ITC Reverses Infringement Finding for "Work Around" Digital TV Products
The International Trade Commission has modified the limited exclusion order and two cease and desist orders regarding certain digital televisions and certain digital products containing the same and methods of using the same, to reverse certain findings of infringement by “work-around” products.
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Orders Issued in Apr 2009, Vizio, Etc. Rescinded in Aug 2010
In April 2009, the ITC issued a limited exclusion order against Vizio, Inc. of Irvine, California; AmTran Technology Co., Ltd. of Taiwan; Syntax-Brillian Corporation of Tempe, Arizona (SBC); Taiwan Kolin Co., Ltd. of Taiwan; Proview International Holdings, Ltd. of Hong Kong; Proview Technology (Shenzhen) Co., Ltd. of China; Proview Technology, Ltd. of Garden Grove, California; TPV Technology, Ltd. of Hong Kong; TPV International (USA), Inc. of Austin, Texas; Top Victory Electronics (Taiwan) Co., Ltd. of Taiwan; and Envision Peripherals, Inc. of Fremont, California.
The ITC also issued cease and desist orders against Envision, TPV USA, Vizio, SBC, and Proview Technology.
In August 2010, the ITC rescinded the limited exclusion order against Vizio and Amtran, and rescinded the cease and desist order against Vizio.
Court Determined “Work-Around” Products Do Not Infringe Patent
On May 26, 2010, the Court of Appeals for the Federal Circuit issued a decision reversing the ITC’s determination that the “work-around” products of the respondents infringe the asserted claims of U.S. Patent No. 6,115,074 (the 074 patent).
According to the CAFC’s decision, “work-around” products, in contrast to the “legacy” products that the respondents were importing when the complaint was first filed, use third-party chips that have a software modification that “skips over” parts of the channel map (the Virtual Channel Table (VCT)) and leaves parts of the VCT in transmission (encoded) format, thus preventing its use.
The CAFC found that the ITC erred in its conclusion that the claims do not require that the channel map information be capable of being used, and accordingly reversed the ITC’s determination that the “work-around products” infringe.
Modified LEO States “Work-Around” Products Not Excluded
The limited exclusion order has been modified to add a replacement paragraph 21 to state the following:
“2. “Work-around” products of respondents are not covered by paragraph 1. “Work around” products are products found not to infringe by the Federal Circuit.”
2 Modified Cease and Desist Orders No Longer Cover “Work-Around” Products
The ITC has also modified the definitions under paragraph (H) of the cease and desist orders against Envision and TPV USA2 as follows (new language underlined):
“(H) The term “covered products” shall mean digital televisions and products containing same that infringe one or more of claims 1, 5, and 23 of the ‘074 patent. This term does not include the “work-around” products found not to infringe by the United States Court of Appeals for the Federal Circuit. See Vizio, Inc. v. Int’l Trade Com’n, 605 F.3d 1330 (Fed. Cir. 2010).”
1In the original limited exclusion order, paragraph 2 provided for a bond amount during the 60-day review period of $2.50 per article. The bonding period no longer applies.
2The ITC notes that it has not modified the cease and desist order directed to SBC because the findings of infringement by SBC were not appealed and therefore remain intact. The cease and desist order against Proview Technology has also not been modified.
(See ITT’s Online Archives or 04/15/09 news, 09041540, for BP summary of the original limited exclusion order and cease and desist orders.
See ITT’s Online Archives or 08/13/10 news, 10081316, for BP summary of the ITC’s rescission of the orders for Vizio and Amtran.
See ITT’s Online Archives or 09/11/09 and 12/22/10 news, 09091135 and 10122265, for BP summaries of the ITC’s institution and termination, respectively, of an enforcement proceeding regarding possible violation of the exclusion order.)
ITC contact -- Daniel Valencia (202) 205-2310
(FR Pub 12/27/10, Inv. No. 337-TA-617)
The modified limited exclusion order and cease and desist orders are available by emailing documents@brokerpower.com.
The CAFC’s May 2010 decision is available here.