By Eric Schweibenz
On September 30, 2010, Chief ALJ Paul J. Luckern issued Order No. 22 (dated August 4, 2010) denying Respondent Apple Inc.’s motion for summary determination of noninfringement of U.S. Patent No. 6,292,218 (the ‘218 patent) in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).

By way of background, the Complainant in this investigation is Eastman Kodak Company (“Kodak”) and the Respondents are Research In Motion, Ltd., Research In Motion Corporation (collectively, “RIM”),  and Apple Inc. (“Apple”).  The Commission instituted the investigation on February 17, 2010.  A Markman hearing on claim construction was conducted on May 24-25, 2010 and ALJ Luckern issued an initial determination ("ID") construing claim terms on June 22, 2010.  See our July 21, 2010 and July 27, 2010 posts for more details. On July 2, 2010, Apple filed a summary determination of noninfringement of the ‘218 patent as to all three accused Apple devices: the iPhone 3G, iPhone 3GS, and iPhone 4.  On July 12, 2010, the Commission Investigative Staff (“OUII”) and Kodak filed responses asking that Apple’s motion be denied. At ALJ Luckern’s request, on July 29, 2010, Apple, Kodak, and the OUII provided further briefing on the issue.

The ‘218 patent is entitled “Electronic Camera for Initialing Capture of Still Images While Previewing Motion Images” and is directed to a camera that can initiate capture of a high-quality still image without interrupting the processing and display of preview (i.e., motion) images. Independent claim 15, at issue in the investigation, requires two types of processors: (1) a motion processor and (2) a still processor.  In the ID, ALJ Luckern took into consideration both intrinsic and extrinsic evidence to determine that these two processors required “distinct” circuitry.  See our July 21, 2010 post for more details.  ALJ Luckern determined that the intrinsic evidence, coupled with extrinsic evidence, conclusively established that one of ordinary skill in the art would find that the motion processor and the still processor recited in claim 15 each have distinct circuitry (circuitry that is not shared by the motion processor and the still processor and thus is not overlapping).

In light of the ALJ’s claim construction, Respondent Apple argued that all of the accused Apple devices contain “substantial overlapping circuitry in the motion and still processors,” thus, they did not infringe the ‘218 patent.  The OUII agreed with Apple, stating that each of the accused Apple devices contains “overlapping circuitry” used to process motion images and still images.  Complainant Kodak, however, argued that in each of the iPhones, the digital image processing of the motion processor is different and distinct from the digital image processing of the still processor.  Thus, Kodak asserted that Apple’s accused devices have distinct circuitry for processing motion and still images.

In reaching his conclusion, ALJ Luckern reiterated that if any circuitry in the accused products was common to both the motion and still processors, i.e., that common circuitry was required to meet the limitations of both the motion and still processors, the accused products could not infringe.  ALJ Luckern then identified factual disputes with regard to whether or not the accused devices require common circuitry to meet the motion and still processor limitations.  The ALJ also pointed to a factual dispute as to the impact of differences in software, rather than hardware, on whether the devices require common circuitry.  Ultimately, ALJ Luckern denied Apple’s summary determination motion, finding genuine issues of material fact which would have a direct impact on whether or not the accused products would meet the “motion processor” and “still processor” claim limitations.