CBP Says Comcast X1 System Redesign Successfully Avoids ITC 337 Scope

Comcast updates to its X1 system allow its X1 set-top boxes to fall outside the scope of an International Trade Commission limited exclusion order (LEO) issued in November against the company (see 1711270031), CBP said in a March 5 ruling that was recently released. The CBP ruling marks a potentially important win for Comcast, which has been litigating STB patent issues with Rovi, now named TiVo, for years. "Comcast has carried its burden of demonstrating that the changes made to the X1 system will prevent Comcast’s customers from using the modified X1 system, of which the STBs at issue are a component, in a manner which directly infringes," CBP said in the ruling.

The agency's ruling means that the redesigned X1 STBs imported by ARRIS and Technicolor on behalf of Comcast are no longer prohibited from entry into the U.S. The ITC said in November that Comcast’s digital infringed patents held by TiVo after a Section 337 investigation that began in May 2016 (see 1605240026). Specifically, the ITC said Comcast infringed on a patent relating to interactive TV program guides. Soon after the ITC's finding, Comcast asked CBP whether STBs imported by ARRIS and Technicolor are still subject to the LEO after some design changes.

Comcast and TiVo argued their cases to CBP during a Feb. 2 proceeding and in subsequent filings, the agency said. The design changes, most of which are redacted in the ruling, removed some features that allowed users to remotely schedule TV program recordings. "In support of the efficacy of its redesign, Comcast produced customer complaints from its Internet forums, which Comcast assuaged by publicly explaining that the remote recording functionality had been removed," CBP said.

CBP wasn't persuaded by TiVo's claims that the same infringing features remained on the STBs despite Comcast's changes. "In order to directly infringe any of the independent claims at issue, Comcast’s customers must be able to, through their use of the modified X1 system, record, on an STB, a television program that was selected for recording on a guide located on a mobile device," CBP said. "However, the modified X1 system prevents customers from recording television programs on STBs in which the television programs were selected for recording on a guide located on a mobile device. Accordingly, the modified X1 system prevents customers from practicing all of the limitations of the independent claims at issue." As a result, the STBs at issue are not subject to the LEO, CBP said.