By Eric Schweibenz
On December 19, 2011, the International Trade Commission (the “Commission”) issued a notice finding a violation of Section 337 and determining to issue a limited exclusion order 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”).  On July 15, 2011, 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.

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.  On September 15, 2011, the Commission determined to review several issues regarding each of the four patents asserted in this investigation.  See our September 19, 2011 post for more details.

According to the December 19 notice, after examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined that HTC violated Section 337 by reason of its importation and sale of articles that infringe claims 1 and 8 of the ‘647 patent. 

The Commission also determined to reverse the ALJ’s finding of violation as to claims 15 and 19 of the ‘647 patent and as to the asserted claims of the ‘263 patent.  Lastly, the Commission affirmed the ALJ’s conclusion that there has been no violation as to the ‘721 and ‘983 patents.  

Further, the Commission determined that the appropriate remedy is a limited exclusion order prohibiting the entry of HTC’s personal data and mobile communications devices and related software into the U.S. that infringe claims 1 or 8 of the ‘647 patent.  The Commission also determined that the public interest factors enumerated in Section 337 do not preclude the issuance of the limited exclusion order.  Nothwithstanding the foregoing, the Commission determined that in light of competitive conditions in the U.S. economy, the exclusion of HTC articles subject to the order shall commence on April 19, 2012 to provide a transition period for U.S. carriers.  Moreover, the notice indicates that HTC may import refurbished handsets to be provided to consumers as replacements under warranty or an insurance contract (whether the warranty or contract is offered by HTC, a carrier, or by a third party) until December 19, 2013.  The notice also provides that         “[t]his exemption does not permit HTC to call new devices ‘refurbished’ and to import them as replacements.”

Lastly, the Commission determined that zero bond will be required for temporary importation during the period of Presidential review.  The notice additionally stated that the investigation is terminated.