[Federal Register Volume 77, Number 169 (Thursday, August 30, 2012)]
[Notices]
[Pages 52759-52761]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-21373]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-745]


Certain Wireless Communication Devices, Portable Music and Data 
Processing Devices, Computers and Components Thereof; Notice of 
Commission Decision Finding No Violation of Section 337 as to Three 
Patents and Remanding the Investigation to the ALJ as to One Patent

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has found no violation of 337 of the Tariff Act of 1930, 19 
U.S.C. 1337, in the above-captioned investigation with respect to U.S. 
Patent Nos. 6,272,333 (``the '333 patent''); 6,246,697 (``the '697 
patent''); and 5,636,223 (``the '223 patent''). The investigation is 
remanded to the presiding administrative law judge (``ALJ'') with 
respect to U.S. Patent No. 6,246,862 (``the '862 patent'').

FOR FURTHER INFORMATION CONTACT: Megan M. Valentine, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone (202) 708-2301. Copies of non-
confidential documents filed in connection with this investigation are 
or will be available for inspection during official business hours 
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. 
International Trade Commission, 500 E Street SW., Washington, DC 20436, 
telephone (202) 205-2000. General information concerning the Commission 
may also be obtained by accessing its Internet server at http://www.usitc.gov. The public record for this investigation may be viewed 
on the Commission's electronic docket (EDIS) at http://edis.usitc.gov. 
Hearing-impaired persons are advised that information on this matter 
can be obtained by contacting the Commission's TDD terminal on (202) 
205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on November 8, 2010, based on a complaint filed by Motorola Mobility, 
Inc. of Libertyville, Illinois (``Motorola''). 75 FR 68619-20 (Nov. 8, 
2010). The complaint alleges violations of section 337 of the Tariff 
Act of 1930, as amended, 19 U.S.C. 1337 (``section 337''), in the 
importation into the United States, the sale for importation, and the 
sale within the United States after importation of certain wireless 
communication devices, portable music and data processing devices, 
computers and components thereof by reason of infringement of certain 
claims of the '333 patent, the '862 patent, the '697 patent, U.S. 
Patent No. 5,359,317 (``the '317 patent''), the '223 patent, and U.S. 
Patent No. 7,751,826 (``the '826 patent''). The complaint further 
alleges the existence of a domestic industry. The Commission's notice 
of investigation named Apple Inc. of Cupertino, California (``Apple'') 
as respondent. The Office of Unfair Import Investigation (``OUII'') was 
named as a participating party, however, on July 29, 2011, OUII 
withdrew from further participation in the investigation. See 
Commission Investigative Staff's Notice of Nonparticipation (July 29, 
2011). The Commission later partially terminated the investigation as 
to the '317 patent and the '826 patent. Notice (June 28, 2011); Notice 
(Jan 27, 2012).
    On April 24, 2012, the ALJ issued his final ID, finding a violation 
of section 337 as to the '697 patent and finding no violation as to the 
'223, '333, and '697 patents. On May 9, 2012, the ALJ issued his 
recommended determination on remedy and bonding. In his final ID, the 
ALJ found that the products accused of infringing the '697 patent 
literally infringe claims 1-4 of that patent, and that Apple induces 
others to infringe the asserted claims of the '697 patent. The ALJ also 
found that the asserted claims of the '697 patent are not invalid as 
anticipated under 35 U.S.C. 102, as obvious under 35 U.S.C. 103, or for 
failure to satisfy the written description requirement or the best mode 
requirement of 35 U.S.C. 112. The ALJ also found that the '697 patent 
is not unenforceable for unclean hands. The ALJ further found that 
Motorola has satisfied the domestic industry requirement for the '697 
patent. The ALJ found that the products accused of infringing the '223 
patent literally infringe the asserted claim of that patent and that 
Apple induces others to infringe the claim 1 of the '223 patent. The 
ALJ further found, however, that the asserted claim of the '223 patent 
is invalid as anticipated under 35 U.S.C. 102. The ALJ also found that 
Motorola has satisfied the domestic industry requirement for the '223 
patent. The ALJ found that the products accused of infringing the '333 
patent do not literally infringe claim 12 of that patent. The ALJ also 
found that the asserted claim of the '333 patent is not invalid as 
anticipated under 35 U.S.C. 102 or for obviousness under 35 U.S.C. 103. 
The ALJ further found that Motorola has not satisfied the domestic 
industry requirement for the '333 patent. The ALJ found that claim 1 of 
the '862 patent is invalid as indefinite under 35 U.S.C. 112, ] 2 and, 
therefore, that the products accused of infringing the '862 patent do 
not literally infringe the asserted claim of that patent and that 
Motorola has not satisfied the domestic industry requirement for the 
'862 patent.
    On May 7, 2012, Motorola filed a joint petition for review and 
contingent petition for review of certain aspects of the final ID's 
findings concerning claim construction, infringement, validity, and 
domestic industry. Also on May 7, 2012, Apple filed a joint petition 
for review and contingent petition for review of certain aspects of the 
final ID's findings

