Fed Circuit sides with ITC in Comcast ban
In a victory for technology company TiVo, the US Court of Appeals for the Federal Circuit has affirmed the US International Trade Commission’s (ITC) import ban on Comcast’s cable boxes.
Yesterday, March 2, the Federal Circuit backed the ban, which the ITC had put in place after finding that Comcast’s X1 set-top boxes infringed two patents owned by TiVo’s subsidiary.
The patents, US numbers 8,006,263 and 8,578,413, both describe an interactive TV programme guide system for remote access to TV programmes.
Yesterday’s decision could help TiVo in its long-running battle over patent royalties with Comcast.
Arvin Patel, executive vice president and chief IP officer at Rovi, said: “The Federal Circuit affirmed the ITC’s final determination and what we at TiVo have known for years—Comcast infringed Rovi’s patents and its business is subject to the ITC’s jurisdiction.”
The two companies have been embroiled in conflict since the expiry of a royalty licence in 2017. According to TiVo, Comcast had previously paid Rovi more than $250 million for a fixed-term licence to its patent portfolio but, after its expiry, Comcast refused to renew.
Comcast had argued that it hadn’t violated section 337 of the Tariff Act because its imported cable boxes were not “articles that infringe” because the boxes don’t infringe the patents at the time of importation.
“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,” said the Federal Circuit, before adding that the ITC correctly held that section 337 applies to articles that infringe after importation.
Comcast also argued that it wasn’t the importer of the X1 set-top boxes, but takes title to the imported boxes only after they’ve been imported by ARRIS and Technicolor.
Again, the Federal Circuit rejected this argument and sided with TiVo.
The court went on to find that the exclusion order also applied to both ARRIS and Technicolor, despite their arguments that it didn’t apply because they were found not to be infringers or contributory infringers.
“On these facts, the limited exclusion order is within the Commission’s discretion as reasonably related to stopping the unlawful infringement, and is affirmed,” said the court.
Patel added: “We understand the value of our patented technology and why Comcast has relied on it heavily since launching its X1 platform. But Comcast cannot continue to use Rovi’s patented technology without paying for a licence. We are hopeful today’s announcement will encourage Comcast to put their customers first and license our IP.
A final decision in another ITC investigation into Comcast’s infringement of additional Rovi patents is expected to be published in the fourth quarter of this year.
TiVo was represented by McKool Smith, while Comcast was represented by Munger, Tolles & Olson.
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