On January 26, 2017, Kudelski SA of Switzerland, OpenTV, Inc. of Mountain View, California, Nagra USA, Inc. of San Francisco, California, and Nagravision SA of Switzerland (collectively, “Kudelski”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.
The complaint alleges that the following entities (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain digital television set-top boxes, remote control devices, and components thereof that infringe one or more claims of U.S. Patent Nos. 6,345,389 (the ’389 patent), 7,028,327 (the ’327 patent), and 7,725,720 (the ’720 patent) (collectively, the “asserted patents”):
- Comcast Corp. 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 STB Software I, LLC of Wilmington, Delaware
- ARRIS International plc of Suwanee, Georgia
- ARRIS Group, Inc. of Suwanee, Georgia
- ARRIS Technology, Inc. of Horsham, Pennsylvania
- ARRIS Enterprises LLC of Suwanee, Georgia
- ARRIS Solutions, Inc. of Suwanee, Georgia
- ARRIS Global Ltd. (formerly Pace Ltd.) of the United Kingdom
- Pace Americas, LLC of Boca Raton, Florida
- Pace USA, LLC of Boca Raton, Florida
- Universal Electronics Inc. of Santa Ana, California
- Gemstar Technology (China) Co. Ltd. of China
- Gemstar Technology (Qinzhou) Co. Ltd. of China
- Gemstar Technology (Yangzhou) Co. Ltd. of China
According to the complaint, the asserted patents generally relate to digital television set-top box technology. In particular, the ’389 patent relates to systems, apparatuses, and methods for providing user input to an application executing on an interactive television system wherein a user provides non-textual information to the interactive television system and this information is converted by a server to textual information which is provided as an input to the application. The ’327 patent relates to methods of controlling broadcast and reception of an interactive application to maintain synchronization of the interactive application and its respective broadcast program. Lastly, the ’720 patent relates to apparatuses and methods for creating and managing secure local area networks.
In the complaint, Kudelski states that the Proposed Respondents import and sell products that infringe the asserted patents. The complaint specifically refers to Xfinity X1-branded set-top boxes and XR11 voice-enabled remote control devices as infringing products.
Regarding domestic industry, Kudelski states that its OpenTV 5 middleware—and products that use that middleware—practice claims of the ’389 and ’720 patents in the U.S. Kudelski further states that a confidential licensee’s products practice claims of the ’327 and ’389 patents in the U.S. Kudelski also states that it conducts product development, engineering, testing, research, product customization and integration, post-sale support, and repair activities in the U.S. relating to its OpenTV 5 middleware and related hardware products. Kudelski specifically refers to facilities in California where it conducts relevant domestic industry activities. Kudelski also states that it conducts significant licensing activities in the U.S. relating to the ’389 and ’327 patents.
As to related litigation, Kudelski states that it is currently asserting the ’720 patent against various Comcast entities in the U.S. District Court for the Eastern District of Texas. Kudelski also states that Comcast Cable Communications, LLC recently filed a declaratory judgment action against certain Kudelski subsidiaries in the U.S. District Court for the Northern District of California, alleging non-infringement of the asserted patents. Kudelski additionally states that it previously asserted the ’327 patent against Hulu, LLC in the U.S. District Court for the Central District of California.
With respect to potential remedy, Kudelski requests that the Commission issue a permanent limited exclusion order and a permanent cease and desist order directed at the Proposed Respondents and related entities.