0069

(Sie) 9 83, 85; Tr. (Karger) at 1554:20-24, 1555:2-1557:8.). Sie then discloses “a simple single-

key means for selecting the scheduled program currently showing and accessing the stored club

program from its beginning” in response to the notification. (RX-0069 (Sie) { 88: Tr. (Karger) at

1561:1-1562:17,).

ChA

Ch. Cc

Ch.E

Gh. F

Ch. G

Figure 82: Sie Using Stars as “Club Notification Symbols”

- B42 842
8:00 6:30 7:00 7:30 { 8:00 8:30 ( 9:00 9:30 10:00 10:30 11:00
nu 7 i
we eg 842
840-1 840-2 840-3 840-1 840-4 ‘a
842 Va 842 ve
840-5 { 840-4 840-6 940-1
t t
840-7 840-7 840-8 840-9
842
840-8 840-10 840-10 (
7 t
842 842 *
340-11 { 840-4 ( 840-3 840-8
x , ry 842
840-3 840-6 840-10 a
J
bd
840-12 840-10 840-7

(RX-0069 (Sie) at Fig. 8B.).

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At first blush, Sie appears to disclose most, if not all, of the limitations found in the
asserted claims. However, as Rovi explained, “Comcast failed to prove that Sie teaches ‘control
circuitry’ configured to (1) ‘access a database to determine whether an archived copy
corresponding to the video is available to a user;’ (2) where the determination occurs ‘after the
start time;’ and (3) ‘based on determining that the archived copy is available to the user after the
start time, cause an indication corresponding to the archived copy to be displayed simultaneously
with the video.’” (CRBr. at 46 (citing JX-0006 (’741 patent) at 37:64, 38:1-3, 38:4-7).). In other
words, during a specific time window, the asserted claims require a determination about whether
an archived video copy is “available” to a user and, based on a determination that it is available,
the display of an indication to the user. “According to Rovi, Sie does not disclose these steps.

Rovi is correct. As shown below in Figure 83, a primary distinction between Sie and the
asserted claims of the 741 patent is that Sie displays its “club program” indications to all users
(even those to whom the video is unavailable after the start time). The’741 patent, by contrast,
requires that the indication be displayed only to users for whom the content is “available.” (Id. at
cls. 1, 8, 14.). |

The ’741 patent appears to treat availability as immediate accessibility, not possibly
accessible in the future to users who become “club members.” (See, e.g., id. at 2:29-38 (“The
network-based or local personal video recorder capabilities of the system may be used to make a
program available to the user at times other than the scheduled broadcast time for that program.
If a program for which a user is interested in setting a reminder is available from the network at
time other than the scheduled broadcast time through the use of such capabilities, the user may
be provided with an opportunity to select a viewing time and a time for receiving an |

accompanying reminder message that is later than the original broadcast time.”), 23:59-65

Page 257 of 325

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(“When the selected program is not available at any other time than the originally-scheduled
broadcast time—e.g., because video recording of the program is prohibited or otherwise not
available—the interactive television application may display a set reminder screen reminder.”).).

Omitting the asserted claims’ “determine” and “display indication” steps from Sie makes
sense given that the system in Sie is oriented towards marketing and implementing a tiered
subscription service, including “club” memberships. (RX-0069 (Sie) at 45-46.). By showing all
users when a program isa “club program,” Sie entices non-members to become members and
thereby obtain access to desired content. Importantly, Sie’s determination of whether a club
program is “available” to a user (whether the user is a “club” member) occurs only after the user
sees the “club program” indication and demonstrates a desire to play the video. (RX-0069 (Sie)
at 89 (“Processing of that request proceeds at steps 784 and 786 to determine . . . whether the
user is a member of the club and therefore entitled to access to the previously stored club

version”).). The asserted claims of the *741 patent require the inverse — determination first,

indication second.

Page 258 of 325

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Figure 83: Comcast's Unpersuasive Depiction of Sie Satisfying the "Determine" and
"Display Indication" Limitations of the '741 Patent
741 Patent
r '-llllplal<,;. U
t I 	,I
s a database to determine wheth er an arch.ived copy
corresponding to the video is available to au er after
the start time;
f '- 	l I lhl•
J I I
b \. Iii tit,· ,(U\
'tlt I ll,4.t,,.. I.. Jrl • If\ I '-
J 1, I I 1l 	. It
tr, m I
Sie
Such a club no ·cauon symbol may compnst., for example,
a s~cial icon or alphanumeric Siring recognizable to a club
m mber or other subscriber to 	note that the s ecaal
la~back control ,s availabl . . 	I
Si c " as (RX-0069.43)
[0087] Al step 768 , a determination is mode whether the
program being sbown oo tho subscnption cblllll•I is a club
program.
Sic al 87 (RX-0069 .43)
I Thus, to include th• club notification s mbol, th•
controller 6U coosults 	ro ra 	u~t atabue 136
UKl/or the subscriber mao,gement system u....----Sic •• 97 (RX-0069.45)
74t Patcnut Claim t (JX-0006.82) - ------=,~-· 	See nl.so Sic at " 8. 53 . 60. 64 . fiJ. 7A
A
COMCAST
l~I):. 1,1011 I) 	/"
741 Patent
11pr
If 	111 Heh ,.,J, r•
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I
ba cd on dc1cnnining that the archived copy i available
to the user after th e start time, cause an indication
corres 	nding to the archived copy to be displayed
simultaneously with th e video after a pecified time
after the start time but before th e end time wherein the
specified time was configured prior to the start time;
rl, , 	n
I~ C4. Hl 1 ~ r~-.. 'I ..: \I t J !I.rt 	l t. Ir \ 	It 11 1 111..
,r.1 < , ,Ulll'\ th..:
741 Patcnrat Claim t (JX-0006.82)
Sie
[0087) Al step 768 , a determmatioa is m•de whether the
program beiog sbown on the su 	· lion cblllll•l is • club
ro ram. If so, a notification sym I is overlaid with the
prognm ioformatioo at s te p 769 so that the display of
pro gram w(ormatioo includes S llCb a11 indication U11t the
playback control features for that program are available to
club members. I 	I lo
.....ie ar Fit, 7A (RX-0069.9)
Page 259 of 325
ilL
COMCAST

741 Patent
I l,.( t.: l I lt,;
1 ti li.: n f
I .,t,t: l 	It 11111 l 	lt1.. It dllill\111 	l V
\. t 4,. I 	I tl I ftl 	l. 	h.
ba ed on determining that the archived copy is available
to the ti er after the start tim , cause an indication
corresponding to th e archived copy to be displayed
s1multancou ly with the video after a p ifi ed time
after the start ti me but before the e nd time, wherein th e
specified time·was configured prior to the start time;
111 't l l.'l\~it 11:-.L'f nsnl .. * tr,~ 	frum h'
l1 	\; 1 ._ i In he
74 1 P1tei1ta1 Claim I (JX-0006 .82)
~ ••
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Public Version
Sie
Si e al 85 (RX-0069.43)
(0087 ) Al elep 761 , • dtt,,m:u oalioo Is m•d• wbalh cr lht
pfOl'lhl bc. 1111 lbowu 00 \ht auhtou i l iou d)aiRIMl,I ii l .tl ub
procruL IC a,, • 	l ow 	w11b lbc
pt01nai Won11 	M IWp , , , '° dM 1 the di,play of
PIUJlil.lU io[onulboo wcl,dr¥ ..cb iw IDWCIIJOU Ula l the
pla.,t,ad: Q)lll rol tea l WCI far tn.a t prof.J'•m we 1\llilabk IO
c luh metnhtrl In o ne embndi nw.m. 1he no uftcalion &)'mbo l
Sie RI 87 (RX-0069 .43)
"'
(RDX-0003C.0033-34 (introduced during the testimony of Dr. Karger).).
,..
RG. ,.
Si< at fig. 7A (RX-0069,9)
~Hr.
COMCAST
Based upon the discussion and reasoning provided above, Comcast has failed to prove by
clear and convincing evidence that Sie anticipates claims 1, 8, and 14 of the ' 741 patent.
b) 	RX-0069 (McElhatten) Does Not Anticipate Claims 1, 8, and 14
of the '741 Patent
Comcast next argued that McElhatten anticipates claims 1, 8, and 14 of the '741 patent.
(RBr. at 63-70.). McElhatten is undisputed pre-AIA § 102(e) prior art. (RX-0071 (McElhatten)
at Cover; JX-0173 (Stip. re: Undisputed Issues) at 1 10 .). McElhatten discloses systems and
methods for storing "reservable programs," which support functionalities such as restart. (RX-
0071 (McElhatten) at 15 :65-16:5; Tr. (Karger) at 1566:21-1568: 17 ; RDX-0003C.0045-47.).
McElhatten's "reservable programs" are television programs that are recorded and stored
at a cable headend that can be accessed by users after the shows have been broadcast. (RX-0071
(McElhatten) at 15 :59-16: 13 ; Tr. (Karger) at 1566:21 -1568: 17 , 1569:11-23.). When a user
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watches a broadcast program, the user can issue a "reserve command." (RX-0071 (McElhatten)
at 15:59-62, Fig. 12; Tr. (Karger) at 1573:19-1574:2.). If the program is reservable (as
determined by the Sfstem), a user will see additional functionality including the ability to restart
the program. (RX-0071 (McElhatten) at 12 :59-65, 15:56-16:3; Tr. (Karger) at 1573:19-1574: 15 ,
1575:5-20, 1577:8-20, 1581:9-1582: 10 .).
Figure 84: Comcast's Depiction of Restarting a "Reservable" Program
741 Patent
I 	l r 	I 	\II
' I' p
h I l1 Cl ~1fh.r
ba ed on detennining that th e archived co py is available
to the u er after th 	tart tim e, cause an mdicauou
corresponding to 1hc archived cqpy to be displayed
simultaneous ly with the v ideo aft er a spec ifi ed tim e
after the start time but before fu ee nd tim e, wherein the
specified time was configured prior to the start time·
I 11,
McElhatten
PIG. 12
OP l lOHS APl'(.11 10 ACT OIi IHI CUIR! NT fllOGRA W1£1(1V[O
PIIOCIAII- - llrn.111 IHOr AS (AOO(O 10 '"fAYOl!ITT SHOWS "i
lHI OC f Allll CHOICE 	ICOII SHOWN IN INrO 8AIIIIIR.
Sill
CKY Of'fl(Jjj ~ TO SI.Ill A ICCOROINC
r •tn \l" 	n 1 0 	McEllwlenalFig. t2 ( RX -0071.10)
l I t.: t,,. Jf.., l II . ~ l
741 Pate,u at cta un I (JX-0006.82)
fd1X 000 IC ·, 1 	,• 	~Ir.
COMCAST
(RDX-0003C.0053 (introduced during the testimony of Dr. Karger).).
Comcast framed McElhatten' s presentation of a restart notification when a user issues a
"reserve command" as "analogous to the functionality accused of infringement, where a Comcast
user presses the ' info ' key and is then presented with an information screen with a restart
option." (RBr. at 64.). In so doing, Comcast attempted to establish that the Accused 741
Products and McElhatten should rise and fall together in terms of infringement and invalidity,
respectively. Rovi disagreed, arguing that McElhatten failed to disclose several limitations.
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(CRBr. at 52-55.).

However, a detailed analysis of Rovi’s arguments here is unwarranted. The most
compelling evidence that McElhatten does not anticipate any asserted claim of the ’741 patent is
the admission of Comcast’s expert, Dr. Karger, that a finding of anticipation is not appropriate
under the binding Markman constructions issued in this Investigation. (Tr. (Karger) at 1579:18-
19 (“Q. How about under the Court’s interpretation? A. No, I don’t think so”).). In Comcast’s
view, neither the Accused 741 Products nor McElhatten disclose display of the required
notification at a “specified time” “configured prior to the start time.” (RBr. at 64.). Comcast is
correct. Comcast raised McElhatten as allegedly anticipatory prior art not because it is
legitimate anticipatory prior art, but instead to guard against Rovi’s view, rejected above, that the
restart notification in the Accused 741 Products occurs at a “specified time” because of some
computational determinism and threshold time targets baked into Comcast’s X1 System.

Consequently, Comcast has failed to prove by clear and convincing evidence that Sie
anticipates claims 1, 8, and 14 of the ’741 patent.

c) Claims 1, 8, and 14 Are Not Invalid for Lack of Written
Description

Comcast contended that claims 1, 8, and 14 of the ’741 patent lacked adequate written
description support. (RBr. at 70.). Comcast argued that “the asserted claims relate to retrieving
an archived copy of the program currently being viewed, i.e., restarting the same program that is
being watched,” while “the specification discloses setting ‘reminders’ that will alert a user when
it is time to change channels and view a different program.” (/d. (citing Tr. (Karger) at 1587:11-
1587:22, 1591:25-1593:1).).

In rebuttal, Rovi challenged Comcast’s characterization of the specification and alleged

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that “Dr. Balakrishnan identified embodiments in the ’741 Patent’s written description where the
inventor described the usage of an indicator (including a restart indicator) for a currently
displayed program or video.” (CRBr. at 56-57.). Specifically, Rovi asserted that “Figure 18,
Figure 21, and the underlying descriptions in the specification teach the display of an indication
(including a restart indication) relevant to the program being watched simultaneously with the
program.” (/d. at 56.). |

- Patents are presumed valid. 35 U.S.C. § 282. The first paragraph of Section 112 says:
' “The specification shall contain a written description of the invention, and of the manner and
process of making and using it, in such full, clear, concise, and exact terms as to.enable any
person skilled in the art to which it pertains, or with which it is most nearly connected, to make
and use the same. .. .” 35 U.S.C..§ 112. To comply, a patent applicant must “convey with
reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in
possession of the [claimed] invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991) (emphasis omitted). “The form and presentation of the description can vary
_.with the nature of the invention[.]” In re Skvorecz, 580 F.3d 1262, 1269 (Fed. Cir. 2009). .
“[T]he applicant [for a patent] may employ ‘such descriptive means as words, structures, figures,
‘ diagrams, formulas, etc., that fully set forth the claimed invention.” Jd. (citing Jn re Alton, 76
F.3d 1168, 1172 (Fed. Cir. 1996)). The adequacy of the description depends on content, rather
than length. In re Hayes Microcomputer Prods., Inc. Patent Litig., 982 F.2d 1527, 1534 (Fed.
Cir. 1992). “Specifically, the level of detail required to satisfy the written description
requirement varies depending on the nature and scope of the claims and on the complexity and
predictability of the relevant technology.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, —

1352 (Fed. Cir. 2010) (en banc).

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Compliance with the written description requirement is a question of fact. In order to
overcome the presumption of validity a party must set forth clear and convincing evidence. |
Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1347 (Fed. Cir. 2011). The
Federal Circuit also has held with respect to the written description requirement that “[a] claim
will not be invalidated on section 1 12 grounds simply because the embodiments of the
specification do not contain examples explicitly covering the full scope of the claim language.”
Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1366 (Fed. Cir. 2006) (quoting LizardTech, Inc.
v. Earth Resource Mapping, PTY, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005)).

As an initial matter, Comcast’s interpretation of the scope of the asserted claims is too
narrow. While claims 1, 8, and 14 of the ’741 patent do require “an indication corresponding to
the archived copy to be displayed simultaneously with the video,” they do not necessarily require
that a user receive the indication about an archived copy of the video while watching the video.
(JX-0006 (°741 patent) at cls. 1, 8.). Instead, these claims require only that the indication appear
at the same time that the system is transmitting the video that corresponds to the archived copy.
(id). The ’741 patent refers to this time window as the program’s “scheduled broadcast time”
(i.e., at a time at which the program is being broadcast). (/d. at 34:30-32.).

Against this backdrop, Comcast’s written description argument is flawed because the
specification of the ’741 patent appears to disclose displaying a reminder for a program during
that program’s “scheduled broadcast time.” As shown below in Figure 85, Figure 31 of the ’741
patent discloses a user selecting a program and setting a reminder, at steps 372 and 374. (Id. at
Fig. 31.). At step 376, the system records the selected program from its start time if the user set
her reminder to appear after that start time. (/d.). The reminder appears at step 378 and, if the

user chooses to watch the program, at step 380, she has the option to tune to the appropriate

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channel and watch the program (in progress) or play back the program (i.e., restart the program).

(d.).
Figure 85: Figure 31 of the ’741 Patent Disclosing Playback Options

\

PROVIDE USER WITH CFPORTUNITY TO
mt SELECT PROGRAM FOR WHICH TO
° SETAREMINDER

| USER SELECTS PROGRAM FOR REMINDER
| PROVIDE USER WATH OPPORTINITY TO SETA |
> DESIRED REMINDERVIEWNG TIME =|

n-4]

USER SETS REMINDER FOR DESIRED TIME

4

RECORD SELECTED PROGRAM IF USER
378 ~ SELECTED REMINDER TIME AFTER
SCHEDULED START OF PROGRAM
DISPLAY REMINDER FOR USER AND PROVIDE
ant USER RITHASSOCIATED OPTIONS
(CANCEL, WATCH, RESCHEDULE, ETC)
ustR Gere : ae J
. iisencncases ST BSER CHOOSES
wis rorescrete = TO CANCEL
PROGRIM | PROVIDEUSERWTH a
— OPPORTUNITY TO RESCHEDULE cancel SE
i a SLENNE
APPROPRIATE NOW FEMENDER
CHANNELOR [_ FRENINDER 485 USER MISSES PROGRAN
H) “paysicc 7380 ie _ SELECTED FORAUTOMATIC
i PROGRAR of 1 YE RECORD PROGRAM PECRIEG OR USER
PROVIDE USER WITH
86-7 OPPORTUNITY FOPLAY
; BACK RECORDED COPY
t

PERFORM HOUSEKEEPING GPERATIONS
agg} (E.G, DELETE CERTAIN PROGRAMS SUCHAS |
, PROGRANS USER HAS WATCHED, RETAN |
PROGRAMS IN USERS PERSCNAL AREAS)

FIG. 31

(Id. at Fig. 31.).

Figure 31 of the ’741 patent does not explicitly limit the play back option to situations in

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which the reminder occurs after the program’s “scheduled broadcast time.” Neither does the
specification, which states that “[i]f the user chooses to watch the program immediately, the
interactive television application may display the program for the user on the user’s equipment
18 at step 380.” (/d. at 29:15-17.). The specification then appears to give two (2), nonexclusive
examples of how a “reminded” user can watch her program of interest. “If the program is
currently being broadcast ..., the interactive television application may tune the user’s equipment
to the appropriate television channel to receive that program at step 380.” (Ud. at 29:17-21.). “If
the program is not currently being broadcast, the program may be played back for the user using
the network-based or local personal video recorder at step 380. A playback arrangement of the
type shown in FIG. 21 or any other suitable arrangement may be used to playback the desired
program for the user from the network-based or local personal video recorder.” (/d. at 29:23-
31.). As Rovi demonstrated, and Comcast did not deny, the “playback arrangement” of Figure
21 includes a program restart option. (CRBr. at 56; RBr. at 71.).

Thus, Comcast’s written description argument distills to the lack of explicit disclosure in
the ’741 patent specification of the specific embodiment found in claims 1, 8, and 14.
Specifically, the specification lacks an unambiguous description of a user receiving a reminder of
a program during the program’s “scheduled broadcast time” and then choosing to watch the
program, where program content comes not from the program’s broadcast channel, but instead
from an “archived copy” recording of the program. In other words, Comcast’s written
description challenge to claims 1, 8, and 14 relates to whether there is clear and convincing
evidence that, considered together: (1) a general disclosure of a user receiving a program
reminder and watching the corresponding program immediately; and (2) an explicit disclosure of

a reminded user retrieving an archived copy of a program after the program’s “scheduled

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broadcast time” fail to convey with reasonable clarity the inventor’s possession of the idea that a
user can retrieve an archived copy during the program’s “scheduled broadcast time.”

Figure 86: Figure 21 of the ’741 Patent Disclosing Playback Options

m0
st
VIDEO OF
SELECTED VIDEO RECORDER
HEM
mn
~
[]
[=]
[2] [2]
FIG. 21

(JX-0006 (741 patent) at Fig. 31.).

Such clear and convincing evidence is not present here. As discussed above, Comcast
premised its written description argument on an overly narrow interpretation of the scope of
claims 1, 8, and 14. Moreover, the non-limiting nature of Figure 31 of the ’741 patent appears to
cut against Comcast’s strict reading of the text describing Figure 31. Additionally, Comcast’s
argument arises in an approachable and intuitive technology space—interactive program
guides—in which the level of detail needed to make an adequate written description disclosure is

| less demanding than would be the case in a highly technical field. Ariad Pharms., Inc. v. Eli

Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“Specifically, the level of detail

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required to satisfy the written description requirement varies depending on the nature and scope
of the claims and on the complexity and predictability of the relevant technology.”).). Thus, ©
based on the above, the weight of the evidence proves that Comcast has not met its burden of
proving by clear and convincing evidence that claims 1, 8, and 14 of the ’741 patent are invalid
for lack of written description.

X. INDIRECT INFRINGEMENT
A. Legal Standard: Induced Infringement.

“Whoever actively induces infringement of a patent shall be liable as an infringer.” 35
U.S.C. § 271(b). A patentee asserting a claim of inducement must show (i) that there has been
_ direct infringement and (ii) that the alleged infringer “knowingly induced infringement and
possessed specific intent to encourage another’s infringement.” Minnesota Mining & Mfg. Co. v.
Chemque, Inc., 303 F.3d 1294, 1304-05 (Fed. Cir. 2002). With respect to the direct infringement
requirement, the patentee “‘must either point to specific instances of direct infringement oF show
that the accused device necessarily infringes the patent in suit.” ACCO Brands, Inc. v. ABA
Locks Mfrs. Co., Ltd., 501 F.3d 1307, 1313 (Fed. Cir. 2007) (citation omitted). This requirement
‘may be shown by circumstantial evidence. Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d
1317, 1326 (Fed. Cir. 2009). “[A] finding of infringement can rest on as little as one instance of
the claimed method being performed during the pertinent time period.” Lucent Techs., Inc. v.
Gateway, Inc., 580 F.3d 1301, 1317 (Fed. Cir. 2009); Toshiba Corp. v. Imation Corp., 681 F.3d
1358, 1364 (Fed. Cir. 2012) (citing Lucent Techs., 580 F.3d at 1317).).

The specific intent requirement for inducement necessitates a showing that the alleged
infringer was aware of the patent, induced direct infringement, and that he knew that his actions

would induce actual direct infringement. Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361,

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1367 (Fed. Cir. 2013), aff'd and vacated in part on other grounds, 135 S. Ct. 1920, 1926-28
(2015); Global-Tech Appliances, Inc. v. SEB S.A., 131 8. Ct. 2060, 2068-70 (2011). Specific
intent can be shown by, for example: (1) changes in importation practices effectuated to shift
infringement liability; (2) the infringer’s copying of patented technology; and (3) the infringer’s
willful blindness of the underlying direct infringement. Certain Network Devices, Related
Software and Components Thereof (1), Inv. No. 337-TA-944, Initial Determination at 82; see
also Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1924-25 (2015) (“It was not only
knowledge of the existence of [the asserted] patent that led the Court to affirm the liability
finding but also it was the fact that [the accused infringer] copied ‘all but the cosmetic features of
the [patented product],’ demonstrating [the accused infringer] kn[ew] it would be causing
customers to infringe [the asserted] patent.”) (quoting Global-Tech, 131 S. Ct. at 2071).).

Willful blindness, which also constitutes “knowledge,” has two basic requirements: “(1)
the defendant must subjectively believe that there is a high probability that a fact exists”; and
“(2) the defendant must take deliberate actions to avoid learning of that fact.” Global-Tech, 131
S. Ct. at 2070. The intent to induce infringement may be proven with circumstantial or direct
evidence and may be inferred from all the circumstances. Commil, 720 F.3d at 1366; Global-
Tech, 131 S. Ct. 2071-72.

The Federal Circuit has upheld the Commission’s authority to cover “goods that were
used by an importer to directly infringe post-importation as a result of the seller’s inducement.”

Suprema, 796 F.3d at 1352-53.

B. Indirect Infringement Overview

As an initial matter, Rovi’s Initial Post-Hearing Brief argued that Comcast induced

infringement of claims 1, 8,1 1, 15, and 22 of the ’585 patent. (CBr. at 57-58.). However, in its

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Pre-Hearing Brief, Rovi’s only raised contentions regarding induced infringement for claims 15
and 22 of the 585 patent. (CPBr. at 33-34.). Thus, any argument with respect to induced
infringement of claims 1, 8, or 11 is deemed abandoned or withdrawn under Ground Rule 7.2.
See Certain Automated Media Library Devices, Inv. No. 337-TA-746, Comm’n Op. at 14-16
(U.S.LT.C. 2013) (‘Library Devices”). |

In its Pre-Hearing Brief, Rovi also argued that Comcast induced infringement of claims
1, 7, and 15 of the ’741 patent. (CPBr. at 78.). In its Initial Post-Hearing Brief, Rovi’s only
raised contentions regarding induced infringement for claim 1. (CBr. at 81.). Consequently, any
argument with respect to induced infringement of claims 7 or 15 is deemed waived under
Ground Rule 10.1. See Library Devices, Comm’n Op. at 14-16.