[[Page 52760]]

concerning claim construction, infringement, validity, and patent 
unenforceability. On May 15, 2012, Motorola filed a response to Apple's 
petition. Also on May 15, 2012, Apple filed a response to Motorola's 
petition.
    On June 6, 2012, Apple filed a post-RD statement on the public 
interest pursuant to Commission Rule 201.50(a)(4). Also on June 6, 
2012, several non-parties filed public interest statements in response 
to the post-RD Commission Notice issued on May 15, 2012. See 77 FR 
28621-22 (May 15, 2012). The non-parties include: Federal Trade 
Commission; Business Software Alliance; Association for Competitive 
Technology; Retail Industry Leaders Association; Verizon; Nokia 
Corporation; Hewlett-Packard Company; and Microsoft Corporation.
    On June 25, 2012, the Commission determined to review the final ID 
in part and requested briefing on the issues it determined to review, 
remedy, the public interest, and bonding. 77 FR 38826-29 (June 29, 
2012). Specifically, with respect to the '223 patent the Commission 
determined to review the ID's construction of the limitation ``access 
priority value'' in claim 1. The Commission also determined to review 
the ID with respect to the validity of claim 1 of the '223 patent under 
35 U.S.C. 102 in light of U.S. Patent No. 5,453,987 to Tran (``Tran 
'987) and U.S. Patent No. 5,657,317 to Mahany et al. (``Mahany '317'') 
and under 35 U.S.C. 103 in light of Tran '987 in combination with 
Mahany '317. The Commission further determined to review the ID's 
finding that the 802.11n standard necessarily practices claim 1 of the 
'223 patent, and thus, the ID's findings concerning infringement and 
the technical prong of the domestic industry requirement with respect 
to the '223 patent.
    With respect to the '697 patent, the Commission determined to 
review the ID's construction of the limitation ``selecting a chip time 
in a complex PN [pseudonoise] sequence generator'' in claim 1. The 
Commission also determined to review the ID's construction of the 
limitation ``restricting a phase difference between a previous complex 
PN chip and a next complex PN chip to a preselected phase angle.'' The 
Commission further determined to review the ID's findings with respect 
to the validity of claims 1-4 of the '697 patent under 35 U.S.C. 102 in 
light of prior art [pi]/2-shift BPSK modulation and under 35 U.S.C. 103 
in light of the combination of prior art QPSK and [pi]/2-shift BPSK 
modulation schemes. The Commission also determined to review the ID's 
finding of direct and induced infringement with respect to the '697 
patent. The Commission further determined to review the ID's finding 
that Motorola has satisfied the technical prong of the domestic 
industry requirement for the '697 patent.
    With respect to the '862 patent, the Commission determined to 
review the ID's construction of the limitation ``close proximity to a 
user'' in claim 1 and his finding that claim 1 is indefinite.
    With respect to the '333 patent, the Commission determined to 
review the ID's construction of the limitation ``a list of all software 
applications that are currently accessible to the subscriber unit'' in 
claim 12. The Commission further determined to review the ALJ's finding 
that claim 12 is not invalid under 35 U.S.C. 102 in light of U.S. 
Patent Nos. 5,502,831 to Grube et al. (``Grube '831''), 6,008,737 to 
DeLuca et al. (``DeLuca '797''), or 5,612,682 to DeLuca et al. 
(``DeLuca '682''), or under 35 U.S.C. 103 in view of Grube '831 
combined with DeLuca '682. The Commission also determined to review the 
ALJ's finding of non-infringement of claim 12. The Commission further 
determined to review the ID's finding that Motorola's domestic industry 
product does not practice claim 12 of the '333 patent.
    With respect to whether Motorola has satisfied the economic prong 
of the domestic industry requirement, the Commission determined to 
review the ID's finding that Motorola has not satisfied the economic 
prong as to the '333 patent under section 337(a)(3)(C) by its 
investments in licensing. The Commission also determined to review in 
part the ID's finding that Motorola has satisfied the economic prong 
with respect to the '223 and '697 patents under section 337(a)(3)(A) 
and (B). The Commission determined not to review the remaining issues 
decided in the ID.
    On July 9, 2012, the Motorola and Apple filed initial written 
submissions regarding the issues on review, remedy, the public 
interest, and bonding. On July 16, 2012, the parties filed response 
submissions. Also on July 9, 2012, several non-parties filed 
submissions concerning the public interest. On July 16, 2012, several 
non-parties filed response submissions.
    Having examined the record of this investigation, including the 
ALJ's final ID and the parties' submissions, the Commission has 
determined to affirm the final ID's finding of no violation as to the 
'223 and '333 patents and to reverse the finding of violation as to the 
'697 patent. The Commission has also determined remand the 
investigation to the ALJ with respect to the '862 patent.
    Specifically, the Commission has determined to affirm the ID's 
finding of no violation with respect to the '223 patent with 
modifications. In particular, the Commission has determined to modify 
the ID's claim construction of the claim limitation ``access priority 
value'' in claim 1 to mean ``a value based on information available to 
the terminal, or based on information available to the terminal and 
information received from the infrastructure, used to determine 
relative priority among multiple terminals for access to a data 
communications system.'' The Commission has determined to affirm the 
ID's finding that claim 1 of the '223 patent is anticipated by Mahany 
'317 and Tran '987. The Commission also finds that claim 1 of the '223 
patent is obvious in light of Tran '987 in combination with Mahany 
'317. The Commission has determined to reverse the ID's finding that 
products compliant with the 802.11n standard necessarily practice claim 
1 of the '223 patent. The Commission, therefore, finds that the accused 
products do not infringe claim 1 of the '233 patent and that Motorola 
has not satisfied the technical prong of the domestic industry 
requirement with respect to the '223 patent.
    With respect to the '697 patent, the Commission has determined to 
reverse the ID's finding of violation of section 337. In particular, 
the Commission has determined to affirm, with modified reasoning, the 
ID's construction of the limitation ``selecting every chip time'' of 
claim 1 of the '697 patent. The Commission also finds that the 
limitation ``restricting a phase difference between a previous complex 
PN chip and a next complex PN chip to a preselected phase angle'' in 
claim 1 means ``at the selected chip time, the next complex PN chip is 
limited to a predetermined phase transition,'' with the understanding 
that the phrase ``preselected phase angle'' requires a single unique 
angle with a predetermined direction and magnitude at a particular 
``selected chip time,'' but that the phase transition need not be the 
same at every chip time. The Commission further finds that claim 1 is 
limited to [pi]/2 BPSK modulation ``at selected chip times,'' and thus, 
that the claimed ``phase difference'' must be 90[deg] ``at 
selected chip times.'' The Commission affirms the ID's finding that 
claims 1-4 of the '697 patent are not anticipated by prior art [pi]/2-
shift BPSK modulation. The Commission also affirms the ID's finding 
that claims 1-4 are not obviousness in light of the

