By Eric Schweibenz
On September 15, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by ALJ Carl C. Charneski on July 15, 2011 finding a violation of Section 337 in Certain Personal Data and Mobile Communications Devices and Related Software (Inv. No. 337-TA-710).

By way of background, the Complainants in this investigation are Apple Inc. and NeXT Software, Inc. (collectively, “Apple”) and the Respondents are High Tech Computer Corp., HTC America Inc., and Exedia, Inc. (collectively, “HTC”).  In the ID, ALJ Charneski determined that a violation of Section 337 had occurred by HTC through its infringement of certain claims of U.S. Patent Nos. 5,946,647 (the ‘647 patent) and 6,343,263 (the ‘263 patent).  The ID found no violation of Section 337 with respect to U.S. Patent Nos. 5,481,721 (the ‘721 patent) and 6,275,983 (the ‘983 patent) because Apple had not demonstrated that HTC infringed the asserted claims of these patents or that Apple had satisfied the domestic industry requirement with respect to these patents.  The ID concluded that HTC had not demonstrated that any of the asserted patent claims are invalid.  See our September 2, 2011 post for more details.

According to the September 15 notice, HTC, Apple, and the Commission Investigative Staff (“OUII”) filed petitions for review of the ID on August 1, 2011.  HTC, Apple, and OUII each filed responses to the petitions for review on August 9, 2011.

After examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined to review the ID in part.  In particular, for the ‘263, ‘721, and ‘983 patents, the Commission determined to review certain claim constructions, as well as the ID’s determinations of infringement, domestic industry, and validity, as set forth in more detail in the notice.  For the ‘647 patent, the Commission determined to review the ID’s determinations of infringement and validity, again as set forth in more detail in the notice.  The Commission determined not to review the remainder of the ID. 

In connection with its determination not to review the remainder of the ID, the Commission stated that it had rejected “HTC’s attempt to ‘incorporate[] by … reference in their entirety all of the arguments … with respect to all issues decided adversely to HTC’s positions’ from the thousands of pages of briefing before the ALJ, ‘pre-hearing motions in limine and other evidentiary submissions, hearing transcripts, and hearing exhibits.’”  The Commission found that HTC’s purported incorporation did not satisfy 19 C.F.R. § 210.43(b)(1), frustrated any meaningful opposition by the other parties, and made Commission review of the purportedly incorporated matter impossible.  Accordingly, the Commission deemed such issues to have been abandoned by HTC.

The notice states that the parties are requested to submit briefing on the issues under review and on remedy, the public interest, and bonding.  The notice further states that the Commission is particularly interested in responses to five specific questions listed in the notice.

Written submissions are due by October 6, 2011, with reply submissions due by October 17, 2011.