By way of background, the Complaint in this investigation is Schweitzer-Mauduit International Inc.  The Respondents are Julius Glatz GmbH, LIPtec GmbH, and KneX Worldwide LLC (collectively, the “Respondents”). 

According to the notice, ALJ Gildea determined that no violation of Section 337 had occurred by the Respondents in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain reduced ignition proclivity cigarette paper wrappers by reason of infringement of (i) claims 1-6, 10-18, and 22-25 of U.S. Patent No. 5,878,753 (the ‘753 patent), and (ii) claims 36, 43, and 45 of U.S. Patent No. 6,725,867 (the ‘867 patent). 

ALJ Gildea further determined that a domestic industry does not exist that practices the ‘753 patent.  ALJ Gildea also determined that a domestic industry does exist that practices the ‘867 patent. 

With respect to the public interest, ALJ Gildea determined that enforcement of a remedy in this investigation would not raise public interest issues.

The notice issued by ALJ Gildea released only the first two pages of the ID.  We will provide additional information after the public version of the ID issues in its entirety.

By way of background, the Complainant in this investigation is Apple, Inc. and the Respondent is Motorola Mobility, Inc.

According to the notice, ALJ Essex held that no violation of Section 337 occurred in connection with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain mobile devices and related software by reason of infringement of certain claims of U.S. Patent Nos. 7,812,828, 7,663,607, and 5,379,430.

The notice issued by ALJ Essex released only the information noted above.  We will provide additional information once the public version of the ID issues in its entirety.

By way of background, the Complainants in this matter are Thomson Licensing SAS and Thomson Licensing LLC and the Respondents are Chimei Innolux Corp., Chi Mei Optoelectronics USA, Inc., Innolux Corp. (collectively, “CMI”); Qisda Corp., Qisda America Corp., Qisda (Suzhou) Co., Ltd. (collectively, “Qisda”); BenQ Corp., BenQ America Corp., BenQ Latin America (collectively, “BenQ”); AU Optronics Corp., AU Optronics Corp. America; Realtek Semiconductor Corp.; and MStar Semiconductor, Inc.  

According to the notice, ALJ Rogers determined that there is a violation of Section 337 with respect to U.S. Patent No. 5,648,674 (the ‘674 patent).  Specifically, ALJ Rogers found that (i) claims 1, 7-9, 11, 13-14, 16-18 of the ‘674 patent “are infringed by the CMI accused products including the Type 2 Array Circuitry and any Qisda or BenQ accused product incorporating these CMI accused products,” (ii) claims 1, 7-9, 11, 13-14, 16-18 of the ‘674 patent “are not infringed by the CMI accused products including the Type 1 Array Circuitry, Type 3 Array Circuitry, Type IZO Array Circuitry, or any Qisda or BenQ accused products incorporating these CMI accused products,” and (iii) the “finding of infringement does not apply to the Qisda-manufactured G2200W LCD monitor, because Qisda and BenQ have established that it is covered by a valid license.”

ALJ Rogers also determined that there is no violation of Section 337 with respect to U.S. Patent Nos. 5,978,063; 5,375,006; 5,621,556; and 6,121,941.    

The notice issued by ALJ Rogers released only the conclusions of law in the ID.  We will provide additional information after the public version of the ID issues in its entirety.

By way of background, the Complainant in this investigation is HTC Corporation (“HTC”) and the Respondent is Apple Inc. (“Apple”).  In the ID, ALJ Bullock determined that no violation of Section 337 had occurred by Apple in the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain portable electronic devices and related software.  As detailed below, the ALJ found that Apple does not infringe various claims of U.S. Patent Nos. 6,999,800 (the ‘800 patent), 5,541,988 (the ‘988 patent), 6,320,957 (the ‘957 patent), and 7,716,505 (the ‘505 patent).  ALJ Bullock also found that the asserted claims are not invalid.  Lastly, the ALJ found that a domestic industry exists with respect to the ‘988 and ‘957 patents, but not with respect to the ‘800 and ‘505 patents.  Because the domestic industry analyses in the ID are heavily redacted, we have not provided a separate discussion of these issues below.

