ALJ Pender Issues Public Version Of Initial Determination Finding A Violation Of Section 337 In Certain Wireless Communication Devices (337-TA-745)
On May 16, 2012, ALJ Thomas B. Pender issued the public version of the Initial Determination (“ID”) (dated April 24, 2012) in Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers, and Components Thereof (Inv. No. 337-TA-745). Due to the size of the ID, we have split the file into part 1 and part 2.
By way of background, the investigation is based on an October 2, 2010 complaint filed by Motorola Mobility, Inc. (“Motorola”), alleging violation of Section 337 by Respondent Apple, Inc. (“Apple”) in the importation into the U.S. and sale of certain wireless communication devices, portable music and data processing devices, computers, and components thereof that infringe U.S. Patent Nos. 5,636,223 (the ‘223 patent), 6,246,697 (the ‘697 patent), 6,246,862 (the ‘862 patent), 6,272,333 (the ‘333 patent), 5,359,317 (the ‘317 patent), and 7,751,826 (the ‘826 patent). See our October 8, 2010 post for more details. Following the institution of this proceeding, Motorola moved to terminate the investigation with respect to the ‘317 and ‘826 patents.
In the ID, ALJ Pender found that Apple infringed claims 1-4 of the ‘697 patent. As to the remaining claims and patents, the ALJ determined that no violation of Section 337 had occurred by reason of infringement of claim 1 of the ‘223 patent, claim 1 of the ‘862 patent, and claim 12 of the ‘333 patent. Further, ALJ Pender determined that a domestic industry in the U.S. does exist that practices or exploits the ‘223 and the ‘697 patents, but does not exist for the ‘862 and ‘333 patents.
U.S. Patent No. 5,636,223
The ‘223 patent is directed to a method for adaptively facilitating channel access in data communication systems. Only claim 1 of the ‘223 patent was asserted in the investigation. The parties disputed the construction of the term “access priority value” and whether the steps of the claimed method must be performed in the order recited by the claim. As to the term “access priority value,” the ALJ determined that Motorola disclaimed certain claim scope in arguing for the patentability of claim 1 during reexamination and construed the term to mean “a value based on information available to the terminal, or based on information available to the terminal and information received from the infrastructure.” With respect to Apple’s argument that the claimed method must be performed in the specific order recited, ALJ Pender agreed with Motorola that the “steps of claim 1 are not confined to any particular order other than that which is dictated by the claim language itself.”
Motorola argued that the accused products directly infringe claim 1 of the ‘223 patent when they are tested and certified to be complaint with the 802.11 wireless networking standard or when used by consumers running certain applications. The ALJ agreed with Motorola’s arguments. Regarding induced infringement, ALJ Pender determined that Apple knew its accused devices could, and would, be used to practice the 802.11 standard, and that Apple actively encouraged consumers to use the accused devices in a manner that implements the standard. Accordingly, the ALJ found that Apple actively induces infringement of claim 1 of the ‘223 patent.
ALJ Pender also found that Motorola’s Droid 2 Smartphone satisfied the technical prong of the domestic industry requirement with respect to the ‘223 patent. Further, the ALJ found that “Motorola’s investments in its seedstock costs are related to the … Droid 2,” and that there is a nexus between the ‘223 patent and Motorola’s U.S. based licensing activities sufficient to satisfy the economic prong of the domestic industry requirement.
Apple challenged the validity of the ‘223 patent, arguing that claim 1 is anticipated by U.S. Patent No. 5,657,317 to Mahany (“Mahany”), U.S. Patent No. 5,600,651 to Molle (“Molle”), or U.S. Patent No. 5,453,987 to Tran (“Tran”). Having determined that each reference qualifies as prior art under 35 U.S.C. § 102(e), ALJ Pender found that Apple established by clear and convincing evidence that Mahany or Tran, taken individually, disclose each and every limitation of claim 1 of the ‘223 patent, thus rendering the asserted claim invalid. Lastly, the ALJ did not consider Apple’s obviousness arguments because they were predicated on Apple’s construction of the term “access priority value,” which was not adopted by the ALJ.
U.S. Patent No. 6,246,697
The ‘697 patent claims a system and method for processing code division multiple access (“CDMA”) signals using complex pseudonoise sequences. Claims 1-4 of the ‘697 patent were asserted against Apple. The parties disputed the construction of the term “restricting a phase difference … to a preselected phase angle.” Further, based upon the parties infringement and invalidity arguments, ALJ Pender determined that there was a disagreement regarding the construction of the term “selecting a chip time,” and he construed that term as well. In the end, the ALJ did not adopt the limiting language proposed by Apple, determining that “preselected phase angle” refers to the magnitude of the phase angle and not the magnitude and direction as Apple contended, and that “selecting a chip time” requires “selecting a chip time, but not every chip time.”
As to infringement, Motorola argued that “any device that utilizes the C-long equation set forth in Section 18.104.22.168 of the 3GPP TS 25.213 to generate a scrambling code … infringes claims 1-4 of the ‘697 patent.” Specifically, Motorola argued that any user of an accused device who operates the device to make a call or perform any 3G network function necessarily practices each and every limitation of claims 1-4. Further, Motorola argued that, because “users must perform the accused method every time they utilize the accused devices for their intended purpose” and because “Apple has had knowledge of the ‘697 patent … at least by the time this investigation was filed,” Apple actively induces infringement of the ‘697 patent. ALJ Pender agreed with Motorola on each ground.
