On November 14, 2012, Chief ALJ Charles E. Bullock issued Order No. 45 in Certain Products Containing Interactive Program Guide and Parental Controls Technology (Inv. No. 337-TA-820).  Due to its size, we have broken the Order into part 1 and part 2.

In the Order, ALJ Bullock granted-in-part Respondent VIZIO, Inc.’s (“Vizio”) motion for summary determination of invalidity of claims 1–5, 7, 8, and 10–12 of U.S. Patent No. 6,701,523 (the ‘523 patent); claims 1, 3, and 4 of U.S. Patent No. 7,493,643 (the ‘643 patent); and claims 38, 39, 41, 43, 44, and 49 of U.S. Patent No. RE41,993 (the ‘993 patent).

By way of background, ALJ Bullock recently issued Order No. 35, finding certain claim terms in each of the ‘523, ‘643, and ‘993 patents to be indefinite.  Order No. 35 was incorporated by reference into Order No. 45 and included in Order No. 45 as Exhibit A.

Vizio argued that the Markman order, Order No. 35, resolved the legal questions of indefiniteness for claims 1 and 11 of the ‘523 patent; claims 1, 3, and 4 of the ‘643 patent; and claims 38 and 43 of the ‘993 patent.  Further, Vizio asserted that all claims that depend on the previously mentioned independent claims are also invalid as indefinite because there is no disputed issue of fact regarding the invalidity of the dependant claims.

In opposition, Complainants Rovi Corporation, Rovi Guides, Inc., United Video Properties, Inc., Gemstar Development Corporation, and Index Systems, Inc. (collectively, “Rovi”) argued that it opposed Vizio’s motion to the extent that it extends to claims not asserted in the investigation.  Further, Rovi asserted that it opposed the motion in order to preserve its right to appeal and seek review at the Commission. 

ALJ Bullock held that summary determination was appropriate for all claims found to be indefinite in Order No. 35.  ALJ Bullock further held that it would be inappropriate to make any invalidity determinations for claims not asserted in the investigation; therefore, ALJ Bullock declined to rule on claim 2 of the ‘643 patent.  Accordingly, ALJ Bullock granted-in-part Vizio’s motion for summary determination of invalidity.