The Dialer Patents

Infringement:

The ‘988 patent and ‘957 patent are directed to telephone dialers.  Based on the claim constructions established, ALJ Bullock determined that Apple’s products do not practice the “keypad,” “manually operable selector,” “and manually operable scanning device” of the asserted claims and thus do not infringe the ‘988 or ‘957 patents either literally or under the doctrine of equivalents. 

Specifically, ALJ Bullock determined that “the claimed ‘keypad’ must be one that can enter letters and numbers” and since the Apple products have separate keypads for entering letters or numbers, “HTC has failed to show, by a preponderance of the evidence, that Apple’s accused products satisfy the ‘a keypad to generate a sequence of indicia corresponding to a telephone number’ limitation of claim 1 of the ‘988 patent and claim 8 of the ‘957 patent.”

With regard to the “manually operating scanning device/scanning control device,” construed as a sliding or rotary-type control, HTC argued that the combination of touchscreen, touch processor, and associated software in the accused products “provide a sliding or sliding-type control that enables a user to look through and select information on a particular page.”  Apple argued that HTC was attempting to inappropriately equate “control by sliding” with a finger on the touchscreen with a “sliding-type control” as set forth in the claim construction of the scanning control device.  ALJ Bullock agreed, noting that “the only thing that moves or slides is the user’s finder, which even HTC concedes cannot be part of the claimed apparatus,” and determined that “because the accused products lack a physical moveable ‘sliding-type control,’ they do not infringe the Dialer patents.”

Since the “manually operable selector” was construed to be “a part moveable by hand used [to select]” HTC argued that the touchscreens of the accused products meet this limitation in a number of ways, including selecting user groups from within phone contacts, directory entries in a favorite or recent page, etc.  Apple argued that “because there are no moveable parts, there is no infringement.”  ALJ Bullock agreed with Apple, determining that since the touchscreen is not moveable, nor are any virtual buttons, and thus “HTC has failed to prove by a preponderance of the evidence that Apple’s accused products literally infringe claim 1 of the ‘988 patent or claim 8 of the ‘957 patent.” 

Invalidity:

Apple unsuccessfully attempted to argue that the Dialer patents are not entitled to their earliest priority dates, alleging that the first applications fail to disclose the claimed “discrete pages” and “page selection device.”  ALJ Bullock agreed with HTC that there was sufficient disclosure of these limitations to warrant a priority date of at least May 6, 1992, and thus three references identified by Apple were eliminated as prior art.  ALJ Bullock determined that Apple’s “cursory assertions and conclusory arguments” regarding the remaining two references were insufficient to meet the clear and convincing standard necessary to invalidate the Dialer patents.

Power Management Patents

Infringement:

In heavily redacted portions of the opinion relating to the ‘800 patent, ALJ Bullock determined that the elements “switching the PDA system from normal mode to sleep mode when the PDA system has been idle for a second period of time” and “implementing a power detection method comprising steps of: detecting an amount of power of a source in the power system; switching the mobile phone system to off mode when the detected amount is less than a first threshold; and switching the PDA system to off mode when the detected amount is less than a second threshold” were not met by the accused products, and therefore Apple did not infringe the ‘800 patent.

In similarly heavily redacted portions of the opinion relating to the ‘505 patent, ALJ Bullock determined that the elements “maintaining only sufficient power to restore the device,” “when the remaining power of the battery exceed[s] the amount, supplying power to the volatile memory and accessing data from the non-volatile memory to initiate the normal device operation” and “determining whether the remaining power of the battery exceeds an amount required for a normal device operation” were not met by the accused products, and therefore Apple did not infringe the ‘505 patent.

