ITC’s Jurisdiction Over Components that Indirectly Infringe Affirmed
Comcast Corp. v. Int’l Trade Comm’n, Nos. 2018-1450, 2018-1653, 2018-1667 (Fed. Cir. Mar. 2, 2020) (on appeal from Inv. No. 337-TA-1001)
Before: Federal Circuit (Newman, Reyna, and Hughes)
Practice Tips and Insights:
The Federal Circuit reminded us that imported components found to indirectly infringe asserted patents can be excluded by the Commission.
Holding and Status:
The Federal Circuit affirmed the Commission’s determination that a limited exclusion order for indirectly infringing components was within the Commission’s discretion.
Rovi filed a 337 complaint alleging a violation of Section 337 by certain imported set-top boxes. The complaint alleged that the set-top boxes infringed patents directed to an interactive television program guide system for remote access to television programs when the imported boxes were used on a domestic network. The judge determined that the set-top boxes were indirectly infringing and therefore should be excluded from importation because the asserted patents were not invalid. The Commission affirmed.
Notable Disputed Issues and Related Points of Law:
Indirect Infringement: One of the primary appeal arguments was that the Commission had no basis for excluding the imported set-top boxes because they do not infringe at the time of importation. The appellants stated that the alleged indirect infringement was “unrelated to the article’s importation” and therefore the Commission has no authority to exclude the set-top boxes. The Federal Circuit disagreed. Particularly, the Federal Circuit confirmed that “Section 337 applies to articles that infringe after importation.”
Importation: Comcast argued that it was not an “importer” of the set-top boxes because only ARRIS or Technicolor were importers of record. The Federal Circuit disagreed. Instead, the Federal Circuit found that Comcast “requires ARRIS and Technicolor to handle importation formalities, such as fees, documentation, licenses, and regulatory approvals.” Based on this evidence, the Federal Circuit held that Comcast was “sufficiently involved” in the importation process in order to be considered an importer and subject to the Commission’s exclusion order.
Limited Exclusion Order: ARRIS and Technicolor were named respondents that were found not to infringe the asserted patents because they were liable for neither indirect nor direct infringement. Nevertheless, the Commission’s exclusion order applied to set-top boxes these respondents import on behalf of Comcast. ARRIS and Technicolor argued on appeal that it was improper to subject them to an exclusion order when they were found to not infringe. But, because the remedy was limited to boxes imported on behalf of Comcast, the Federal Circuit held that “the limited exclusion order is within the Commission’s discretion as reasonably related to stopping the unlawful infringement.”