On Monday, March 2, 2020, the United States Court of Appeals for the Federal Circuit affirmed the International Trade Commission's finding that Comcast cable boxes infringe two Rovi Corp, a subsidiary of TiVo Corp., patents covering interactive program guides, leaving intact the Commission's ban preventing Comcast from importing X1 boxes.
A three-judge panel's precedential opinion unanimously rejected Comcast's argument that the company cannot be held liable because the X1 set-top boxes with the two infringed patents owned by Rovi Corp. were imported by third-party companies and ultimately sold to the cable company within the U.S.
You can review the Federal Circuit’s opinion here.
TiVo Corp is represented by McKool Smith Principals Doug Cawley, Joshua Budwin, Rod Dorman, and Joel Thollander.
Media coverage of the ruling can be found here:
"Fed. Circ. Backs ITC Ban on Comcast Cable Box in Patent Suit,". Law360 (03-02-2020)
“It is undisputed that direct infringement of…the patents occur when the imported X1 set-top boxes are fitted by or on behalf of Comcast and used with Comcast’s customers’ mobile devices,” the panel added. “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.”
“TiVo Wins Appeal Over Comcast in First Set-Top Box ITC Case,” Bloomberg Law (03-03-2020)
“We understand the value of our patented technology and why Comcast has relied on it heavily since launching its X1 platform,” Arvin Patel, TiVo’s chief intellectual property officer, said in a statement. “We are hopeful today’s announcement will encourage Comcast to put their customers first and license our IP just as the other top 9 U.S. pay-TV providers do.”
“ITC: Importing Articles that Infringe,” Patently-O (03-03-2020)
“The Comcast X1 boxes are actually imported by ARRIS and Technicolor. On appeal, the Federal Circuit confirmed that Comcast counts as the importer for Section 337 purposes because Comcast caused the articles to be imported and because the articles are particularly tailored to Comcast’s system so as to have no other use.”
“Fed Circuit Sides with ITC in Comcast Ban,” World IP Review (03-03-2020)
“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.”
“Wake Up Call: Atrium Law to Call it Quits, Return VC Funds, Report Says,” Bloomberg Big Law Business (03-04-2020)
“TiVo Corp., represented by McKool Smith, won a federal appeals court affirmation that the International Trade Commission’s finding that Comcast cable boxes infringe two patents held by Rovi Corp, a subsidiary of TiVo.”
“Federal Circuit Upholds ITC Limited Exclusion Order Against Comcast,” IP Watchdog (03-04-2020)
“The Court agreed with the Commission’s finding that ‘Comcast is sufficiently involved with the design, manufacture, and importation of the accused products, such that it is an importer for purposes of Section 337.’”
"You Direct It, You Import It," Law.com (03-06-2020)
“It’s been a good week for McKool Smith. On Monday the Federal Circuit affirmed a 2017 International Trade Commission exclusion order on Comcast X1 set top boxes that McKool had won for Tivo subsidiary Rovi. On appeal Comcast didn’t dispute that its set top boxes induce its customers to infringe the Rovi patents, which address internet access to TV programming guides.”
"CAFC Affirms Section 337 Infringement Findings Against Comcast," IP Watchdog (03-06-2020)
“On Monday, March 2, the Federal Circuit issued a precedential decision in Comcast Corporation v. U.S. International Trade Commission in which the appellate court upheld an ITC ruling which prohibited ARRIS and Technicolor from importing components used by Comcast in its X1 set-top boxes and ordered Comcast to cease its marketing of those set-top boxes.”