Invalidity:

ALJ Bullock held that the ‘800 patent was entitled to its priority date and that the prior art devices relied upon by Apple do not teach all the limitations of claim 1, and therefore the ‘800 patent is valid in light of these devices.  The details of the invalidity section in relation to the ‘800 patent are heavily redacted.  ALJ Bullock also determined that the ‘505 patent was entitled to its priority date, and the single reference relied on by Apple did not anticipate the ‘505 patent or render it obvious, noting that “Apple makes nothing more than a one-paragraph cursory argument that the claims of the ‘505 patent are invalid.  This is the extent of Apple’s argument.  Accordingly…making superficial assertions and conclusory arguments is insufficient for Apple to meet the clear and convincing standard necessary to invalidate the ‘505 patent.”

In light of the above, ALJ Bullock determined that there was no violation of Section 337 based on infringement of the ‘800, ‘505, ‘957, and ‘988 patents.

Remedy and Bond

In the event that the ITC finds a violation of Section 337, ALJ Bullock recommended that the ITC issue a limited exclusion order “that covers all of Apple’s accused portable electronic devices and related software found to infringe the asserted patents.”  ALJ Bullock further recommended that if the ITC determines a violation of Section 337 has occurred, a cease and desist order against Apple should issue.  Lastly, the ALJ also recommended that a bond not be required during the Presidential review period.

ITC Review

As explained in our December 20, 2011 post, the ITC has determined to review the ID in part with respect to the ‘800 patent, and has terminated the investigation with respect to the ‘500, ‘988, and ‘957 patents.

By way of background, the Complainant in this investigation is Microsoft Corporation and the Respondent is Motorola Mobility, Inc.

According to the notice, ALJ Essex held that a violation of Section 337 occurred in connection with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain mobile devices, associated software, and components thereof by reason of infringement of claims 1, 2, 5, and 6 of U.S. Patent No. 6,370,566.  ALJ Essex further determined that no such violation of Section 337 had occurred with respect to certain claims of U.S. Patent Nos. 5,758,352; 6,826,762; 6,909,910; 7,644,376; 5,664,133; and 6,578,054.

The notice issued by ALJ Essex released only the information noted above.  We will provide additional information once the public version of the ID issues in its entirety.

While the investigation involves multiple patents and numerous respondents, Complainants moved for temporary relief only against Respondents Traditional Sporting Goods, Inc., d/b/a Traditions Sporting Firearms and Ardesa, S.A., d/b/a Ardesa Firearms (the “Respondents”) in connection with U.S. Patent No. 7,814,694 (the ‘694 patent).  According to the ID, the ‘694 patent generally relates to a muzzle-loading firearm with a removable breech plug having a sealing element.

The motion for temporary relief was, in accordance with ITC precedent, analyzed under Federal Circuit guidelines for granting preliminary injunctions.  Specifically, ALJ Rogers assessed (1) the likelihood of the patentee’s success on the merits; (2) irreparable harm if the motion is not granted; (3) the balance of hardships between the parties; and (4) the public interest.

Likelihood of Success

ALJ Rogers first construed certain terms from claims 1, 10 and 11 of the ‘694 patent to determine likelihood of success.  Based on the construction, ALJ Rogers found that Respondents’ anticipation and obviousness arguments did not raise substantial questions of invalidity.

For alleged infringement of claims 1 and 11 of the ‘694 patent, the issue revolved around whether the accused Vortek rifle contained a “deformable seal element” and whether that seal element has a “stepped initial portion.”  ALJ Rogers determined that the evidence supports a finding that the Vortek rifle does, indeed, contain a deformable seal element.  He also found, however, that the seal element does not have a stepped initial portion and, therefore, Respondents had raised a substantial question of infringement.

