By Eric Schweibenz
On March 16, 2012, the International Trade Commission (the “Commission”) issued a notice determining to review-in-part and affirm the final initial determination of no violation of Section 337, and terminate the investigation in Certain Mobile Devices and Related Software Thereof (Inv. No. 337-TA-750).

By way of background, Complainant Apple, Inc. (“Apple”) accused Respondent Motorola Mobility, Inc. (“Motorola”) of infringing certain claims of U.S. Patent Nos. 7,812,828 (the ‘828 patent), 7,663,607 (the ‘607 patent), and 5,379,430 (the ‘430 patent).  In his January 13, 2012 Initial Determination (“ID”), ALJ Essex found no violation of Section 337.  According to the notice, “the ALJ determined that [the] accused products do not infringe the asserted claims of the ‘828 patent either literally or under the doctrine of equivalents (“DOE”),” and that the “asserted claims of the ‘828 patent are not invalid.”  With respect to the ‘430 and ‘607 patents, the notice provides that ALJ Essex “found that the accused products literally infringe the asserted claims,” but that “the asserted claims of the ‘430 patent are invalid under 35 U.S.C. § 102 for anticipation, and that the asserted claims of the ‘607 patent are invalid under 35 U.S.C. § 102 for anticipation and under 35 U.S.C. § 103 for obviousness.”  Additionally, ALJ Essex  “found that Apple has standing to assert the ‘430 patent, and that Motorola is not licensed to practice the ‘430 patent.”

Both Apple and Motorola filed petitions for review regarding “claim construction infringement, and validity,” and “claim construction infringement, validity, domestic industry, standing, and licensing,” respectively.  The Commission investigative attorney filed a joint response to both petitions, and public interest statements were filed by Google Inc. and Apple.  Apple’s public interest statement was accompanied by a motion for leave to file the statement out of time. 

Having examined the record of this investigation, the Commission determined to review the final ID in part, specifically addressing three portions thereof.  First, “the Commission determine[d] to review the ID for the limited purpose of clarifying that the ALJ also found claims 24-26, and 29 of the ‘828 patent not infringed” based on Apple’s failure to distinguish and address these claims separate and apart from non-infringed claims 1 and 10.  Second, the Commission determined to review and “modify the ID but affirm the finding that Motorola has demonstrated by clear and convincing evidence that the asserted claims of the ‘607 patent are invalid under 35 U.S.C. § 103.”  Third, the Commission affirmed the ALJ’s finding of direct infringement of claims 1, 3, and 5 of the ‘430 patent, “but [found] that the analysis of infringement is incomplete in the ID because the ID’s analysis does not address the Commission’s decision in Certain Electronic Devices with Image Processing Systems, Components Thereof, And Associated Software, 337-TA-724, Comm. Op. at 10-20 (Dec. 21, 2011).  Lastly, the Commission denied Apple’s motion for leave to file its public interest comments out of time as moot. 

The notice issued by the Commission released only the information noted above.  We will provide additional information once the public version of the Commission's opinion issues in its entirety.