[[Page 52761]]

combination of prior art QPSK and [pi]/2-shift BPSK modulation schemes. 
The Commission reverses the ID's finding that generation of the 
complex-valued long scrambling sequence, Clong,n used to 
scramble PRACH messages in the scheme defined by the 3GPP-UMTS standard 
necessarily practices the method claims 1-4 of the '697 patent, and 
thus, finds no direct or induced infringement with respect to the '697 
patent. The Commission further reverses the ID's finding that Motorola 
has satisfied the technical prong of the domestic industry requirement 
for the '697 patent, and finds that Motorola has not satisfied this 
requirement.
    With respect to the '862 patent, the Commission has determined to 
reverse the ID's finding that claim 1 is indefinite. The Commission 
remands the investigation to the ALJ to consider the issues of 
infringement, validity, and the domestic industry requirement for the 
'862 patent.
    With respect to the '333 patent, the Commission has determined to 
affirm the ID's finding of no violation of section 337 with 
modifications. In particular, the Commission finds that the limitation 
``a list of all software applications that are currently accessible to 
the subscriber unit'' of claim 12 means ``a list of all software 
applications that are available and enabled for present use by the 
subscriber.'' The Commission affirms the ID's finding that claim 12 of 
the '333 patent is not anticipated by Grube '831, DeLuca '737 or DeLuca 
'682, and is not rendered obvious by Grube '831 in view of DeLuca '682. 
The Commission also affirms, with modified reasoning, the ALJ's finding 
of non-infringement of claim 12 of the '333 patent. The Commission 
further affirms, with modified reasoning, the ID's finding that 
Motorola's domestic industry product does not practice claim 12 of the 
'333 patent.
    With respect to whether Motorola has satisfied the economic prong 
of the domestic industry requirement, the Commission has determined to 
affirm-in-part the ID's finding that Motorola has satisfied the 
economic prong of the domestic industry requirement under section 
337(a)(3)(A) and (B) by making substantial investments in its CliqXT 
and Droid 2 products, and further finds that these investments satisfy 
the economic prong requirement as to the `223, `697, and `333 patents. 
In addition to its investments in seedstock for its CliqXT and Droid 2 
products, the Commission also finds that Motorola's expenditures 
relating to the creation of prototypes for its CliqXT and Droid 2 
products and its costs associated with post-assembly loading of vendor-
specific software and testing of those products are sufficient to 
support a finding that Motorola has satisfied the economic prong under 
section 337(a)(3)(A) and (B). The Commission vacates and takes no 
further position on the ID's finding that Motorola has not satisfied 
the economic prong as to the '333 patent under section 337(a)(3)(C) for 
its investments in licensing.
    The authority for the Commission's determination is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and 
in sections 210.42-.50 of the Commission's Rules of Practice and 
Procedure (19 CFR 210.42-.50).

    By order of the Commission.

    Issued: August 24, 2012.

Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2012-21373 Filed 8-29-12; 8:45 am]
BILLING CODE 7020-02-P