Infringement of claim 10 hinged on the existence of a “seal element” and a nose portion of the breech plug.  Based on the analysis of claims 1 and 11 of the ‘694 patent, ALJ Rogers determined that the rifle has a seal element and also found it contained a nose portion of the breech plug.  Accordingly, ALJ Rogers determined that the Complainants demonstrated a likelihood of success on the merits regarding infringement of claim 10 of the ‘694 patent by the accelerator breech plug used with the Vortek rifle. 

Turning to the domestic industry analysis, ALJ Rogers determined that the unrebutted evidence supported a finding that both the technical and economic prongs have been satisfied.

Irreparable Harm

Complainants argued irreparable harm based on (1) price erosion; (2) exclusivity erosion; (3) loss of goodwill and reputation; and (4) unquantifiable lost sales and market share.  Complainants argued that the competition forced a lowering of prices, and in order to compete, Complainants were forced to put patented technology in lower-end models.

Respondents argued price erosion is compensable, Complainants cite no case law supporting “exclusivity erosion,” the loss of market share is speculative, and offered no evidence of lost sales.

ALJ Rogers found Complainants failed to prove price erosion and, even if they had, they failed to show causation.  ALJ Rogers also rejected the “exclusivity erosion” theory, finding it unsupported by statute or case law.  ALJ Rogers further determined that the loss of goodwill and reduced investment due to infringement to be speculative.

Balancing of Hardships

Because ALJ Rogers did not find a likelihood of success, he analyzed the balance of hardships only in the event that the Commission found a likelihood of success and irreparable harm on review.  ALJ Rogers found the balance of hardship favored neither Complainants nor Respondents.

Public Interest

Because ALJ Rogers did not find a likelihood of success or irreparable harm, he analyzed the public interest only in case the Commission found a likelihood of success and irreparable harm on review.  ALJ Rogers found that muzzle-loading firearms are not the type of products that implicate a critical public interest, so this factor would not preclude issuance of a temporary exclusion order.

Bond

On the issue of bond, ALJ Rogers determined that because Complainants did not demonstrate both of the first two preliminary injunction factors, bond is unnecessary.  ALJ Rogers did, however, conduct an analysis of bond in the event that the Commission determined on review that Complainants are entitled to a temporary exclusion order, but the bond amount was redacted from the public version of the ID.

By way of background, the Complainant in this matter is Motiva, LLC and the Respondents are Nintendo Co., Ltd. and Nintendo of America Inc. (collectively “Nintendo”). 

According to the notice, ALJ Rogers determined that there is no violation of Section 337 with respect to U.S. Patent Nos. 7,292,151 (the ‘151 patent) and 7,492,268 (the ‘268 patent).  Specifically, ALJ Rogers determined that the accused Nintendo products do not infringe (1) claims 16, 27-32, 44, 57, 68, and 84 of the ‘151 patent, and (2) claims 2, 4, 11, and 14 of the ‘268 patent.  ALJ Rogers also determined that an industry does not exist in the U.S. that exploits the ‘151 or ‘268 patents, as required by 19 U.S.C. § 1337(a)(2).  ALJ Rogers further determined that the claims of the ‘151 and ‘268 patents are neither invalid nor unenforceable due to inequitable conduct.

The notice issued by ALJ Rogers released only the conclusions of law in the ID.  We will provide additional information after the public version of the ID issues in its entirety.

By way of background, the Complainant in this investigation is FlashPoint Technology, Inc. (“Flashpoint”) and the remaining Respondents are HTC Corp. and HTC America, Inc. (collectively, “HTC”).  The patents-in-suit are U.S. Patent Nos. 6,262,769 (the ‘769 patent) and 6,163,816 (the ‘816 patent).  According to the ID, ALJ Luckern determined that no violation of Section 337 occurred by HTC.  Specifically, ALJ Luckern determined, inter alia, that (i) Flashpoint failed to show that the asserted claims of the ‘796 and ‘816 patents are infringed, (ii) it has been established that the asserted claims of the ‘816 patent are invalid under 35 U.S.C. § 102(b) (on sale bar), (iii) it was not established that the asserted claims of the ‘769 and ‘816 patents are invalid in view of prior art, (iv) Flashpoint’s rights under the ‘816 and ‘769 patents were not exhausted with respect to HTC’s accused Windows Phone 7 products, and (v) Flashpoint did not establish a domestic industry with respect to either of the ‘769 or ‘816 patents.    