Rovi failed to meet its burden of proving that Comcast induces its customers of using the
Accused 011 Products with the X1 System in a manner that directly infringes claim 1 of the ’011-
patent because the users do not perform all the steps recited in the method claim, i.e., limitations
1[a], 1[c], and 1[d]. Rovi also failed to meets its burden of proving that Comcast induces users
of the Accused 741 Products of directly infringing claim 1 of the ’741 patent because the
Accused 741 Products, when operating in the X1 System, do not satisfy limitation 1[e].

To the contrary, for the reasons discussed below, Rovi demontrated by a preponderance
of the evidence that Comcast induced its customers of infringing claim 9 of the ’011 patent, and
claims 15 and 22 of the ’585 patent, all of which are system claims.

C. Comcast Does Not Induce Infringement of Claim 1 (Method) of the ’011

Patent and Claim 1 (System) of the ’741 Patent Because Users of Comcast’s
X1 System Do Not Directly Infringe

1. Claim 1 of the ’011 Patent

Direct infringement of a method claim can only occur when all steps of the claimed

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method are performed by or attributable to a single entity. Akamai Techs., Inc. v. Limelight

Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (citation omitted). As Rovi and Dr. Bovik

acknowledged, | |

| |. (CBr. at 13-14, 30; Tr. (Bovik)

at 698:14-25] |
Cc : |

}
|

| |; see also id. at 560:18-561:16, 568:1-8.).

Because Comcast’s customers| _ i, they cannot be the

“single entity” that performs all the claimed steps of claim 1. (Tr. (Kelly) at 1715:5-1716:7
L | | *

|; RDX-0004C.0040-41.). See Ricoh Co., Ltd. v.

Quanta Comput. Inc., 550 F.3d 1325, 1333 (Fed. Cir. 2008).

For example, no Comcast customer performs “indexing said items by associating subsets
of said items with corresponding strings of one or more unresolved keystrokes” (limitation 1[a]),
“receiving from a user a search query” (limitation 1[c]), or “in response to each unresolved
keystroke, identifying . . . subsets of items” (limitation 1[d]). (JX-0001 at 8:47-52, 8:59-60,
8:64-65.).

Accordingly, Rovi has failed to prove that Comcast induces its customers to directly

infringe claim | of the ’011 patent.

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2. Claim 1 of the ’741 Patent

As discussed above in Section [X.A.3(a), when operating in the X1 System, the Accused
741 Products do not satisfy every limitation of claim 1. Specifically, they fail to satisfy
limitation Ie], which requires display of an indication “after a specified time after the start time,
but before the end time, wherein the specified time was configured prior to the start time.” (JX-
0006 at 38:4-9.). Spontaneous user actions that cause the display of a restart indicator and |
variable elapsed times for system processing (including unpredictable latencies) thwart Rovi’s
narrative that its Accused 741 Products display restart indicators after a preconfigured “specified
time” as required by claim 1.

Comcast cannot induce infringement of a claim that is not directly infringed. ACCO
Brands, Inc. v. ABA Locks Mfrs. Co., Ltd., 501 F.3d 1307, 1313 (Fed. Cir. 2007) (patentee “must
either point to specific instances of direct infringement or show that the accused device
necessarily infringes the patent in suit.”) (citation omitted).

For the foregoing reasons, Rovi has failed to prove that Comcast induces its customers to
directly infringe claim 1 of the ’741 patent.

D. Comcast Induces Infringement of Claim 9 (System) of the °011 Patent and
Claims 15 and 22 (System) of the ’585 Patent? ,

1. | Comcast Had Pre-Suit Knowledge of the ’011 and ’585 Patents
a) The ’011 Patent |

Rovi has demonstrated that Comcast had actual knowledge of the ’011 patent since at

least 2013. On August 7, 2013, Comcast received notice of the ’011 patent and Rovi’s

o

It is a finding of this ID that the asserted claims of the ’585 patent are invalid. (See Section VIII.C,
supra.). However, an analysis of claims 15 and 22 for purposes of indirect infringement is provided
should the Commission disagree with the finding of invalidity.

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allegations of infringement when Veveo filed a district court complaint in which Rovi asserted
the ’011 patent against Comcast’s X1 System (“2013 Complaint”), and alleged that Comcast -
developed its X1 System with Veveo’s intellectual property, know-how, software, and trade
secrets. (Tr. (Samir Armaly)®! at 147:3-08; CX-1172C (Veveo Complaint) at 7, 9-11.). Rovi
also provided detailed patent infringement allegations in claim charts asserting claims 1, 9, and
17 against Comcast’s X1 System in an action filed on January 10, 2018 in the District Court of
Massachusetts. (Tr. (Armaly) at 147:9-148:23; CX-1182 (D. Mass. Complaint); CX-0964 (7011
patent claim chart). Comcast conceded longstanding pre-suit knowledge of the ’011 patent. (See
CX-1208C (Comcast Interrog Resp.) at 25-32.).

b) The ’585 Patent

Like the 011 patent, Rovi has proven that Comcast had specific knowledge of the ’585
patent well before Rovi filed its Complaint. The 2010 Amended Patent License (“2010 Comcast
License’’) between Comcast and Rovi listed the patent application that issued as the 585 patent.
(Tr. (Armaly) at 144:8-11; JX-0026C (2010 License) at Ex. C-1 12.).

Additionally, as part of the negotiations for renewal of that license, Rovi presented
detailed claim charts for the 585 patent to Comcast on September 23, 2014, in which it mapped
Comcast’s X1 products to claim 22—the same products and one of the claims asserted in this
Investigation. (Tr. (Armaly) at 144: 19-146:7: CX-0318C (“Next Steps” email); CX-0953C (585 .
patent claim chart); CX-0954C (’585 patent claim chart).). Rovi again provided Comcast with

detailed claim charts on January 10, 2018 when Rovi filed a complaint alleging patent

91 When Mr. Samir Armaly testified during the Hearing on October 17, 2018, he was a Strategic IP
Advisor for Rovi. (CPSt. at 1.). Rovi identified Mr. Armaly as a fact witness to testify generally about
Rovi’s history and negotiations with Comcast, including Comcast’s notice of the Asserted Patents, and
the renewal of the license agreement between Rovi and Comcast. (/d.).

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infringement in the Central District of California (“California Litigation”). Rovi set forth with
particularity allegations that Comcast’s X1 System infringed certain claims that were later
included in this Investigation. (Tr. (Armaly) at 147:9-148:17; CX-1181 (C.D. Cal. Complaint); .
CX-0966 (’585 patent chart). “
Comcast recognized its longstanding pre-suit knowledge of the °585 patent. (See CX-

1208C (Comcast Interrog. Resp.). at 25-32.).

2. Comcast Encourages Its U.S. Customers to Infringe Claim 9 of the
°011 Patent and Claims 15 and 22 of the ’585 Patent

a) Claim 9 of the ’011 Patent

Comcast provides videos and documents that instruct, direct, or advise its customers to
use the X1 unresolved overloaded key search functionality implemented on the X1 System in a

way that infringes claim 9 of the ’011 patent. (Tr. (Bovik) at 604:21-606:1; CDX-0008C.0111-

13.). For example, Dr. Bovik explained that| |
L
L

[__]. (Pr. Govik) at 604:21-606:1; CX-0393C.0130 (Comcast Xfinity TV on the X1

Platform).). Simiarly, Dr. Bovik testified that a Comcast online support page, dated December 7,
2017, is an example of how Comcast encourages its customers to use overloaded keypad
functionality. (Tr. (Bovik) at 604:21-606:1; CX0062.0001-3 (Search X1 with the Remote
Control Keypad).). Moreover, Comcast acknowledged that it teaches its customers how to use

X1 features, including through the use of “how to” videos. (JX-0131C (Megan Wallace Dep.

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Tr.)”? at 55:3-5, 59:19-60:20, 63:12-15, 75:10-77:1; CX-1098 (Video) at 0:53-1:00 (highlighting
. the accused feature). Comcast offered no rebuttal to this evidence.

b) Claims 15 and 22 of the ’585 Patent

Comcast makes online guidance available to its subscribers that instructs its users to
infringe claims 15 and 22 of the ’585 patent. For instance, a Comcast online support webpage,
dated September 2018, provides step-by-step instructions to set a global storage option. (CX-
0156 (X1 Settings Overview).). Comcast domestic suscribers who use these step-by-step
instructions infringe claim 15. (Tr. (Balakrishnan) at 826:7-829:25; CX-0156.).

Another Comcast online support webpage, dated January 2018, offers step-by-step

_directions to set a program-specific storage option. (CX-0161 (Change the Start or Stop Time of

Recording on Your X1 DVR).). Comcast domestic customers following these step-by-step ,
instructions infringe claim 22. (Tr. (Balakrishnan) at 830:1-833:7; CX-0161.). Comcast did not
rebut that its subscribers who follow the directions in CX-0156 and CX-0161 infringe claims 15

and 22. (Tr. (David Albonesi)” at 1922:21-1923:2, 1923:14-17 (stating that he could not

provide rebuttal testimony to Dr. Balakrishnan’s inducement evidence); see also Tr.

® At the time of her deposition on June 15, 2018, Ms. Megan Wallace was Vice President of Media and
Marketing Communications of Comcast’s northeast division. (JX-0131C (Wallace Dep. Tr.) at 6:17-22.).

%3 When Dr. David H. Albonesi testified during the Hearing on October 24, 2018, he was a Professor in
the Electrical and Computer Engineering at Cornell University. (RPSt. at Ex. A; Tr. (Albonesi) at
1810:9-12.). Comcast identified Dr. Albonesi as an expert to testify about the technical background of
the Asserted Patents; the interpretation of the claims in those patents; issues relating to the alleged
infringement of the Asserted Patents by the Accused Products and Comcast’s Design Alternatives; the
design, structure, function, and operation of the Accused Products and Comcast’s Design Alternatives;
issues relating to the validity of the Asserted Patents; issues relating to whether the Rovi DI Products
practice the Asserted Patents and whether Rovi satisfies the technical prong of the domestic industry for
the Asserted Patents; other issues in connection with the alleged infringement, validity, enforceability,
and any other technical issue that may arise with respect to the Asserted Patents; and to rebut the
testimony of Rovi’s experts or fact witnesses regarding any of these areas. (/d. at 1-2.).

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(Balakrishnan) at 752:10-753:2, 826:7-833:7; CDX-0006C.0157-65.).

3. Comcast Users Directly Infringe Claim 9 of the 011 and Claims 15
and 22 of the °585 Patent

Comcast customers directly infringe the claim 9 of the ’011 patent. (Tr. (Bovik) at
603:10-606:1; CDX-0008C.0114-15.). See Lucent Techs., 580 F.3d at 1317 (finding that
evidence of a single instance of direct infringement is sufficient to support a finding of
infringement); Toshiba Corp., 681 F.3d at 1364 (“Circumstantial evidence must show that at
least one person directly infringed an asserted claim during the relevant time period.”). al
| :
| |. (Tr. (Bovik) at 603:10-606:1; CX-0357C (Comcast Survey) at 54.).

[ ] ]. (Tr.

(Bovik) at 603:10-606:1; CX-0355C (Comcast Review) at 22; CX-0356C (Comcast Monthly

Review May 2014) at 12.).

Additionally, when each imported STB is used by Comcast (e.g., its employees), ora
Comcast customer in the U.S. after importation as instructed and directed by Comcast, that use
directly infringes claims 15 and 22 of the 585 patent. (Tr. (Balakrishnan) at 826:7-833:7). See
Lucent Techs., 580 F.3d at 1317; Toshiba Corp., 681 F.3d at 1364.

Rovi’s expert, Dr. Michael Shamos,” testified about focus groups he attended where

°4 When he testified during the Hearing on October 18, 2018, Dr. Michael Shamos was a Professor in the
School of Computer Science at Carnegie Mellon University. (CPSt. at 10, App. E; Tr. (Shamos) at
386:19-387:12.). Rovi identified Dr. Shamos as an expert to testify about: (i) the disputed terms of

the ’799 patent to one of skill in the art in view of the intrinsic and extrinsic evidence, the specification,
prosecution history, and the knowledge of one of ordinary skill in the art; (i1) how the Accused Products
infringe the ’799 patent; and (iii) how the DI Products satisfy the technical prong of the for the ’799
patent. (CPSt. at 10.). However, as mentioned in Section L.A, supra, this patent was terminated from

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Comcast customers were asked to identify whether they were familiar with and made use of the
features covered by, inter alia, claim 9 of the ’011 patent, and claims 15 and 22 of the 585
patent. (Tr. (Shamos) at 389:5-9, 391:3-24, 392:20-393:5, 394:9-395:18, 396:23-397:9, 397:10-
398:4, 398:24-399:4, 421:25-423:17 (discussing Comcast customers’ actual use of the Accused
Products in the United States after the filing of the Complaint with respect to overloaded key .
searching within the meaning of the claims of the ’011 patent and set storage options within the
meaning of the claimed of the ’585 patent); CDX-0012C.0014 (tabulated results of Comcast
Customer focus group); CX-0543 (focus group results); CX-0543.0006 (showing that one
customer used Features T and K, the storage options and overloaded key search functions,
respectively). This evidence shows that after the filing of the Complaint in this Investigation, at
least one Comcast customer in the U.S. made post-importation use of the Accused Products to
infringe claim | of the 011 patent.

On cross-examination, Comcast questioned Dr. Shamos about some seeming
discrepancies in the tabulation of the focus groups’ usage results (CDX-0012C.0014) that Dr.
Shamos prepared and described during his direct testimony, which is summarized below in |

Figure 87.

this Investigation beforé the Hearing commenced. Thus, Dr. Shamos did not provide any testimony with
regard to this patent during the Hearing.

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Rest art · ('7.41 l'ale ,. : Noon •Gh>Lfl
ReJt3 rt - C'7.41 11'211e : 5: 50 G""'"
R- 	Now('7U l'lltenl): TOrAl
o.edoadedleYJ ro11 Pa t • nt]: 	Clra<.J>
o-so.d od 1eYJ 011 Pate nt]: i:'IO Group
O. doeded k,s j'OU Nanj : 10TAl
.Stange Optia<u f 515 Paten! : _, Gn>11p
Stange Optioru f S85 Pate/It : 5.dO ·Gm
St-.~•('515,._l : TOTAl
(CDX-0012C.0014.).
Public Version
Figure 87: Tabulation of Usage Results
fAMIUARffY
Not 	Fwniliar I
femiliar 	""-Uoed
6
6 	6
5 	3
7
'.l2 	..
1
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-- 	....... 	-- 	3_..
l
2
1
1
2
For instance, he was asked why certain numbers of users in the "Familiarity" column,
i.e., users who were not familiar with the feature or familiar but never used the feature, were not
consistent with numbers in the "Frequency of Use" column specifying the number of customers
who used the feature 3 times or less in the last 12 months. 95 (See, e.g., Tr. (Shamos) at 400:13-
401:21, 405 :12-18; RDX-0016C.00012.). Although Dr. Shamos acknowledged that he may have
made some errors in tabulating the results (see, e.g. , Tr. (Shamos) at 407:4-11), this provides at
least some evidence that after Rovi filed the Complaint in this Investigation, at least one Comcast
customer in the U. S. made post-importation use of the Accused Products to infringe claim 9 of
the ' 011 patent, and claims 15 and 22 of the '585 patent. 96
95 For example, with regard to the overloaded key search, if there were 12 unfamiliar users and 4 users
who were familiar with the feature but never used it, the number of users who used the feature less than 3
times in the last 12 months (far right column) should be 16 , not 8.
96 Dr. Shamos also testified that he used the Accused Products in his home in Pittsburgh to perform the
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A separate survey of Comast customers that Dr. Elliot Schwartz’ conducted confirms the
results of the focus group. (CX-1336C (results of Dr. Schwartz’s survey); RDX-0016C.0010
(citing CX-1335C.0010 reflecting the opinion that “[e]ach of the evaluated features are used by
at least half of the respondents”); Tr. (Shamos) at 421:25-422:14.). Comcast also raised issues
with the methodology used in Dr. Schwartz’s survey. (See, e.g., Tr. (Shamos) at 407:12-18.).
Again, while Dr. Schwartz’s survey may not have been methodologically sound in certain
respects, it is still some evidence entitled to some weight that at least one Comcast customer in
the U.S. made post-importation use of the Accused Products after Rovi filed its Complaint to

infringe the claims at issue.

Moreover, although} a ]

| |, users still directly

infringe because by initiating the search query, the users “control” and “benefit” from each
claimed component of claim 9. See, e.g., Intellectual . Ventures, 870 F.3d at 1329; see also
Centillion, 631 F.3d at 1285-86 (customers found to be direct infringers controlled and benefitted
from back-end processing equipment over which they exercised no physical control by
requesting service and requiring particular reports, and because their requests produced response
from the back-end equipment on a “one request/ one response basis’’).

4. Comcast Intends to Induce Infringement or Has Been Willfully Blind
to Infringement ,

Despite its knowledge of the ’011 and ’585 patents, Rovi presented evidence supporting

overloaded-key search functionality of the asserted claims of the ’011 patent, and to perform the storage
options functionality of the asserted claims of the ’585 patent. (Tr. (Shamos) at 398:5-399:4.).

57 Dr. Elliot Schwartz conducted the focus group that Dr. Shamos attended, which is separate and distinct
from Dr. Schwartz’s survey. (Tr. (Shamos) at 388:8-25; CBr. at 29.).

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its claim that Comcast has been willfully blind to its infringement of claim 9 of the ’011 patent,
and claims 15 and 22 of the 585 patent. At least for the 585 patent, most tellingly, Comcast did
not provide Rovi with a responsive claim chart or a detailed technical response explaining why it
contended it did not infringe the ’585 patent.”® (Tr. (Armaly) at 145:25-146:9.). Comcast’s Vice
President of Software Development and Engineering, Mr. McCann, and Comcast’s Senior
Director of Product Management for Consumer Premise Equipment Software, Steven Allinson,
also failed to describe an alternative design that Comcast alleged does not infringe the ’585
patent.

Although Mr. McCann and Steven Allinson were aware of the patents and this
Investigation, and had intricate knowledge of how Comcast’s products work, neither witness
provided testimony with respect to whether Comcast lacked the intent to infringe the 011 and

7585 patents or whether Comcast took any steps to avoid infringement at any point in time (e.g.,
after the license expired or after receiving Rovi’s claim charts), other than the Design
Alternatives, which no longer include the highlighting feature required by claim 1 of the ’011
patent. (Tr. (McCann) at 1425:5-1428:8; Tr. (Allinson) at 1490:20-1491:16; see also Tr. (Kotay)
at 503:24-504:20; Section V.B, supra (describing Design Alternatives).).

With regard to the ’011 patent, Comcast contended that because Veveo dismissed in 2013
its district court complaint in which it asserted the ’011 patent, Comcast lacked the requisite

intent to induce infringement. (RPBr. at 22; RRBr. at 22.).

However, as Rovi pointed out: (1), oo 7 | 4

98 Comcast argued that it provided “high-level” feedback with respect to Rovi’s patent portfolio and
offered to give Rovi detailed feedback with regard to specific patents of Rovi’s choosing. (Tr. (Armaly)
at 168:8-170:16.). However, that meeting never occurred. (/d.; see also id. at 193:11-24.).

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; and (2) Veveo agreed to dismiss the 2013 Complaint without prejudice

so that the patents could be asserted again at a later time. (Tr. (Koenig) at 461:20-462:11.). See
Certain Beverage Brewing Capsules, Components Thereof, & Prods. Containing the Same, Inv.
No. 337-TA-929, Comm'n Op. at 20-21 (Apr. 5, 2016) (requiring evidence that a belief of non-
infringement was reasonable and in good-faith); Certain Microfluidic Devices, Inv. No. 337-TA-
1068, Initial Determination at 127-28 (Sept. 20, 2018) (rejecting unsupported claims of no intent
to infringe); see also Certain Digital Video Receivers &Hardware & Software Components
Thereof, Inv. No. 337-TA-1001, Initial Determination at 232-34, 399-400 (May 26, 2017)
(finding intent to infringe where Comcast was provided with claim charts and offered no
technical response).

With respect to the °585 patent, Comcast relied upon Rovi’s failure to assert its
infringement of the ’585 patent after the 2010 Comcast License expired on April 1, 2016 to
imply that it lacks the requisite intent. (RPBr. at 22.). This is not sufficient evidence to prove
that Comcast had a good-faith belief that it has not been infringing the °585 patent. See

- Beverage Brewing, Comm’n Op. at 20-21; Microfluidic Devices, Initial Determination at 127-28.

Although Commil suggests that a good-faith belief of non-infringement shields it against
a claim of indirect infringement, such a belief must be reasonable. Commil, 135 S. Ct. at 1928
(stating that a defendant is not liable for induced infringement “if the defendant reads the
patent’s claims differently, and that reading is reasonable”’); see also Beverage Brewing,

‘ Comm’n Op. at 20-21. This is consistent with Federal Circuit precedent that an accused
infringer may defeat a claim of induced infringement by presenting evidence, such as legal

opinions, explaining why it reasonably believed it did not infringe. See, e.g., DSU Med. Corp. v.

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JMS Co., Ltd., 471 F.3d 1293, 1307 (Fed. Cir. 2006); Broadcom Corp. v. Qualcomm Inc., 543
F.3d 683, 699 (Fed. Cir. 2008). Here, Comcast failed to provide any such evidence supporting
its belief of non-infringement. |
Accordingly, Rovi has demonstrated that Comcast had knowledge that its acts of
inducement constitute infringement. See Commil, 720 F.3d at 1367; Global-Tech, 131 S. Ct. at
2068-70.
XI. DOMESTIC INDUSTRY REQUIREMENT: ECONOMIC PRONG

A. Legal Standard

The Commission may only find a violation of Section 337 “if an industry in the United
States relating to the articles protected by the patent . . . exists or is in the process of being
established.” 19 U.S.C. § 1337(a)(2) (emphases added). Typically, a complainant must show
that a domestic industry existed at the time the complaint was filed. See Motiva LLC v. Int’l
Trade Comm’n, 716 F.3d 596, 601 n.6 (Fed. Cir. 2013).

The domestic industry requirement consists of a “technical prong” and an “economic
prong.” See, e.g., Certain Elec. Devices, Including Wireless Commc’n Devices, Portable Music
& Data Processing Devices, & Tablet Computs., Inv. No. 337-TA-794, Order No. 88, 2012 WL
2484219, at *3 (June 6, 2012); Certain Unified Commc’ns Sys., Prods. Used with Such Sys., and
Components Thereof, Inv. No. 337-TA-598, Order No. 9 at 2 (Sept. 5, 2007) (“Communications
_ Systems”). A complainant satisfies the “technical prong” of the domestic industry requirement
when it proves that its activities relate to an article “protected by the patent.” See |
Communications Systems, Order No. 9 at 2. A complainant satisfies the “economic prong” of the
domestic industry requirement when it demonstrates that the economic activities set forth in

subsections (A), (B), and/or (C) of Section 337(a)(3) have taken place or are taking place with

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respect to the protected articles. See id.
Subsection. 337(a)(3) states that:
(3) For purposes of paragraph (2), and industry in the United States
shall be considered to exist if there is in the United States, with
respect to the articles protected by the patent, copyright, trademark,
mask work, or design concerned —
(A) significant investment in plant and equipment;
(B) significant employment of labor, or capital; or

(C) substantial investment in its exploitation, including
engineering, research and development, or licensing.

19 U.S.C. § 1337(a)(3).

Because the criteria are listed in the disjunctive, satisfaction of any one of them will be
sufficient to meet the economic prong of the domestic industry requirement. Certain Integrated
Circuits, Chipsets and Prods. Containing Same, Inv. No. 337-TA-428, Order No. 10, Initial

_ Determination (May 4, 2000) (“Zntegrated Circuits”) (unreviewed). Establishment of the
“economic prong” is not dependent on any “minimum monetary expenditure” and there is no
need for a complainant “to define the industry itself in absolute mathematical terms.” Certain
Stringed Musical Instruments and Components Thereof, Inv. No. 337-TA-586, Comm’n Op. at
25-26 (May 16, 2008) (“Stringed Instruments”). However, a complainant must substantiate the
nature and the significance of its activities with respect to the articles protected by the patent at
issue. Certain Printing and Imaging Devices and Components Thereof, Inv. No. 337-TA-690,
Comm’n Op. at 30 (Feb. 17, 2011) (‘Imaging Devices’).

The Commission has interpreted Sections 337(a)(3)(A) and (B) to concern “investments

in plant and equipment and labor and capital with respect to the articles protected by the patent.”

Certain Ground Fault Circuit Interrupters and Prods. Containing Same, Inv. No. 337-TA-739,

2012 WL 2394435, at *50, Comm’n Op. at 78 (June 8, 2012) (“Circuit Interrupters”) (emphasis

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in original) (quoting 19 U.S.C. §§ 1337(a)(3)(A), (B)).

When a complainant proceeds under Section 337(a)(3)(C), it is not sufficient for the
“substantial investment” under subsection (C) to merely relate to articles protected by the
asserted patents. Rather, “the complainant must establish that there is a nexus between the
claimed investment and asserted patent regardless of whether the domestic-industry showing is
based on licensing, engineering, research and development.” Certain Integrated Circuit Chips &
Prods. Containing, Inv. No. 337-TA-845, Final Initial Determination, 2013 WL 3463385, at *14
(June 7, 2013) (“Certain Integrated Circuit Chips’).

