ITC Issues Public Version of Opinion In Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703)
Further to our July 6, 2011 post, on July 25, 2011, the International Trade Commission issued the public version of its opinion setting forth the reasons for their June 30, 2011 notice determining to reverse-in-part, affirm-in-part, and remand for further proceedings an initial determination (“ID”) issued by Chief ALJ Paul J. Luckern on January 24, 2011 in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).
By way of background, the Complainant in this investigation is Eastman Kodak Company (“Kodak”) and the Respondents are Research In Motion, Ltd., Research In Motion Corporation (collectively, “RIM”), and Apple Inc. (“Apple”) (RIM and Apple collectively, the “Respondents”). In the ID, ALJ Luckern determined there was no violation of Section 337. More specifically, ALJ Luckern determined, inter alia, that (i) none of Respondents’ accused products infringed the sole claim now at issue: claim 15 of U.S. Patent No. 6,292,218 (the ‘218 patent); (ii) claim 15 of the ‘218 patent is invalid for obviousness under 35 U.S.C. § 103; and (iii) the domestic industry requirement is satisfied with respect to the ‘218 patent. See our March 18, 2011 post for more details.
On March 25, 2011, the Commission issued a notice determining to review ALJ Luckern’s ID in its entirety and requesting further briefing with respect to invalidity and claim construction. See our March 29, 2011 post for more details.
Claim Construction and Infringement
With respect to claim construction, Kodak argued to the Commission that in the ID, ALJ Luckern’s claim constructions paid insufficient attention to the claim constructions of another ALJ regarding many of the same terms in Investigation 337-TA-663, wherein Kodak asserted the same patent claim against a different respondent, Samsung Electronics. The Commission concluded it was not necessary to determine to what degree the prior constructions were binding, because the earlier investigation settled prior to any final agency action, and there could be no binding effect as a matter of issue preclusion on Apple and RIM because they were not respondents in the earlier action. Although the Commission determined it is appropriate for subsequent determinations to distinguish earlier contrary findings, Kodak’s arguments were moot because as set forth in more detail below, with respect to the three constructions at issue in this Investigation, the Commission adopted two of Kodak’s constructions, and the third (“image capture”) was not at issue in the 663 investigation.
Whether “Motion Processor” and “Still Processor” Must Be Distinct in Circuitry
ALJ Luckern’s ID construed “motion processor” within claim 15 of the ‘218 patent such that the “still processor” and “motion processor” use circuitry that is not shared or overlapping. The Commission, however, determined that although the ‘218 patent teaches the benefits of having separate circuits for motion and still processing, the specification did explain that “the same component could also be used to perform both of these functions.” To the extent ALJ Luckern relied upon the prosecution history to support his interpretation, the Commission determined that nothing in Kodak’s amendments or explanatory remarks distinguished the prior art on the basis upon which ALJ Luckern relied, and there was no “clear disavowal” necessary for limiting the scope of claim language. Accordingly, the Commission interpreted “motion processor” to mean “a processor that processes a series of motion images using digital image processing,” and “still processor” is “a processor that processes a captured still image.”
As both Apple and RIM contest whether their products infringe under these constructions, the Commission remanded this question to the ALJ.
Whether Color Information Stored as Luminance and Chrominance (YCC) Contain at Least Three Different Colors
In the ID, ALJ Luckern interpreted “at least three different colors” to “refer to three of more distinct colors, for example red, blue and green, where each color is a phenomenon of light or visual perception that enables one to differentiate otherwise identical objects.” Under this interpretation, ALJ Luckern found that the claim term would not literally read on YCC image data, which saves color data as grayscale luminance values and color difference values. In particular, ALJ Luckern further determined that YCC color information is not equivalent to three colors (such as red, green, and blue) due to prosecution history estoppel. The Commission determined, however, that the ALJ, who essentially adopted Respondents’ arguments, “may have improperly conflated infringement analysis with claim construction.” Instead, the Commission determined that the term “at least three different colors” should be given its plain and ordinary meaning, in view of the fact that the patentee did not act as his own lexicographer and the prosecution history did not evidence any limiting or unique meaning for the term. Accordingly, the Commission turned to the IEEE Standard Dictionary of Electrical and Electronic Terms and interpreted “color” to be “that characteristic of visual sensation in the photopic range that depends on the spectral composition of light entering the eye.” The Commission further determined that color may be specified by chromaticity and luminance.