Flashpoint’s complaint originally named Respondents Nokia Corp. and Nokia, Inc.; Research in Motion Ltd. and Research in Motion Corp.; HTC Corporation and HTC America, Inc.; LG Electronics, Inc., LG Twin Towers, LG Electronics USA, Inc. and LG Electronics MobileComm USA, Inc.  The Nokia, Research in Motion and LG Respondents were terminated from the investigation, leaving only the HTC Respondents.

Flashpoint alleged direct and indirect infringement of claims 1-7, 11-13, 16-23, 26 and 30-32 of the ‘769 patent (a method and system for image capture, rotation and display in a digital camera) and claims 1-5, 8-13 and 16 of the ‘816 patent (system and method for retrieving capability parameters in an electronic hand-held device.)  According to Flashpoint, HTC’s phones running Android 2.1 or higher infringed both patents and its phones running Windows 7 infringed the ‘769 patent.  Flashpoint selected the Droid X as a representative product for the Android phones and the HD7 as exemplary for Windows 7 phones.   The Commission investigative attorney (“OUII”) agreed with Flashpoint that the Android and Windows 7 phones infringed the ‘769, but argued that Flashpoint failed to prove infringement of the ‘816 patent.

In response, HTC alleged non-infringement and that the patents were anticipated, obvious and invalid due to the on-sale bar.

ALJ Luckern applied his claim construction and determined that neither the Droid X nor the HD7 infringed any of the asserted patent claims.  ALJ Luckern further determined that Flashpoint’s infringement arguments for the ‘816 patent were contrary to his claim construction and conflicted with its own expert’s testimony.  Since those phones were representative of all the phones, he held that none of the accused phones infringed.

Next up were HTC’s various invalidity allegations.  HTC argued that the ‘769 patent was obvious under various combinations of references and the ‘816 patent was anticipated.  OUII agreed with the former allegation and disagreed with the latter.  As part of its obviousness/anticipation defense, Flashpoint had argued they were entitled to the date of conception rather than the date of filing.  ALJ Luckern held that Flashpoint failed to prove diligence in reducing the invention to practice and that the inventor’s testimony was uncorroborated.  

ALJ Luckern also held that the references HTC cited in attacking the ‘769 patent disclosed the elements of the claim, but that HTC failed to prove the motivation or the manner by which these references would have been combined.  He also rejected the anticipation argument.  In this regard, ALJ Luckern held that the reference disclosed most of the elements of the ‘816 patent, but all the elements in the reference existed outside the device while the ‘816 patent claims required that they be “contained on a handheld device.”  ALJ Luckern further determined that the ‘816 patent was invalid due to the on-sale bar.

In addition, ALJ Luckern found that Flashpoint failed to prove the technical prong of the domestic industry requirement.  Flashpoint argued certain Motorola devices practiced the ‘769 patent and Apple also licensed and practiced the patent.  Based on his claim construction, ALJ Luckern rejected these arguments.  Likewise, he held that the Motorola devices did not practice the ‘816 patent either.

Regarding remedy and bonding, if the Commission ultimately found a violation in this investigation, ALJ Luckern recommended a limited exclusion order and no bond.

By way of background, the Complainants in this investigation are Apple Inc. and NeXT Software, Inc. (collectively “Apple”). The Respondents are High Tech Computer Corp., HTC America Inc., and Exedea, Inc. (collectively, “HTC”).  The four patents-at-issue are: U.S. Patent Nos. 5,481,721 (the ‘721 patent), 6,275,983 (the ‘983 patent), 6,343,263 (the ‘263 patent), and 5,946,647 (the ‘647 patent).

