Motorola Mobility Files New 337 Complaint Regarding Certain Gaming And Entertainment Consoles

On November 22, 2010, Motorola Mobility, Inc. of Libertyville, Illinois (“Motorola Mobility”) and General Instrument Corporation of Horsham, Pennsylvania (collectively, “Complainants”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Microsoft Corporation of Redmond, Washington (“Microsoft”) unlawfully imports into the U.S., sells for importation, and sells within the U.S. after importation certain gaming and entertainment consoles, related software, and components thereof that infringe U.S. Patent Nos. 5,319,712 (the ‘712 patent), 5,357,571 (the ‘571 patent), 6,069,896 (the ‘896 patent), 6,980,596 (the ‘596 patent), and 7,162,094 (the ‘094 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to wireless communications and digital video technology.  In particular, the ‘712 patent relates to cryptographic protection of a data stream in wireless communication architectures, including the Open Systems Interconnection (OSI) architecture.  The ‘571 patent relates to secure point-to-point communications between communication units using wireless communication architectures.  The ‘896 patent relates to establishing connections between devices in a wireless peer-to-peer network.  The ‘596 patent relates to macroblock level adaptive frame/field coding for digital video content.  Finally, the ‘094 patent relates to frequency scanning paths for transform-based decoding of digital video content.

In the complaint, Complainants allege that Microsoft imports and sells products that infringe the asserted patents.  In particular, the complaint names the 250 GB Xbox 360 S and the 4 GB Xbox 360 S as infringing products.

Regarding domestic industry, Complainants state that they operate several facilities throughout the U.S. where their employees engage in multiple activities relating to the asserted patents.  In particular, Complainants state that they design and develop within the U.S. wireless handheld devices, wireless communication devices, and communication system components that practice the technologies covered by the ‘712, ‘571, and ‘896 patents.  Additionally, Complainants state that they design and develop within the U.S. high definition IP video set-top boxes that practice the digital video decoding technologies covered by the ‘596 and ‘094 patents.  The complaint specifically names the Motorola Droid 2, Droid X, and VIP1200 as exemplary devices for purposes of satisfying the domestic industry requirement.

As to related litigation, Complainants state that the ‘712 patent was involved in a prior ITC investigation (Inv. No. 337-TA-706) based on a complaint filed by Motorola, Inc. (“Motorola”) against Research In Motion Limited and Research In Motion Corporation (collectively, “RIM”) on January 22, 2010.  See our January 25, 2010 post for more details.  The 706 investigation was terminated on June 29, 2010 due to a settlement agreement between the parties.  The ‘712 patent had also been the subject of a lawsuit against RIM in the U.S. District Court for the Northern District of Texas, but that case was dismissed in June 2010 as well.

Additionally, Complainants state that on October 1, 2010, Microsoft filed an ITC complaint against Motorola alleging a violation of Section 337 based on the importation and sale of certain mobile devices, associated software, and components thereof that infringe various Microsoft patents.  See our October 5, 2010 post for more details.  The Commission instituted an investigation (Inv. No. 337-TA-744) based on Microsoft’s complaint on November 1, 2010.  Complainants further state that, also on October 1, 2010, Microsoft filed a patent infringement suit against Motorola in the U.S. District Court for the Western District of Washington alleging infringement of the same Microsoft patents that are at issue in the 744 investigation.  Complainants state that this district court case has been stayed pending a final determination in the 744 investigation at the ITC.

Further, Complainants state that on October 6, 2010, Motorola Mobility filed a patent infringement action against Apple Inc. based on a number of patents, including the ‘712 patent, in the U.S. District Court for the Northern District of Illinois.  A notice of dismissal was filed in that case on November 9, 2010, after Motorola Mobility filed counterclaims involving the same patents in response to a suit brought by Apple against Motorola and Motorola Mobility in the U.S. District Court for the Western District of Wisconsin.

Moreover, Complainants state that on November 9, 2010, Microsoft filed a declaratory judgment action based on alleged patent licensing obligations against Motorola and Motorola Mobility in the U.S. District Court for the Western District of Washington.  Microsoft’s complaint included an appendix that listed a number of patents, including the ‘712, ‘571, and ‘896 patents.

Lastly, Complainants state that on November 10, 2010, they filed a patent infringement action against Microsoft based on a number of patents, including the ‘712, ‘571, ‘596, and ‘094 patents, in the U.S. District Court for the Western District of Wisconsin.  Complainants further state that, also on November 10, 2010, they filed another patent infringement action against Microsoft on a number of patents, not including any of the asserted patents, in the U.S. District Court for the Western District of Wisconsin.  Complainants further state that, also on November 10, 2010, Motorola Mobility filed yet another patent infringement action against Microsoft on a number of patents, not including any of the asserted patents, in the U.S. District Court for the Southern District of Florida.

With respect to potential remedy, Complainants request that the Commission issue a permanent limited exclusion order and permanent cease and desist orders directed at Microsoft, its subsidiaries, related companies, and agents.

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