The Commission proceeded to find that the accused products practiced part (b) of claim 15 under the plain meaning of color construed above. The Commission found no dispute that YCC information is the result of a linear transformation of RBG values, such that YCC constitutes three values that together represent a red value, green value, and a blue value, and therefore, a YCC value “provides color data for three color pixels in a repeating pattern of red, green, and blue pixels, as required by part (b) of claim 15.” The Commission further determined that transforming red, green, and blue values into luminance and chrominance difference values does not cause the underlying colors to disappear. Instead, the colors remain, “even if the expression of the colors is different.” The Commission also determined that the transformation does not lose the pixel patterns, since each set of luminance and two chrominance values corresponds precisely to a set of a red, green and blue values.
Initiating Capture of a Still Image While Previewing a Motion Image
ALJ Luckern interpreted the above term as “sending a signal from the capture button to the timing and controls section, said signal starting the still image capture process and being sent during the display of motion images.” The Commission sided with Kodak and the Commission investigative attorney, determining that ALJ Luckern’s interpretation was unduly narrow, and that while the ALJ is permitted to choose his own construction not offered by any party, in this instance the ALJ improperly imported limitations from the specification. More specifically, neither the claims, nor the prosecution history support imposing a requirement that a signal be sent to the timing and control sections. However, the Commission adopted Apple’s argument that the claim and specification supported interpreting “capture” to require the step of “sensing,” and therefore the Commission interprets “initiation capture of a still image,” to mean “initiating the capture by an image sensor of a still image.”
With respect to infringement, the Commission found that at least all accused products other than the Apple iPhone 3GS and iPhone 4 practice the “initiating capture” limitation, since the Commission’s construction of this term was broader that the ALJ’s, and so all products that infringed under the ALJ’s interpretation continue to do so for the same reasons as provided in the ID. Although Kodak advanced alternative arguments for infringement of the iPhone 3GS and iPhone 4 based on their flash photography mode, the Commission found no reason to overturn ALJ Luckern’s ID that Kodak waived such arguments. With respect to whether the iPhone 3GS and iPhone 4 infringed in their non-flash modes of operation, the Commission determined that these products did not literally infringe, but did not take a position on whether Kodak waived its opportunity to argue that the non-flash modes of such products infringed under the doctrine of equivalents. Accordingly, the Commission determined that Kodak demonstrated infringement of the RIM and Apple iPhone 3G products, but not the iPhone 3GS and iPhone 4, and that the ALJ should conduct any further warranted proceedings to determine whether the non-flash mode of the iPhone 3GS and iPhone 4 infringe under the doctrine of equivalents, if such arguments were not waived.
Before addressing validity issues, the Commission addressed Kodak’s argument, raised for the first time in its petition to the Commission, that the Parulski ‘335 patent was not prior art under 35 U.S.C. § 102(e). The Commission rejected Kodak’s argument, in view of Kodak’s admission in response to Apple’s Proposed Findings of Fact, that the Parulski ‘335 patent was prior art. It found unavailing Kodak’s argument that it had admitted merely to the “possibility” that Parulski qualified as prior art, subject to a determination of the invention date. The Commission further determined that Kodak’s argument is made far too late, and it may not now contest the chronological relationship of the two patents.
Although the parties prior to the final hearing before ALJ Luckern may have indicated that their positions would not change in response to modified claim interpretations and ALJ Luckern had found that prior art invalidated claim 15, the Commission remanded for the ALJ’s determination how respondents’ invalidity theories would be affected by the Commission’s claim interpretations. The Commission specifically requested that the ALJ on remand address the following:
- The effect, if any, of ex parte reexaminations of the ‘218 patent, which closed shortly before the issuance of the final ID, and therefore were not fully considered;
- The ALJ’s decision and authority to rely upon combinations of prior art not expressly presented by the respondents; and
- Kodak’s secondary considerations, in particular, their obtaining large settlements in proceedings where it asserted the ‘218 patent.