23
Sep
By Barry Herman
Further to our August 17 post, on September 17, 2009, Chief ALJ Paul J. Luckern issued the heavily redacted public version of his 245 page August 14, 2009 Final Initial and Recommended Determinations (“ID”) in Certain 3G Mobile Handsets and Components (Inv. No. 337-TA-613).

By way of background, InterDigital Communications, LLC and InterDigital Technology Corp. (“InterDigital”) filed a complaint against Nokia Inc. and Nokia Corp. (“Nokia”) in August 2007 alleging that importation, sale for importation, and sale within the U.S. after importation of certain 3G mobile handsets and components infringed InterDigital’s ‘004, ‘966, ‘847 and ‘579 patents.  According to the ID, ALJ Luckern found no violation of Section 337, determined that the asserted claims are not invalid and not infringed, and also determined that a domestic industry exists with respect to the patents-in-suit.

The ‘004, ‘966, and ‘847 Patents

ALJ Luckern made several claim construction rulings with respect to the ‘004, ‘966 and ‘847 patents.  First, the ALJ agreed with InterDigital in construing the term “code” as “a sequence of chips.”  However, the ALJ disagreed with InterDigital’s claim differentiation argument and found that, because the asserted claims each relate to a CDMA system and the specification discloses that CDMA systems use spreading codes, each of the claim terms “codes,” “code signal,” “first code,” “code of a first type,” “code of the first type,” “different codes” and “signals” is a spreading code or portion of a spreading code.

Second, ALJ Luckern construed “access signal” as “a known sequence of chips that is transmitted during power ramp-up to facilitate the initiation of communications,” rejecting Nokia’s and the Commission Investigative Staff’s (“Staff”) argument that “access signal” should be construed as “a known spreading code,” as well as InterDigital’s argument that the claimed “access signal” contains more than just a known spreading code.

Third, ALJ Luckern found that the phrase “associated with” means that “the shorter of the related codes is a portion of the longer related code,” contrary to InterDigital’s proposed construction.  The ALJ also construed the phrases “generated using a same code” and “function of a same code” to mean “produced from the same code.”

Fourth, ALJ Luckern construed the phrase “carry no data” to mean “not modulated by an information signal,” and construed the phrase “does not include data” to mean “transmitting a code of a first type, wherein the code of the first type is not mandated by an information signal including information of the subscriber unit,” rejecting Nokia’s and the Staff’s assertion that the claimed phrases should be construed as merely “no information.”

Fifth, ALJ Luckern agreed with the Staff in construing the phrase “initial power level” to mean “a power level lower than the minimum power level required for communicating with the base station.”

Sixth, ALJ Luckern interpreted each of the phrases “transmitting . . . at increasing power levels,” “transmit . . . at increasing power levels,” “repeating (a) at increasing power levels,” “transmission . . . at an increase power level” and “transmitted at an increased power level” to mean “the power level of the beginning of a code signal is higher than that of the end of the previous code signal, and the power level of a code signal increases during transmission.”

Seventh, ALJ Luckern construed the phrases “repeatedly transmit,” “successively transmits” and “repeats the transmitting” to mean “to transmit one after the other” as InterDigital asserted, rejecting Nokia’s assertion that the signals must be transmitted in an uninterrupted sequence (and otherwise finding no substantive difference between the parties’ proposed constructions).

Eighth, ALJ Luckern agreed with the Staff and found that the phrase “synchronize/synchronizing to a/the pilot signal” should be construed as “to align the beginning of the subscriber unit’s spreading codes to the beginning of a pilot code,” and that “re-synchronize to the pilot signal” should be construed as “re-aligning the beginning of the subscriber unit’s spreading codes to the beginning of a pilot code when the beginning of the spreading codes are not in alignment with the beginning of the pilot code or the pilot signal has been lost.”

In view of the foregoing claim constructions, ALJ Luckern found that the asserted claims of the ‘004, ‘966 and ‘847 patents were not infringed by the accused Nokia handsets based largely on the WCDMA standard that specifies the power control methods that user equipment in WCDMA systems must use in performing random access procedures.