In the ID, ALJ Charneski found that HTC infringed asserted claims 1, 2, 24, and 29 of the ‘263 patent and asserted claims 1, 8, 15, and 19 of the ‘647 patent in violation of Section 337.  As to the remaining claims and patents, the ALJ determined that Complainants had not established that HTC infringed claim 3 of the ‘647 patent or the asserted claims of the ‘983 and ‘721 patents.

‘263 patent

The ‘263 patent is directed to the transmission of data to and from a computer, more particularly to a system for performing real-time signal processing of data that is serially transmitted to and from a computer. Independent claims 1 and dependent claims 2, 24, and 29 were asserted in the investigation. The disputed terms in the ‘263 patent included “realtime” and “device handler.” The ALJ agreed with Apple, that the term “realtime” means “within a defined, upper bounded time limit.” As to “device handler,” the ALJ adopted the construction asserted by both Apple and the Commission Investigative Staff (OUII), construing the term to mean “software associated with an interface device that sets up dataflow paths, and also presents data and commands to a realtime signal processing subsystem.”

Both HTC and the OUII contended that several limitations of independent claim1 were not met by HTC’s accused products. ALJ Charneski disagreed, determining that the accused HTC products met each limitation of claims 1, 2, 24, and 29 of the ‘263 patent.

ALJ Charneski also found that Apple’s domestic industry products satisfied the technical prong of the domestic industry requirement with respect to the ‘263 patent.

HTC and the OUII challenged the ‘263 patent’s validity, arguing that an AT&T VCOS system (“VCOS”) and U.S. Patent No. 5,790,781 to Cox (“Cox”) anticipated and rendered obvious the asserted claims of the ‘263 patent. The OUII also challenged the validity of dependent claim 24 as indefinite. In response, Apple asserted that VCOS and Cox were “fundamentally different from the ‘263 patent, and in the same way as the art cited and overcome during prosecution.” Apple also asserted that the language of dependent claim 24 was definite. ALJ Charneski determined that both VCOS and Cox failed to disclose several elements of the asserted claims of the ‘263 patent. VCOS failed to disclose the “realtime API” and “device handler” limitations of the asserted claims. The ALJ further determined that Cox was not prior art against claim 1 as it was not conceived and reduced to practice before the priority date of the ‘263 patent. In addition, Cox did not disclose the “realtime API” and “device handler program” elements of the asserted claims. As to claim 24, the ALJ determined that the relevant claim language was not insolubly ambiguous.

‘983 patent

The ‘983 patent is directed to systems and methods of enabling object-oriented applications to access in an object-oriented manner a procedural operating system having a native procedural interface.  Independent claims 1 and 7 of the ‘983 patent were asserted in the investigation. The disputed phrases in the ‘983 patent included “to selectively load required object-oriented methods into the executable program memory during runtime before invocation of the object-oriented methods,” “a procedural operating system, having a native interface,” and “means for making determinations during runtime execution if object-oriented methods to be invoked are present in the executable program memory.” With regard to the phrase “to selectively load required object-oriented methods into the executable program memory during runtime before invocation of the object-oriented methods,” ALJ Charneski rejected both parties’ and the OUII’s constructions, construing the phrase to mean “physically or virtually copying, or transferring, required object-oriented methods into the executable memory during runtime before invocation of the object-oriented methods as needed, where those methods do not include or cover classes.” As to the phrase “a procedural operating system, having a native interface,” the ALJ adopted Apple’s construction, construing the phrase to mean “an operating system having a procedural interface that includes procedural functions which are called to access services.” Concerning the means plus function phrase, “means for making determinations during runtime execution if object-oriented methods to be invoked are present in the executable program memory,” the ALJ again agreed with Apple, construing the structure of the claim term to mean “a computer processor configured to perform the function of element 308 in Fig. 3, as described in the ‘983 patent specification at col. 8, lns. 55-59 and col. 9, lns. 62-65.”

