By Eric Schweibenz
On January 3, 2014, the U.S. Court of Appeals for the Federal Circuit issued a nonprecedential order in Microsoft, Corp. v. ITC (2012-1445).  This was directed to a motion requesting dismissal of Microsoft, Corp.’s appeal from the International Trade Commission’s (“the Commission”) final determination finding no violation of Section 337 of one of the asserted patents (U.S. Patent No. 5,664,133, “the ‘133 patent”) 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 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. 

Both Motorola and Microsoft appealed the ITC’s final determination.  See our October 10, 2013 and December 24, 2013 posts for summaries of the Federal Circuit’s opinions in the Microsoft and Motorola appeals, respectively.  In relevant portion, the Federal Circuit reversed the finding of no infringement of the ‘133 patent, also holding that Motorola’s alternative design infringed the ‘133 patent and remanding the case so that indirect infringement of the ‘133 patent could be determined.

According to the opinion, Motorola filed a motion requesting that the Federal Circuit dismiss Microsoft’s appeal with respect to the ‘133 patent and vacate the portion of their October 1, 2013 opinion addressing that patent.  Motorola argued that the dispute over the ‘133 patent is now moot as the patent expired on December 13, 2013.

The Federal Circuit denied Motorola’s motion, noting that the controversy between the parties is not moot in light of a still-pending district court litigation (Microsoft Corp. v. Motorola, Inc., Case No. 2:10-CV-01577-RSM (W.D. Wash. filed Oct. 1, 2010)).  Specifically, the Federal Circuit held that its rulings on the ‘133 patent will be relevant to the determinations of damages (if infringement is proved) and invalidity at the district court.  The Federal Circuit supported its determination with citations to case law stating that concrete forms of coercive relief are not required for constitutional determination of an actual controversy.  The parties’ failure to inform the Court of the imminent expiration of the patent was also noted.  Although the case was not found moot, the Federal Circuit explained that, even if it was moot, vacatur is not required, as vacatur is a discretionary matter.

Circuit Judge Prost wrote a separate concurring opinion, explaining that she does believe that the appeal is moot, but would still deny the motion as a matter of discretion.