• ITC Decides Not To Review Initial Determination In Certain Digital Set-Top Boxes (Inv. No. 337-TA-712)
  • July 28, 2011 | Author: Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On July 21, 2011, the International Trade Commission (the “Commission”) issued a notice determining not to review ALJ E. James Gildea’s May 20, 2011 Initial Determination (“ID”) in Certain Digital Set-Top Boxes and Components Thereof (Inv. No. 337-TA-712).

    By way of background, the Complainants in this investigation are Verizon Communications Inc. and Verizon Services Corp. (collectively “Verizon”).  The Respondent is Cablevision Systems Corp. (“Cablevision”).

    According to the notice, on January 11, 2011, ALJ E. James Gildea granted Verizon’s motion for summary determination that Verizon satisfied the economic prong of the domestic industry requirement under 19 U.S.C. § 1337(a)(3). On January 20, 2011, Cablevision filed a petition for review.  On January 27, 2011, Verizon and the Commission Investigative Staff filed a response to Cablevision’s petition for review.  On February 11, 2011, the Commission determined to review ALJ Gildea’s determination to grant Verizon’s motion for summary determination.

    In addition, ALJ Gildea issued the ID on May 20, 2011 determining that a violation of Section 337 had occurred by Cablevision in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain digital set-top boxes and components thereof by reason of infringement of claim 13 of U.S. Patent No. 6,381,748 (the ‘748 patent).  ALJ Gildea further determined that no violation of Section 337 had occurred by Cablevision in connection with U.S. Patent Nos. 5,666,293 (the ‘293 patent), 5,635,979 (the ‘979 patent), 6,367,078 (the ‘078 patent), and 7,561,214 (the ‘214 patent).  ALJ Gildea also determined that a domestic industry exists that practices the ‘748 patent, but not the ‘293 patent, the ‘979 patent, the ‘078 patent, and the ‘214 patent.

    In the July 21 notice, the Commission determined not to review the ID.  Also, the Commission determined to affirm-in-part ALJ’s order granting Verizon’s motion for summary determination that it has satisfied the economic prong of the domestic industry requirement under 19 U.S.C. § 1337(a)(3).  Specifically, the Commission determined that “Verizon has satisfied the economic prong of the domestic industry requirement based on its investment in the software development and testing, installation, and support associated with the set-top boxes that were alleged to practice the asserted claims of the patents-in-suit because Verizon’s investments in those activities are ‘substantial’ within the meaning of Section 337(a)(3)(C).”  The Commission otherwise took no position on whether Verizon’s investments in the FiOS network satisfy the economic prong.

    According to the July 21 notice, the parties’ written submissions on the issues of remedy, the public interest, and bonding are due on August 4, 2011.  Reply submissions are due on August 12, 2011.