Rovi Guides, Inc. v. Comcast Corporation et al

“In creating inter partes reviews, Congress intended to provide [a] quick and cost effective alternative[] to litigation in the courts . . . It also created an unconstitutional one” (internal citations omitted). So begins the appellate brief filed in April by Rovi Guides, Inc., a subsidiary of TiVo Corporation. Rovi has appealed (2019-1215) the cancellation of claims from one of its “remote interactive program guide” patents by the Patent Trial and Appeal Board (PTAB). The company brings a constitutional challenge to this PTAB authority, arguing that because Administrative Patent Judges (APJs) hired to adjudicate inter partes reviews (IPRs) “have the authority to render a final decision on behalf of the United States, without review by any higher executive-branch official”, they are “principal officers” who must be appointed by the US President and confirmed by the US Senate. Earlier this month, the US Department of Justice (USDOJ) filed a notice of intervention in the appeal, the Federal Circuit lifted a temporary stay to await word of the government’s intentions, and that court set a deadline for the USDOJ’s brief on the same day that the brief of appellee and IPR petitioner Comcast is due.

On November 21, the International Trade Commission (ITC) issued its final determination in the investigation that began with a complaint filed by TiVo (f/k/a Rovi Corporation) against Comcast (337-TA-1001), among others. The Commission affirmed the determination of Administrative Law Judge (ALJ) David P. Shaw that Comcast’s customers directly infringe two of TiVo’s patents, which are characterized as generally related to “interactive television guide programs that operate on local devices, such as a set-top box, and remote devices, such as a laptop or mobile phone”, thereby establishing a Section 337 violation as to Comcast’s X1 set-top boxes. The Commission issued limited exclusion and cease-and-desist orders commensurate with this conclusion, orders that would remain in place during any appeal, absent a settlement between the parties.

This past Thursday, the International Trade Commission (ITC) postponed its decision reviewing a May 2017 initial determination (ID) that Comcast (337-TA-1001) has infringed three patents asserted against it by TiVo (f/k/a Rovi Corporation). In a 600-page ID (the public version of which was made available in June), Administrative Law Judge David P. Shaw concluded that Comcast’s current set-top boxes infringe certain claims of two of TiVo’s patents, which the ALJ characterizes as generally related to “interactive television guide programs that operate on local devices, such as a set-top box, and remote devices, such as a laptop or mobile phone”. The ID also concludes that Comcast’s “legacy products” infringe those same patents, as well as a third, characterized as broadly related to “a television guide that allow [sic] users to record a program while simultaneously watching another program”. The Commission could issue its decision as soon as this week.

Comcast has filed a declaratory judgment action against Rovi Corporation and three of its subsidiaries (1:16-cv-03852), a month after getting hit by Rovi with an ITC complaint and two district court lawsuits. In an action filed in the Southern District of New York, Comcast seeks a judgment of non-infringement for the fifteen Rovi patents asserted against it. The complaint also contains multiple claims for relief stemming from Rovi’s alleged breach of two choice of forum clauses contained in licensing agreements between the companies. Comcast asserts that these clauses mandated that Rovi file any actions against it in New York, which Rovi purportedly breached by filing in Texas.

This week Rovi Corporation filed two lawsuits against Comcast, the first of the so-called “Big Four” pay TV companies not to renew its license to Rovi’s patent portfolio before expiration. Investors have been watching since at least the beginning of 2015 whether DISH (Echostar), DirecTV (now owned by AT&T), Comcast, and Time Warner Cable (nearing possible acquisition by Charter) would extend or renew license agreements entered into years ago with Rovi (or its predecessors). The plaintiffs are three Rovi subsidiaries—Rovi Guides, Inc.; Rovi Technologies Corporation; and Veveo, Inc.—each of which owns some of the 14 patents-in-suit. The defendants are Comcast and DVR and set-top box manufacturers ARRIS (Pace), Humax, and Technicolor. Comcast is accused of infringement through provision of its Xfinity television products and services, including its X1 interactive program guide.