In addition, the Commission has definitively stated that investments in plant and

/
f

equipment or labor-and capital that relate to engineering and research and development (“R&D”)
(that are expressly identified under-subsection (C)), are properly considered under subsections
(A) and (B):

The statutory text of section 337 does not limit sections 337(a)(3)(A) and (B).to

- investments related to manufacturing or any other type of industry. It only requires

that the domestic investments in plant and equipment, and employment of labor or

capital be “with respect to the articles protected by the patent.” 19 U.S.C.

§ 1337(a)(3). | Moreover, even though subsection (C) expressly identifies

“engineering” and “research and development” as exemplary investments in the

“exploitation” of the patent, that language does not unambiguously narrow

subsections (A) and (B) to exclude those same types of investments.
Certain Solid State Storage Drives, Stacked Elecs. Components, and Prods. Containing Same,
Inv. No. 337-TA-1097, Comm’n Op. at 8 (June 29, 2018) (“Storage Drives’); see also, e.g.,
Certain Marine Sonar Imaging Devices, Including Downscan and Sidescan Devices, Prods.
Containing the Same, and Components Thereof, Inv. No. 337-TA-921, Comm’n Op. at 57-64
(Jan. 6, 2016) (“Sonar Imaging Devices’).

There is no mathematical threshold test or a “rigid formula” for determining whether a

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domestic industry exists. Certain Male Prophylactic Devices, Inc., Inv. No. 337-TA-292,
Comm’n Op. at 39, USITC Pub. 2390 (June 1991) (“Male Prophylactic Devices”). However, to
determine whether investments are “significant” or “substantial,” the actual amounts of a
complainant’s investments or a quantitative analysis must be performed. Lelo Inc. v. Int’l Trade |
Comm’n, 786 F.3d 879, 883-84 (Fed. Cir. 2015). Even after Lelo, which requires some
quantification of a complainant’s investments, there is still no bright line as to a threshold
amount that might satisfy an economic industry requirement.

It is the complainant’s burden to show by a preponderance of evidence that each prong of
the domestic industry requirement is satisfied. Certain Prods. Containing Interactive Program
Guide and Parental Control Tech., Inv. No. 337-TA-845, Initial Determination, 2013 WL
3463385, at *14 (June 7, 2013) (“Interactive Program Guide”). Moreover, the Commission
makes its determination by “‘an examination of the facts in each investigation, the article of
commerce, and the realities of the marketplace.” Male Prophylactic Devices, Comm’n Op. at 39
(quoting Certain Double Sided-Floppy Disk Drives and Components Thereof, Inv. No. 337-TA- °
215, Comm’n Op. at 17, USITC Pub. 1859 (May 1986)).

B. ‘Economic DI Overview

Rovi has proven that a domestic industry exists for its i-Guide, Passport Guide, AS&R,

and Next-Gen Platform products, and for its licensee TSI’s TiVo Bolt with Experience 4.0.

Evidence presented in this Investigation established that from) - | Rovi and

its licensee invested _ | in qualifying domestic industry investments,

in P&E under subsection (A), [ ____| in labor and [|

including more than'

[ | in capital under (B), and Po | in R&D and engineering under (C).

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Dr. Jonathan Putnam,” Rovi’s economic expert, concluded that Rovi and TSI have a
domestic industry for each DI Product, (Tr. (Putnam at 1235:2-12, 1239:10-13, 1271:5-9.). He
testified that Rovi’s investments are significant and substantial for each DI Product for the
periods of MRS «(7c at 1241:6-25, 1244:1-16, 1250:9-1251:25,
1253:16-1254:19, 1257:2-1259:1, 1269:1-13.). By contrast, Comcast’s expert, Mr. W. Todd
Schoettelkotte,!™ did not offer any alternative analysis of Rovi’s domestic industry, did not
identify a single data point that was wrong, and did not dispute Dr. Putnam’s conclusion that
Rovi’s and/or TSI’s investments are significant or substantial. (Tr. (Schoettelkotte) at 2042:11-
2046:24.).

_For the reasons discussed below, Rovi has proven that it satisfies the economic prong of
the DI requirement under Sections 337(a)(3)(A)-(C).

C. Rovi Properly Relied Upon Its Product Allocations in the Ordinary Course
of Business

Rovi demonstrated its significant investments in the DI Products through product

°° When he testified during the Hearing on October 23, 2018, Dr. Jonathan D. Putnam was the founder
and principal of Competition Dynamics. (CPSt. at 9, App. D.). Rovi identified Dr. Putnam as an expert
to “define and characterize the domestic industry at issue; to offer testimony on the appropriate remedy,
including whether the domestic inventory of the Respondent’s Accused Products is commercially
significant; to calculate a bond sufficient to protect Rovi from any injury during the presidential review
period; and secondary considerations.” (/d. at 9.).

100 When he testified during the Hearing on October 25, 2018, Mr. W. Todd Schoettelkotte was the
President and a Managing Director of Intellectual Property and Financial Consulting Corp. (“IPFC”).
(RPSt. at Ex. D; Tr. (Schoettelkotte) at 1979:20-25.). He described his practice as “focus[ed] mostly . . .
on the valuation of intellectual property for the purposes of dispute, and also for the purposes of sale.”
(Tr. (Schoettelkotte) at 1980:1-4.). Mr. Schoettelkotte also stated that he was “involved in determining or
assessing domestic industry as well as remedy and bond and public interest here at the ITC.” (/d. at
1980:4-6.). Comcast identified Mr. Schoettelkotte as an expert to testify about matters relating to the
economic prong of the domestic industry; importation issues; and/or the remedy and bond; and to rebut
any testimony by Rovi’s experts or fact witnesses regarding any of the areas described above.. (RPSt. at
4.).

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allocations it makes in the ordinary course of business. Rolan Sargis,'°! Rovi’s Vice President of
Finance, testified that Rovi manages, tracks, and reports its expenditure data through

departments called “cost centers.” (Tr. (Sargis) at 1155:3-1157:3; see also Tr. (Gaeta) at 227:5-
228:25; Tr. (Putnam) at 1231:24-1232:2.). Evidence adduced in this Investigation supports a
finding that Rovi’s expenditure data is reliable, and doés not lack transparency, as Comcast has

contended. (RRBr. at 93-99.).

For example, Mr. Sargis explained that} }
|

4. (Tr. (Sargis) at 1155:7-1156:16; JX-0170C (Sargis Dep. Tr.) at 18:21-19:3,

46:15-50:3.). Mr. Sargis testified that] |
|
[ =

| ]. (Tr. (Sargis) at 1154:3-1156:16,

1159:2-13, 1165:14-1166:13; see also Tr. (Putnam) at 1231:24-1232:12.). Notably, Mr. Sargis
testified, and Comcast’s expert, Mr. Schoettelkotte did not contest, that{

L: |
a |. (Tr.

'01 When he testified during the Hearing on October 22, 2018, Mr. Rolan Sargis was Rovi’s Vice
President of Finance, a position he held since August 2017. (CPSt. at 2; Tr. (Sargis) at 1152:6-11.). In
that capacity, Mr. Sargis testified that his (and his team’s) responsibilities include “provid[ing] financial
support to the rest of the company, in terms of . . . financial planning analysis, budgeting, forecasting,

and .. . support[ing] the management team in terms of any sort of finance decision support.” (Tr. (Sargis)
at 1152:12-17.). Rovi identified Mr. Sargis as a fact witness to testify generally as to Rovi’s investments
pertaining to its domestic industry, including Rovi’s business process for allocating costs by product.
(id.).

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(Sargis) at 1158:6-15; Tr. (Schoettelkotte) at 2041:12-16.).

According to Mr. Sargis and Ms. Gaeta,} _

| |

}.!° (Tr. (Sargis) at 1156:17-1157:21; CX-0920C (Cost Center Owners); Tr. (Gaeta) at

227:5-228:18.). Rovi presented evidence that established that| |
}
(See, e.g., CX-0924C| i

[ '}).). For instance,

l
a |. (CX-
0924C.). With respect to| |

iz |. (Tr. (Sargis) at 1182:8-19; JX-0170C (Sargis Dep. Tr. (Apr.

23, 2018)) at 21:13-22:9, 25:13-26:4; CX-0122C (Sargis Dep. Tr. (June 22, 2018)) at 59:7-

63:12.). Ms. Gaeta clarified that} |

|
| |.

(Tr. (Gaeta) at 229:1-10.).

Mr. Sargis and Ms. Gaeta testified that| |

102

{ (Yr. Gaeta) at 201:3-12; Tr. (Putnam) at 1230:5-1231:23; 1379:25-

1380-17).

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[~~ }].1© (Tr. (Sargis) at 1156:17-1157:21, 1159:14-1160:4, 1216:20-1217:7; Tr. (Gaeta) at

201:3-12; see also Tr. (Putnam) at 1230:5-1231:13.). Specifically, Mr. Sargis explained that

4

| }. (Tr. (Sargis) at

1159:14-1160:4; JX-0170C (Sargis Dep. Tr.) at 21:16-22:9; see also Tr. (Schoettelkotte) at

2048:8-2049:7.). Mr. Sargis testified that} |

L
L_

| |. (Tr. (Sargis) at 1160:11-1161:3, 1213:1-25.).

Dr. Putnam and Mr. Sargis confirmed that| |

|

[_ |. (Tr. (Sargis) at 1162:4-16; Tr. (Putnam) at

1230:5-1231:23; JX-0170C (Sargis Dep. Tr. (Apr. 23, 2018)) at 41:21-42:23, 46:15-48:9.). In

particular, Mr. Sargis explained that] |

103 Comcast criticized Ms. Gaeta’s explanation of f _], asserting that she “had no
knowledge of any allocations relating to Rovi US facilities purportedly involved in claimed DI products.”
(RRBr. at 97 (citing Tr. (Gaeta) at 272:9-273:12, 281:6-16).). Comcast pointed out that she was not
familiar with DI-related financial spreadsheets, and there was discordance between Rovi’s documents
with respect to i-Guide and Passport, and Ms. Gaeta’s testimony. (/d. (citing Tr. (Gaeta) 262:13-264:16,
286:1-7, 380:19-381:10).). Comcast also disparaged Mr. Sargis’ lack of knowledge because, inter alia,
“he is not involved in the creation or collection of allocations{,]” he did not know “whether materials are
prepared in advance of budget meetings,” and he had not knowledge “whether guidelines exist for budget
meetings.” (Tr. (Sargis) at 1162:20-1163:7, 1182:4-7, 1182:20-1183:9, 1183:16-19, 1184:24-1185:25,
1186:14-18, 1187:3-7, 1189:11-15; JX-0170C (Sargis Dep. ID at 28:3-30:4-8, 34:2-34:6, 38:14-39:19,
39:5-19, 40:8-41:20.). Ms. Gaeta and Mr. Sargis may not have had comprehensive institutional
knowledge of Rovi’s allocation methodology, since both, especially Mr. Sargis, started working at Rovi
relatively recently (Ms. Gaeta started in 2014; Mr. Sargis joined in 2017). (Tr. (Gaeta) at 200:10-11; Tr.
(Sargis) at 1152:6-11.). Nevertheless, their testimony with respect to aspects of the allocation
methodology with which they were familiar was credible. Moreover, the areas on which their knowledge
was lacking were minor and did not undermine the significance and substantiality of Rovi’s overall
expenditures given the extent to which Rovi’s overall financial information is audited, consistent with
general accounting requirements and SEC filing requirements.

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| (Tr. (Sargis)

at 1162:4-16);. and (ii) incorporated into the segment reporting of Rovi’s SEC filings (id. at
1160:5-10; CX-0243, CX-0248 to 0251 (Rovi 10-Ks)).

Comcast argued that Rovi’s cost center allocations should not be used to satisfy the
economic prong because Rovi failed to provide sufficient transparency. (Tr. (Schoettelkotte) at
1984:8-1985:22, 1989:22-1990:7, 2008:10-2010:13.). For example, Comcast’s expert, Mr.
Schoettelkotte, testified that the allocations themselves are not subject to outside auditing or SEC
reporting, and are thus unreliable. (Tr. (Schoettelkotte) at 1989:4-21, 2049:8-20.)

However, as discussed above, Mr. Sargis provided testimony, which Mr. Schoettelkotte

did not rebut, that| _]

i |]. (Tr. (Sargis) at
1154:3-1 156:16, 1158:6-15, 1159:2-13, 1165:14-1166:13; Tr. (Putnam) at 123 1:24-1232:12; Tr.
(Schoettelkotte) at 2041:12-16.).

Furthermore, consistent with Commission precedent, Rovi is not required to structure its
business in any particular manner, and no rigid formula or precise accounting is necessary to
satisfy the domestic industry requirement. See, e. g., Stringed Instruments, Comm’n Op. at 26
(“A precise accounting is not necessary, as most people do not document their daily affairs in
contemplation of possible litigation.”); Certain Table Saws Incorporating Active Injury
Mitigation Tech. & Components Thereof, Inv. No. 337-TA-965, Initial Determination at 12 (Mar.
22, 2016) (“Table Saws’’) (recognizing that “parties may not keep [a] precise record of how their
costs are incurred,” “[a] precise accounting is not necessary’’) (internal quotations and citation
omitted); Certain Liquid Crystal Displays and Prods. Containing Same, Inv. No. 337-TA-631,

Order No. 18 (Sept. 23, 2008) (“The Commission has adopted a flexible and market-oriented

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. approach in determining the existence of a domestic industry.”) (“LCDs’’)).
Comcast’s expert, Mr. Schoettelkotte, did not refute this.

Q. And you understand that no precise accounting is necessary for the ITC; right?

A. I understand in general that the ITC does not look to at least a level of precision
that I can define, if you will.

* * *

Q. You understand that neither Rovi nor any publicly traded company needs to
structure its financials just to align with Commission rules; right?

A. Yes, I don’t disagree with that.
(Tr. Schoettelkotte) at 2050:4-19.).

Comcast also contended that because the data Rovi produced did not set out specific
activities associated with the cost center expenditures from each cost center manager, there is no
way to verify independently Rovi’s allocations. (RRBr. at 94 (citing Tr. (Sargis) at 1183:3-6,

1191:15-1193:9; JX-0170C (Sargis Dep. Tr. (Apr. 23, 2018)) at 66:4-10; CX-0924C.). To the

contrary, as Rovi’s fact witnesses and expert explained, | |

—]

| )
| |

= ]. (Tr. (Sargis) at 1158:6-1162:16; Tr. (Gaeta) at 201:3-12,

227:5-229:10; Tr. (Putnam) at 1225:15-1226:21, 1230:5-1231:23, 1380:11-1381:18.).

Rovi produced a

~ . (CX-0920C (Tab, “Dept List New,” Columns F, M, & V); Tr. (Sargis) at 1157:4-

1158:5.). Rovi also provided} | |

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[ |. (Tr. (Sargis) at 1163:21-1164:10, 1166:6-13; CX-0924C

(Cost Center Expends).). Rovi produced its public SEC financial reports. (See,.e.g., CX-0243;

CX-0248-CX-0251.). In addition, Rovi’s employees provided testimony describingl |

[ |. (See,.e.g., Tr. (Sargis) at 1158:6-1162:16,

1213:1-25; Tr. (Gaeta) at 201:3-12, 227:5-229:10.). Based on this information, Dr. Putnam
verified, quantified, and classified Rovi’s domestic industry investments. He also produced |
schedules explaining how he performed those calculations. (See CDX-0017C; Tr. (Putnam) at
1225:15-1227:11.).

Mr. Schoettelkotte could have examined the reliability and accuracy of the allocations .
himself, but he chose not to do so. (Tr. (Schoettelkotte) at 2042:11-2046:24, 2065:6-14.). For
example, he could have confirmed Rovi’s allocations by “tracking back from the 10-K reports to
the expenditures,” a question which was raised during the Hearing. (Tr. (Schoettelkotte) at
2065:6-14 (“JUDGE MC NAMARA: Did you ask any questions of Rovi about that tracking
back from the 10-K reports to the expenditures? THE WITNESS: I did not ask questions of
Rovi. JUDGE MC NAMARA: Okay. Did you request any additional information to see
whether or not the spreadsheets tracked to the 10-K reports? THE WITNESS: I did not --
excuse me. I did not request any additional information on that score.”).). As Mr.
Schoettelkotte’s testimony indicates, he made no such effort. (/d.).

Additionally, Comcast pointed out that of the ].known managers, Dr. Putnam’s staff
interviewed onlyf _|. (Tr. (Putnam) at 1351:25-1352:17.). Comcast also disparaged the
fact that while Dr. Putnam chose cost centers that he testified made up [] of the DI
expenditures for[ |, he and his staff only interviewed the current managers of those cost

centers. (RRBr. at 95.). Accordingly, Comcast asserted that expenditures for the years

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supervised by managers who were not interviewed should not be included as part of the (|
because “there is no transparency into how the non-interviewees performed their allocations.”
(d.).

Again, Comcast’s arguments are misguided. Rovi was not under any obligation to

interview all the cost center managers| | or even those managers who oversaw

the claimed[ | of the relevant DI expenditures during that timeframe. Tellingly, Mr.
Schoettelkotte declined to adopt Comcast’s position with regard to this issue. (Tr.
(Schoettelkotte) at 2053:11-16 “OQ. Is it your testimony that Rovi needed to either call here
today these CJ other cost center managers that weren’t interviewed or that Mr. Putnam had to
interview each of these in order to corroborate the internal records of Rovi? A. No, that’s not
my testimony.”).).

Furthermore, Comcast was aware of Rovi’s use of cost centers since at least the 1001
Investigation. See Digital Video Receivers, ID at 582. Given its knowledge, Comcast could
have made detailed inquiries into the responsibilities of the cost center managers during the
depositions of three such managers, i.e., Chris Thun, Sarah Gaeta, and J ames Denney, whom
Comcast subpoenaed and deposed in this Investigation, to corroborate Rovi’s allocations that
would have provided information from different periods of time, which might have given
Comcast a basis for comparison. (CBr. at 109 n.31, 111.). Comcast made no such inquiries.

Nor did Comcast seek to depose any of the other cost center owners Rovi identified.'°* (CBr. at ©

104 Comcast appeared to suggest that it only deposed three (3) cost center managers “[t]o use the limited
number of its depositions efficiently,” and that Comcast relied on Rovi’s interrogatory responses “to
identify among[_ ~~] of cost center managers those vital to Rovi’s DI proffer.” (RRBr. at 97 n.22.).
This “suggestion” does not frustrate Rovi’s argument that Comcast could have, and should have, asked at
least these individuals about their specific responsibilities, given Mr. Schoettelkotte and Comcast’s
contention that Rovi’s cost center allocations lack transparency because Rovi allegedly did not produce
records that clearly identified the activities associated with each cost center’s expenditures. ,

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111.). As noted during the Hearing, the interviews were a point-in-time survey and not intended
to generally encompass the allocation methods of prior cost center managers. (/d. at 2061:20-
2063:16; see also CBr. at 110 n.32 (citations omitted).).

Comcast also asserted that certain cost center managers Dr. Putnam interviewed and

listed in CX-1346C, ~ ae a

I . ; 7 - | that are not associated with any of the DI Products at issue here. (Tr.
(Putnam) at 1352:11-1354:17; CX-1346C; CX-0920C.). Even if, arguendo, this is the case, and
meaningfully undermine the significance and substantiality of Rovi’s investments in the DI
Products, as discussed in Section XI.D below.

It is telling that during the Hearing, Mr. Schoettelkotte refrained from offering his
opinions that Rovi’s allocations are actually unreliable. Rather, Mr. Schoettelkotte cautiously
testified that because Rovi uses cost centers for internal management purposes, he could not
opine with respect to their reliability. His critique was directed to aspects of Rovi’s accounting
most susceptible to criticism.

Q. Your testimony here today, in sum and part, is that the process Rovi actually

relies on to make its investment decisions is not transparent enough to be reliable
to the Commission; right?

A. Well, I guess I would maybe modify that just a bit. What I’ve endeavored to
do is identify the allocations that would be relevant to the domestic industry
products. Obviously, those allocations would be different than what you might
refer to as a financial accounting or reporting to auditors or reporting to the SEC,
just because they’re internal in nature. So without that transparency, I’m unable
to do that with any degree of certainty. So with that backdrop, I guess that would
just be maybe the answer that I would provide you.

* ok OF

Q. And your testimony is that that is not sufficient to satisfy the standards of the

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ITC?

A. No, my testimony is is [sic] that I don’t have the ability to have an awareness
of how those allocations were performed or the reliability of those allocations based
upon the evidence produced.

Q. So that’s not your opinion, that its internal allocation processes are not sufficient
for the ITC?

A. . Again, I have not looked at Rovi’s controls or how they perform those

allocations. I don’t know. What I can tell you is is [sic] based upon the information

that I have reviewed, I have been unable to provide or have any level of clarity as
_ to how that happens.

Q. But you do know that there are people working in the U.S. and spending money;
right?

A. That’s my understanding.
(Id. at 2049:8-22, 2059:4-19 (emphases added).).

Mr. Schoettelkotte’s testimony also underscores the fact that he did not identify “a single

data point” that he believed was “wrong.”

Q. The opinion you gave today is that the data resulting from Rovi's allocations is
unreliable; right?

A. The opinion I gave today is that based upon the manner in which it was
provided, there’s no ability for me to review, test or verify that data, to identify any
reliable measure of how those allocations were arrived at or any measure of
accuracy, or the ability to identify their reliability.

Q. And based on that, you have actually not pointed to a single number in Dr.
Putnam’s spreadsheet or Rovi’s calculations and said, this number is in actuality
wrong?

A. There would be no way of knowing. There’s a lack of transparency, and I've
discussed that at length.

Q. I’m not asking you why. I’m asking you, have you identified a single data point
that you can affirmatively testify is wrong?

_A. I’m sorry. You’re right, I haven’t, for the reasons that I mentioned.

(Id. at 2043:13-2044:5.).

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In sum, Comcast failed to present compelling evidence or legal argument to support its
claim that Rovi’s cost ceriter allocation methodology is unreliable or unreasonable. In this
_ Investigation, Rovi’s cost center allocation methodology is the same one it relies on in the
ordinary course of business and it is reasonable for purposes of domestic industry. Moreover,
Rovi has relied upon this methodology to prove a domestic industry in other investigations
before the Commission, which the Commission either affirmed, or determined not to review.
See Interactive Program Guide, Initial Determination at 305, 312;! Digital Video Receivers,
Initial Determination at 580-84.'% For these reasons, Rovi’s methodology is found to be
reliable.

D. Rovi’s Investments in Its Domestic Industry Are Significant Under
Subsections (A) and (B) and Substantial Under Subsection (C)

1. Classic Guides and Veveo AS&R

a) Rovi’s Investment in Plant and Equipment

, Rovi’s domestic investments

Rovi’s expert, Dr. Putnam, testified that from [

and

From 7 ; | Dr. Putnam confirmed that Rovi made domestic investments in P&E totaling
more than | a for i-Guide and more than -_ ___ | for Passport. (Tr. (Putnam) at

1241:6-13; CDX-0017C.0005; CDX-0016C.0021). Dr. Putnam also testified that by the end of

di in P&E allocated to i-Guide and more

105 The Commission affirmed the ID’s finding in Inv. No. 337-TA-845 that Rovi met +t the economic prong
of the DI requirement. (Doc. ID No. 521881 at 4-5 (Nov. 12, 2013.).

106 The Commission determined not to review the 1001 ID’s finding that Rovi satisfied the economic
prong of DI requirement. (Doc. ID No. 619655 at 35-36 (Aug. 10, 2017).).

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thanf __] allocated to Passport. (Tr. (Putnam) at 1240:3-15, 1241:14-1242:2; CX-0243
(10-K); CX-0248 to CX-0251 (10-Ks); CX-0924C (Cost Center Expends.); CDX-0016C.0023;
CDX-0017C.0002.).

Dr. Putnam testified that from [i Rovi invested more than [| in P&E

for AS&R, with> «4d of that investment in| |. (Tr. (Putnam) at

1253:16-25; CDX-0017C.0005; CDX-0016C.0038; CX-0924C (Cost Center Expends).).!°
Dr. Putnam also gave his opinions, which Mr. Schoettelkotte did not contest, that Rovi’s
- investments with respect to the Classic Guides and AS&R are significant under subsection (A).
| (Tr. (Putnam) at 1239:10-13, 1241:6-1242:2, 1253:25; Tr. (Schoettelkotte) at 2046:6-24.).
Based on the evidence presented in this Investigation, it is a finding that Rovi’s |
investments in plant and equipment for the Classic Guide and AS&R DI products are significant.
Accordingly, Rovi has satisfied the economic prong of the DI requirement under Section
337(a)(3)(A). |

b) ‘Rovi’s Investment in Labor and Capital

Dr. Putnam testified that from (sd, Rovi invested more than [| in

labor for i-Guide and more thant | for Passport. (Tr. (Putnam) at 1244:1-9; CDX-

0016C.0026; CDX-0017C.0006, .9-.10; CX-0918C; CX-0924C.). Dr. Putnam concluded based

upon his evaluation and analysis that from| ‘|, Rovi’s domestic investments in

labor exceeded[ for i-Guide and[__ for Passport. (Tr. (Putnam) at 1244:1-

9; CDX-0016C.0026; CDX-0017C.0006, .9-.10; CX-0918C; CX-0924C.).

