• by Wendy Davis  @wendyndavis, March 2, 2020

In a defeat for Comcast, a federal appellate court Monday upheld a ban on some of the company's set-top boxes on the grounds that they infringe patents held by TiVo.

The decision, issued by the U.S. Court of Appeals for the Federal Circuit, affirms a ruling issued more than two years ago by the U.S. International Trade Commission.

The ruling marks the latest development in a lengthy battle between Comcast and TiVo over royalty fees. Monday's decision centered on Comcast X1 set-top boxes that enabled subscribers to remotely program DVRs.

The International Trade Commission ruled in 2017 that Comcast customers who used that remote programming capability infringed two TiVo patents -- '263 and '413 -- both of which expired last year. The commission found in 2017 that Comcast induced infringement, and banned importation of some X1 set-top boxes.

Comcast then appealed to the Federal Circuit, where the company contended that the commission exceeded its authority. Among other arguments, Comcast said the alleged infringement took place in the U.S., after the boxes had been imported.

“A set-top box cannot even be part of a system capable of infringement until Comcast provides it to a domestic subscriber and that subscriber uses the set-top box in combination with Comcast’s domestic server software, the subscriber’s personal mobile device, and domestic mobile app software -- all of which occurs in the United States,” Comcast wrote. “And Comcast’s purportedly inducing conduct -- providing a subscriber with a set-top box and instructing her on how to use the X1 system and her mobile device to remotely schedule a recording -- also occurred in the United States.”

The appeals court rejected Comcast's argument, writing that material the commission has jurisdiction over articles that infringe after they're imported.

“It is undisputed that direct infringement of the ’263 and ’413 patents occurs when the imported X1 settop boxes are fitted by or on behalf of Comcast and used with Comcast’s customers’ mobile devices,” the judges wrote. “Reversible error has not been shown in the Commission’s determinations that the X1 set-top boxes imported by and for Comcast for use by Comcast’s customers are 'articles that infringe.'”

TiVo has also accused Comcast of violating several other patents, including one related to a search function. Disputes surrounding those patents are still pending at the International Trade Commission.