On October 19, 2011, ALJ E. James Gildea issued the public version of Order No. 22 (dated October 5, 2011) denying Respondent TiVo Inc.’s (“TiVo) motion for summary determination that Complainant Microsoft Corporation (“Microsoft”) cannot satisfy the technical prong of the domestic industry requirement in Certain Set-Top Boxes, and Hardware and Software Components Thereof (Inv. No. 337-TA-761).

According to the Order, TiVo argued that Microsoft belatedly disclosed that a domestic industry for its asserted ‘838 patent will exist at a later date, in contravention of its previous position and the general rule that domestic industry must be measured at the time a complaint is filed.  Microsoft countered that it has not shifted its domestic industry theory, that it has consistently put forward two bases for asserting domestic industry with respect to the ‘838 patent (both of which TiVo has been aware of and explored during discovery), and that the Commission does not require deployment of an article for a domestic industry to exist.  The Commission Investigative Staff (“Staff”) opposed TiVo’s motion.

After reviewing the parties submissions, ALJ Gildea agreed with the Staff that there is a question as to whether TiVo has met its initial burden of demonstrating that Microsoft cannot meet the technical domestic industry requirement, particularly with respect to whether software is required to practice the claim of the ‘838 patent at issue.