Regarding the domestic industry requirement, the ALJ found that Motorola’s Cliq XT mobile phone has been used in a manner which practices claims 1-4 of the ‘697 patent, thereby satisfying the technical prong of the domestic industry requirement. As to the economic prong, ALJ Pender found that “Motorola’s investment in its seedstock costs are related to the Cliq XT” mobile phone and that there is a nexus between the ‘697 patent and Motorola’s U.S. based licensing activities significant enough to establish a domestic industry.
Apple challenged the validity of the ‘697 patent, arguing that claims 1, 2, and 4 are anticipated by a prior art shift modulation scheme, and that each asserted claim of the ‘697 patent would have been obvious to one of ordinary skill in the art in light of four different prior art combinations. ALJ Pender found that Apple did not prove by clear and convincing evidence that each of the challenged claims is anticipated and/or obvious. Apple also argued that the ‘697 patent is invalid for lack of written description and failure to disclose the best mode, and is unenforceable due to unclean hands in Motorola’s procurement of the ‘697 patent. Again, ALJ Pender found that Apple did not prove these defenses by clear and convincing evidence.
U.S. Patent No. 6,246,862
The ‘862 patent is directed to a portable communication device that includes a sensor to disable touch sensitive inputs when brought in close proximity to the user. Claim 1 of the ‘862 patent was asserted against Apple. The parties disputed the meaning of the terms “input signal,” “the sensor to disable communication of the input signal to the processing section,” and “close proximity to the user.” With regard to the term “input signal,” ALJ Pender adopted his own construction, disagreeing with the definitions set forth by the parties and construing the term to mean “information communicated from the touch sensitive input device.” As to the next term, “the sensor to disable communication of the input signal to the processing section,” the ALJ agreed with Motorola that the term should be given its plain and ordinary meaning as understood by one of ordinary skill in the art in light of the patent’s specification. Lastly, ALJ Pender found the term “close proximity to the user” to be indefinite, as urged by Apple. Specifically, the ALJ determined that the contested language, when read in light of the remainder of claim 1, makes the claimed device inoperable, as the touch input is disabled whenever in close proximity to the user (i.e., whenever held by the user). As a result, ALJ Pender found that the term could not be construed such that the claimed device would have utility without rewriting the claim in violation of the rule set forth in Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004).
Because the ALJ found that claim 1 of the ‘862 patent is indefinite, he did not, and could not, address the parties’ infringement contentions, anticipation and obviousness arguments, and arguments relating to the technical prong of the domestic industry requirement, because each analysis requires the ALJ to first construe the claim.
U.S. Patent No. 6,272,333
The ‘333 patent relates generally to a system for controlling data delivery to a subscriber unit or mobile device. Claim 12 of the ‘333 patent was asserted in the investigation. Two disputed claim terms were construed by the ALJ, “software applications,” and “a list of all software applications that are currently accessible to the subscriber unit.” As to the term “software applications,” the ALJ agreed with Motorola and its expert that the term does not require construction, as it has a well understood and plain meaning to a person of ordinary skill in the art. As to the next term, the parties dispute centered on the construction of the phrase “currently accessible” and whether that includes software applications not installed on the device. Because Motorola’s construction would exclude a preferred embodiment from the scope of the claim, ALJ Pender construed the term “in a way that must be at least as broad as is the preferred or exemplary embodiment found in the specification,” which includes “a list of all software applications that are currently accessible to the subscriber unit, whether located on the subscriber unit or externally.”
As to infringement, the ALJ found that the accused Apple products did not infringe the ‘333 patent either literally or under the doctrine of equivalents. According to the ID, ALJ Pender found that the accused devices “do not maintain an application registry comprising a list of all software applications that are currently accessible to the subscriber unit” and do not “in response to a change in accessibility of an application … communicate the change to the fixed portion of the wireless communication system,” as required by claim 12. With respect to Motorola’s argument that the accused Apple products infringe under the doctrine of equivalents, ALJ Pender began by noting that it was improper for Motorola to raise this argument in a footnote and that “[p]arties who do so deserve to be ignored.” As to the merits of Motorola’s argument, the ALJ determined that equivalency as to the term “all,” highlighted above, was barred by prosecution history estoppel and was inapplicable due to the doctrine of claim differentiation.
ALJ Pender also determined that Motorola had not satisfied the technical prong of the domestic industry requirement because, inter alia, Motorola’s domestic industry product does not “maintain an application registry comprising a list of all software applications that are currently accessible to the subscriber unit.”
Apple challenged the validity of the ‘333 patent, arguing that claim 12 is anticipated by U.S. Patent No. 5,502,831 to Grube (“Grube”), U.S. Patent No. 6,008,737 to DeLuca (“DeLuca ‘737”), or U.S. Patent No. 5,612,682 to DeLuca (“DeLuca ‘682”), and is obvious in view of the combination of Grube and DeLuca ‘682 and ‘737. As to anticipation, ALJ Pender found Apple’s proof to be unconvincing, specifically noting that the inclusion of the word all in claim 12, which provided Apple with its strongest non-infringement position, also prevented Grube or either of the DeLuca patents from anticipating claim 12. As to obviousness, the ALJ found that Apple failed to make a prima facie showing because each reference does not disclose “(1) an application registry comprising a list of all currently accessible software applications and (2) a subscriber unit in the wireless communication system for controller delivery of data from a fixed portion of the wireless communication system.”