24
Dec
By Eric Schweibenz
On December 16, 2013, the U.S. Court of Appeals for the Federal Circuit issued its opinion in Motorola Mobility, LLC v. ITC (2012-1535).  This was an appeal from the International Trade Commission’s (“the Commission”) final determination finding a violation of Section 337 of one of the asserted patents in Certain Mobile Devices, and Related Software Thereof (Inv. No. 337-TA-744).  See our June 18, 2012 and December 21, 2011 posts for more details on this investigation.

By way of background, the Complainant in this case is Microsoft Corporation (“Microsoft”) and the Respondent is Motorola Mobility, Inc. (“Motorola”).  The technology at issue spans several patents, including a number of functionalities and features that are implemented on desktop computers and mobile devices.  On December 20, 2011, ALJ Theodore R. Essex issued the initial determination in this investigation finding a violation of Section 337 with respect to certain claims of U.S. Patent No. 6,370,566 (the ‘566 patent) and finding no violation 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.  Upon review, the Commission affirmed ALJ Essex’s finding that Motorola violated Section 337 with respect to the ‘566 patent.  Motorola appealed the ITC’s final determination. 

According to the opinion, two issues were central to the appeal: (1) Motorola’s anticipation and obviousness arguments, and (2) Motorola’s argument that Microsoft failed to meet the economic prong of the domestic industry requirement. 

Regarding anticipation, Motorola asserted that the synchronization component must necessarily be present in the cited prior art in order to accomplish synchronization.  Motorola argued that the “synchronization component” limitation refers to software that facilitates communication and synchronization.  The Court noted that the first part of Motorola’s arguments is a claim construction dispute regarding the synchronization component limitation.  The Court further noted that neither the ALJ nor the Commission construed this limitation and, therefore, the Court must give the claim term its ordinary meaning.  The Court rejected Motorola’s argument that the synchronization component is inherently included in the cited prior art.  The Court held that none of Motorola’s prior art necessarily included the synchronization component.  The Court found that the prior art may contain a synchronization component but did not necessarily contain a synchronization component.  The Court also rejected Motorola’s argument that the synchronization component was inherently included in the prior art based on admissions made by experts for Motorola and Microsoft.  The Court held that these admissions were merely conclusory statements and did not rise to the level of clear and convincing evidence.

With respect to obviousness, the Court held that Motorola failed to identify the scope and content of the prior art and the differences between the prior art and the asserted claims.  The Court held that Motorola’s evidence, alleged admissions by Microsoft’s expert, was insufficient to prove obviousness by clear and convincing evidence.  Accordingly, the Court affirmed the Commission’s determination that Motorola failed to prove by clear and convincing evidence that the ‘566 patent was invalid as anticipated or obvious.

Lastly, the Court rejected Motorola’s argument that Microsoft failed to meet the economic prong of the domestic industry requirement.  Motorola argued that Microsoft was relying on separate products to meet the technical and economic prongs of the domestic industry requirement.  Specifically, Motorola asserted that the operating system of a mobile device and the mobile device itself were separate products.  The Court affirmed the Commission’s finding that the operating system of a mobile device is a significant component of the mobile device that is specifically tailored to meet the specifications and demands of the mobile device.  The Court held that “[a]n investment directed to a specifically tailored, significant aspect of the article is still directed to the article.”  Accordingly, the Court affirmed the Commission’s determination that Microsoft satisfied the economic prong of the domestic industry requirement.

Therefore, the Court affirmed the Commission’s final determination that Motorola violated Section 337 with respect to the ‘566 patent.
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