On September 18, 2012, ALJ David P. Shaw issued the public version of Order No. 10 (dated September 12, 2012) in Certain Products Containing Interactive Program Guide And Parental Control Technology (Inv. No. 337-TA-845).

In the Order, ALJ Shaw granted Respondent Netflix, Inc.’s (“Netflix”) motion to compel Complainants Rovi Corporation; Rovi Guides, Inc.; Rovi Technologies Corporation; Starsight Telecast, Inc.; United Video Properties, Inc.; and Index Systems, Inc. (collectively, “Rovi”) to provide documents and interrogatory responses related to Netflix’s patent misuse defense.

In support of the motion, Netflix argued that it is entitled to broad discovery regarding Rovi’s alleged misuse of the patents at issue because, as part of Inv. No. 337-TA-454 (which also involved several of the patents currently asserted), the presiding ALJ issued an initial determination finding patent misuse.  Specifically, “Netflix argues that patent misuse is a fact-intensive defense that requires ‘examination of Rovi’s licensing practices, the relevant markets, the barriers to entry erected by Rovi, and the anticompetitive effects of Rovi’s conduct.’”  In opposition, Rovi argued that Netflix’s requests were overly broad and unduly burdensome as they were not limited to the asserted patents and spanned a ten year period.

Having considered the parties arguments, ALJ Shaw determined to grant Netflix’s request without modification.  The ALJ noted that “[t]he scope of discovery is broad in section 337 investigations” and that, inasmuch as Judge Luckern found that Rovi previously engaged in patent misuse, and as Netflix has alleged that Rovi continues to engage in these practices with patents in the same portfolio, discovery dating back to Judge Luckern’s finding in 2002 is highly relevant and discoverable.