By Eric Schweibenz
On June 27, 2012, ALJ Thomas B. Pender issued the public version of the Initial Determination on Remand (the “Remand ID”) (dated May 21, 2012) 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. and Research in Motion Corp. (collectively, “RIM”) and Apple Inc. (“Apple”).  On January 24, 2011, former Chief ALJ Paul J. Luckern issued an initial determination (“ID”) finding that there was no violation of Section 337.  See our March 18, 2011 post for more details.  On June 30, 2011, the Commission issued a notice determining to affirm-in-part, reverse-in-part, and remand-in-part the findings in the ID.  See our July 6, 2011 and August 8, 2011 posts for more details.  In the notice, the Commission determined to modify the ALJ’s claim constructions and remand questions regarding infringement and validity in view of the modified constructions. 

According to the Remand ID, ALJ Pender reaffirmed that there was no violation of Section 337 by Apple or RIM in this investigation.  Specifically, ALJ Pender determined that (1) the accused Apple iPhone 3G infringes claim 15 of U.S. Patent No. 6,292,218 (the ‘218 patent); (2) the accused Apple iPhone 3GS and iPhone 4 do not infringe claim 15 of the ‘218 patent; (3) the accused RIM products infringe claim 15 of the ‘218 patent; and (4) claim 15 of the ‘218 patent is invalid under 35 U.S.C. § 103.

Claim Construction & Infringement

Claim 15 of the ‘218 patent, the sole claim at issue in this investigation, recites an electronic still camera for initiating capture of a still image while previewing motion images on a display, generally comprising an image sensor, a motion processor, a color display, a capture button, a still processor, and a digital memory.  In the Commission notice remanding the investigation for further proceedings, the Commission determined to modify the construction of the terms “motion processor” / “still processor,” “at least three different colors,” and “initiating capture of a still image.” 

With respect to the terms “motion processor” and “still processor,” the Commission’s constructions did not include the “distinct in circuitry” limitation adopted in the ID, thereby broadening claim 15 to read on the accused Apple and RIM products, which are distinct in their topography and operation, but not necessarily in their circuitry.  Next, the Commission found that the term “at least three different colors” should be given its plain and ordinary meaning as understood by one of ordinary skill in the art.  Under this construction, Respondents’ non-infringement arguments were rendered moot.  Accordingly, the Commission determined that Respondents’ accused products practice this limitation and, on remand, there were no open questions as to infringement. 

As to the term “initiating capture of a still image,” the Commission construed the term to mean “initiating the capture by an image sensor of a still image.”  Under this construction, which was broader than that adopted in the ID, the Commission determined that RIM’s accused products and Apple’s iPhone 3G literally infringe claim 15, but that Apple’s iPhone 3GS and iPhone 4 did not literally meet this limitation.  Thus, the only issue on remand was “whether Kodak waived its opportunity to argue that the Apple iPhone 3GS and Apple iPhone 4 in their non-flash mode of operation infringe this claim limitation under the doctrine of equivalents, and if there has been no waiver, whether these products practice this claim limitation under the doctrine of equivalents.”  With respect to waiver, the ALJ determined that Kodak’s failure to argue equivalency at the hearing or in its post-hearing briefing resulted in a waiver because Kodak was on notice that if Apple’s claim construction was adopted by the ALJ, infringement under the doctrine of equivalents was Kodak’s only way to assert a colorable claim against Apple.  Notwithstanding this determination, and addressing the merits of Kodak’s equivalency argument, ALJ Pender found that “there can be no infringement under the doctrine of equivalents because to find otherwise would be to vitiate ‘sensing’” from the adopted claim construction.


In its remand notice, the Commission instructed ALJ Pender to reassess Respondents’ invalidity theories in view of the claim constructions adopted in its opinion, to consider the pertinence, if any, of the ex parte reexamination of the ‘218 patent, and to provide additional explanation regarding secondary considerations of nonobviousness.  On remand, Respondents raised two obviousness arguments -- obviousness of claim 15 in light of a Japanese Patent Application  to Mori in view of a U.S. Patent to Parulski, and obviousness of claim 15 in light of a U.S. Patent to Wantanabe in combination with a U.S. Patent toBayer and the Sharp Viewcam. 

As to the effect of the reexamination proceedings, ALJ Pender found that Respondents’ burden of proving invalidity by clear and convincing evidence should not be heightened despite Kodak’s insistence that the patent examiners handling the reexaminations were aware of the Mori and Parulski references.  Specifically, the ALJ determined that a heightened invalidity burden was not warranted because the examiners only gave the pertinent prior art a cursory review and never considered the references in combinations with one another.  The ALJ also dismissed Kodak’s argument that a heightened burden should apply because the examiners were required to consider Respondents’ expert reports on validity of the ‘218 patent.  According to the ALJ, the examiners may have been prohibited from considering the impact of Respondents’ expert reports under patent office rules because the reports contained extensive party argument and, in any event, there was no record of the reports ever being considered by the examiners.

Next, ALJ Pender considered the impact of the Commission’s modified claim constructions on Respondents’ argument that claim 15 of the ‘218 patent is invalid as obvious over Mori in view of Parulski.  In particular, Kodak argued that Respondents did not provide clear and convincing evidence that one skilled in the art would have modified Mori’s motion preview function using Parulski to arrive at the claimed invention.  ALJ Pender refused to consider Kodak’s argument because it was “[d]evoid of any basis in the Commission’s new claim constructions,” and essentially asked the ALJ to perform a de novo review of the Final ID’s analysis regarding the motivation to combine Mori and Parulski, which was not disturbed by the Commission’s opinion.  As to secondary considerations of nonobviousness, ALJ Pender found that Kodak did not establish a nexus between the ‘218 patent and its licensing program such that its secondary consideration evidence should be given any probative weight.  Accordingly, the ALJ reaffirmed the finding set forth in the ID that claim 15 of the ‘218 patent is obvious over Mori in view of Parulski.

Lastly, ALJ Pender considered RIM’s argument that, in view of the Commission’s modified claim constructions, claim 15 of the ‘218 patent is obvious in view of Wantanabe in combination with Bayer and the Sharp Viewcam.  In response, Kodak argued that the proffered combination does not render claim 15 obvious because Wantanabe does not disclose “a motion processor for generating from the captured images, a second number of color pixel values provided in a second color pattern,” as recited in the claim.  Because RIM’s expert’s testimony on this matter was conclusory, failing to state how or why the processor of Wantanabe must generate a second color pattern, ALJ Pender determined that RIM did not prove by clear and convincing evidence that the asserted claim is obvious.

Having determined that claim 15 of the ‘218 patent is invalid under 35 U.S.C. § 103 over Mori in view of Parulski, ALJ Pender reaffirmed the finding in the Final ID that there was no violation of Section 337 by Apple or RIM in this investigation.