In finding the ‘004, ‘966 and ‘847 patents not invalid over the prior art, ALJ Luckern first determined that InterDigital did not show by clear and convincing evidence that the patents are entitled to an invention date earlier than their effective filing date of June 27, 1996.  ALJ Luckern then found that the asserted claims are not anticipated or rendered obvious by the Lucas reference which, contrary to InterDigital’s assertion, is a “printed publication” under U.S. law, and which does not disclose inter alia (1) the concept of “dynamically selected code signals,” (2) the limitation of “in response to detecting the acknowledgement, transmitting an access signal,” or (3) “a message indicating to the base station that the subscriber unit wants to establish the communications with the base station.”  ALJ Luckern also found that the asserted claims are not anticipated or rendered obvious by the IS-95 references, which do not disclose inter alia (1) permitting the user equipment to first transmit the access probe preamble and then wait for an “acknowledgment” from the base station before transmitting the access probe message capsule, (2) that the code signal carries no data, or (3) that the preamble and the message could be sent separately.  ALJ Luckern further found that the CODIT Final Review reference relied on by Nokia is not a “printed publication” for purposes of § 102 (a)-(b).

Nokia further argued that the ‘004, ‘966 and ‘847 patents are unenforceable due to prosecution laches, based in part on a claim of priority that spans over a decade for each patent.  However, ALJ Luckern noted that Nokia cited no precedent for measuring pendency from the priority date, and that courts handling this issue have instead measured pendency from the filing of the U.S. application.  Further, ALJ Luckern found no unreasonable delays during prosecution of the ‘004, ‘966 and ‘847 patents.

The ‘579 Patent

ALJ Luckern also made several claim construction rulings with respect to the ‘579 patent.  First, ALJ Luckern construed the term “apparatus” pursuant to its dictionary definition.

Second, ALJ Luckern construed the phrase “a code used for scrambling a high speed shared control channel (HS-SCCH)” to mean “a string of bits used to scramble unscrambled data prior to transmission of the data on a high speed shared control channel (HS-SCCH).”

Third, ALJ Luckern construed the phrase “a 48 bit code for use in descrambling a high speed shared anchor/channel (HS-SCCH)” to mean “a sequence of 48 bits (output from the ½ rate convolutional encoder) used to generate a scrambling sequence that is used to process scrambled data transmitted on a high speed shared control channel (HS-SCCH) to reproduce data that was scrambled.”

Fourth, ALJ Luckern construed the phrase “1/2 rate convolution encoder” to mean “a convolutional encoder that effectively doubles an input sequence of bits,” and construed the term “convolutional encoder” to mean “an encoder where the relationship between the output and the input can be described by the mathematical operation called convolution.”

In view of the foregoing claim construction, ALJ Luckern found the asserted claims of the ‘579 patent not infringed by the accused Nokia handsets.

In finding the ‘579 patent not invalid over the prior art, ALJ Luckern determined that the “1/2 rate convolutional encoder” limitation was not shown by clear and convincing evidence to be obvious to one skilled in the art, and that Nokia likewise failed to show that the asserted claims are obvious over the Motorola Way Forward Proposal, the Siemens 482 Proposal, and the Motorola 610 Proposal, either alone or in combination.

With respect to Nokia’s inequitable conduct defense, ALJ Luckern found that the undisclosed prior art references relied on by Nokia were not material to the ‘579 patent and were cumulative to the description of the state of the art already disclosed in the background section of the ‘579 patent.  In addition, ALJ Luckern found that Nokia did not establish an intent to deceive the USPTO by the inventors of the ‘579 patent or their patent counsel.

Nokia also asserted that InterDigital committed patent misuse and/or waiver by deliberately shaping its patenting process to read on industry standards and intentionally delaying its filing of essentiality declarations to ensure that the industry became “locked in” to standards that InterDigital alleged read on its IP rights (so that it could force those practicing the standards to take a license).  ALJ Luckern agreed with InterDigital and the Staff that Nokia’s revised pre-hearing brief contained substantial revisions that amounted to a new defense theory regarding patent misuse, which he thus deemed waived.  Should the Commission find no waiver, ALJ Luckern determined that Nokia did not establish that InterDigital knowingly and intentionally relinquished its rights because (1) InterDigital disclosed the patents-in-suit or applications for same to the European Telecommunication Standards Institute (“ETSI”) and declared that it was prepared to comply with ETSI policies on licensing, (2) Nokia did not establish that ETSI policy requires the disclosure of essential patents at the time a proposal is made or before the standard is finalized, (3) Nokia did not establish that InterDigital understood when it was making proposals that ETSI policy required disclosure of InterDigital’s patents at that time, and (4) Nokia did not establish that InterDigital intentionally breached ESTI policy.

Domestic Industry

ALJ Luckern held that the domestic industry requirement is satisfied based on InterDigital’s licensing activities.  See our July 29 post for more details.

Remedy And Bond 

In the event a violation of section 337 is found by the Commission, ALJ Luckern recommended issuance of a limited exclusion order and appropriate cease and desist orders.  ALJ Luckern further determined that “imposition of a bond in this investigation is not recommended.”
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