By Eric Schweibenz
On October 26, 2010, ALJ Charles E. Bullock issued the public versions of Order Nos. 48 and 52 in Certain Mobile Communications and Computer Devices and Components Thereof (Inv. No. 337-TA-704).

By way of background, the Complainant in this investigation is Apple Inc. (“Apple”) and the Respondents are Nokia Corporation and Nokia Inc. (collectively, “Nokia”).

In Order No. 48 (dated October 5, 2010), ALJ Bullock granted Apple’s motion for summary determination that the importation requirement of Section 337 was satisfied with respect to Nokia’s N8 product.  According to the Order, Nokia stated that only developmental prototypes of its N8 (Vasco) mobile phones have been imported into the United States, and therefore Apple’s importation and infringement allegations are limited to the developmental products that have been imported.  In granting Apple’s motion, ALJ Bullock determined that the importation requirement can be established through only a single accused product, irrespective of any finding of infringement of the patents-in-issue, and irrespective of whether the imported version is a prototype or a sales-ready unit.

In Order No. 52 (dated October 18, 2010), ALJ Bullock granted-in-part Nokia’s motion for summary determination that claim 1 of U.S. Patent No. 5,455,599 (the ‘599 patent) and its dependent claims are invalid for indefiniteness, and that Apple cannot satisfy its burden of establishing a domestic industry, and therefore the investigation should be partially terminated with respect to the ‘599 patent.

With respect to invalidity, the Order states that Nokia based its argument on ALJ Bullock’s Order No. 18 construing the terms of the asserted claims, wherein ALJ Bullock found claim 1 indefinite under 35 U.S.C. § 112.   Specifically, the ALJ found that the ‘599 patent did not set forth sufficient structure to support the term “means for connecting the graphic device object to the grafport object to output graphic information on the one of the one or more graphic devices under the control of the graphic object.”  See our August 9, 2010 post for more details.  The Commission Investigative Staff (“OUII”) agreed with Nokia’s invalidity arguments, and the Order construed Apple’s position as “in essence, a motion for reconsideration” as to why its claim construction arguments on the disputed term should be adopted.   Incorporating by reference his indefiniteness findings of Order No. 18, ALJ Bullock granted Nokia’s motion as to invalidity of claims 1-3 and 6-10 of the ‘599 patent.

According to the Order, Nokia argued that with respect to domestic industry, Apple could not satisfy the technical prong of the domestic industry requirement of the ‘599 patent, because Apple relied entirely on claim 1, which had been found invalid and therefore cannot be relied upon to establish domestic industry.  Apple responded that its licensing activities provide a basis for domestic industry irrespective of whether Apple practices claim 1 of the ‘599 patent.  OUII supported Apple’s position, stating that a licensing based domestic industry for the ‘599 patent does not require a technical prong showing.  ALJ Bullock determined that a genuine issue of material fact existed as to whether Apple can establish a domestic industry based on its licensing activities and therefore denied Nokia’s motion as to the absence of a technical prong and partial termination.