Dr. Putnam also testified that from| ‘ |, Rovi invested more than[™ |

107 Some of the corresponding investment figures for AS&R are labeled as “FanTV API/ Veveo Adv
S&R” in CX-0924C. (See Tr. (Sargis) at 1165:6-13; Tr. (Koenig) at 441:3-20.).

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i | in labor related to AS&R, with more thant invested in| |.

(Tr. (Putnam) at 1254:1-7; CDX-0017C.0002; CDX-0016C.0039; CX-0924C (Cost Center

Expends).

| Dr. Putnam concluded that from Cd Rovi spent more than | of
capital on i-Guide and more thant on Passport. (Tr. (Putnam) at 1250:3-17; CDX-
0016C.0032; CDX-0017C.0011; CX-0924C. (Cost Center Expends.); CX-0243 (10-K), CX-0248
to CX-0251 (10-Ks).). Dr. Putnam also offered his opinions that Rovi spent more than[ |
[J of capital on i-Guide and more than [| on Passport in [sid (Tr.
(Putnam) at 1250:3-17; CDX-0016C.0032; CDX-0017C.0011; CX-0924C (Cost Center
Expends.); CX-0243 (10-K), CX-0248 to CX-0251 (10-Ks).).

With respect to AS&R, Dr. Putnam testified that from [ Rovi invested{ |

[| in capital related to AS&R, with [ invested in| |. (Tr.

(Putnam) at 1254:8-13; CDX-0017C.0011; CDX-0016C.0040; CX-0243 (10-K), CX-0249 to

CX-0251 (10-Ks).).

Dr. Putnam also offered his opinions, which Mr. Schoettelkotte did not challenge, that
Rovi’s investments with respect to the Classic Guides and AS&R are significant under
subsection (B). (Tr. (Putnam) at 1239:10-13, 1244:1-9, 1250:3-17, 1254:1-24; Tr.
(Schoettelkotte) at 2046:6-24.).

Based on the evidence adduced in this Investigation, it is a finding that Rovi’s
investments in labor and capital for the Classic Guide and AS&R DI products are significant.
Accordingly, Rovi’s has satisfied the economic prong of the DI requirement under Section

337(a)(3)(B).

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c) Rovi’s Investment in Exploitation of Its Patents, Based on
Engineering, Research and Development

With regard to the Classic Guides, Dr. Putnam confirmed that from [i Rovi

invested more than in R&D and engineering in i-Guide and more than in
g g

Passport. (Tr. (Putnam) at 1250:18-1251:19; CDX-00 16C.0035; CDX-001 7C.00 14; CX-0924C

(Cost Center Expends).). He testified that in| |, Rovi invested more than

Cid on i-Guide and more thanl +d on Passport. (Tr. (Putnam) at 1251:11-16;

CDX-0016C.0035); CDX-0017C.0014; CX-0924C (Cost Center Expends).).

With respect to AS&R, Dr. Putnam testified that from [ in the area of R&D

and engineering, Rovi invested, on average, more thanf | a year, totaling [

during that period. (Tr. (Putnam) at 1254:14-19; CDX-0017C.0014; CDX-0016C.0041; CX-

0924C (Cost Center Expends).). He confirmed that from|_ |, Rovi invested[ | ;

[}. (Tr. (Putnam) at 1254:14-19; CDX-0017C.0014; CDX-0016C.0041).).

Dr. Putnam also offered his opinions, which Mr. Schoettelkotte did not refute, that Rovi’s
investments with respect to the Classic Guides and AS&R are substantial under subsection (C).
(Tr. (Putnam) at 1251:11-19; Tr. (Schoettelkotte) at 2046:6-24.).

Section 337(a)(3)(C) requires substantial investment in the “exploitation” of the asserted
patent, which can only be satisfied if a nexus is found to exist between the claimed investment
and the asserted patent. Certain Integrated Circuit Chips, Inv. No. 337-TA-845, 2013 WL
3463385, at *14. As Rovi asserted, its R&D and engineering investments in the Classic Guides
and AS&R exploit the 585 and ’011 patents, respectively, because, inter alia, the products

practice the patents. (See Sections VII.B.3, VII.B.1.). See Certain Integrated Circuit Chips &

Prods. Containing the Same, Inv. No. 337-TA-859, Comm’n Op. at 42 (Aug. 22, 2014)

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(“Certain Circuit Chips”) (noting that investment in an article that practices a patent “supports
the inference that the investment exploits the patented invention”).

Rovi also presented evidence demonstrating that its R&D and engineering investments in
the Classic Guides exploit the recording options functionality claimed in the ’585 patent. Dr.
Putnam testified that the results of extensive regression testing, '®* lab trial testing, and field trial
testing confirm that these products practice the recording options feature. (Tr. (Putnam) at

1259:20-1266:9; CDX-0017C.0025-26; CDX-0016C.0056; see also Tr. (Gaeta) at 215:18-

221:9.). Additionally, Ms. Gaeta testified that) _

|. (Tr. (Gaeta) at 221:10-225:11)).

Specifically, Ms. Gaeta explained that| |

[~ | }

(d. at 221:10-223:3.).

With regard to the 011 patent, Mr. Koenig testified that| i
— | —
| |

|. (Tr. (Koenig) at 439:9-23; JX-0099C (Fennelly Dep. Tr.) at 57:22-
J

59:20; (CDX-0016C.0054-55, 58).).
Based on the evidence presented in this Investigation, it is a finding that Rovi’s

investments in engineering and R&D for the Classic Guides and AS&R are substantial and

108 According to Ms. Gaeta,|

(" (ir. (Gaeta) at 215:18-220:2.), Ms. Gaeta testified that]

{Cd at 219:15-220:29.

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exploit the 585 and’011 patents. Accordingly, Rovi’s has satisfied the economic prong of the
DI requirement under Section 337(a)(3)(C).

2. Next-Gen Platform
a) Domestic Industry for Next-Gen Is In the Process

Domestic industry may also be satisfied for a product in development. An industry is “in
the process” if: (i) the patent owner “is taking the necessary tangible steps to establish such an
industry in the United States”; and (ii) there is “a significant likelihood that the industry
requirement will be satisfied in the future.” H. Rep. 100-40 at 157 (emphasis added); S. Rep.
100-71 at 130; Stringed Instruments, Comm’n Op. at 16; Digital Cameras, ID at 73.

The statute does not require that a product be in production when the complaint is filed.
(See Section VII.B.3(c).). A “production-ready” requirement would effectively eliminate “in the
process” cases altogether and provide Section 337 relief for only those that had already exploited
their patents in an article. Digital Cameras, Initial Determination at 44-47; Certain Non-Volatile
Memory Devices & Prods. Containing Same, Inv. No. 337-TA-1046, Comm’n Op. at 41-44 (Oct.
26, 2018) (finding that § 337 does not require commercial production for in the process claims).

Additionally, the legislative history and certain Commission precedent strongly suggest
that for “in the process of establishing” cases, there is flexibility with regard to the technical DI
product, and that a complainant could rely on a prototype that is still in the process of being
developed past the time of the filing of a complaint, to the close of fact discovery. Digital
Cameras, Initial Determination at 48; Certain Computs. and Comput. Peripheral Devices, and
Components Thereof, and Prods. Containing Same, Inv. No. 337-TA-841, Comm’n Op. at 37, 39
(Jan. 9, 2014) (“Certain Computer Peripheral Devices’’).

In this Investigation, Rovi filed the Complaint on February 8, 2018, and fact discovery

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closed on June 29, 2018. (Order No. 4 at 3 (Apr. 16, 2018).).'°
| i. | Tangible Steps Before F iling the Complaint

Rovi presented evidence in this Investigation which demonstrated that prior to filing the
Complaint, Rovi took tangible steps toward completing and launching Next-Gen. Rovi’s fact
witnesses testified that after acquiring Fanhattan and its IP-based guide called FanTV in 2014,
and TiVo and its engineers and its hardware and software technology in 2016, PF
ee
WE. 1. (Gaeta) at 235:15-236:4, 236:20-237:24, 239:3-242:8; JX-0101C (Gaeta
Dep. Tr.) at 95:8-96:5; JX-0126C (Thun Dep. Tr.) at 11:12-12:4, 16:6-17:19, 46:18-47:9; Tr.
(Armaly) at 119:15-25, 122:20-25, 123: 15-125:10)).

Testimonial and documentary evidence supports a finding that by January 2018,
approximately one (1) month before Rovi filed its Complaint, Rovi’s development of Next-Gen

was well under way. For xamp!,

WINE. (Tr. (Gaeta) at 243:3-244:10; CX-0488C (Product Roadmap) at 7 (showing {i

ES 1, Vice
President of Product Management at TSI, testified that Pe
a. (<-01.26C (thu Dep. Tr.) at 99:13-21,).
Moreover, Mr. Thun and Ms. Gaeta confirmed that by this time, Po

_ 1 On October 10, 2018, Comcast filed a motion in which it sought to exclude a new version of source
code ( —D for Next-Gen that Rovi made available for the time on September 26, 2018, months after
the close of fact discovery, and without leave. (Motion Docket No. 1103-047 (Oct. 10, 2018).). ‘On
October 15, 2018, Rovi filed an opposition to Comcast’s motion. (Doc. ID No. 658912 (Oct. 15, 2018).).
In its opposition, Rovi stated that it ‘expressly notified Comcast that it did not intend to offer [the

source code] into evidence,” which Comcast also acknowledged in its motion. (Opp’n at 1; Mot. at
2.). During the Hearing, Rovi did not rely upon or enter into evidence the source code. Thus,
this motion is moot as is its subject.

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a )

[__]. (Tr. Gaeta) at 244:11-245:6; IX-0126C (Thun Dep. Tr.) at 16:6-17:19.). There is also

evidence demonstrating that} -

[ |]. (Tr. (Gaeta) at 249:15-253:6; CX-0776C (JIRA ticket); CX-0800C

(JIRA ticket).).

In addition, Rovi provided evidence that Rovi created marketing presentations describing
the features, advantages, and value proposition of Next-Gen. (Tr. (Gaeta) at 254:6-15; CX-
0477C.). In J anuary 2018, Rovi announced Next-Gen to the public at the Consumer Electronics
Show (CES) 2018 conference. (Tr. (Gaeta) at 245:19-247:25: CX-0823C.0009-10 (Executive
Briefing Book).).

Comcast argued that investments associated with Next-Gen before the fall of 2017 should
not be considered because the expenditures also supported earlier products, such as [.
(RBr at 112, 114; Tr. (Putnam) at 1362:23-1363: 16.). However, whether investments benefit
other products is irrelevant. Certain Robotic Vacuum Cleaning Servs. & Components Thereof,
Inv. No. 337-TA-1057, Initial Determination at 367-68 (June 25, 2018) (unreviewed in relevant
part) (“Robotic Vacuum’’). Comcast’s contention does not undermine the fact that by the end of
[]. Rovi was spending, monthly, an average of [| in P&E, | in labor
expenditures, [ in capital expenditures, and [- in R&D and engineering
investments. (CX-0924C (Cost Center Expends); CDX-0016C.0047-48, 50.). These
investments are significant and substantial. See, e.g., Digital Cameras, Initial Determination at
84-85 (finding substantial investments for a developing product based on average monthly

investments).

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ii. Tangible Steps Before the Close of Discovery

Subsequent to filing its Complaint and prior to the close of fact discovery, Rovi provided
evidence establishing that it had launched the Next-Gen platform, acquired a customer base,

began earning revenue, and had continued developing additional features intended to enhance the

next release of the Next-Gen. For example, by| |

" | 7.

(Tr. (Gaeta) at 248:9-249:20; CX-0476C.0002 (STB Roadmap).). Rovi released Next-Gen (

[) to its consumer retail business and to its operator market in April 2018. (Tr. (Gaeta) at
248:6-8; JX-0096C (Denney Dep. Tr.) at 63:15-64:24.).

Mr. Denney, Vice President of Product & Strategy at TSI, testified that following the

initial release in April 2018, | |

r ]. (IX-0096C (Denney

Dep. Tr.) at 73:5-22, 102:17-103:10, 290:2-21; RX-0363C.0027 (Rovi Resp. to Rog. 43); RX-

.0372C.0040 (Rovi Resp. to Rog. 79); Tr. (Gaeta) at 248:6-253:6.). Rovi also presented evidence

showing its continued development of }
[____]. (ir. Gaeta) at 248:6-253:6; CX-0789C (JIRA ticket) (created in 2018, with

engineering comments throughout the year); CX-0790C (same); CX-0776C (same); CX-0800C

(same).).

Ms. Gaeta testified that by| |
[_

a |. (Tr. (Gaeta) at

249:15-253:6.). Rovi made available to Comcast both the source code and a running instance of

the prototype before the close of fact discovery, which Comcast’s experts inspected. (Doc. ID

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No. 658912, Rovi Opp’n to Comcast’s Mot. to.Exclude (Mot. No. 1103-047) at 2, 6.4 (Oct. 15,
2018); see also n.109, supra.).

Rovi provided evidence that in addition to its website promotions, Rovi continued to

market Next-Gen through licensees by} |

|. (Tr. (Gaeta) at 253:7-254:15; CX-0235.). Ms.

Gaeta also testified that} {

[__]. (Tr. (Gaeta) at 254:16-255:13; CX-0926C.).

Mr. Denney confirmed that by the close of fact discovery, for TiVo Bolt hardware users,

the April 2018 software release} i.

(JX-0096C (Denney Dep. Tr.) at 232:11-233:10; see also Tr. (Gaeta) at 255:14-18.). Record

evidence also supports a finding that Rovi licensed the Next-Gen product to| i

. ; |

7 . (JX-0101C (Gaeta Dep. Tr.) at 213:20-214:16, 216:2-20.). Given these milestones, it is

difficult to doubt Rovi’s expected revenue growth with respect to this product. (Tr. (Gaeta) at
255:19-256:2.).

In sum, Rovi’s evidence and proof support its claims that it-has taken tangible steps to
establish a domestic industry for this product and that there is a significant likelihood that Rovi
will satisfy the domestic industry requirement within a reasonable time in the future. Thus, Rovi
has demonstrated that a domestic industry for Next-Gen is in the process of being established.
See, e.g., Stringed Instruments, Comm’n Op. at 16.

b) Rovi’s Investment in Plant and Equipment

Dr. Putnam confirmed that from [ Rovi invested fd in plant and

equipment for Next-Gen, with over{ of that investment taking made inf |

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[~]. fr. Putnam) at 1257:11-15; CDX-0017C.0005; CDX-0016C.0047; CX-0924C (Cost
Center Expends.). Dr. Putnam explained that as a result, by the end of | Rovi had built up a
stock of over | in plant and equipment allocated to Next-Gen. (Tr. (Putnam) at
1257:2-10; CDX-0017C.0003; CDX-0016C.0046); CX-0924C (Cost Center Expends).).

Dr. Putnam also offered his opinions that Rovi’s investments are significant under |
subsection (A), which Mr. Schoettelkotte did not contest. (Tr. (Putnam) at 1257:2-17; Tr.
(Schottelkotte) at 2046:6-24.).

Based on the evidence presented in this Investigation, it is a finding that Rovi’s
investments in plant and equipment for Next-Gen are significant. Accordingly, Rovi’s has
satisfied the economic prong of the DI requirement under Section 337(a)(3)(A).

c) Rovi’s Investment in Labor and Capital

Dr. Putnam testified that from 7 |, Rovi invested more than)

’ Next-Gen-related labor (compensation, benefits, and commissions), with more than

invested in:

|, (Pr. (Putnam) at 1257:18-22; CDX-0017C.0006; CDX-

0016C.0048; CX-0924C (Cost Center Expends).). Dr. Putnam explained that by the end of

f
|
|

, Rovi had employed | full-time equivalent employees to work on Next-Gen.. (Tr.
(Putnam) at 1257:23-1258:2; CDX-0016C.0048.). He also confirmed that from _
Rovi spent | in U.S. capital to support Next-Gen, | of which was spent in

—__ |. (fr. Putnam) at 1258:3-10; CDX-0017C.0011; CDX-0016C.0049.).
Dr. Putnam offered his opinions that Rovi’s investments in labor and capital are
significant under subsection (B), which Mr. Schoettelkotte did not refute. (Tr. (Putnam) at

1257:18-1258:11; Tr. (Schottelkotte) at 2046:6-24).

Based on the evidence adduced in this Investigation, it is a finding that Rovi’s

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investments in labor and capital for Next-Gen are significant. Accordingly, Rovi’s has satisfied
the economic prong of the DI requirement under Section 337(a)(3)(B).

d) Rovi’s Investment in Exploitation of Its Patents, Based on
Engineering, Research and Development

Dr. Putnam testified that from| |, Rovi invested more thanf

in R&D and engineering for Next-Gen, over[ | of which was made inf sis

(Tr. (Putnam) at 1258:11-16; CDX-0017C.0014; CDX-0016C.0050); CX-0924C (Cost Center

Expends.).). \

Dr. Putnam also offered his opinions, which Mr. Schoettelkotte did not challenge, that
Rovi’s investments for Next-Gen are substantial under subsection (C). (Tr. (Putnam) at 1258:11-
1259:1; Tr. (Schoettelkotte) at 2046:6-24.).

. Additionally, Rovi adduced evidence confirming that its investments in R&D and
engineering concerning Next-Gen exploit the ’011, ’°585, and ’741 patents. For example, Ms.
Gaeta testified that before the close of fact discovery, Rovi’s investments included cs
L |
(i. (Tr. (Gaeta) at 244:1 1-245:6)) Rovi also presented evidence showing that{ |
L }

r |. (CX-0776C (JIRA ticket); CX-0789C-CX-

0790C, CX-0800C (JIRA tickets); CX-0476C.0002 (STB Roadmap) (indicating that{ _]

| |; CDX-0017C.0025.). Ms. Gaeta explained that

| | 7

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| |

| }. (Tr. (Gaeta) at 244:11-245:6, 252:22-253:6; CX-0476C (STB

Roadmap).).

Thus, Rovi has established that a nexus exists between Rovi’s R&D and engineering
investments in Next-Gen, and the patented features of the ’011, ’741, and ’585 patents, which
Next-Gen practices. (Tr. (Putnam) at 1259:20-1267:25; CDX-0017C.0025-26 (Nexus); CDX-
0017C.0032 (Cost Center); CDX-0016C.0054-58: Sections VII.B, VIII.B, IX.B.). As Rovi
pointed out, none of Comcast witnesses rebutted Rovi’s nexus evidence. (CBr. at 108.).

Based on the evidence that Rovi presented in this Investigation, it is a finding that Rovi’s
investments in engineering and R&D for Next-Gen are substantial and exploit the °011, °585,
and ’741 patents. Accordingly, Rovi has satisfied the economic prong of the DI requirement
under Section 337(a)(3)(C).

E. Licensee TSI’S Investments Satisfy the Economic Prong of the DI
Requirement

TiVo Solutions, Inc. (‘TSI’) has a license from Rovi to practice the Asserted Patents. -
(Tr. (Armaly) at 129:6-130:8; CX-1424C; JX-0084C; JX-0058C; CX-1374C-1375C
(Agreements).) Rovi acquired TSI in 2016, which, in its ordinary course of business, operates
differently than Rovi. (Tr. (Sargis) at 1171:10-1172:16; JX-0096C (Denney Dep. Tr.) at 257:18-

259:20; Tr. (Putnam) at 1268:2-15; CX-0922C (Hydra/Bolt Expenditures).). Unlike Rovi,[ |

. }.210

110

. | [Cle Sargis) at 1171-10-23;
CX-0922C ( { Expenditures).). According to Rovi, TSI multiplied the

in the U.S. by] | to arrive at the qualifying investments shown
in Table 2 (included as DI Attachment 38). (CBr. at 116-17 (citing Certain Robotic Vacuum Cleaning

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Inthe|

_ ‘|. (Tr.

(Armaly) at 127:9-24.). TSI started developing TiVo Bolt with Experience 4.0 in || and
launched the product in October 2017. (CX-0922C (Summary Tab) (capturing investments for
TiVo Bolt going back to! _); JX-0096C (Denney Dep. Tr.) at 190:7-10, 151:11-18, CX-0921C
(TiVo Bolt Shipments); Tr. (Sargis) at 1178: 1-20.). Mr. Denney, the TiVo Bolt with Experience
4.0 product lead, explained that TiVo Bolt with Experience 4.0 is a physical STB installed with
IPG software that. practices the ’585 and ’741 patents. (JX-0096C (Denney Dep. Tr.) at 58:1-
59:15.).

1. TSI’s Investments in TiVo Bolt with Experience 4.0 Are Significant
Under Subsections (A) and (B) and Substantial Under Subsection (C)

, TSI built up a stock of approximately

Dr. Putnam testified that by the end of _

—_ - | which was allocated to TiVo Bolt with Experience 4.0. (Tr. (Putnam) at 1269:1-6;

~CX-0253 (10-K); CDX-0017C.0037; CX-0016C.0064.). Additionally, Dr. Putnam testified that
from’ — 4 TSI invested more than L | in labor related to TiVo Bolt with
Experience 4.0. (Tr. (Putnam) at 1269:1-9; CDX-0017C.0038; CDX-0016C.0064.). He also
confirmed that from 4 TSI invested more than | in capital related to TiVo
Bolt with Experience 4.0. (Tr. (Putnam) at 1269:1-9; CX-00 17.0041 ; CX-001 6C.0064).
Moreover, Dr. Putnam offered his opinions, which Mr. Schoettelkotte did not refute, that
for TiVo Bolt with Experience 4.0, TSI made significant investments in plant and equipment '

under subsection (A) and labor and capital under subsection (B). (Tr. (Putnam) at 1269:1-13,

1271:5-9; Tr. (Schoettelkotte) at 2046:6-24.).

Servs. & Components T. hereof, steiInv. No. 337-TA-1057, Initial Determination at 358, 368 (June 25, 2018)
(accepting investment calculation based on labor hours).).

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Additionally, Dr. Putnam testified that TSI invested substantially in R&D and
engineering to exploit the °585 and ’741 patented features of the TiVo Bolt with Experience 4.0
"under subsection (C). From [ the evidence shows that TSI invested more than[ }
[| in R&D and engineering for the TiVo Bolt with Experience 4.0. (Tr. (Putnam) at |
1269:1-11; CDX-0017C.0042; CDX-0016C.0064.).

Dr. Putnam offered his opinions that TSI’s R&D and engineering investments in TiVo
Bolt with Experience 4.0 are substantial, which Mr. Schoettelkotte did not contest. (Tr.
(Putnam) at 1269:10-13, 1271:5-9; Tr. (Schoettelkotte) at 2046:6-24.).

Rovi also adduced evidence that TSI’s investments in R&D and engineering related to
TiVo Bolt with Experience 4.0 exploit the °585 and ’741 patents because the product practices

the ’585 and ’741 patents. Integrated Circuit Chips, Comm’n Op. at 42. As Mr. Denney

explained, |

) ]. (JX-0096C (Denney Dep. Tr.) at 263:5- .

16, 285:13-25.). |

| |. (JX-0096C (Denney Dep. Tr.) at 215:19-

219:17; CDX-0017C.0025-26; Tr. (Putnam) at 1269:18-23.). Dr. Putnam interviewed Mr.

Denney to confirm |

| ]. (CDx-

0017C.0025-26; Tr. (Putnam) at 1269:10-23.).
' Relying upon these interviews and other evidence produced in this Investigation, Dr.
Putnam concluded that a nexus exists between TSI’s R&D and engineering investments and the

patented features of the 585 and ’741 patents, which the TiVo Bolt with Experience 4.0

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practices. (Tr. (Putnam) at 1269:18-23.). As Rovi observed, none of Comcast’s witnesses
rebutted this nexus evidence. (CBr. at 119.).

Based on the evidence that Rovi provided in this Investigation, it is a finding that TSI’s
investments in engineering and R&D for TiVo Bolt with Experience 4.0 are substantial and
exploit the 585 and ’741 patents. Accordingly, in addition to investments in its own DI
Products, Rovi has satisfied the economic prong of the DI requirement under Section
337(a)(3)(A)-(C) through TSI’s investments.

XI. RECOMMENDATION ON REMEDY AND BOND

This decision recommends: (1) a Limited Exclusion Order with a standard certification
provision and service and repair exception; (2) a Cease and Desist Order with a standard service
and repair exception; and (3) no bond during the Presidential Review Period.

A: Legal Standard

Pursuant to Commission Rule 210.42, an ALJ must issue a recommended determination
on: (i) an appropriate remedy if the Commission finds a violation of Section 337, and (11) an
amount, if any, of the bond to be posted. 19 C.F.R. § 210.42(a)(1)(i1). When a Section 337
violation has been found, as here, “the Commission has the authority to enter an exclusion order,
acease and desist order, or both.” Certain F lash Memory Circuits and Prods. Containing the
Same, Inv. No. 337-TA-382, Comm’n Opinion on the Issues Under Review and on Remedy, the
Public Interest and Bonding, at 26 (June 9, 1997).

