By Eric Schweibenz
On April 8, 2013, ALJ David P. Shaw issued the public version of Order No. 45 (dated September 27, 2012) denying Respondent Microsoft Corporation’s (“Microsoft”) motion for a protective order precluding Complainants Motorola Mobility, Inc. and General Instrument Corp. (collectively, “Motorola”) from “propounding broad discovery requests outside the permissible scope of the remand,” and the public version of Order No. 51 (dated November 29, 2012) denying Microsoft’s motion for summary determination of no violation with respect to U.S. Patent Nos. 6,069,896 and 6,980,596 in Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof (Inv. No. 337-TA-752).

By way of background, ALJ Shaw issued an Initial Determination (“ID”) on April 23, 2012 which found that a violation of Section 337 occurred by reason of infringement of certain valid claims of various asserted patents.  See our May 24, 2012 post for more details on the public version of the ID.  On June 29, 2012, the ITC remanded the investigation to the ALJ to, among other things, “apply the Commission’s opinion in Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software, Inv. No. 337-TA-724, Comm’n Op. (Dec. 21, 2011).”  See our July 3, 2012 post for more details.  On April 2, 2013, ALJ Shaw issued the public version of the Remand Initial Determination (“RID,” dated March 22, 2013) finding no violation of Section 337 had occurred, as there was no direct or indirect infringement of the ‘896 patent.  See our April 5, 2013 post for more details on the RID. 

Order No. 45

In Order No. 45, Microsoft argued that the Commission’s remand order was limited to the application of the Commission’s holding in Electronic Devices and did not authorize discovery relating to indirect infringement, an issue which Motorola unsuccessfully petitioned for review.  Motorola, which filed a related motion to compel, pointed out that the Commission’s remand order allowed the ALJ to “conduct remand proceedings as he deems appropriate, including reopening the record.”  Microsoft maintained that Motorola neither suggested that Electronic Devices changed the law of indirect infringement nor made any attempt to explain how any of the discovery it seeks is relevant to any issue raised under the holdings of Electronic Devices.

ALJ Shaw noted his earlier findings regarding the scope of the remand proceedings, which included the possibility of limited additional discovery on issues raised under the holdings of Electronic Devices.  The ALJ also referenced the Commission’s statements in Electronic Devices that “infringement, direct or indirect, must be based on the articles as imported” to satisfy the requirements of Section 337, and that the complainant in that investigation “might have proved a violation of section 337 if it had proved indirect infringement” of the method claim.  Thus, ALJ Shaw found that the discovery sought by Motorola related to indirect infringement that, due to Electronic Devices, is relevant to the proceeding on remand but was not relevant before.  Accordingly, Motorola’s motion for a protective order was denied.  The ALJ also denied Motorola’s motion to compel because it did not tie any contested request to the Electronic Devices opinion.

Order No. 51

In Order No. 51, Microsoft argued that the remand order explicitly instructed the ALJ to apply the Commission’s holding in Electronic Devices to Motorola’s allegations of direct infringement of method-of-use claims, and that the Commission did not remand for findings on indirect infringement.  Motorola responded that Electronic Devices significantly changed the standard for determining Section 337 violations, and that genuine issues of fact remain as to whether the Xbox consoles and accessories, as imported and sold, include discrete components that are adapted for use in performing the infringing processes; whether such components have no substantial non-infringing uses; and whether Microsoft’s acts of importation and sale induce others to perform the infringing processes.  ALJ Shaw agreed with Motorola and denied the motion, citing his earlier rulings regarding the scope of the remand proceeding and his denial of Microsoft’s motions to strike certain Motorola expert reports.