Complainants often must rely on indirect infringement to prove a violation of Section 337. Indirect infringement may be in the form of induced or contributory infringement. In a recent opinion, the Commission clarified issues relating to post-importation inducement and distinctions between induced and contributory infringement. Certain Digital Video Receivers And Hardware And Software Components Thereof, Inv. No. 337-TA-1001, Commission Opinion (December 6, 2017).
Complainant Rovi’s asserted patents relate to interactive television guide programs (“IPGs”) that operate on local devices, such as set-top boxes (“STBs”) and remote devices, such as laptops or mobile phones. Id. at 8-9. Rovi accused STBs and their ancillary remote controls and applications that Comcast supplies to customers to enable their television viewing experience. Id. at 9. These products are capable of supporting Comcast’s software-based guides, including an X1 Guide. Id. The Commission affirmed the Final ID’s conclusion that Comcast’s customers directly infringed two of the asserted patents through their use of the X1 systems in the United States. Id. at 16.
In support of the Final ID’s finding that Comcast induced its customers’ infringement, the Commission observed that Comcast had actual knowledge of the two asserted patents at least since the time Comcast and Rovi held license-renewal discussions, that Comcast knew or was willfully blind to the high probability that its actions would cause its customers to infringe the two asserted patents, that Comcast previously licensed these patents, and that it received claim charts articulating Rovi’s infringement allegations and did not respond to them. Id. at 20.
The Commission dispensed with Comcast’s argument that it did not violate Section 337 because its inducing conduct took place in the United States after importation. Id. at 21. The Commission explained that Section 337, as applied to Comcast’s relevant conduct here, requires importation of articles, proof of direct infringement, and proof of inducement, all of which were established by the record in this investigation. Id. Therefore, according to the Commission Opinion, it is no defense to the violation of Section 337 that Comcast’s active inducement of infringement occurs only in the United States after importation.
The Commission further rejected Comcast’s argument that it “would be a vast and unjustified extension of the Commission’s authority and the-rationale of Suprema to uphold the ID’s apparent conclusion that Section 337 reaches the importation of XI STBs used domestically by Comcast’s subscribers in an Xl ‘ecosystem’ found to have substantial noninfringing uses.” Id. at 21 (quoting Respondent’s Brief). The Commission explained that the concept of substantial non-infringing uses is applicable only in the context of contributory infringement, it plays no role in the analysis of the direct and induced infringement. Id. at 21-22 (citing Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1364 (Fed. Cir. 2012) (explaining that “substantial non-infringing use” is relevant only to contributory infringement)).
Takeaway
The Commission’s opinion clarifies two important issues with respect to induced infringement: (1) inducing direct infringement after importation is actionable under Section 337; and (2) substantial non-infringing uses is not a defense to induced infringement. Complainants seeking to prove inducement may therefore target discovery to a respondents activities after importation.
