By Eric Schweibenz
On January 10, 2014, the U.S. Court of Appeals for the Federal Circuit issued a nonprecedential opinion in Motorola Mobility LLC v. ITC (2012-1666).  This was an appeal from the International Trade Commission’s (“the Commission”) determination that Apple Inc. (“Apple”) did not violate Section 337 in Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof  (Inv. No. 337-TA-745) with regard to claim 12 of U.S. Patent No. 6,272,333 (the ‘333 patent).

By way of background, the Complainant in this investigation is Motorola Mobility, LLC (formerly Motorola Mobility, Inc., “Motorola”) and the Respondent is Apple.  On May 16, 2012, ALJ Pender issued the public version of an initial determination (“ID”) finding a violation of Section 337 as to U.S. Patent No. 6,246,697, but no violation of Section 337 with respect to U.S. Patent Nos. 6,272,333, 6,246,862, and 5,636,223.  See our May 31, 2012 post for more details on the ID. 

On September 17, 2012, the Commission issued the public version of its opinion affirming-in-part, reversing-in-part, and remanding-in-part the findings in the ID.  In relevant part, the Commission found that the accused mobile devices did not infringe the ‘333 patent and that Motorola failed to establish the technical prong of the domestic industry requirement with regard to the ‘333 patent.  See our September 20, 2012 post for more details on the Commission’s decision. 

The ’333 patent is directed to a method and apparatus for controlling a delivery of data from a fixed portion of the wireless communication system to a subscriber unit, and insures that subscriber units are sent information over the network that can be utilized by the subscriber unit, even if the subscriber unit has been customized.

According to the Federal Circuit’s opinion, the parties’ infringement dispute centers around a dispositive claim construction issue concerning “the correlation between ‘a change in accessibility’ and what must be programmed to occur in response to ‘a change in accessibility,’”  an element not explicitly construed by the Commission.  Apple’s position was that the claim requires every change in accessibility to trigger an update to the registry and a communication to the network.  Motorola argued that not every change required communication, as long as the mobile device communicates in response to some changes in accessibility.

The Federal Circuit agreed with Apple, and explained that the disputed claim limitation requires both an update to the application registry and a communication of that specific change in accessibility to the fixed portion of the wireless network.  The Court relied on antecedent basis in the claim and use of the term “and” rather than “or” to come to this conclusion.  According to the Federal Circuit, Apple’s products include two different functionalities, covering situations (i) where an update is made, but no communication is sent to the network, and (ii) where a communication is sent to the network, but no update is made.  As such, Apple’s products do not infringe the ‘333 patent. 

The Federal Circuit also considered whether or not Motorola met the technical prong of the domestic industry requirement.  Since Motorola’s Droid 2 devices were determined to have the same relevant features as the accused Apple devices, the technical prong of the domestic industry requirement was found not to be met under the Court’s claim construction.

As such, the Federal Circuit affirmed the Commission’s finding of no violation of Section 337 with respect to the ‘333 patent.