Upon a finding of infringement, 19 U.S.C. § 1337(d) provides for a Limited Exclusion
Order (“LEO”), directed to the products of named respondents, excluding any articles that
infringe one or more claims of the asserted patents. 19 U.S.C. § 1337(d). A Cease and Desist

Order (““CDO”) is also appropriate when the evidence demonstrates the presence of

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commercially significant inventory in the United States. 19 U.S.C. § 1337(f; see also Certain
Crystalline Cefadroxil Monohydrate, Inv. No. 337-TA-293, Comm’n Opinion, USITC Pub. No.
2391, 1991 WL 790061 at *30-32 (June 1991). Infringing articles may enter upon the payment
ofa bond during the sixty-day Presidential Review Period. 19 U.S.C. § 1337G)(3). The bond is
to be set at a level sufficient to “offset any competitive advantage resulting from the unfair
method of competition or unfair act enjoyed by persons benefiting from the importation.”
Certain Dynamic Random Access Memories, Components Thereof and Prods. Containing Same,
Inv. No. 337-TA-242, Comm’n Opinion, 1987 WL 450856 at 37 (Sept. 21, 1987).

B. A Limited Exclusion Order Is Warranted

Rovi requested that the Commission issue a LEO, with no certification provision, which
would bar the entry of all of the Accused Products found to infringe the Asserted Patents. (CBr.
at 121.). Specifically, Rovi requested that the Commission issue a LEO “directed to each named
Respondent, their subsidiaries, related companies, agents, affiliates, and suppliers that import the
Accused Products on behalf of Comcast, to exclude the entry into the United States of the
Accused Products.” (/d.). In other words, Rovi seeks an exclusion order that applies against not

only Comcast, but also non-parties “ARRIS and Technicolor—the importers of record acting for
Comcast.” (/d.).

In rebuttal, Comcast argued that the Commission should limit any issued LEO to conduct
that actually violates Section 337. (RRBr. at 110.). By this, Comcast apparently means that a
LEO should not include within its scope non-parties ARRIS or Technicolor or “products initially
imported prior to April 1, 2016, as they were all under license and any Rovi patent rights in them
have been exhausted.” (/d. at 110-11.). Comcast also contended that a LEO should identify the
specific actions found to violate Section 337, such as “re-importation of refurbished devices” or

i

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“sale after importation through Comcast charging a fee for equipment that was not returned when
a customer cancelled service,” as appropriate. (/d.). Similarly, in the event of a violation based
on infringement of the ’585 patent, Comcast requested that a LEO specify “which, if any,
specific accused features ... are found to be the infringing ‘options’ required by the claims, so as
to inform redesign efforts and assist CBP in appropriate enforcement of any remedial relief.”
(Id.). Comcast also seeks a carve-out that would exclude from the LEO “STBs imported for use
with either of Comcast’s proposed redesigns.” (/d. at 112.). Finally, Comcast advocated for “a
standard service and repair exception so that Respondents may continue their service and repair
of any products sold before the LEO’s date of issuance” and “a standard certification provision
for imported products not subject to exclusion,” such as “STBs that are to be used with a system
implementing the undisputedly non-infringing redesigns.” (Id. at 112-13.).

This Initial Determination recommends the issuance of a LEO directed to Comcast’s
products that broadly excludes any articles that infringe one or more claims of the Asserted
Patents. A recitation in the LEO of exactly what does or does not infringe is not warranted given .
that this Initial Determination contains an ample accounting of those details. Instead, it is
appropriate for Comcast, the party found to infringe an asserted patent, to navigate the
vicissitudes of differentiating infringing and non-infringing STBs by using the recommended
certification provision discussed below. Moreover, including non-party ARRIS or Technicolor
within the scope of the LEO is contrary to settled law. Kyocera Wireless Corp. v. Int’l Trade
Comm'n, 545 F.3d 1340, 1356 (Fed. Cir. 2008) (“{I]f a complainant wishes to obtain an
exclusion order operative against articles of non-respondents, it must seek a GEO by satisfying
the heightened evidentiary burdens of §§ 1337(d)(2)(A) and (B).”). Staff agreed that the LEO
should not name non-party ARRIS or Technicolor. (SBr. at 18-19 (“Moreover, Rovi has not

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cited to any precedent in which the Commission has previously named non-respondent parties
such as Arris and Technicolor in an LEO, as requested here.”’).).

A LEO certification provision is warranted because the infringing nature of a STB is not
immediately apparent upon inspection by U.S. Customs and Board Protection (“CBP”). Certain
Digital Televisions & Certain Prods. Containing Same & Methods of Using Same, Inv. No. 337-
TA-617, Comm’n Opinion at 11 (Apr. 23, 2009) (“Certification provisions are necessary to
minimize the possibility that non-infringing products will be excluded from entry into the United
States when CBP is unable to determine readily by inspection whether an imported product
violates a particular exclusion order.”). This is because the infringing STBs imported at
Comcast’s behest infringe only in the context of the X1 System, in which software on STBs
- interoperates with Comcast’s server-side software. Notably, both of Comcast’s proposed

redesigns, each of which has been found not to infringe, entail modification of server-side
software, not STB software. Consequently, with only a STB to examine, and most likely without
the benefit of access to software running on Comcast’s servers, CBP would have a difficult time
| assessing whether a particular STB would infringe when used by a Comcast customer. To assist
| CBP in making this assessment, the LEO should contain a provision allowing Comcast to certify
that certain STBs are not infringing and thus not subject to exclusion.

This Initial Determination also recommends that a LEO include a limited service and
repair exception. This type of exception is commonplace in LEOs. See, e.g., Certain Mobile
Devices, Associated Software, and Components Thereof, Notice of Commission Final
Determination at 3 (May 18, 2012) (provided an exception for “service, repair or replacement

articles for use in servicing, repairing or replacing mobile devices under warranty or insurance

contract”); Certain Combination Motor and Transmission Sys. and Devices Used Therein, and

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Prods. Containing the Same, Inv. No. 337-TA-561, Final Initial and Recommended
Determinations at 193 (Feb. 13, 2007) (USITC Pub. No. 4130 (any limited exclusion order
should not reach third-party customers who had already purchased the accused hybrid vehicles
and exempted components for use in repair and replacement of previously purchased vehicles).
Comcast provided unrebutted evidence that Comcast STBs are subject to contractual warranty
and repair obligations. (Tr. (Kevin Buniewski)'"! at 935:3-6.). To protect consumers who use
_ the Accused Products under existing service and warranty contracts against unnecessary
disruption caused by a LEO, Comcast should be permitted to continue the service and repair of
any products sold before the LEO’s date of issuance. Staff agreed. (SBr. at 19.).

C. A Cease and Desist Order Is Warranted

Rovi also requested that the Commission issue a permanent CDO prohibiting Comcast
from, inter alia, importing, selling for importation, marketing, advertising, offering for sale,
offering for lease, selling, leasing, distributing, licensing, using, or otherwise transferring
infringing products within the United States. (CBr. at 121-22:). According to Rovi, Comcast has
a “significant inventory of infringing products that it could use to circumvent an exclusion
order.” (/d.).

Comcast rejected the need fora CDO. (RRBr. at 114-15.). Comcast focused on Rovi’s
purported lack of evidence that Comcast maintained “commercially significant” quantities of
Accused Products in the U.S. (/d.). Specifically, Comcast asserted that, in his calculation of

“commercially significant” quantities, Rovi’s expert, Dr. Putnam, included “millions of STBs ...

‘ll When he testified during the Hearing on October 19, 2018, Mr. Kevin Buniewski was the Strategic
Account Director at Contec Holdings. (CPSt. at 6.). Rovi identified him as a fact witness to testify
generally as to the relationship between Comcast and its set-top box repair vendor Contec, including the
re-importation of Accused Products into the United States. (/d.).

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that are either (i) located in customers’ homes, or (ii) located in warehouses that are controlled
by ARRIS or Technicolor ....” (/d.). While Comcast critiqued Rovi’s evidence in support ofa
CDO, it appears that Comcast did not offer rebuttal evidence of its own.

This Initial Determination recommends a CDO. As shown below in Figure 88, Dr.
Putnam testified that, as of May 2018, the inventory of STB Accused Products dedicated to
Comcast (i.e., warehoused by Comcast and its STB suppliers) totaled more than 3.5 million
units, including 1.58 million STBs at Comcast’s warehouses alone. (Tr. (Putnam) at 1272:3-
1273:1; CDX-0016C.0072-73; JX-0124C (Shank Dep. Tr.) at 48:15-49:21; CX-0873C (Comcast
On Hand STBs); CX-0939C (Inventory Held By. ARRIS); CX-0570C (Inventory Held By
Technicolor).). Dr. Putnam estimated the value of this inventory as exceeding $319 million, with
$143 million worth of inventory housed at Comcast’s facilities alone.'!? (Tr. (Putnam) at
1271:16-1275:3; CDX-0016C.0072.). Contrary to Comcast’s assertions, these figures appear to
exclude STB ‘Accused Products found in consumer homes, in service trucks, and at repair
vendors. (CBr. at 122 (citing Tr. (Putnam) at 1272:3-1273:1; CDX-0016C.0072-73; JX-0124C
(Shank Dep. Tr.) at 48:15-49:21; CX-0873C (Comcast On Hand STBs); CX-0939C (Inventory
Held By ARRIS); CX-0570C (Inventory Held By Technicolor)).). Thus, Rovi has satisfied its
burden of proof that Comcast possesses a “commercially significant” inventory of STB Accused

Products that Comcast could use to circumvent the LEO. Indeed, Dr. Putnam estimates that

1 —=

'l2 It is potentially problematic that neither Rovi nor Dr. Putnam provided a breakdown of these figures
by type of STB. This Initial Determination finds that Comcast has violated Section 337 with respect to
only one of three (3) Asserted Patents (the ’011 patent), which could limit the scope of infringing STBs
subject to a CDO and thereby call into question Dr. Putnam’s STB inventory numbers. However, it
appears that Accused 011 Products—XG1, XG2, Xi5, and XiD STBs—span all the STBs accused of
infringement in this Investigation. Thus, Rovi has dodged the above-mentioned problem because Dr.
Putnam’s inventory numbers offer a viable estimate of the number of infringing STBs warehoused by or
for Comcast in the U.S.

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Comcast could circumvent the LEO for approximately two months. (CDX-0016C.0066.).
Finally, this Initial Determination recommends that the CDO contain a limited service
and repair exception. Comcast appears to have requested this exception by asserting that "Any
Remedial Relief Should Include Certification Provisions and Warranty and Replacement Part
Provisions." (RRBr. at 112.). This CDO exception is warranted for the same reasons articulated
above for the recommended issuance of a LEO. A limited service and repair exception would
protect Comcast consumers who use Comcast' s Accused Products under existing service and
warranty contracts.
Figure 88: Rovi's Depiction of Accused Products Warehoused in the U.S.
How Does Comcast Store the Accused Products?
Contains Confidential Bu siness Inform ation Subject to Protective Order
Page 317 of 325
As of May 2018, Comcast
maintained an Inventory of about
1.58 ml/I/on Accused Xl set-top
boxes In Its Hub and Spoke
warehouses
SOU RC E: CX- 0873C; CX- 0939 C
CDX-0016C. 69

Public Version
How Does Comcast Store the Accused Products?
• 	Set-top Boxes are also kept in supplier
warehouses
Hub warehouses
Supplier warehouses
As of March 2018, ARRIS and
Technicolor maintained an
Inventory of about 1.93 mllllon
Accused Xl set-top boxes
~-
'
SO URC E: CX- 0 87 3C; CX -0939C; JX- 0116 C at 32 :12 - 34 : 17
CDX•0016C.71
(CDX-16C.0069, 71 (introduced during the testimony of Dr . Putnam).).
D. 	A Bond During the Presidential Review Period Is Not Warranted
· Rovi requested a recommendation that the Commission impose a bond during the
Presidential Review Period. According to Rovi, it "is harmed by Comcast's direct competition
in the syndication market, where Rovi and Comcast offer IPG software to regional cable
providers." (CBr. at 123 (citing Tr . (Putnam) at 1284:9-19 and Tr. (Armaly) at 149:22-150:25).).
Rovi also asserted that Comcast "injures Rovi by failing to pay for the use of Rovi's patents-
royalties that are paid by Comcast's competitors, including every other major Pay-TV provider."
(Id.). Based upon these arguments, Rovi proposed two (2) bond calculations purportedly driven
by market conditions: (1) the "imputed" price differential between a domestic industry product
and the imported infringing product; and (2) a reasonable royalty rate per subscriber. (Id. at 123-
24). Alternatively, Rovi has requested a 100% bond. (Id. at 125.).
Relying heavily upon the Commission's Opinion in Inv. No. 337-TA-1001, Comcast
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argued that no bond should issue in this Investigation. (RRBr. at 115 (citing Digital Video
Receivers, Inv. No. 337-TA-1001, Comm’n Op. at 47 (Nov. 21, 2017)).). Comcast argued that a
price differential method of calculating bond would be inappropriate because “no pricing
information exists by which a reliable price differential can be determined [.]” (/d. at 116.).
Likewise, Comcast asserted that “because Rovi licenses its patents on a portfolio basis, there is
no reasonable royalty rate for the Asserted Patents such that a bond value can be established.”
(Id.).

Comcast also recognized that Commission precedent permits a 100% bond where it is not
possible or practical to set bond calculations based on price differential or reasonable royalty
rates. (/d. at 118.). In essence, Comcast has asserted that Rovi’s evidentiary showing was not -
sufficiently compelling to warrant a bond at any rate. (/d.). This argument harkens back to the
‘Commission’s Opinion in the 1001 Investigation, where the Commission explained: “Here, no
bond should be set because Rovi failed to establish an appropriate rate. See RD at 15-16. Rovi

has failed to show that its proposed bond of a /unit reflects the reasonable royalty relevant to
the Asserted Patents. At a minimum, Rovi made no effort to show the role, if any, that the
Asserted Patents played in the price of the portfolio licenses it submitted as evidence.” Digital
Video Receivers, Inv. No. 337-TA-1001, Comm’n Op. at 47 (Nov. 21, 2017).

Rovi, as Complainant, bears the burden of establishing the need for a bond, including the
amount of bond. See, e.g., Certain Rubber Antidegradants, Components Thereof & Prods.
Containing Same, USITC Pub. No. 3975, Inv. No. 337-TA-533, Comm’n Opinion at 40 (April
2008); Certain Coenzyme Q10 Prods. and Methods of Making Same, Inv. No. 337-TA-790,

Initial and Recommended Determination (Sept. 27, 2012) (recommending Commission not

impose a bond because complainant failed in its burden to demonstrate the appropriate bond

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amount); Certain Mobile Telephones and Wireless Commc’n Devices Featuring Digital
Cameras, and Components Thereof, Inv. No. 337-TA-703, Recommended Determination (Jan.
24, 2011) (recommending no bond because complainant did not meet its burden in providing
evidence on the necessity of a bond); Certain Liquid Crystal Display Devices and Prods.
Containing the Same, Inv. No. 337-TA-631, Comm’n Opinion at 27-28 (July 14, 2009) (setting
Zero bond because complainant “simply claimed that it was impossible to conduct a price
differential analysis” and “should not benefit from a lack of any effort to identify” relevant
pricing information, particularly that which is in its possession).

The Commission frequently sets the bond based on the difference in sales prices between
the patented domestic product and the infringing product. See, e.g., Microsphere Adhesives, Inv.
Comm’n Opinion at 24 (J an. 1996). In other instances, when a direct comparison between a
patentee’s product and the accused product is not possible, the Commission has set the bond at a
reasonable royalty rate. | See, e.g., Certain Integrated Circuit Telecommunication Chips and

Prods. Containing Same, Including Dialing Apparatus, Inv. No. 337-TA-337, Comm. Opinion at
41-43 (Aug. 3, 1993). Commission precedent allows for a 100 percent bond when it is not
practical or possible to set the bond based on price differential. Certain Voltage Regulators,
Components Thereof and Prods. Containing Same, Inv. No. 337-TA-564, Comm’n Opinion at
79 (Public Version Oct. 19, 2007). The purpose of the bond is to protect the complainant from
any injury. 19 U.S.C. § 1337()(3); 19 C.F.R. §§ 210.42(a)(1)Gi), 210.50(a)(3).

Here, as in the 1001 Investigation, Rovi has not satisfied its burden of establishing a need
for a bond. As Comcast noted, Rovi previously took the position that there is no reliable pricing
information by which a bond rate may be set. (See Rovi Post-Hearing Brief, Inv. No. 337-TA-

1001, Doc ID No. 600479, at 376 (Jan. 9, 2017) (“[B]ecause Rovi does not manufacture or sell

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STBs, calculating a price differential between the Accused Products and the domestic industry
products is not feasible.”’); Tr. (Schoettelkotte) at 2035:22-2036:4.). To create the appearance of
such “pricing information” in this investigation, Dr. Putnam attempted to “impute” a retail
price''? to Comcast’s STBs using a price-to-cost ratio derived from one of Rovi’s domestic
industry products, the TiVo Bolt with Experience 4.0 STB sold by Rovi licensee TSI. (CBr. at
123-24.). Rovi did so without citing to precedent in which an ALJ or the Commission similarly
applied “imputed” prices to determine a bond. (/d.). Moreover, according to Comcast, Rovi
erred in relying on the pricing of the TiVo Bolt with Experience 4.0 STB for prospective bond
relief because the TiVo Bolt with Experience 4.0 STB is no longer available for sale in the
marketplace. (RRBr. at 116.). For these reasons, Rovi has not satisfied its burden of proof that
its “imputed” price theory justifies a bond.

Rovi’s reasonably royalty argument fares no better. In the 1001 Investigation, the

J

Commission rejected Rovi’s theory because “Rovi made no effort to show the role, if any, that.
the asserted patents played in the price of the portfolio licenses it submitted as evidence.”
(Digital Video Receivers, Inv. No. 337-TA-1001, Comm’n Op. at 47 (Nov. 21, 2017).). As Rovi
acknowledged, in that Investigation, “the ALJ and the Commission found Rovi’s reliance on a

variety of portfolio license rates to be inadequate because these rates were not tied to the then-

asserted patents, and because some licenses included both patents and software.” (CBr. at 124

\13 Dr. Putnam estimated the imputed price by multiplying the price-to-cost ratio of the domestic industry
product, TiVo Bolt with Experience 4.0 STB, sold by TSI” ]—by the cost of Comcast’s STBs. (Tr.
(Putnam) at 1279:2-20; CDX-0016C.0076.). Dr. Putnam then compared those estimates to the sales price
of the TiVo Bolt with Experience 4.0, concluding that the price differential was approximately

per STB (depending on whether he used Comcast or ARRIS data). (/d.; CDX-0016C.0076-78;
CX-0915C (Units Shipped and Net Sales Comcast Total); CX-0921C (Shipment Report by Product); CX-
0939C (Inventory Month Ending for J an-Mar 2018 for Accused Products).).

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n.41 (citing Digital Video Receivers, Comm’n Op. at 46-47).).

Rovi attempted to revive its reasonable royalty arguments in this Investigation by arguing
now that the 4 : : — | license relied upon by Dr. Putnam covers only patents, and Dr. Putnam
specifically explained why using the portfolio rate as the bond is appropriate even for a small
subset of patents.” (/d. (citing Tr. (Putnam) at 1281:19-1283:24).).''* However, in light of the
Commission’s admonition in the 1001 Investigation against relying upon portfolio licenses as
evidence of reasonable royalty rates for individual patents, Rovi’s new approach is unavailing.

Once again, Rovi attempted to set a reasonable royalty based uponn rates charged for an
entire portfolio of patents and has done nothing to parse out what a reasonably royalty rate would
look like for only the Asserted Patents at issue in this Investigation. Indeed, Dr. Putnam’s
explanation “there is no fair market value estimate of the three asserted patents individually” is
tantamount to an admission that Rovi cannot comply with the Commission’s guidance on this
issue. (Tr. (Putnam) at 1282:8-11.). This testimony also stands alone on a shaky ground. It
lacks any corroborating evidence for the counterintuitive claim the portfolio licensing of the
Asserted Patents necessarily stripped those patents of their individual value. Thus, Rovi has not
satisfied its burden of proof that its reasonable royalty theory justifies a bond.

Based upon the reasoning and considerations discussed above, this Initial Determination

recommends that a bond should not issue during the Presidential Review Period.

XIII. WAIVER OR WITHDRAWAL OF RESPONDENTS’ DEFENSES"!5

Comcast did not raise in its Pre-Hearing Brief or offer any evidence during the Hearing to

\

‘4 Pursuant to that exemplary license,, oe for the use of
Rovi’s entire patent portfolio. (Tr. (Putnam) at 1281:19-1282:1.). — a

'\5 On July 27, 2018, Rovi filed a MSD that Comcast failed to present any contentions, facts, or evidence

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support the following Affirmative Defenses: (1) Fourteenth Affirmative Defense that Rovi’s
Complaint is improperly directed at systems and methods that are subject to express or implied
licenses (Resp. at Jf 77-84); (2) Fifteenth Affirmative Defense of patent exhaustion (id. at [¥ 85-
86); and (3) Seventeenth Affirmative Defense of prosecution history estoppel, prosecution
history disclaimer, and prosecution laches (id. at § 88).''°

Consequently, it is a finding of this decision that Respondent has withdrawn, waived
and/or abandoned its Fourteenth, Fifteenth, and Seventeenth Affirmative Defenses consistent
with Ground Rules 7.2 and 10.1. Kinik Co. v. Int’l Trade Comm ’‘n, 362 F.3d 1359, 1367 (Fed.
Cir. 2004).
XIV. FINDINGS OF FACT AND CONCLUSIONS OF LAW: THIS INITIAL

DETERMINATION FINDS A SECTION 337 VIOLATION BASED UPON
INFRINGEMENT OF U.S. PATENT NO. 7,779,011

1. Jurisdiction and standing requirements are satisfied;

2. Claims | and 9 of U.S. Patent No. 7,779,011 are valid and satisfied by the
Accused 011 Products;

3. Although claims 1, 8, 11, 15, and 22 of US. Patent No. 7,827,585 are found to be

during fact discovery supporting the following defenses Comcast asserted in its Response: (i) subject
matter outside the scope of the notice of the investigation (First Affirmative Defense); (ii) prosecution
history estoppel, prosecution history disclaimer, and prosecution laches (Seventeenth Affirmative
Defenses); (iii) license (Fourteenth Affirmative Defense); and (iv) patent exhaustion (Fifteenth
Affirmative Defense). (Motion Docket No. 1103-024 (July 27, 2018) (citation omitted).). On August 8,
2018, Comcast filed an opposition to Rovi’s MSD. (Doc. ID No. 652514 (Aug. 8, 2018).). This ID
addresses and obviates Rovi’s MSD as to Comcast’s Fourteenth Affirmative Defense (iii), Fifteenth
Affirmative Defense (iv), and Seventeenth Affirmative Defense (ii). (See Section XIII.). With regard to
Comcast’s First Affirmative Defense, Comcast ineffectively argued that because the Notice of
Investigation defined the scope of this Investigation as comprising certain “digital video receivers and
related hardware and software components,” any components of Comcast’s XI System outside of the X1
STBs are not within the scope of this Investigation. (Opp’n at 4; RRBr. at 4.). Comcast’s overly narrow
interpretation is unavailing because it improperly excludes components of Comcast’s X1 System that are
critical to the use and function of the accused STBs. (See, e.g., Tr. (Bovik) at 595:25-596:14; Tr. (Kelly)
at 1763:19-1764:9.). Thus, Comcast’s interpretation has been rejected. (See, e.g., Section VIIIL.A.4.).

\16 See n.6, supra, regarding Comcast’s withdrawal of its Sixteenth Affirmative Defense of unclean hands.

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satisfied by the Accused 585 Products, the claims are invalid;

4. Although claims 1, 8, and 14 of U.S. Patent No. 9,369,741 are valid, the Accused
741 Products do not satisfy claims 1, 8, and 14;

5. Rovi’s and TSI’s domestic R&D activities with respect to the DI Products are
found to satisfy the economic prong of the domestic industry requirement under
19 U.S.C. § 337(a)(3)(A), (B), and (C);

6. At least one of Rovi’s DI Products practices one or more claims of U.S. Patent
Nos. 7,779,011 and 7,827,585;

7. None of Rovi’s DI Products practices the claims of U.S. Patent No. 9,369,741;
and

8. Comcast has violated Section 337 of the Tariff Act of 1930, as amended, by
importing into the United States, selling for importation, or selling within the
United States after importation certain digital video receivers and related
hardware and software components by infringing claims | and 9 of U.S. Patent.
No. 7,779,011.

The lack of discussion of any matter raised by the Parties, or any portion of the record,
does not indicate that it has not been considered. Rather, any such matter(s) or portion(s) of the
record has/have been determined to be irrelevant, immaterial or meritless. Arguments made on
briefs, which were otherwise unsupported by record evidence or legal precedent, have been
accorded no weight. |

XV. CONCLUSION

This Initial Determination on Violation of Section 337 of the Tariff Act of 1930 is
certified to the Commission. All orders and documents, filed with the Secretary, including the
‘exhibit lists enumerating the exhibits received into evidence in this Investigation, that are part of -
the record, as defined in 19 CER. § 210.38(a), are not certified, since they are already in the
Commission’s possession in accordance with Commission Rules. See 19 C.F.R. § 210.38(a). In
accordance with 19 C.F.R. § 210.39(c), all material found to be confidential under 19 C.F.R.

