The USITC sided with Rovi against Comcast and barred importation of the set top boxes that Comcast uses for its X1 cable service. Comcast has now petitioned its case to the U.S. Supreme Court with three questions:
- Should the case be vacated as moot since the patents are now expired?United States v. Munsingwear, Inc., 340 U.S. 36 (1950).
- The statute focuses on “articles that . . . infringe.” Here, the accused set-top boxes themselves don’t infringe and are not infringing when imported. The infringement only occurs when used by customers. What gives?
- The ITC found that Comcast did not actually import the set top boxes, but should still be liable for “importation” of the boxes. What gives?
[Petition] The petition explains that the ITC’s approach here has shifted over the past few years:
The Commission has increasingly asserted authority over purely domestic patent infringement that is the province of Article III courts and juries. Here, the Commission issued an order banning importation of set-top boxes that are integral to Comcast’s X1 cable service, even though those boxes are staple articles of commerce that infringe no patents; the purported inducement and infringing uses occurred domestically after importation; and Comcast did not itself import the boxes.
Id. The petition repeatedly notes that ITC actions allow patentees “to evade limitations on injunctive relief in litigation” setup by the Supreme Court in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).