As to infringement, the ALJ found that the accused HTC products did not infringe the ‘983 patent. According to the ID, Apple had not shown that the HTC accused products included the “executable program memory,” “means for making determinations during runtime execution if object-oriented methods to be invoked are present in the executable program memory,” or “to selectively load required object-oriented methods” elements of claim 1. Nor had Apple shown that the HTC accused methods met the “means for making determinations” or “selectively loading the object-oriented methods” elements of claim 7.

ALJ Charneski also determined that Apple had not satisfied the technical prong of the domestic industry requirement with respect to the ‘983 patent. Specifically, Apple’s domestic industry products failed to meet the “selective loading” limitation of claims 1 and 7.

HTC only argued invalidity of the ‘983 patent under Apple’s proposed claim constructions. Apple’s proposed constructions eliminated the limitation of “selectively loading the object-oriented methods.” Because the ALJ construed claims 1 and 7 to require this selective loading of methods, the ALJ determined that HTC’s invalidity contentions were “no longer in play” and HTC had not shown that claims 1 and 7 of the ‘983 patent were invalid.

‘647 patent

The ‘647 patent is directed to a system and method for performing computer-based actions on structures identified in computer data. Independent claims 1 and 15 and dependent claims 3, 8, and 19 of the ‘647 patent were asserted in the investigation. The disputed terms and phrases in the ‘647 patent include “linking actions to the detected structures”/“linking at least one action to the detected structure,” and “input device.” With respect to the phrases “linking actions to the detected structures” and “linking at least one action to the detected structure,” ALJ Charneski sided with Apple, construing the phrases to mean “linking detected computer structures to computer subroutines that cause the CPU to perform a sequence of operations on the particular structures to which they are linked” and “linking a detected structure to at least one computer subroutine that causes the CPU to perform a sequence of operations on the particular structures to which it is linked,” respectively. As to the term “input device,” the ALJ adopted HTC’s and the OUII’s construction, giving it its plain and ordinary meaning “computer hardware but not computer software.”

Using these constructions, ALJ Charneski determined that the HTC accused products satisfied every claim element of claims 1 and 8 of the ‘647 patent and therefore directly infringed. The ALJ determined that the HTC accused products did not infringe claim 3 which required that “the input device receives the data from an application running concurrently.” According to the ID, Apple only identified software as such an “input device,” but the ALJ determined that software alone was not an “input device,” thus HTC did not infringe literally. ALJ Charneski also determined that HTC did not infringe claim 3 under the doctrine of equivalents. Finally, the ALJ determined that HTC’s customer’s use of the HTC products satisfied every claim element of method claims 15 and 19, and HTC induced infringement of those claims.

As to domestic industry, the ALJ determined, and HTC did not contest, that Apple satisfied the technical prong of the domestic industry requirement with respect to claims 1, 4, 8, 15, and 19 of the ‘647 patent.

HTC and the OUII challenged the validity of the ‘647 patent. Specifically, HTC argued that the asserted claims of the ‘647 patent were anticipated or rendered obvious by the Perspective System and Handbook (“Perspective”), the NeXTSTEP reference manual and NeXTSTEP System (“NeXTSTEP”), and/or U.S. Patent No. 5,859,636 to Pandit (“Pandit”). The OUII argued that Perspective anticipated and/or rendered the ‘647 patent obvious and, in the alternative, that Pandit anticipated the asserted claims of the ‘647 patent. Apple responded that neither Perspective, NeXTSTEP, or Pandit disclosed all elements of the asserted claims. Moreover, Apple argued that Pandit was not prior art. ALJ Charneski agreed with Apple, determining that HTC and the OUII had not shown the asserted claims of the ‘647 patent were anticipated or rendered obvious by Perspective, NeXTSTEP, or by Pandit. Specifically, Perspective failed to disclose elements of independent claims 1 and 15 that required “linking actions to the detected structure,” “enabling the selection of a linked action,” and “performing the selected action on the selected structure.” As to NeXTSTEP, the ALJ determined that HTC had not identified a proper NeXTSTEP “system” nor could it contend that the individual references from different versions of NeXTSTEP constituted a single system. Moreover, ALJ Charneski found that NeXTSTEP did not disclose “detecting structures,” “linking actions to detected structures,” or “enabling the selection of a detected structure.  With respect to the Pandit reference, the ALJ determined that Pandit was not prior art because the inventors conceived and reduced to practice the inventions of the ‘647 patent well before Pandit’s filing date. The ALJ added that, in addition to not being prior art, Pandit did not disclose “detecting structures” or “enabling the selection of a detected structure and a linked action.”