§ 210.5 is to be given in camera treatment.

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‘After the Parties have provided proposed redactions of confidential business information
(“CBI”) that have been evaluated and accepted, the Secretary shall serve a public version of this
ID upon all parties of record. The Secretary shall serve a confidential version upon counsel who
are signatories to the Protective Order (Order No. 1) issued in this Investigation.

Pursuant to 19 C.F.R. § 210.42(h), this Initial Determination shall become the .
determination of the Commission unless a party files a petition for review pursuant to 19 C.F.R.
§ 210.43(a) or the Commission, pursuant to 19 C.F.R. § 210.44, orders on its own motion a
review of the Initial Determination or certain issues therein.

Within fourteen (14) days of the date of this document, the Parties shall submit to the
Office of Administrative Law Judges a joint statement regarding whether or not they seek to
have any portion of this document deleted from the public version. The Parties’ submission shall
be made by hard copy and must include a copy of this ID with yellow highlighting; with or
without red brackets, indicating any portion asserted to contain CBI to be deleted from the public
version. The Parties’ submission shall also include an index identifying the pages of this
document where proposed redactions are located. The Parties’ submission concerning the public

version of this document need not be filed with the Commission Secretary.

MaryJoan on amara
Administrative Law Judge

‘SO ORDERED.

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APPENDIX A .

Accused Products Comcast’s XG1, XG2, XiD, and Xi5 Set- .
. oe | Top Boxes

Model numbers:!!7 ARRIS XG1v1
MxX011ANM, ARRIS XGl1v3 AX013ANM,
ARRIS XGl1vl MX011 ANC, ARRIS XGlv3
AX013ANC, ARRIS XG1v4-A AX014ANM,
ARRIS XGiv4-A AX014ANC, Pace XGlv1
PCX001ANMD, Pace XGlv1
PCX001ANCD, Pace XGlv3 PX013ANM,

| Pace XG1v3 PXOI3ANC, Pace XG2v2-P
PX022ANC, Pace XG2v2-P PX022ANM,
Pace XiD-P PXD01ANI, Pace Xi5-P
PXO51AEI, Cisco XiD-C CXDO1ANI,
Samsung XG2v2-S SX022ANC, and
Samsung XG2v2-S SX022ANM

17 Rovi identified these model numbers in its Complaint. (Compl. af 52.).

Public Version

APPENDIX B

DI Products _ . i-Guide, Passport Guide, Next-Gen Platform,
co - | AS&R, and TiVo Bolt with Experience 4.0

ii

CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED Inv. No. 337-TA-1103
HARDWARE AND SOFTWARE COMPONENTS

PUBLIC CERTIFICATE OF SERVICE

I, Lisa R. Barton, hereby certify that the attached INITIAL DETERMINATION has
been served by hand upon the Commission Investigative Attorney, John Shin, Esq. and the
following parties as indicated, on June 27, 2019.

Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436

On Behalf of Complainants Rovi Corporation, Rovi Guides,
Inc., and Rovi Technologies Corporation, Veveo, Inc.:

Douglas A. Cawley, Esq. L] Via Hand Delivery
MCKOOL SMITH P.C. MA Via Express Delivery
Crescent Court, Suite 1500 C Via First Class Mail
Dallas, TX 75201 .

C) Other:

On Behalf of Respondents Comcast Corporation, Comcast

Cable Communications, LLC, Comcast Cable
Communications Management, LLC, Comcast Business
Communications, LLC, Comcast Holdings Corporation, and
Comcast Shared Services, LLC:

Bert C. Reiser, Esq. ae Hand Delivery
LATHAM & WATKINS, LLP ‘ Via Express Delivery
555 Eleventh Street, NW, Suite 100 © Via First Class Mail

Washington, DC 20004 ; CZ) Other:

