18
Feb
By John Presper
On February 12, 2014, the International Trade Commission (“the Commission”) issued a Notice and Order remanding the investigation in Certain 3G Mobile Handsets and Components Thereof (Inv. No. 337-TA-613).

By way of background, the Commission instituted the investigation on September 11, 2007 based on a complaint filed by InterDigital Communications Corp. and InterDigital Technology Corp. (collectively, “InterDigital”).  The complaint, as amended, alleged violations of Section 337 in the importation and/or sale of certain 3G mobile handsets and components thereof that infringed certain claims of U.S. Patent Nos. 7,117,004 (the ‘004 patent), 7,190,966 (the ‘966 patent), 7,286,847 (the ‘847 patent), and 6,693,579 (the ‘579 patent) by Nokia Corporation and Nokia, Inc. (collectively, “Nokia”).

On August 14, 2009, ALJ Luckern issued his final Initial Determination (“ID”) finding no violation of Section 337 on the grounds that asserted claims of the patents-in-suit were not invalid and not infringed.  Additionally, the ALJ found that the ‘004, ‘966, and ‘847 patents were not unenforceable due to prosecution laches, and that the ‘579 patent also was not unenforceable.  See our September 23, 2009 post for more details on the ID.

The Commission reviewed the ID and on October 16, 2009 issued a notice modifying the ALJ’s construction of the term “access signal” in the asserted claims of the ‘847 and ‘004 patents.  The Commission also reviewed and took no position on the ALJ’s construction of the term “synchronize” in the asserted claims of the ‘847 patent.  Further, the Commission took no position on validity with respect to any of the asserted patents and did not review the ALJ’s construction of the terms “code” and “increased power level” in the asserted claims of the ‘966 and ‘847 patents.  See our October 19, 2009 post for more details.

InterDigital appealed the Commission’s final determination, specifically regarding the unreviewed constructions of the “code” and “increased power level” limitations.  The Federal Circuit reversed the Commission’s construction of these terms, reversed the Commission’s determination of non-infringement as to the ‘966 and ‘847 patents, and remanded the case to the Commission for further proceedings.  Nokia subsequently filed a petition for panel rehearing and rehearing en banc on the issue of domestic industry which the Court denied.

According to the Order, the investigation was remanded to the Chief ALJ for assignment to a presiding ALJ to make findings and issue a remand initial determination (“RID”) regarding:  (i) whether the accused Nokia handsets meet the “generated using a same code” or “the message being transmitted only subsequent to the subscriber unit receiving the indication” limitations in the asserted claims of the ‘966 patent; (ii) whether the accused Nokia handsets meet the “generated using a same code” or “function of a same code” limitations in the asserted claims of the ‘847 patent; (iii) whether the 3GPP standard supports a finding that the pilot signal satisfies the claim limitation “synchronized to a pilot signal” in the asserted claims of the ‘847 patent by synchronizing to the P-SCH or S-SCH signals; and (iv) whether, based on the ALJ’s construction of “access signal,” the PRACH message is transmitted during the power ramp up process in connection with the limitations “the message being transmitted only subsequent to the subscriber unit receiving the indication” and “transmitting, in response to receipt of said acknowledgement, an access signal” in the asserted claims of the ‘847 patent.

The investigation was also remanded so that the presiding ALJ could reopen the evidentiary record and take evidence and/or briefing regarding Nokia’s currently imported products, the public interest factors enumerated in Section 337(d) and (f), whether the issue of the standard-essential nature of the patents-in-suit is contested, and whether there is patent hold-up or reverse hold-up in the investigation.  An analysis of the additional evidence and/or briefing was ordered to be included in the RID.
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