ITC Issues Public Version Of Opinion Affirming in Part and Reversing in Part Violation of Section 337 In Certain Wireless Communication Devices (337-TA-745)

On September 17, 2012, the International Trade Commission (the “Commission”) issued the public version of the opinion affirming in part and denying in part the initial determination of no violation of Section 337 in Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof (Inv. No. 337-TA-745). 

By way of background, the Complainant in this investigation is Motorola Mobility, Inc. (“Motorola”) and the Respondent is Apple Inc. (“Apple”).  In the initial determination (“ID”), ALJ Thomas B. Pender determined that a violation of Section 337 had occurred by 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 No. 6,246,697 (the ‘697 patent).  However, ALJ Pender found no violation of Section 337 with respect to U.S. Patent Nos. 6,272,333 (the ‘333 patent), 6,246,862 (the ‘862 patent), and 5,636,223 (the ‘223 patent) and the Commission determined to review the ID in part.  See our May 31, 2012 post for more details on the ID.

The ‘223 Patent

With respect to the ‘223 patent, the Commission began by amending the ALJ’s claim construction of the term “access priority value” to a narrower definition, noting that the ALJ’s construction did not explicitly account for the concept of priority.  Even in view of this narrower construction, the Commission agreed that the claims of the ‘223 patent were anticipated.  The Commission also carried out an obviousness analysis of the ‘223 patent, which the ALJ had not done because the arguments were based on a claim construction he did not adopt.  After its analysis, the Commission determined that claim 1 of the ‘223 patent would have been obvious.  Regarding infringement, the Commission reversed the ALJ’s determination that the accused Apple products directly infringed the ‘223 patent and reversed the determination that Motorola meets the technical prong of the domestic industry requirement.  Thus, the finding of no Section 337 violation was affirmed with respect to the ’223 patent.

The ‘697 Patent

As to the ‘697 patent, the Commission carried out a detailed claim construction, affirming the conclusions of the ID in part (though by a different route) and adopting a new construction of some terms.  Regardless, the ALJ’s conclusions in the ID based on anticipation and obviousness finding the ‘697 patent to be valid were affirmed.  However, in light of the Commission’s claim construction, the Commission determined that Apple’s accused products do not infringe the ‘697 patent either literally or under the doctrine of equivalents.  Furthermore, as with the ‘223 patent, the Commission found that Motorola failed to satisfy the technical prong of the domestic industry requirement for the ‘697 patent.  Thus, the ID finding of violation of Section 337 was reversed with respect to the ’697 patent.

The ‘862 Patent

In the ID, the ALJ found claim 1 of the ‘862 patent to be invalid as being indefinite.  The Commission reviewed this finding, concluding that claim 1 is not indefinite.  Thus, the Commission remanded the case to the ALJ for further proceedings on claim construction, the remaining invalidity challenges, infringement, and domestic industry in relation to the ‘862 patent. 

The ‘333 Patent

Regarding the ‘333 patent, the Commission revised the claim construction of various terms.  Although this revision forced the Commission to carry out a revised analysis of validity, infringement, and domestic industry, the Commission agreed with the ALJ’s conclusions.  Specifically, claim 12 of the ‘333 patent was found to be valid over the asserted prior art.  Relying on different reasoning, the Commission found that the accused products did not infringe the ‘333 patent.  Furthermore, Motorola’s Droid 2 was found not to practice the ‘333 patent, and thus, the technical prong of the domestic industry requirement was not met (although the economic prong was met by the Droid).  Therefore, the ID finding of no violation of Section 337 was affirmed with respect to the ’333 patent.

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