Public Version
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington,D.C.
In the Matter of
CERTAIN DIGITAL VIDEO RECEIVERS
AND RELATED HARDWARE AND
SOFTWARE COMPONENTS
ORDER NO.47:
Inv. No.337-TA-1103
INITIAL DETERMINATION GRANTING COMPLAINANT
ROVI'S MOTION FOR SUMMARY DETERMINATION OF
SALE AFTER IMPORTATION[MOTION DOCKET NO.
1103-0311; DENYING COMCAST'S MOTION FOR
SUMMARY DETERMINATION OF NO SALE AFTER
IMPORTATION[MOTION DOCKET NO.1103-0201;
GRANTING ROVI'S MOTION FOR SUMMARY
DETERMINATION ON IMPORTATION[MOTION
DOCKET NO. 1103-0231
(June 3, 2019)
I. INTRODUCTION AND BACKGROUND
On September 6,2018,I held a hearing("MSD Hearing")on three(3)summary
determination motions("MSD"),identified below, in which the parties had the opportunity to
fully litigate their issues separately, and before, the evidentiary hearing ("Hearing"). (See
MSD Hearing Transcript("MSD Hr. Tr."), Doc. ID Nos. 655117(confidential) and 655116
(public)(Sept. 6,2018).). The MSD Hearing was held at the request of Respondents Comcast
Corporation, Comcast Cable Communications, LLC,Comcast Cable Communications
Management, LLC,Comcast Business Communications, LLC (collectively,"Comcast")at
least in part because the summary determination motions involve unsettled issues oflaw. One
'This Order also grants Motion Dkt. No. 1103-021, Rovi's Motion for Leave to Exceed Page Limit for Attachments
to Rovi's Motion for Summary Determination Regarding Importation(Motion Dkt. No. 1103-021 (July 27,2018);
and Motion Dkt. No. 1103-032, Rovi's Unopposed Motion for Leave to File Excerpted Replacement Exhibits in
Support of Rovi's Motion for Summary Determination Regarding Importation. (Aug. 29,2018).
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such issue, i.e., whether Comcast is an "importer" within the meaning of Section 337, is
pending in the Federal Circuit. (See MSD Hr. Tr. at 10, 11.). The Commission has not yet
addressed the second issue on an extensive discovery record, i.e., whether a charge Comcast
zequires its subscribers to pay if they do not return their set-top boxes("STB")constitutes a
"sale" within the meaning of Section 337.
On September 10, 2018, the Parties filed "A Stipulation Regarding Unreturned Set-Top
Boxes"("Stipulation")that sets forth facts that Comcast and Rovi accept as true. (Doc. ID No.
655209(Sept. 10, 2018); Stipulation at 1-3.). The Stipulation includes Comcast's
acknowledgement that it has imported at least one ofeach ofthe set-top box models at issue in
this Investigation, within certain pertinent dates, and that at least one subscriber paid a charge
(that varied by model)for an unreturned set-top box for each ofthe models at issue in this
Investigation. Id. at 1-3.
While I advised the Parties and Staff orally during a pre-evidentiary hearing conference
ofthe decisions I had reached with respect to each ofthe summary determination motions,this
written Order explains the rationale for each decision.
The three(3)summary determination motions are:
(1) Comcast Respondents' Motion for Summary Determination of No Sale After
Importation with Respect to All Accused Products("No Sale MSD")and the
accompanying Memorandum in Support(also "No Sale MSD"), with Statement
of Undisputed Material Facts("SMF"),filed on July 27, 2018. .(Motion Docket
No. 1103-020.);2
2 On August 6, 2018, Comcast filed Comcast Respondents' Notice of Withdrawal of Sections ofIts
Motion for Summary Determination of No Sale after Importation with Respect to All Accused Products,
in which it withdrew Sections IV(A)and IV(C)of its Motion for Summary Determination of No Sale
after Importation. (Motion Dkt. No. 1130-020(Aug.6, 2019.).
On August 13, 2018,Complainants Rovi Corporation, Rovi Guides, Inc., Rovi Technologies Corporation,
and Veveo,Inc.(collectively,"Rovi" and with Comcast,"the Parties")filed Rovi's Opposition to
Comcast's Motion for Summary Determination of No Sale after Importation with Respect to All Accused
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(2) Rovi's Motion for Summary Determination Regarding Importation ("Importation
MSD")with an accompanying Memorandum of Law in Support(also
"Importation MSD"),and Statement of Undisputed Material Facts("SMF"),filed
on July 27, 2019. (Motion Docket No. 1103-023);3 and
(3) Rovi's Motion for Summary Determination of Sale after Importation ("Sale
MSD"), with accompanying Memorandum of Law in Support(also "Sale MSD"),
and with a Statement of Undisputed Material Facts("SMF"), a cross-motion Rovi
filed on August 17, 2019. (Motion Docket No. 1103-031).4
The first dispute discussed and decided in this Order,that is, whether Comcast is an
"importer" within the meaning of Section 337, was answered in the affirmative in a companion
case in which Rovi and Comcast were the parties, and the accused products included many ofthe
Products("No Sale Opposition") and an accompanying Memorandum of Law in Support("No Sale
Opposition") with a Response to Comcast's SMF. (Doc. ID No.652847(Aug. 13, 2018).
On August 8, 2018, Commission Investigative Staff("Staff")filed Commission Investigative Staff's
Response("Staff Response")to Comcast Respondents' Motion for Summary Determination of No Sale
after Importation with Respect to all Accused Products("Staff No Sale Resp.") with Staff's Response to
Comcast's("SUMF"). (Doc. ID No. 652481(Aug. 8,2018). It should be noted that Staff played a limited
role in this Investigation. Staff was involved in briefing and arguing the issues addressed in this Order
and in briefing the issue ofjurisdiction. Because of Staff's limited participation, Staff is not included in
the definition ofthe "the Parties."
On August 8, 2018,Stafffiled Commission Investigative Staff's Response to Rovi's Motion for
Summary Determination Regarding Importation and Rovi's Motion for Leave to Exceed Page Limits for
Attachments to Rovi's Motion for Summary Determination Regarding Importation, with accompanying
Memorandum of Law ("Staff's Response"), and Staff's Response to Rovi's SMF. (Doc.ID No.652484
(Aug. 8, 2018).
On August 8, 2018, Comcast filed Respondents' Opposition to Complainants' Motion for Summary
Determination Regarding Importation and Request for Oral Argument on Same ("Importation _
Opposition"), with accompanying Memorandum of Law,and Comcast's Response to Rovi's SMF. (Doc.
ID No.652512(Aug. 8, 2018).
4 On August 21, 2018,Comcast filed Respondents' Opposition to Complainants' Motion for Summary
Determination of Sale after Importation with Memorandum of Law in Support("Sale Opposition") with
Comcast's Response to Rovi's SUMF. (Doc. ID No.653553(Aug. 21,2018).
On August 21, 2018, Stafffiled Commission Investigative Staff's Response to Rovi's Motion for
Summary Determination of Sale after Importation ("Staff's Response"), with a Memorandum ofLaw,and
Staff's Response to Rovi's SUMF. (Doc. ID No. 053538(Aug. 21, 2018.).
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same accused STBs as in this Investigation.5 See Certain Digital Video Receivers and Hardware
and Software Components Thereof Inv. No. 337-TA-1001 ("1001 Investigation"), Initial
Determination("ID")at 13-14(May 26, 2017)("1001 ID")(finding that Comcast is an importer
for purposes of Section 337.). .
The Commission affirmed the 1001 Investigation ID by finding that Comcast is an
importer within the meaning of Section 337 because Comcast is "sufficiently involved with the
design, manufacture, and importation ofthe accused products" even though Comcast is not
technically the "importer of record." See Certain Digital Video Receivers and Hardware and
Software Components Thereof Inv. No. 337-TA-1001, Conun'n Op. at 10(Nov. 21,2017).
Although this Order adopts the finding ofthe 1001 Investigation and the Commission
affirmance that Comcast is an "importer" within the meaning of Section 337, the Commission
decision is pending before the Federal Circuit. See Comcast Corp., etal., v. ITC,2018-1450,
2018-1653(Fed. Cir. 2018). Oral argument on Comcast's appeal to the Federal Circuit was held
on March 6, 2019. The Federal Circuit's ruling will affect the finding of this Order.
The second dispute discussed and decided in this Order is whether Comcast "sells"
certain accused STBs after importation within the meaning of Section 337 by charging its
customers retail sales prices for unreturned set-top boxes. Comcast collects money above and
beyond the price that covers the cost ofthe equipment that Comcast initially rents to its
subscribers,
In the 1001 Investigation, the Commission found Comcast to be an importer of at least the following
Accused Products that are also accused in this Investigation: XG1,XG2,XiD,and Xi5 STBs. In
addition to those identified STBs from the 1001 Investigation, the 1103 Investigation also includes
Commist's Xi6 STB and the XR11 and XR15 voice remote controls at least for purposes of Rovi's
Inwortation MSD.
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,in exchange for its customers' retention ofcertain accused STBs. This issue was
addressed but not decided in the 1001 ID or by the Commission in the 1001 Investigation. (See
No Sale MSD at 16; see also 1001 Investigation Conun'n Op. at 10("[t]he Commission also
takes no position on whether Comcast sells the accused products after importation").). The
evidentiary record on this dispute was developed more extensively through discovery in this
Investigation than in the 1001 Investigation. Thus,the 1001 Investigation ID on this point is
distinguishable, contrary to Comcast's argument.
In a different investigation, i.e., the 1010 Investigation, although Comcast was a party,
the disputed issue that was specifically addressed was:"whether the rental of products by
Comcast constitutes a sale after importation." See In the Matter ofCertain Semiconductor
Devices, Semiconductor Device Packages, & Prods. Containing Same("1010 Investigation"),
Order No.69(Feb. 27, 2017), not reviewed, Conun'n Notice(Mar. 27, 2017). In the 1010
Investigation, the finding was that renting the products at issue is not a sale after importation.
(See Sale MSD at 17, 18 (citing id. at 2, 5, 7).).
However, the finding in the 1010 Investigation was based almost solely on evidence from
the language ofthe Comcast Subscriber Agreements. The 1010 Investigation did not develop the
more extensive evidentiary record as can be found in this Investigation either.
Unlike in either the 1001 or the 1010 Investigations, the evidentiary record in this
Investigation includes information such as, inter alia:(1)the actions Comcast takes after
subscribers do not return their STBs;(2) the additional charges Comcast charges and collects
from its subscribers in lieu ofthe returned STBs;(3)how Comcast invoices its subscribers when
a STB is not returned;(4)how Comcast treats the tureturned STBs on its balance sheets; and(5)
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Comcast's actions if at some time later a subscriber asks to re-subscribe with Comcast after
having retained, and paid for, an unreturned STB.
As a result, both the 1001 and 1010 Investigations' findings are both limited and
distinguishable from the finding in this Investigation.
II. SUMMARY DETERMINATION ON IMPORTATION AND SALE AFTER
IMPORTATION
A. Summary Determination Legal Standard
Summary determination under Commission Rule 210.18 is analogous to summary
judgement under Federal Rule of Civil Procedure 56,and may be granted only where'the
evidence shows "that there is no genuine issue as to any material fact and that the moving party
is entitled to summary determination as a matter oflaw." See 19 C.F.R. § 210.18(b). "Any party
may move with any necessary supporting affidavits for a summary determination in [its] favor
upon all or any part of the issues to be determined in the investigation." 19 C.F.R. § 210.18(a);
see also Certain Digital Processors and Digital Processing Sys., Components Thereof and
Prods. Containing Same, Inv. No. 337-TA-559,2006 ITC LEXIS 522, at *6, Order No. 13(Sept.
6,2006)(collecting cases). The party moving for summary determination bears the initial
burden of establishing that there is an absence of a genuine issue of material fact and that it is
entitled to judgment as a matter oflaw. Celotex Corp. v. Catrett, 477 U.S. 317,323(1986).
If the movant satisfies its initial burden, the burden then shifts to the non-movant to
demonstrate specific facts showing that there is a genuine issue for trial. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 255(1986). When evaluating a motion for summary determination,
the evidence must be examined in a light most favorable to the non-moving party, and all
justifiable inferences are to be drawn in its favor. Anderson, 477 U.S. at 255(1986). The non-
moving party "must set forth specific facts showing there is a genuine issue offact." Certain
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Agricultural Tractors Under 50 Power Take-OffHorsepower,Inv. No. 337-TA-380, Order No.
40 at 3,(August 8, 1996)(citing Anderson,477 U.S. at 248). Summary determination should
therefore be granted when a hearing on the matter at issue would serve no useful purpose and the
movant is entitled to judgement as a matter of law. See Certain Recombinant Eyythropoietin,
Inv. No. 337-TA-281, U.S.I.T.C. Pub. No. 2186, Initial Determination at 70(Jan. 10, 1989).
B. Importation Legal Standard
Section 337 of the Tariff Act of 1930, as amended, declares as unlawful "Wile
importation into the United States, the sale for importation, or the sale within the United States
after importation by the owner,importer, or consignee" of articles that infringe valid intellectual
property rights. 19 U.S.C. §1337(a)(1)(b). The Commission "hasjurisdiction to act if there is
some nexus between a respondent's activities and the importation ofthe products accused of
infringement." Certain Cigarettes & Packaging Thereof Inv. No. 337-TA-643, Comm'n Op. at
8(Oct. 1, 2009)(citing Certain Digital Satellite System (DSS)Receivers and Components
Thereof Inv. No. 337-TA-392, USITC Pub. No. 3418, Notice of Comm'n. Decision to
Terminate the Investigation and to Vacate Portions of Initial Determination at 14(U.S.I.t.C.
April 2001)). A complainant "need only prove importation of a single accused product to satisfy
the importation requirement." Certain Purple Protective Gloves, Inv. No. 337-TA-500, Order
No. 17 at 5(Sept. 23, 2004). The importation requirement may be established through a
summary determination motion and irrespective ofany finding ofinfringement ofthe patents-at
issue. See Certain Wireless Commc'ns Equip., Articles Therein, & Prods. Containing Same,Inv.
No. 337-TA-577, Order No. 18 at 3(Feb. 22, 2007). The importation requirement can also be
met by a "sale within the United States after importation" where the "owner,importer, or
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consignee" sells the infringing product. Suprema, Inc. v. Intl Trade Comm 'n, 796 F.3d 1338
(Fed. Cir. 2015)(en hanc)("Suprema").
As is discussed in some detail below, I have found, based upon evidence and precedent,
that Comcast is an "importer" within the meaning of Section 337. (See Section II.D(1).).
Also, as is discussed in some detail below, I have found, based upon the evidence and
precedent, that Comcast sells certain STBs after importation within the meaning of Section 337
when it charges and collects retail sales prices from its customers, and, in exchange, those
customers retain possession ofthe paid-for STBs. (See Section III.B.).
C. Parties' Statements of Facts
1. Rovi's Statement of Facts
In its response to the Complaint, Comcast acknowledged that certain Accused Products
have been imported into the United States. Specifically, Comcast acknowledged that it imports
ARRIS,Technicolor, Samsung and UEI imports, all of whom are Comcast suppliers, and all of
whom import into the United States STBs or voice enabled remote controls that provide "video
services to certain customers." (See Comcast's response to Rovi's Complaint at 200-201,
204;see also CX-0560C(ARRIS Imports); CX-0899C (Technicolor Imports); CX-0929C
(Samsung Imports); CX-0870C(UEI Imports). The STBs are Comcast's XG1,XG2,XiD,Xi5
and XiT, together with the voice-enabled remote controls XR11 and XR15 (collectively,
"Accused Products").
In its Importation MSD,and during its presentation on September 6, 2018, Rovi noted,
with factual support, that ARRIS or companies that work at ARRIS' direction, is the importer of
record of millions of accused ARIS X1 STBs imported into the United States, on or after April 1,
2016. All these XI STBs were manufactured abroad,came into the United States through
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various ports ofentry, and all were made available to Comcast in the United States. (See
Importation MSD at 4, 5; SMF 3-5; Exh. 1C to MSD on Importation Dep. Tr.(Rouseau)at 77:2-
5, 78:7-12, 78:17-79:5, 85:7-12, 92:16-93:14); Exh. 2C(ARRIS0000003);see also, e.g. MSD
Hr. Tr. at 52:1-57:2; 37:1-44: 25; see also Stipulation at 1-3).).
Similarly, Technicolor, Samsung and UEI have the same type of relationship with
Comcast as ARR1S,i.e., they are the importers ofrecord ofeither STBs or voice enable remote
controls or they direct the companies that are the importers of record. However,the Technicolor
accused STBs were manufactured in China and imported into California either by Technicolor or
companies working for it. (See Importation MSD at 4; SMF 6-8; Exh. 3C,Dep. Tr.(Moseley)at
21:3-22:8, 37:20-38:16); Exh.4C to Moseley Dep. Tr., Exh. 5C(TECH-ITC1103-0006869);
Exh.6C Dep. Tr.(Zhang)at 18:13-22).). The Samsung STBs were manufactured in Indonesia
and imported into the U.S. by Samsung, or by other companies at Samsung's direction, through
multiple entry ports. (See SMF 9-11; Exh. 7C, Dep. Tr.(Westrick) at 27:5-9, 92:12-93:18); Exh.
8C at 1 SEA_ITC1103_SUBP0001120).). UEI,or companies working at its direction, imported
accused UEI X1 voice remotes that were manufactured in China, and imported into the United
States through ports of entry in Texas and California. (See SMF 12-14; Exh. 9C,Dep. Tr.
(Abitia) at 36:8-10, 41:20-43:3, 46:14-18, 50:12-20); Exh. 10C(UEI0000030); Exh. 11C
(UEI0000032); Exh. 13C (UEI0000007).).
Rovi drew upon and quoted from copies of Comcast's "Supply Agreements"for each of
the identified suppliers, above, which describe in detail the requirements and specifications by
which Comcast's suppliers must abide. (See MSD Hr. Tr. at 37:1-44.). Rovi argued that the
language in the Supply Agreements proves that Comcast has a different seller/buyer relationship
with its suppliers(identified above)than that ofan independent contractor with. (See
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Importation MSD at 6(citing SMF 18-21 and identifying each supply agreement exhibit
number).). Among the other facts or factors Rovi identified that Rovi argued prove Comcast is
in control and, in practice is an "importer" are:
(1) .6
(2) Comcast's suppliers
(3) Comcast's RFI's include hardware requirements for
(4) Comcast requires that the Accused Products be designed for Comcast's X1
system,
(5) Comcast requires that its supplier original equipment manufacturers("OEM")
load
, . The Comcast written code was described as
6 See Importation MSD at 7(citations omitted).
'See id. at 11 (citing SMF 32; Each. IC, Dep. Tr.(Rousseau)at 51:18-52:9, 53:15-54:16); Exh. 54C at 1
(ARRIS0015208); Exh. 55C at 35(COMC_1001ITC01322517,Section 12.2.8).).
'See Importation MSD at 5 (citing SMF 15; Exh. 14C, Dep. Tr.(Folk)at 29:18-30:4); Exh. 16C at 13-15
(ARRIS0012836);see also MSD at 11
9 See Importation MSD at 7(citing SMF 23-24; Exh. 6C, Dep. Tr. (Zhang) at 23:4-24:8, 31:21-32:6,
83:17-84:20, 86:3-88:13) Exh. 15C, Dep. Tr.(Stockton) at 20:7-24, 33:6-35:17); Ddi. 39C, Dep.
Tr.(Williamson)at 34:24-35:10, 37:16-38:14); Exh. 40C, Dep. Tr.(Parsons)at 20:11-25); Exh. 14C,
Dep. Tr.(Folk)at 145:16-149:1); Exh. 41C).).
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(6) When Comcast is satisfied with the :
,
(7) According to its supply agreements, Comcast also
12
(8) Comcast reserves the right to
(9)
13
Comcast suppliers cannot .
(10) •Comcast requires that the Accused Products must pass
15
'° See Importation MSD at 8,9(citing Exh. 46C, Dep. Tr.(D'Souza) at 14:12-21:14, 23:7-24:4, 27:25-
28:25, 31:14-32:4); Exh. 39C(Williamson Dep. 19:12-20:18 34:21-35:5 (Sept. 8,2016); Exh. 14C(Folk
Dep. 118:10-120:16); Exh.47C, Dep. Tr. (Robinson)at 10:11-11:21); Exh.6C,Dep. Tr.(Zhang)at 49:1-
51:15, 85:12-19Xother citations omitted).).
'I See Importation MSD at 9(citing Exh. 41C, Dep. Tr. (Allinson) at 65:25-66:5).).
12 See Importation MSD at 9(citing SMF 27; Exh. 50C, Dep. Tr.(Sallas) at 40:9-41:5, 48:7-51:17).).
"See, Importation MSD at 8(citing e.g., SMF 25; Exh. 18C at 5(COMC_1001ITC01183624, Sections
2.04 and 2.05); Exh. 44C at 1(ARRIS0003590)(identifying multiple Accused Products as "Comcast's
products"); see also Exh. 25C at 3-4(COMC_1103ITC00642158, Sections 2.04 and 2.05); Exh. 28C
(COM-SDNY-9278 00859556, Sections 2.04 and 2.05); Exh. 31C at 3-4(COMC 1001ITC01435261,
Sections 2.04 and 2.05).
14 See Importation MSD at 18.
15 See Importation MSD at 10(citing SMF 29; Exh. 18C at 32-34(COMC 1001ITC01183624, Section
9.01); Exh. 19C at 17(COMC 1001ITC01184245, Section 4.01); Exh. 25-a at 32
(COMC I 103ITC00642158, Section 9.01); Exh. 26C at 9-10(COMC 11031TC00642387, Section 4.01);
Exh. 28C(COM-SDNY-9278 00859556, Section 9.01); Exh. 30C at COMC_1103ITC00640109, Section
4.01); Exh. 31C at 24(COMC 1001ITC01435261, Section 9.01); Exh. 34C at 5-6
(COMC_11031TC00597399, Section 4.01); see also Exh. 51C, Dep. Tr.(Shank)at 120:17-121:9); Exh.
7C, Dep. Tr.(Westrick)at 52:9-53:9); Exh. 14C, Dep. Tr.(Folk)at 132:5-17); see also. Exh. 20C at 1-3
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(11) At all phases of production,
516
(12) With respect to shipment, Comcast requires
I -,
(13) Comcast dictates all
(14) Comcast specifies the
18
19
(15) For purposes ofensuring timely production in the event of shortages or
production problems and delivery, .LU
As Rovi argued, the identified requirements from the Supply Agreements,supra, not all
of which are replicated here, unequivocally show the dedee ofcontrol that Comcast exercises
over all aspects of manufacture and shipping, leaving its suppliers as little more than "shippers"
in name only who have virtually no discretion. Rovi argued that Comcast meets the definition of
(COM-SDNY-9278_00818072, Section 1(1) Notes); Exh. 21C at 1-3;(COMC_1103ITC00000381,
Section 1(i) Notes); Exh. 26C at 9(COMC_11031TC00642387, Section 4.01(a)).
16 See Importation MSD at 13;see also e.g., Exh. 14C, Dep. Tr.(Folk)at 74:10-75:5); Exh. 58C at 1-2, 7-
9(ARRIS0017557); Exh. 59C at 2, 10, 12(COM-SDNY- 9278_00993139); Exh.#(TECH-ITC1103-
0002955);see also SMF 34-35 (other citations omitted).).
17 See Importation MSD at 14(citing SMF 38; Exh. 18C at 8-9(COMC_1001ITC01183624, Section
4.01); Exh. 25C at 7(COMC_1103ITC00642158, Section 4.01); Exh. 28C(COM-SDNY-
9278_00859556, Section 4.01); Exh. 31C at 7(COMC_1001ITC01435261, Section 4.01).).
"See Importation MSD at 14(citing SMF 39; Exh. 18C at 4, G-1 (COMC_1001ITC01183624, Section
2.02(c)and Exhibit G (other citations omitted).).
19 See Importation MSD at 15, 16(citations omitted).).
2°See Importation MSD at 17(citing Exh. 19 at 5(COMC_10011TC01184245, Section 1.03(vii)); Exh.
26C at 3(COMC_1103ITC00642387, Section 1.12); Exh. 28C(COM-SDNY-9278_00859556,Section
5.04).
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an "importer." (Accord, Staff Resp. at 8; see also Hr. Tr. at 52:1-63:15.).
2. Comcast's Statement of Facts
Comcast contended that there are material disputes offact that preclude summary
determination. (Importation Opp'n at 1, 15).21 Comcast also contends that Rovi ignored
additional facts that Comcast produced and asked that Rovi's Importation MSD be denied in
order to permit the development ofa "fulsome record." (Importation Opp'n. at 1, 4, 15.).
However,a "fulsome record" was created as a result ofthe September 6,2018 MSD Hearing.
In a second argument, Comcast contends that Rovi's "facts," as identified above,"do not
connote Comcast's control ofthe importation ofthe Accused Products, but rather evidences the
relationship Comcast has with its suppliers that Comcast says involves standard business activity
with a specific intent by the parties that they maintain an independent, non-exclusive
relationship." (Id. at 8(citing Exh. I §§ 14.10, 14.13(Samsung Agmt.)Exh. J §§ 14.10, 14.13
(ARR1S Agmt.); Exh. K §§ 14.09, 14.12(Technicolor Agmt.); Exh. L §§ 14.10, 14.13(UEI
Agmt.).).
To that end, Comcast argued that it has provided additional facts, inter alia, not all of
which are replicated here, which Comcast says counter those facts that Rovi produced, and that
preclude summary determination as follows:
(1) Comcast contends that it does not
;(Importation Opp'n at 17, CSMF No. 55
(citations omitted);
(2) Comcast contends that its OEM Supply Agreements
21 Comcast filed its own Response to Rovi's Undisputed Statement of Material Facts("CSMF"). (See
Importation Opp'n at page 28, re-paginated as page 1. Comcast disputes or disputes Rovi's SMF as
follows: 2, 5, 8, 11, 14, 15, 18-29, 31-34, 36-39,43, and 44. Comcast offers its own SMF as Nos. 45-62.
(Importation Opp'n at repaginated 1-16.).
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(3) Comcast says that its
!3
(4) Comcast submits
(5) Comcast says the
25
;24
122
4	1111111111111111111111Pm
(6) OEM's are required to improve the Accused Products on their own initiative
(emphasis in original);26
(7) Comcast says its Supply Agreements acknowledge that an OEM	.
(8) Comcast says that OEMs ritita
While there are other facts that Comcast offers, they tend to be recitations from additional
provisions of Comcast's Supply Agreements with its OEMs that Comcast contends counter
Rovi's asserted facts. (See Importation Opp'n,SMF at re-paginated 1-16.).
22 Importation Opp'n at 16(citing Exh. I § 4.10(Samsung Agmt.); Exh. J § 14.10 (ARRIS Agmt.); Exh.
K § 14.09(Technicolor Agmt.); Exh. I, Exh. F § 2(d)(Samsung Agmt.).
23 Importation Opp'n at 15, 16, 18(citations omitted); see also CSMF No. 46,
24 Importation Opp'n at 17, 18, 23(citations omitted); see also CSMF at 47.
25 Importation Opp'n at 16-19(citations omitted); see also CSMF at Nos. 46-49.
26 Importation Opp'n at 18(citations omitted); see also CSMF No.49.
27 Importation Opp'n at 18 Exh. I § 2.07(Samsung Agmt.); Exh. J § 2.07(ARRIS), Exh. K § 2.07
(Technicolor Agmt.); Exh. L § 2.07(UEI Agmt.).
"Importation Opp'n at 23(citations omitted); see also CSMF No. 56.
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D. Legal Analysis and Discussion
1. Commission,Supreme Court and Federal Circuit Definitions of
"Importer" Apply
Rovi and Staff agree that there are no genuine, material facts in dispute and that Rovi is
entitled to summary determination that Comcast is an "importer." (Importation MSD at 1; Staff
Resp. at 5.). Comcast disagrees.
However, while there are facts that Comcast says undermine Rovi's contention that it is
importer, and thereby preclude summary determination, the facts and the opposition Comcast
offers are largely recitations from provisions of Comcast's Supply Agreements with its OEMs
that do not undermine, or even leave in dispute, Rovi's SMF. (Importation Opp'n at 15-18; SMF
at re-paginated 1-16.).
Instead of revealing the true independence ofthe relationships, the additional provisions
to which Comcast cites in the Supply Agreements with its suppliers are designed to show that
Comcast and its suppliers have certain options, which Comcast says supports its description that
it has an arms-length relationship with its suppliers.(Id.). Comcast appears to use the additional
provisions to which it cited to support its contention that it is not an importer and does not have
the degree ofcontrol or involvement in the manufacture and importation of the Accused Products
as Rovi contends.
Comcast has not successfully negated the degree ofcontrol Comcast exerts over its
suppliers in the design, manufacture, and specification requirements. (See Section II.C.1,
supra.). There is no reason to deviate from the Commission's determination and finding that
Comcast is an importer.
As undisputed facts suggest,
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. (Id., supra.). For the most part, Comcast's arguments appear to be based upon its
disagreement with Rovi's legal theories and Rovi's interpretation ofthe facts. (Importation
Opp'n at 1, 2,6, 7,9,SMF re-paginated pages 1-6). Neither Colincast's arguments, nor its
recitation of what it calls disputed facts, nor its interpretation ofthe undisputed fats, prevails
here.
The Commission has found that Comcast is an importer within the meaning of Section
337 in the companion 1001 Investigation based upon the same types ofcontrol and importation
activity that occurred in the 1001 Investigation that has continued to occur and is the subject of
this Investigation. Most ofthe accused STBs are involved and accused in this Investigation as
were involved and accused in the 1001 Investigation. The Supply Agreements are the same. See
Certain Digital Video Receivers and Hardware and Software Components Thereof, Inv. No.
337-TA- 1001 ("1001 Investigation"), Comm'n Op. at 10(Nov. 21, 2017)(the Commission
affirmed the AL's finding that Comcast is an importer because Comcast is "sufficiently
involved with the design, manufacture, and importation ofthe accused products" even though
Comcast is not technically the "importer ofrecord")affirming Certain Digital Video Receivers,
Inv. No. 337-TA-1001, Initial Determination at 8-12(May 26, 2017)("1001 ID")(finding that
Comcast is an importer for purposes of Section 337; accord Importation MSD at 1; Staff Resp. at
5.).
The Commission's finding in the 1001 Investigation that Comcast is an "importer"
applies here. In the 1001 Investigation, Comcast argued, as it has here, that it did "not meet the
importation requirement, because 'Section 337 forbids only three types ofconduct with respect
to 'articles that infringe:'(1)importation into the U.S.,(2)sale for importation, and(3)sale after
importation, and it does not engage in those activities," and because Comcast did "not exercise
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any control over the Accused Products' importation." Id. at 10, 12. Administrative Law Judge
("AU"or "Judge")Shaw rejected Comcast's arguments as I do here. Judge Shaw cited to
extensive evidence that Comcast was heavily involved (or to be exact "sufficiently involved")in
the design, manufacture, and importation ofthe Accused Products in the 1001 Investigation to be
considered an importer. Id. The Commission affirmed Judge Shaw's ID and his conclusions
that Comcast imports the Accused Products into the United States. See 1001 Investigation,
Comm'n Op. at 10. (See MSD Hr. Tr. at 11:1-13:14; 41:1-50:8; 52:1-55:25.).
One ofthe primary cases upon which Judge Shaw and the Commission relied to find
Comcast to. be an importer is Hooven & Allison Co. v. Evatt, 324 U.S. 652(1945X"Hooven")in
which the Supreme Court held that a party that causes goods to be brought into the United States
is an "importer." Id at 658. Rovi and Staff relied upon the same case here.
In Hooven, the Supreme Court defined an "importer" as a party who is the "efficient
cause of[the] importation," with no requirement that the party be the "importer ofrecord." See
Hooven at 324 U.S.-658-654(a U.S. rope maker with a contract to purchase hemp fibers from
overseas was "the efficient cause of[the] importation, the purpose and effect of which was [that
party's] acquisition ofthe merchandise," and was therefore deemed to be "the importer"). As
Rovi notes, the Court in Hooven rejected the argument that the rope maker was a mere
"purchaser ofthe merchandise[] after it had been imported into this country." (See Importation
MSD at 20(citing id at 659,664(emphasis added).)."Performance ofthe contract[s]," the Court
explained,"call[ed] for, and necessarily result[ed] in, importation of the merchandise from its
country of origin to the United States." Id. at 661. To the Supreme Court, that left"no doubt
that the [rope maker] not only cause[d] the importation but that the purpose and necessary
consequence of[the importation was]to supply [the rope maker] with the raw material for its
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manufacture of[rope] at its factory in Ohio." Id Because the rope maker was "the efficient
cause of[the] importation, the purpose and effect of which was [that party's] acquisition ofthe
merchandise," that party "was the importer." Hooven at 664.29
Similarly, the Federal Circuit has adopted the Hooven definition of"importer." (See
Importation MSD (citing Terry Haggerty Tire Co., Inc. v. United States, 899 F.2d 1199, 1201
(Fed. Cir. 1990)("Terry Haggerty")(finding party to be an "importer," where tires were shipped
from abroad by a separate company, pursuant to party's specific order, because the party was the
"inducing cause ofthe tires being brought to the United States")
Comcast described Rovi's reliance upon the ALJ's ID and the Commission's Opinion in
the 1001 Investigation as "clear error." (Importation Opp'n at 1-2, 8-9.). Comcast argued that
Judge Shaw's newly articulated "sufficiently involved" standard dramatically expanded what it
means to be an "importer" under Section 337 without having support for such an expansion.
(See Importation Opp'n at 7.). Comcast argued that "[U]nder Rovi's extreme interpretation [i.e.
in applying the same definition of"importer" as the Commission], it would be difficult for any ,
arms-length transaction in which a U.S. entity purchases products to escape the broad brush of
"importation" with which the 1001 Investigation paints."(Id. at 8.). Comcast contends now that
the new definition completely changes the ordinary meaning of;importer" which contracting
parties have relied upon commercially as a standard business practice. (Id.). Comcast also
contended that the definition of"importer that both Judge Shaw and the Commission adopted in
the 1001 Investigation should not be given precedential value because it departs from long-
standing Commission precedent. (Id. at 1, 2, 3, 8-9.).
29 The Supreme Court later overruled a different holding in Hooven. See Limbach v. Hooven et Allison
Co., 466 U.S. 353, 360-61 (1984). That did not undermine the fundamental holding applied here.
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Comcast's argument that Judge Shaw and the Commission had little precedent to support
their expanded meaning of"importer" is also not quite accurate. (Id. at 9.). There is
Commission precedent dating back almost 40 years that provides a framework and at times, a
similar result if not the same articulation of, the criteria for an "importer" under Section 337.
(See Importation MSD at 20, 21 (citing Certain Cigarettes & Packaging Thereof Inv. No. 337-
TA-643, Conun'n Op. at 8(U.S.I.T.C., Oct. 1_, 2009)(noting that the Commission has held that it
has jurisdiction to act "if there is some nexus between a respondent's activities and the
importation ofthe products accused ofinfringement"). To be "sufficiently involved in the
manufacture and importation" ofthe infringing product "meet[s] the importation requirement,
even if[a third-party] was the importer of record." Certain Digital SetTop Boxes and
Components Thereof Inv. No. 337-TA-712, Initial Determination, 2011 ITC LEXIS 1070, at *24
(U.S.I.T.C., May 20, 2011)(considering the purchaser ofthe products, the party that caused the
manufacture and importation, the place where and how the products were repaired, and the place
where the accused software was downloaded);see also MSD Hr. Tr. at 13; Interactive Program
Guide, Inv. No. 337-TA-845, Comrn'n Op. at 10(U.S.I.T.C., Dec. 11, 2013)(considering the
software at issue and whether it was imported, to whom the accused software functionality was
attributable, whether the accused software was simply copied onto the products, and whether the
software was modified by others); Certain Large Video Matric Display Systems and Components
Thereof Inv. No. 337-TA-75, Order No. 14, 1980 WL 140805, at *1-*2(U.S.I.T.C., June 30,
1980)(finding that the Milwaukee Brewers baseball club may be found responsible for
importing a custom scoreboard manufactured abroad even where the club did not take title to the
scoreboard until after importation into the United States); Certain Plastic-Apped Decorative
Emblems, Inv. No. 337-TA-121, Order No. 11, 1982 ITC LEXIS 26, at *3(deeming respondent
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"the importer" where he "caused the importation to occur" but was not the importer ofrecord)
(U.S.I.T.C., Oct. 1, 1982).
While Comcast rejects the Commission's affirmance of what Comcast calls Judge Shaw's
