ITC Declines Verizon's Appeal In Cablevision Set-Top Patent Case

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The U.S. International Trade Commission on Thursday declined to review an administrative law judge's ruling that Cablevision Systems didn't violate four of Verizon's patents related to set-top boxes -- and while the ITC upheld a finding the MSO infringed a fifth patent, that patent separately has been invalidated by a federal court.

In May, an ITC judge threw out four of Verizon's claims against Cablevision relating to set-top box patents but found against the cable operator on the fifth. The ITC commissioners upheld the decision.

"Having examined the record in this investigation, including the ALJ's [administrative law judge's] final ID [initial determination], the petitions for review, and the responses thereto, the Commission has determined not to review the final ID," the ITC commissioners said.

The ITC did affirm the judge's determination that Cablevision violated the Verizon-owned U.S. Patent No. 6,381,748 ("Apparatus and methods for
network access using a set-top box and television").

As a result, there could be a chance the ITC would move to ban the import of certain Cablevision boxes, which are manufactured at Cisco Systems' plant in Juarez, Mexico -- a facility Cisco plans to sell off to Foxconn Technology Group. In its public notice, the ITC included boilerplate text soliciting public comment: "[T]he Commission is interested in receiving written submissions that address the form of remedy, if any, that should be ordered."

However, the '748 patent was
ruled invalid on May 10 by the U.S. District Court for the Eastern
District of Virginia, in a separate patent-infringement suit involving ActiveVideo Networks, an interactive TV vendor whose biggest customer is Cablevision. Verizon appealed that decision but
the court rejected the motion on June 30.

Verizon did not immediately provide comment on the decision. In a previous statement, Verizon said that Cablevision "has refused to deal with us respecting their own intellectual property (HD sports in New York) on any terms."

Cablevision said in a statement, "This ruling is a significant win for Cablevision. The ITC rejected four of Verizon's five claims in the case, and the underlying patent in the fifth claim had already been invalidated by a Virginia court, which late last month rejected a motion by Verizon to reconsider that decision."

Verizon in March 2010 filed the ITC complaint and sued the cable operator in Delaware federal court, accusing the cable operator of infringing several patents with certain digital set-top boxes and demanding that Cablevision stop distributing the boxes. In its ITC complaint, Verizon claimed three Cablevision set-top boxes -- the Scientific Atlanta Explorer 4250HD, the SA Explorer 8300HD and the SA Explorer 4200HD -- violated five of the telco's patents.

In the ITC ruling in May, administrative law judge E. James Gildea found that Cablevision did not violate four of the patents: U.S. Patent No. 5,666,293 ("Downloading operating system software through a broadcast channel"); 5,635,979 ("Dynamically programmable digital entertainment terminal using downloaded software to control broadband data operations"); 6,367,078 ("Electronic program-guide system with sideways-surfing capability"); and 7,561,214 ("Two-dimensional navigation of multiplexed channels in a digital video distribution system").

In the ActiveVideo case, the company filed a lawsuit against Verizon in May 2010 alleging the telco's FiOS TV service infringes five of its patents for interactive TV and video-on-demand technologies.

Verizon has reached intellectual-property cross-licensing agreements with operators including Comcast, Time Warner Cable and Charter Communications.

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