By Eric Schweibenz and Alex Englehart
On July 24, 2014, the Federal Circuit issued an order in In re Nokia Inc. and Nokia Corp. (2014-133). In the order, the Federal Circuit denied Nokia Inc. and Nokia Corp.'s (collectively, "Nokia") petition for a writ of mandamus to compel the U.S. International Trade Commission (the "Commission") to consider a Nokia non-infringement argument in the underlying investigation of Certain 3G Mobile Handsets and Components Thereof (Inv. No. 337-TA-613).

By way of background, the Commission instituted the underlying 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 by Nokia in the importation and/or sale of certain 3G mobile handsets and components thereof.  On August 14, 2009, former Chief ALJ Paul J. Luckern issued his Initial Determination ("ID") finding no violation of Section 337 on the grounds that the asserted claims of the patents-in-suit were not invalid and not infringed.  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 affirming the ALJ's finding of no violation with modified reasoning.  See our October 19, 2009 post for more details.

InterDigital appealed the Commission's decision to the Federal Circuit.  In the Federal Circuit's original opinion, the Federal Circuit reversed the Commission's findings that Nokia did not infringe InterDigital's U.S. Patent Nos. 7,190,966 (the '966 patent) and 7,286,847 (the '847 patent), and remanded for further proceedings.  In particular, the Federal Circuit found that the ITC had erred in its construction of the claim terms "code" and "increased power level," which in turn had led to erroneous determinations of non-infringement.  The Federal Circuit also rejected an alternative argument by Nokia that Nokia could not infringe the '966 and '847 patents because the scrambling codes in the Nokia system are not transmitted.  According to the opinion, neither the ALJ nor the Commission had addressed this scrambling codes argument, and it would therefore have been improper for the Federal Circuit to uphold the Commission's final determination on that basis.  However, the Federal Circuit noted that Nokia was free to raise the issue on remand.  See our August 3, 2012 post for more details.

According to the July 24, 2014 order, on remand, the Commission determined that Nokia had waived any argument that the scrambling codes in their accused systems are not transmitted as required by the claims at issue.  In response, Nokia filed a petition for a writ of mandamus at the Federal Circuit to compel the Commission to consider the scrambling codes argument, based on the Federal Circuit's mandate in the original appeal.

In the order, the Federal Circuit denied Nokia's petition for a writ of mandamus.  The Federal Circuit found that while it had previously said that Nokia was free to raise the scrambling codes argument on remand, this did not mean that the Commission was precluded from considering whether that issue had been waived and thus not preserved for review.  The Court noted that to the extent that Nokia wished to challenge the merits of the Commission's waiver determination, it could do so on appeal after final judgment.

Judge Newman dissented from the Federal Circuit's order.  According to Judge Newman, the Court's previous mandate required the Commission to consider Nokia's scrambling codes argument.  Thus, she would have found that the Commission erred in declining to consider the merits of the argument on remand.