newly articulated,"sufficiently involved" test, here Comcast is the "efficient cause" ofthe
importation ofthe Accused STBs and video remotes at least within the meaning ofHooven,and
as Hooven explains it. The Commission's application ofthe term "importer" would apply to
Comcast whether it relied on Hooven alone or in conjunction with collateral estoppel principles.
Clearly, Comcast has an incontrovertible connection to and control over the manufacture, design,
and importation ofthe Accused Products, even if it does not place the accused products onto
ships.
Since April 1, 2016,the date a license agreement between the Parties expired(see Rovi's
Complaint at 5 fn.2,67 fn.13), Comcast has continued to control the conception, design,
specifications, testing, and the volume ofimports before they are imported. Comcast "forecasts"
its needs, and while clearly the suppliers have their own forecasts, Comcast receives the STBs or
remotes to meet its needs according to its purchase orders and its own forecasts. (Importation
MSD at 1, 3, 16-17(citations omitted).). This aspect of matching forecasts between supply and
purchase does not undermine the level ofcontrol Comcast has. (Id.). Comcast controls the
location ofimportation and the delivery and pick up ofthe Accused STBs and remotes after they
are imported into the United States. Comcast controls the sites to which the goods will be
shipped and provides packaging and labels. (Importation MSD at 1, 13, 15, 19, 22-23,25
(citations omitted);see also Section II.C.1.).
As Staff notes, that Comcast requires its suppliers to handle all importation
formalities, such as "all fees and documentation necessary to import the Products into the
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United States," and to deliver the Accused Products to specific "delivery sites" located in
the United States does not change the degree of control it exercises, or that it is the
"efficient cause" ofthe importation ofthe STBs and audio remotes. (See Staff Resp. at 8
(citing SMFs 38-42).).
Comcast did not provide evidence that its relationship with its suppliers, or
Comcast's Supply Agreements have changed since the 1001 Investigation so as to
warrant a different finding from that ofthe 1001 Investigation, i.e. that Comcast is not an
"importer." From the standpoint solely oflabeling Comcast as an "importer" under an
"efficient cause" or "sufficiently involved" test it is largely irrelevant whether all the
STBs and remote controls that were adjudicated in the 1001 Investigation are the same as
those litigated in this Investigation. The focus is on the facts involving the degree and
type of Comcast's control and involvement with its suppliers; not on the suppliers or the
Accused Products.
2. Issue Preclusion Applies as an Alternative Legal Theory
Rovi argued that "issue preclusion" applies here in view ofthe Commission's finding in
the 1001 Investigation that Comcast is an importer. (Importation MSD at 27; see also, MSD Hr.
Tr. at 11, 12.). As Rovi noted, correctly, issue preclusion applies to administrative agencies.
(Id., citing MaxLinear, Inc. v. CF CRESPE LLC,880 F.3d 1373, 1376(Fed. Cir. Jan. 25,2018);
see also B&B Hardware, Inc. v. Hargis Indus., Inc., 134 S. Ct. 1293, 1303(2015).)."Under the
doctrine of issue preclusion, also called collateral estoppel, ajudgment on the merits in a first
suit precludes relitigation in a second suit ofissues actually litigated and determined in the first
suit." In re Freeman,30 F.3d 1459, 1465(Fed. Cir. 1994). As Rovi also noted, when the same
claim or issue is litigated in two cases, the first to reach judgment may give rise to preclusion in
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the second,"even while an appeal ofthe firstjudgment is pending."(Importation MSD at 27
(quoting Certain 3G Mobile Handsets and Components Thereof Inv. No. 337-TA-613, Comm'n
Op, at 12(Sept. 21, 2015)(citing SSIH Equipment S.A. v. United States Intl Trade Comm 'n, 718
F.2d 365, 370(Fed. Cir. 1983)). Moreover, the Commission has recognized that, under Federal
Circuit law, the doctrine ofissue preclusion applies when: "(1)the issue is identical to one
decided in the first action;(2)the issue was actually litigated in the first action;(3)resolution of
the issue was essential to a final judgment in the first action; and(4)the [parties] had a full and
fair opportunity to litigate the issue in the first action." (Id. at 27.).
Comcast argued that it could not have anticipated that what it thought was its "arms-
length" relationship with its suppliers reflected more indicia ofcontrol over them and the
importation ofthe Accused Products, than Comcast thought or as its contracts with its suppliers
seemed to specify. (Importation Opp'n at 1,2, 8.). Or,to state the argument another way,
Comcast says it could not have anticipated Judge Shaw's test, a test that had yet to exist. (Id.).
Thus, according to Comcast, collateral estoppel cannot serve as a basis to grant Rovi's motion,
because there is not an "identity of issues," and Comcast did not have "a full and fair opportunity
to litigate the issues" in the 1001 Investigation. Staff and Comcast disagree. (Id. at 2,5, 7,8; but
see contra, MSD Hr. Tr. at 12:8-13:14, 15:1-16:20,46:18-63:25.).
Comcast argued that to the extent that Rovi invokes the application of collateral estoppel
or issue preclusion here, that there "would have been no way for Comcast to know it should
develop evidence to defend itself under such previously unarticulated criteria" between the 1001
Investigation and this Investigation. (Importation Opp'n. at 2,4.). In these circumstances,
Comcast argued, that collateral estoppel cannot apply as a theory here. (Id. at 5 (citing Certain
Network Devices, Related Software, and Components Thereof(II), Inv. No. 337-TA-945, Order
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No. 10 at 9-10(Jan. 18, 2018).). Rovi and Staff disagree. (See MSD Hr. Tr. at 12:8-13:14, 15:1-
16:20, 46:18-63:25.). Moreover, Comcast also argued that that it is incontrovertible that the Xi6
set-top boxes and voice remotes accused in this Investigation were not accused in the 1001
Investigation. (Id.(citingMem. at 3 fn.1.); Exh. H,Dep. Tr.(Mosley)at 25:26:2(other citations
omitted)). Thus, according to Comcast,there is not an identity ofissues between the 1001 and
this Investigation.
While Comcast has legitimate points with respect to the likely surprise it may have s
experienced from Judge Shaw's application of a "sufficiently involved" standard, Comcast says
that it has developed additional facts in this Investigation that it did not establish in the 1001
Investigation, and that these should be litigated fully. (Id. at 2.). However,the facts introduced
in this Investigation also have been aired or litigated fully. (See MSD Hr. Tr, generally at 11:1-
13:14, 49:15-51:24, 95:8-109:25.).
Judge Shaw and the Commission defined(or redefined) Comcast's relationship with its
suppliers differently than Comcast expected or as Comcast defined that relationship. Judge
Shaw's decision applied law to established facts. He and the Commission apparently found
Comcast's description of its relationship with its suppliers to be legally erroneous in view ofthe
facts.
The Supply Agreements that Comcast has with its suppliers are largely the same in this
Investigation as they were,apparently, in the 1001 Investigation. The suppliers appear to be the
same except for one. Many ofthe Accused Products are the same,even if not all. (See n. 4,
infra.). While Comcast argued that the lack of"identity of issues," would preclude the
application ofcollateral estoppel, Comcast does not spell out in any detail in a point by point
comparison between the two(2)Investigations just which issues are different. (Importation
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Opp'n at 8.). Indeed, while the patents in the 1001 Investigation and this Investigation may be
different as are the infringement and invalidity contentions, Comcast's methods ofdesigning the
Accused Products, or how it specifies design, manufacture and importation apparently have not
changed between the 1001 and this Investigation. The extent ofComcast's involvement with and
control over its suppliers does not appear to have changed. Comcast's supplier requirements
apparently have not changed, or at least Comcast did not point to any such changes. Again, it is
on the facts with respect to Comcast's relationship with its suppliers that leads to a fmding here
that Comcast is an importer.
E. Conclusion and Order
For the foregoing reasons, Rovi's Motion for Summary Determination that
Comcast is an importer within the meaning of Section 337, Motion Docket 1103-021, is
granted.
III. SUMMARY DETERMINATION ON SALE AFTER IMPORTATION
A. Comcast's Accused Products Are Imported
As noted in Section II.B, above, under Section 337(a)(1)(C), a complainant "need only
prove importation ofa single accused product to satisfy the importation requirement." See Sale
MSD at 9, 10(citing 19 U.S.C. 19 U.S.C. § 1337(a)(1)(C)) as cited in Certain Purple Protective
Gloves, Inv. No. 337-TA-500, Order No. 17 at 5(Sept. 23,2004); 19 U.S.C.
§ 1337(a)(1)(C); Certain Integrated Circuits, Processesfor Making Same, & Prod Containing
Same,Inv. No. 337-TA-450 Order No. 15 at 6(Nov. 2, 2001); Certain Trolley Wheel
Assemblies, Inv. No 337-TA-161, Conun'n Op. at 7-8, USITC Pub. 1605(Nov. 1984).
Alternatively, a complainant may prove just a single sale for importation, or sale within
the United States after importation. Certain Crawler Cranes and Components Thereof Inv. No.
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337-TA-887, Comm'n Op. at 10-14(Apr. 16,2015). Comcast has acknowledged that it imports,
or as Comcast describes it, works with its suppliers to import Comcast's XG1,XG2,XiD,and
Xi5 set-top boxes. (See Section II.C.1; see also Stipulation at 1-3.). Comcast has acknowledged
that it has charged and collected at least one, unreturned equipment fee for each ofthe
unreturned Accused Products that is Comcast's XG1,XG2,XiD,and Xi5 STBs. (See Sale MSD
at 10(citing SMF Nos. 12-17; see also Stipulation at 1-3.). 30 Comcast also did not dispute that
many of its customers did not later return the Comcast equipment for which they paid. (Id.
(citing SMF Nos. 13-17.).).
While Comcast did not have data for the entire United States at the time it produced the
information that was required by a discovery-related Order, in the areas of Pennsylvania and
other states that are part of Comcast's Keystone region alone, Comcast subscribers made some
payments in unretumed equipment fees for the unreturned, accused SIBS in a
. (See Sale MSD at 6-7(citing SMF Nos. 27-28);see also Confidential Telephonic
Management Conference at 44, 50-51 (July 17, 2018).).
B. Rovi Is Entitled to Summary Determination on Its Cross-Motion That
Comcast Sold Certain Accused, Unreturned Set Top Boxes [Motion Docket
No. 1103-0311
Although Comcast objected and filed its own motion for summary determination that it
does not sell and title does not pass for its STBs,3I this Order substantiates the oral finding that
there is no genuine dispute that Comcast has sold, either contractually or through conversion,
certain imported, accused unreturned STBs to its customers in the United States after the
3° As noted above, Comcast has produced invoices it issued to its customers for unreturned accused XG1,
XG2, Xi5 and XiD STBs. containing a sales charge in lieu of the return ofthe STBs.
31 See p. 2,supra.
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subscribers paid for their unreturned STB, paid the retail price ofthe equipment, and terminated
their rental service with Comcast.32 (See Section III.B(1)-(5).).
This Order simply applies the law of"sale" and "conversion" to facts Comcast could not
refute reasonably and resolves Rovi's Sale MSD and Comcast's No Sale MSD.
Accordingly, it is a finding that Comcast has sold the following unrettuned accused STBs
as follows: Comcast's XG1,XG2,XiD,and Xi5 set-top boxes. This finding does not include
either the Xi6 STB model, or to the XR11 and XR15 voice remote controls which Rovi did not
include in its No Sale MSD.
1. STBs That Its Customers Do Not Return Are Construed Here as
"Sales"
The Federal Circuit concluded that with respect to the term "sale" that" Congress
intended to give the term its ordinary meaning, thereby making an explicit definition
unnecessary." Enercon GmbH v. ITC, 151 F.3d 1376, 1381 (Fed. Cir. 1998)("Enercon"). The
Federal Circuit in Enercon explicitly rejected attempts to "restrict[]...the term 'sale'to
require the "delivery of title and control ofthe goods to the buyer" despite Comcast's argument.
(Id. at 1382; accord Sale MSD at 10, 11, 15; Staff Resp. at 6, 7; see also contra, MSD Hr. Tr. at
75:15-77:14.). The Commission has adopted the Enercon holding stating that a sale "includes
those situations in which a contract has been made between two parties who agree to transfer title
and possession of specific property for a price." See Certain Prods. Containing Interactive
32 In the 1001 Investigation, Rovi accused Comcast's XG1,XG2, RNG150,Xi3, XiD, and XIS STBs of
infringing certain Asserted Patents. In this Investigation, Rovi initially accused Comcast's XG1,XG2,
RNG150, Xi3, XiD, Xi5, and X16 STBs,as well as Comcast's XR11 and )CR15 voice remote controls, of
infringing certain Asserted Patents. On August 1, 2018, Rovi filed a Notice of Withdrawal of Certain
Accused Products, in which it withdrew the RNG150 and Xi3 STBs as Accused Products. (Doc. ID No.
651870(Aug. 1, 2018).). Therefore, the remaining Accused Products are Comcast's XGI,XG2,XiD,
Xi5, and Xi6 STBs,as well as the XR11 and XR15 voice remote controls.
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Program Guide & Parental Control Tech., Inv. No. 337-TA-845, Conun'n Op., at 10(Dec. 11,
2013)(citing Enercon GmbH v. In:'1 Trade Comm 'n, 151 F.3d 1376, 1382(Fed. Cir. 1998)).
The Uniform Commercial Code defines a "sale" as "the passing oftitle from the seller to
the buyer for a price." Uniform Commercial Code § 2-106. (Staff Resp. at 6.). Black's Law
Dictionary defines sale as a "transfer of property or title for a price." (See Sale MSD at 11
(citing Sale, Black's Law Dictionary(9th ed. 2009).). Because the term "sale" is not limited to a.
transfer oftitle, a sale can occur where there is a "transfer of property or title for a price." (See
Sale MSD at 11 (citing Sale, Black's Law Dictionary (9th ed. 2009).).
2. Evidence Reflects That Comcast's Customer Payments for
Unreturned STBs Are Sales
It is undisputed that the Comcast's STBs are manufactured overseas and then imported
into the United States within the meaning of Section 337. (See Section II.C(1).). When
subscribers want certain services with Comcast,they enter into what Comcast calls a "Subscriber
Agreement" for the STBs they receive. (Sale Opp'n at 2, 10.). The Comcast Subscriber
Agreement applies to the Accused Products at issue here: Comcast's XG1,XG2,XiD,and Xi5
STBs. As Comcast describes it, Comcast's business model is to "rent" the STBs to subscribers.
(Id. at 2, 3.). The initial Subscriber Agreement is styled as a "lease agreement." (See Sale Opp'n
at 2,8(citing Comcast's CSMF Nos. 20,25, 32).).
According to Comcast's Subscriber Agreement, when a customer's cable services are
terminated, the customer is required to return the STB to Comcast. In those instances in which
customers do not return the STBs, Comcast charges those customers an "unreturned equipment
fee" for the customers' violation oftheir Subscriber Agreement to return the leased STBs. (See
Sale Opp'n at 2, 8.).
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According to Comcast, its Subscriber Agreement is "clear that Comcast retains title to the
accused STBs provided to Comcast's subscribers." (Id. at 2, 3(citing Exh. A to Sale Opposition
at § 6(a)(Comcast's Agreement for Residential Services("Subscriber Agmt."))("[A]11 Xfinity
Equipment belongs to [Comcast] or other third parties," see also, id. citing Ddi. F to Sale
Opposition, Neil Shank Rebuttal Witness Statement at Q/A 63(337-TA-1001)(Comcast
"maintains ownership of CPE(customer premises equipment including set-top boxes and voices
remotes) rented to customers, including set-top boxes, and [Comcast] specifically retains title to
such equipment);see also Exh. E, Dep. Tr.(Shank) at 93:15-17 )("Q. Does[Comcast]retain title
even when it goes to the customers? A. Yes.).).
Comcast's description of its relationship to its.subscribers is not completely accurate.
Neither Comcast's description of its Subscriber Agreement nor the fees it charges match what
happens or the way Comcast treats subscriber fees in fact.
This is another instance(as with the importation requirements with its suppliers) in which
Comcast relied upon documents it created to try to call its relationship with its subscribers one
thing by contract, while what happens, in fact and legally is something else.
It is what the Comcast "unreturned equipment fee" represents legally, and what happens if
the subscriber later returns the STB it initially kept that is the focus ofRovi's MSD,and Comcast's
SDM of"No Sale" After Importation.
Comcast has acknowledged that it transfers physical possession ofthe accused products
(defined in fn. 32, infra)to its customers when they sign up for the Comcast cable services and
equipment described in Comcast's "Subscriber Agreement." (See Sale MSD at 12(citing SMF
No. 4.). Comcast produced invoices after being ordered to do so that reflects how customers are
charged. (See Exhs. 7C-19C (Invoices) to Sale MSD).
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When Comcast customers terminate their cable service, Comcast then charge and
collects a specific fee, over and above the rental fee, or a "retail price" 33 for the =returned STBs
from customers who do not return them. The separate charge is the price Comcast subscribers
pay for keeping the equipment rather than returning it to Comcast. (See Sale Opposition at 8;see
also Sale MSD at 5 (citing SMF No.6;see also, e.g., Exh. 5 at 6(Subscriber Agreement, Section
9(d)(3)); Ex.6C,Dep. Tr.(Bernard) at 193:5-20(payments are in lieu of returning equipment);
WI.26C, Dep. Tr.(Simon)at 49:3-6(Comcast is entitled to payments or equipment); see also
SMF No. 6;see also Exhs. 7C-19C (Invoices)to Sale MSD).).
Rovi described at length the various places in Comcast's Subscriber Agreement
specifically where it warns Comcast subscribers that"[Thu will be charged the retail price for a
new replacement." (See id. at 4(citing Exh. 6C, Depo. Tr.(Bernard II) at 193:5-20;see also
explanations of similar Comcast Subscriber Agreement provisions advising Comcast customers
what they must pay if they retain the equipment at Sale MSD at 7,8, 11, 13-5, 21-22).).
Comcast's Subscriber Agreement also warns that the "retail payment" is "a fee that you may pay
in lieu of returning your equipment." (See Sale MSD at 4(citing Exh. 26C,Depo. Tr.(Simon)at
49:3-6
;see also Sale MSD at 8, 12, 14).).
After a Comcast subscriber pays the =returned equipment charge to purchase an
=returned STB from Comcast,the subscriber does not continue to pay a monthly leasing or
33 "Retail" is defined as the "sale of goods or commodities to ultimate consumers, as opposed to the sale
for further distribution or processing."(See Sale MSD at 11, fn.7(citing Retail, Black's Law Dictionary
(9th ed. 2009)); accord, Staff Resp. at 7-9.). "Price" is defined as "the cost at which something is bought
or sold." Price, Black's Law Dictionary(9th ed. 2009). (See Sale MSD at 11, fn.7.). As Rovi states:
"together, Comcast's decision to define the charge by reference to the 'retail price' for accused set-top
boxes that are already in customers' possession shows that it views the transaction as a sale. (See Sale
MSD at 11, fn. 7.).
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rental fee for the Comcast equipment she has kept. (See Sale MSD at 12 fn.8 (citing Exh. 10C .
(Invoice) at 2)(showing that pre-paid leasing fee for"TV Box" refunded after customer
disconnects service, but unretumed equipment charge added).
As Rovi argued, and as Staff agreed, and contrary to Comcast's argument,any Comcast
customer who pays the retail fee for the STB and then retains possession ofthe STB after it pays
the fee has engaged in a "sale" within the Black letter law defmition ofa "sale." (See Sale MSD
at 12; see also Rovi SMF Nos. 4,6 and 7; Staff Resp. at 7, 8.). At that point, there is transfer of
property ofthe unreturned STBs from Comcast to its customers in exchange for the customer's
payment ofthe price Comcast charges. (Id.). At that point, also, the subscriber no longer pays a
"lease" fee. (See Sale MSD at 12, fn.8.).
3. The "Retail Price" Comcast Charges Is the Paid-Up Price of the Equipment Plus
The "retail price" Comcast charges includes its cost for the unreturned STB and
equipment. It may also include up to a that the FCC allows and which the
FCC calls a "reasonable profit." (See Sale MSD at 12(citing Rovi's SMF Nos.8 and 9; and
Comcast's Opposition to Rovi's Motion to Compel, Motion No. 1103-011, Doc. No.650648, at
5(July 18, 2018); see also MSD Hr. Tr. at 37:1-44:25).). This is so regardless ofthe age of, or
the depreciation on the unreturned STBs domcast takes on,the tmretumed STBs. (See Sale
MSD at 6.). Additionally, as Rovi noted, Comcast records the money it receives from the
unreturned STBs as an
(See Sale MSD at 6(citing SMF Nos. 10, 12;see also Exh. 23C to Sale MSD(Comcast
Equipment Charge Schedule).).
According to the pertinent FCC regulation,"A cable operator may sell customer premises
equipment to a subscriber. The equipment price shall recover the operator's cost ofthe
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equipment... plus a reasonable profit." (See Sale MSD at 12 citing 47 CFR 76.923(i); Cost
Order,9 FCC Rcd. 4527,4540-41 (1994)(prescribing under the Cable Act of 1992"an overall
cost of capital of 11.25%" to provide "cable operators the opportunity to earn 'a reasonable
profit' while "protecting subscribers" from a lack of"effective competition").
Comcast argued that the permission granted for pricing is not required and the FCC
regulation does not describe the up-charge or retail price it charges as necessarily part ofa sale.
(Sale Opp'n at 13.). Comcast also argued that the collection of additional money from its
subscribers to cover the cost of its equipment does not transform that retail charge transaction
into a sale. (Id.; see also MSD Hr. Tr. at 69:1-75:15.). Comcast considers the charge to be the
cost ofequipment, and basically, as recovery for "bad debt." (See Sale Opp'n at 15.). Moreover,
Comcast explained that if the subscriber re-subscribes, Comcast returns the charge for the
previously unreturned STB and recommences a lease arrangement. (Id.(citations omitted); see
also MSD Hr. Tr. at 113:2-116-4.). While Comcast may not recognize the transaction as a sale
does not mean it is not. (See MSD Hr. Tr. at 115:2-8; 116:3-4.).
Comcast's explanation does not undermine the fmding that the charge for an =returned
STB is a sale. If viewed according to the definition of a sale consistent with Black's Law
Dictionary or the UCC,the facts of the transaction, together with at least one explicit provision
ofthe Comcast Subscriber Agreement, indisputably demonstrate that Comcast has sold the
unreturned STBs in the United States after importation. Pursuant to the Subscriber Agreement,
Comcast no longer owns the equipment once the customer pays the retail price: "You agree that
exceptfor . . equipmentpurchased by youfrom us, all Xfinity Equipment belongs to us...."
(See Staff Resp. at 8(citing Rovi SMF No. 5; Exh. 5 to Sale MSD at 4(Section 6(a), Xfmity
Equipment(emphasis added).).
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Rovi argued that once a subscriber pays the up-charge or retail pripe for the STB,and
then keeps the STB, 1111111111111111.1111111111111
jergall111111.11111111111;. (See Sale MSD at 13(citing
SMF Nos. 23-26(other citations omitted)). Comcast disputed that point. Comcast said that
. At that point, Comcast noted that it is a business decision that it does not
wish to take the time or make the effort to retrieve the STB. (See MSD Hr. Tr. at 112:16-113:9.).
That may be a dispute, but it is a minor one. Comcast admitted that it
: the dispute is over
when Comcast ,not ifit does so. (See Id.).
There are other indicia that reflect that a sale has occurred with respect to the unreturned
STBs. Comcast does not
. (See Staff Resp. at 9(citing Rovi SMF Nos. 23-26;see also Ddi.
20C,Depo. Tr. (Bernard I)at 151:7-15(Comcast does not attempt to 1
Exh,6C,Depo. Tr.(Bernard II) at 213:15-21
(Comcast knows its set-top boxes are being ); Exh. 27C, Depo.
Tr. (Shank)at 129:5-130:10(Comcast does not include );
Exh. 28(2016 Comcast SEC Form 10-K)at 94(reporting that Comcast removes the cost of
equipment it sells and recognizes a gain and impairs or writes down equipment that it can no
longer recover).).
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Moreover, as Rovi noted, after a Comcast subscriber pays the unreturned equipment
charge, that Comcast(now former)subscriber does not
. (See Sale MSD at 12, n. 8(citing Exh. IOC (Invoice) at 2
..). In other words, the transactions between Comcast and
its subscribers that involve the unretunied STBs,including invoicing and the payment ofa
separate charge, reflect concrete changes from the original rental price and agreement.
The final zero balance invoices that Comcast sends to its former subscribers is silent on
whether Comcast retains legal title to the equipment or that the subscriber is still required to
return the equipment. (See Staff Resp. at 8-9(citing Rovi SMF Nos. 19, 20).). Comcast also
admits that many of its subscribers or customers
:. (See Staff Resp. at 8-0; see also Rovi
SMF Nos. 13-17). Comcast's actions, and its documents, support a finding that Comcast no
longer owns certain unreturned STBs. (See Rovi SMF No. 5). Given these indisputable facts, it
as an appropriate finding that there is a sale after importation ofcertain accused, unreturned
STBs under Section 337.
4. The Subscriber Payments for the Unreturned STBs Are Not Liquidated
Damages
Comcast attempted to characterize the unreturned equipment charge as a "liquidated
damage." (See Sale Opp'n at 9, 10(other citations omitted, including references to CSMF);see
also MSD Hr. Tr. at 83:2-84:16; 93:2-95:3; 95:16- 101:25;113:10-116:4.). As Rovi pointed out,
Comcast cites to a completely different and unrelated contractual clause which explicitly
discusses liquidated damages, and identifies the dollar amounts, and when they apply. The
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existence of a separate liquidated damages provision that does not apply to the =returned STBs
undermines Comcast's theory. (See Sale MSD at 20(citing Sale Opp'n at 3-4, 10).).
The liquidated damages provision in the Subscriber Agreement that Comcast cites deals
with damages "for tampering with any XFINITY Equipment or any other part ofour cable
network or for receiving unauthorized Service(s)," not the charge for =returned equipment. (Id.
(citing SMF Nos. 29-30); compare Exh. 5 to Sale Opp'n at 4-5 (Subscriber Agreement, Section
6(b)(3), No Unauthorized Devices or Tampering)(noting liquidated damages in "No
Unauthorized Devices or Tampering" Section)) with id. at 6(Section 9(d)(3), Your Obligations
Upon Termination)(noting that customer is charged "retail price" for unretumed equipment).).
Moreover, as Rovi pointed out, the =returned equipment charge provision in the Subscriber
Agreement is in an entirely different section ofthe Subscriber Agreement that does not label the
charge as a "liquidated damage," and does not recite comparable introductory clauses. (See Sale
MSD at 21,22(citing Exh. 5 to Sale MSD at 6(Section 9, Termination of This Agreement)
(demonstrating that Section 9 does not reference liquidated damages).
Because Comcast includes an explicit liquidated damages provision in another provision
ofthe Subscriber Agreement that does not deal with tmretumed STBs or other equipment, it is
evident that Comcast knew how to include a liquidated damages provision when it wanted to and
chose not to include such a provision in the section concerning =returned equipment charges.
There is no other language or support to which Comcast can cite for its liquidated damages
theory.
Finally, the unreturned equipment charge is contained in invoices that do not describe
the charge as liquidated damages. (See Sale MSD at 21,22(citing Rovi's SMF Nos.6, 10 and
31; Exhs. 7C-19C); see also MSD Hr. Tr. at 109:11-110:13.). Interestingly, if a subscriber who
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has kept and paid for equipment re-subscribes with Comcast, Comcast does not keep
. Instead, Comcast returns the money it charged for the retail price ofthe STB to the
subscriber and commences a new Subscriber Agreement. Comcast then starts recharging a lease
fee. A new Subscriber Agreement reinstates the property as Comcast's. (See MSD Hr. Tr. at
117:2-120:1).
5. Even If a Sale Does Not Occur,a Conversion Does Occur
Even if a voluntary "sale" does not occur in the transactions described above, arguably,
as both Rovi and Staff argued, a "forced sale" governed by the law ofconversion, does occur.
(Accord Staff Resp. at 9, 10;see also Sale MSD at 14-15 (citing Restatement(Second)of Torts §
222A comment c.(Am. Law Inst. 1965)(noting that when a conversion takes place, "title to the
chattel passes [to the converter], so that he is in effect required to buy it at a forced judicial
sale").).34
Conversion is the "intentional exercise ofdominion and control over personal property or
a chattel that so seriously interferes with the right of another to control that property that the
tortfeasor may justly be required to pay the other the full value ofthe property." 18 Am. Jur. 2d
Conversion § 1. And "[t]he law regards a conversion as a forced sale ofthe converted property.
Once conversion occurs, title passes to the converter, whose continued possession thereafter is
entirely lawful." 35 (See Staff Resp. at 10, 11 and Sale MSD at 14-15 (citing Duggan v. Keto,
34 The point was made during the MSD Hearing that Rovi was not asserting, and does not assert, that it
has standing to a recovery on a theory ofconversion. However, Rovi does have standing to raise the issue
that conversion occurs by operation of law. (See MSD Hr. Tr. at 120:7-14.).
"The point was made during the MSD Hearing that the discussion of"title" or passing oftitle was used
in two(2)different respects. One meaning(of course)is when a piece of paper passes to show that
ownership as wells as title to the ownership ofthe good in question has passed. However,the word title
was also used in another sense. An analogy was made to a purchase at a store such as Best Buy, when a
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554 A.2d 1126, 1138(D.C. App. 1989)(citation omitted); see also Baram v. Farugia,606 F.2d
42,46(3rd Cir. 1979)("On receipt by Dr. Baram ofthe $3,000 from Fredella, and
acknowledgment that this sum reflected the true value ofthe horse, a common law forced sale
was effected, passing title from the legal owner to the converter at the time and place ofthe
original conversion."); Wilkinson v. United States, 564 F.3d 927,932(8th Cir. 2009)(noting that
conversion is "the equivalent of a forced sale"); Iglesias v. United States, 848 F.2d 362,365(2d
Cir. 1988)(noting that, when payment has been made,"title vests in [the converter] as ofthe
time ofthe conversion"); Restatement(Second)of Torts § 222A comment c.(noting that, when a
conversion takes place,"title to the chattel passes [to the converter], so that he is in effect
required to buy it as a forced judicial sale").).
Since Comcast's Subscriber Agreement is governed by the law ofPennsylvania,the
authority from the Third Circuit, applying Pennsylvania law, would apply here. (See supra.). In
this case, whether called a voluntary sale or a forced sale through conversion, it is evident that
once a subscriber pays the charge for the unreturned Comcast equipment, the equipment in the
possession ofthe subscriber belongs to the subscriber and Comcast ceases all interactions with
the subscriber. As Rovi noted, the transfer ofthe rights in the property, including title, passes
customer buys an item, pays for it, leaves the store with the item and the receipt, but there is no piece of
paper that says that title has passed. It is presumed by the facts that the individual has the purchased item
and the receipt for the purchased item. (See MSD Hr. Tr. at 120:19-121:12.). It is the latter example that
applies here.
For another example, Staff used the analogy of the "bull in the china shop" as an application ofthe law of
conversion that applies here. Comcast is analogized as the store owner, while the Comcast Subscriber
Agreement is the sign in the owner's store that reminds the customer,"Mr. Bull," that if he handles and
break the china bowl, Mr. Bull must pay for it. Mr. Bull picks up a china bowl and drops it. It breaks.
Even if broken, the broken china bowl belongs to Mr. Bull. (See MSD Hr. Tr. at 96:4-98:7.). Mr. Bull is
required to pay the price for the china even though the china is useless. Nonetheless, title passed. Id. So
too, once a Comcast subscriber pays the Comcast charge for the unreturned STB, it belongs to the now
former subscriber even though, as Comcast argued,the STB is "dead" and can no longer be used. (See
MSD at 111:24-112:19.). The subscriber has paid for the STB.
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from Comcast to the subscriber. (See Sale MSD at 15 (citing Baram,606 F.2d at 46; Wilkinson,
564 F.3d at 932; Duggan,554 A.2d at 1138).). This constitutes a "sale" within the ordinary
meaning of the term "sale" as used in Section 337. See Enercon, 151 F.3d at 1381-82; Sale,
Black's Law Dictionary(10th ed. 2014). (Accord, Staff Resp. at 6,7; Sale MSD at 15.).
C. Conclusion and Order
For the foregoing reasons, Rovi's Motion for Summary Determination that the fee
Comcast charges its subscribers for unreturned(accused) STBs and equipment constitute
sales after importation within the meaning of Section 337, Motion Docket 1103-021,is
I granted.
For the same reasons, Comcast's Motion for Summary Determination that the fee
that Comcast charges its subscribers for unreturned (accused)STBs and equipment do not
constitute sales after importation, Motion Docket No. 1103-20, is denied.
Within fourteen(14)days ofthe date ofthis document, Rovi, Comcast and Staff shall
submit to the Office of Administrative Law Judges ajoint statement whether they wish to have
any portion of this document deleted from the public version. The Parties' subnlission shall be
made by hard copy and must include a copy ofthis ID with yellow highlighting, with or without
red brackets, indicating any portion asserted to contain CBI to be deleted from the public
version. The submission shall also include a chart that: (i)contains the page number of each
proposed redaction; and (ii) states(next to each page number)every sentence or phrase, listed
separately, that the party proposes be redacted; and (iii) for each such sentence or phrase that the
party proposes be redacted, a citation to case law with an explanation as to why each proposed
redaction constitutes CBI consistent with case law. Any proposed redaction that is not explained
may not be redacted after a review.
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The Parties' submission concerning the public version ofthis document need not be filed
with the Commission Secretary.
SO ORDERED.
MaryJoan cNamara
Administrative Law Judge
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CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED Inv. No.337-TA-1103
HARDWARE AND SOFTWARE COMPONENTS
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached INITIAL DETERMINATION has
been served by hand upon the Commission Investigative Attorney, John Shin, Esq. and the
following parties as indicated, on June 27,2019.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW,Room 112
Washington, DC 20436
On Behalf of Complainants Rovi Corporation, Rovi Guides,
Inc., and Rovi Technologies Corporation, Veveo,Inc.:
Douglas A. Cawley, Esq.
MCKOOL SMITH P.C.
Crescent Court, Suite 1500
Dallas, TX 75201
On Behalf of Respondents Comcast Corporation, Comcast
Cable Communications,LLC,Comcast Cable
Communications Management,LLC,Comcast Business
Communications, LLC,Comcast Holdings Corporation, and
Comcast Shared Services, LLC:
Bert C. Reiser, Esq.
LATHAM & WATKINS,LLP
555 Eleventh Street, NW,Suite 100
Washington, DC 20004
111 yra Hand Delivery
LVVia Express Delivery
El Via First Class Mail
LI Other:
111 Via Hand Delivery
V4a Express Delivery
1:1 Via First Class Mail
El Other: