02
Nov
By Eric Schweibenz
On October 29, 2010, Apple Inc. of Cupertino, California (“Apple”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Motorola, Inc. of Schaumburg, Illinois and Motorola Mobility, Inc. of Libertyville, Illinois (“Motorola Mobility”) (collectively, “Motorola”) unlawfully import into the U.S., sell for importation, and sell within the U.S. after importation certain mobile devices and related software that infringe U.S. Patent Nos. 7,812,828 (the ‘828 patent), 7,663,607 (the ‘607 patent), and 5,379,430 (the ‘430 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to software and methods used in a variety of electronic devices, including mobile devices.  In particular, the ‘828 patent is directed to a method for electronic devices such as mobile communications devices to integrate different types of manual input such as typing, multiple degree-of-freedom manipulation, and handwriting on a touch-sensitive surface.  The ‘607 patent is directed to a touch panel having transparent conductive layers that is capable of recognizing multiple touches by the fingers of a user.  Finally, the ‘430 patent is directed to a method for adding components or applications to a computer system “on the fly” without running an installation program or rebooting the operating system.

In the complaint, Apple alleges that Motorola imports and sells products that infringe the asserted patents.  In particular, the complaint names the Motorola Droid, Droid 2, Droid X, Cliq, Cliq XT, BackFlip, Devour A555, i1, and Charm as infringing products.

Regarding domestic industry, Apple states that it makes extensive use of the inventions claimed in the asserted patents in numerous products that are developed and sold within the U.S.  These products include Apple’s Macintosh computers, iPhone 3GS, and iPhone 4.  Apple states that substantially all of the research, development, design, engineering, and testing of the Apple products that practice the asserted patents was conducted by Apple employees using or working within Apple’s facilities in Cupertino, California, Newark California, and Elk Grove, California.  Moreover, Apple notes that by the end of fiscal year 2009, it had opened 217 retail stores in the U.S. that provide sales, product advice, service, and training for Apple hardware and software, including the Apple products that practice the asserted patents.

As to related litigation, Apple states that on October 6, 2010, Motorola Mobility filed complaints against Apple in the ITC (see our October 8, 2010 post for more details), the U.S. District Court for the Northern District of Illinois, and the U.S. District Court for the Southern District of Florida alleging infringement of certain patents.  Apple further states that on October 8, 2010, Motorola Mobility filed a complaint against Apple and NeXT Software, Inc. in the U.S. District Court for the District of Delaware seeking a declaratory judgment of non-infringement and invalidity of certain patents.  As for the ‘828, ‘607, and ‘430 patents specifically, Apple states that concurrently with the filing of the instant ITC complaint, Apple will file a civil action in the U.S. District Court for the Western District of Wisconsin accusing Motorola of infringing the asserted patents.   Further, Apple states that on June 28, 2010, the ‘430 patent was asserted against Nokia, Inc. and Nokia Corporation in a counterclaim in the U.S. District Court for the Western District of Wisconsin.

With respect to potential remedy, Apple requests that the Commission issue a permanent exclusion order and a permanent cease and desist order directed at Motorola and others acting on Motorola’s behalf.