‘721 patent

The ‘721 patent is directed to a method and apparatus for the distribution of objects and the sending of messages between objects that are in different processes. Independent claims 1 and dependent claims 5 and 6 of the ‘721 patent were asserted in the investigation. The disputed terms and phrases in the ‘721 patent include “first processing means”/“second processing means,” “proxy,” “operating system based message,” and “dynamic binding.” As to the terms “first processing means” and “second processing means,” Apple argued that the “processing means” terms should be construed as “a processor.” HTC and the OUII contended, and ALJ Charneski agreed, that these terms were means plus function terms and the functions and structures of those terms are construed as proposed by HTC and OUII. As to the term “proxy,” the ALJ agreed with Apple, construing it to mean “an object that acts as a local receiver for objects in the local process on behalf of another object.” In doing so, the ALJ rejected HTC and the OUII’s revised construction of “proxy” which would have added a new limitation of “unicity.” The ALJ determined that “unicity” was not related to the claims, was found nowhere in the language of HTC’s construction, and represented an untimely change of position. Concerning the phrase “operating system based message,” ALJ Charneski again adopted Apple’s construction, construing the phrase to mean “a message that is based, or dependent, on an operating system.” Finally, with respect to the term “dynamic binding,” the ALJ chose a construction similar to that proposed by HTC, construing it to mean “permitting messages to be bound to the actual methods to be invoked depending on the class of the receiver, allowing objects of any classes that implement a given method to be substituted for the target object at run time.”

Regarding infringement, the ALJ found that the accused HTC products did not infringe the ‘721 patent. According to the ID, Apple had not shown that the HTC accused products included the required “first processing means,” “second processing means,” or dynamic binding” limitations of independent claim 1.

Although HTC did not brief the technical prong of the domestic industry requirement with respect to the ‘721 patent, the OUII argued against Apple, alleging that Apple did not prove such requirement was met. ALJ Charneski agreed, determining that Apple had only relied on “a processor” to meet the first and second “processing means” limitations of the claims. Apple had not construed structures for those terms under a means plus function construction and had thus failed to prove it practiced the asserted claims of the ‘721 patent.

As with the ‘983 patent, HTC only argued invalidity of the ‘721 patent under Apple’s proposed claim constructions. The ALJ determined that because the terms “first processing means” and “second processing means” were construed in agreement with HTC and the OUII as means plus function terms, HTC had not shown that its cited references and combinations of references would anticipate or render obvious the asserted claims of the ‘721 patent.

Remedy and Bond

Having found a violation of Section 337 as to the ‘263 and ‘647 patents, ALJ Charneski recommended that the ITC issue a limited exclusion order directed to certain personal data or mobile communications devices or related software found to infringe the ‘263 and ‘647 patents. The ALJ did not recommend a cease and desist order, finding it unnecessary because HTC inventories of accused products in the US are for testing purposes only, are not approved by the US government, and are not for sale. In addition, the ALJ noted that HTC surrenders all title and interest to its commercial products when they arrive and are warehoused in the US. The ALJ also recommended that a bond not be required during the Presidential review period.