[Federal Register Volume 79, Number 60 (Friday, March 28, 2014)]
[Notices]
[Pages 17571-17573]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-06897]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-613]


Certain 3G Mobile Handsets and Components Thereof; Revised Notice 
of Commission Determination To Remand Investigation to the Chief 
Administrative Law Judge Pursuant To Remand From the U.S. Court of 
Appeals for the Federal Circuit

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 determined to remand the above-captioned investigation 
to the Chief Administrative Law Judge for assignment to an 
administrative law judge (``ALJ'') for an initial determination on 
remand (``RID'') concerning certain infringement, affirmative defense, 
and public interest issues following remand from the U.S. Court of 
Appeals for the Federal Circuit (``Federal Circuit''). This Notice is 
revised in response to the Petition for Reconsideration of the 
Commission's Order Remanding the Investigation, filed by respondents on 
February 24, 2014, which is granted in part and denied in part.

FOR FURTHER INFORMATION CONTACT: Megan M. Valentine, Office of the 
General Counsel, U.S. International

[[Page 17572]]

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 
Commissions TDD terminal on (202) 205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted Inv. No. 337-TA-
613 on September 11, 2007, based on a complaint filed by InterDigital 
Communications Corp. of King of Prussia, Pennsylvania and InterDigital 
Technology Corp. of Wilmington, Delaware (collectively, 
``InterDigital'') on August 7, 2007. 72 FR 51838 (Sept. 11, 2007). The 
complaint, as amended, alleged violations of section 337 of the Tariff 
Act of 1930 (19 U.S.C. 1337) in the importation into the United States, 
the sale for importation, and the sale within the United States after 
importation of certain 3G mobile handsets and components thereof by 
reason of infringement of certain claims of U.S. Patent Nos. 7,117,004 
(``the '004 patent''); 7,190,966 (``the '966 patent''); and 7,286,847 
(``the '847 patent''); and 6,693,579 (``the '579 patent). The notice of 
investigation named Nokia Corporation of Espoo, Finland and Nokia Inc. 
of Irving, Texas (collectively, ``Nokia'') as respondents. The Office 
of Unfair Import Investigations was named as a participating party.
    On February 13, 2009, InterDigital moved for summary determination 
that a domestic industry exists because its licensing activities in the 
United States satisfy the domestic industry requirement under 19 U.S.C. 
1337(a)(3)(C). On March 10, 2009, the presiding Administrative Law 
Judge (``ALJ'') issued an initial determination (``ID'') (Order No. 42) 
granting the motion. On April 9, 2009, the Commission determined not to 
review the ID. Notice (Apr. 9, 2009).
    On August 14, 2009, the ALJ issued his final ID, finding no 
violation of section 337. In particular, he found that the asserted 
claims of the patents-in-suit are not infringed and that they are not 
invalid. The ALJ further found that there is no prosecution laches 
relating to the '004, '966, and '847 patents and that the '579 patent 
is not unenforceable.
    On October 16, 2009, the Commission determined to review the Final 
ID in part. 74 FR 55068-69 (Oct. 26, 2009) (``Notice of Review''). In 
particular, although the Commission affirmed the ID's determination of 
no violation of section 337, the Commission reviewed and modified the 
ID's claim construction of the term ``access signal'' found in the 
asserted claims of the '847 patent. The Commission also reviewed, but 
took no position on, the ID's construction of the term ``synchronize'' 
found in the asserted claims of the '847 patent. The Commission further 
reviewed, but took no position on, validity with respect to any of the 
asserted patents. The Commission did not review the ID's construction 
of the claim limitations ``code'' and ``increased power level'' in the 
asserted claims of the '966 and '847 patents, and terminated the 
investigation.
    InterDigital timely appealed the Commission's final determination 
of no violation of section 337 as to claims 1, 3, 8, 9, and 11 of 
the'966 patent and claim 5 of the '847 patent to the Federal Circuit. 
Specifically, InterDigital appealed the final ID's unreviewed 
constructions of the claim limitations ``code'' and ``increased power 
level'' in the '966 and '847 patents. Respondent Nokia, the intervenor 
on appeal, raised as an alternate ground of affirmance the issue of 
whether the Commission correctly determined that InterDigital has a 
license-based domestic industry.
    On August 1, 2012, the Federal Circuit reversed the Commission's 
construction of the claim limitations ``code'' and ``increased power 
level'' in the '966 and '847 patents, reversed the Commission's 
determination of non-infringement as to the asserted claims of those 
patents, and remanded to the Commission for further proceedings. 
InterDigital Commc'ns, LLC v. Int'l Trade Comm'n., 690 F.3d 1318 (Fed. 
Cir. 2012). In particular, the Court rejected the final ID's 
construction of the ``code'' limitation as being limited to ``a 
spreading code or a portion of a spreading code'' and, instead, 
constructed ``code'' as ``a sequence of chips'' and as ``broad enough 
to cover both a spreading code and a non-spreading code.'' Id. at 1323-
27. The Court also rejected the final ID's construction of the 
limitation ``increased power level'' as requiring that the power level 
of a transmission ``increases during transmission,'' holding instead 
that the limitation ``include[s] both intermittent and continuous 
increases in power.'' Id. at 1323, 1327-28. The Court affirmed the 
Commission's determination that InterDigital has a domestic industry. 
Id. Nokia subsequently filed a combined petition for panel rehearing 
and rehearing en banc on the issue of domestic industry. On January 10, 
2013, the Court denied the petition and issued an additional opinion 
addressing several issued raised in Nokia's petition for rehearing. 
InterDigital Commc'ns, LLC v. Int'l Trade Comm'n, 707 F.3d 1295 (Fed. 
Cir. 2013) (Fed. Cir. Jan. 10, 2013). The mandate issued on January 17, 
2013, returning jurisdiction to the Commission.
    On February 4, 2013, the Commission issued an Order directing the 
parties to submit comments regarding what further proceedings must be 
conducted to comply with the Federal Circuit's remand. Commission Order 
(Feb. 4, 2013). On February 14, 2013, InterDigital, Nokia, and the 
Commission investigative attorney (``IA'') submitted initial comments. 
On February 19, 2013, Nokia submitted response comments. On February 
22, 2013, InterDigital and the IA submitted response comments.
    Having examined the record of this investigation, including the 
ALJ's final ID, the petitions for review, the responses thereto, and 
the parties' comments on remand, the Commission has decided certain 
issues and has determined to remand the investigation to the Chief ALJ 
for assignment to a presiding ALJ to determine certain outstanding 
issues concerning violation of section 337 set forth below.
    With respect to claim construction, the Commission construes the 
claim limitation ``synchronize'' in the asserted claim of the '847 
patent to mean ``establishing a timing reference with the pilot signal 
transmitted by a base station.''
    With respect to validity, the Commission affirms the final ID's 
finding that the Lucas reference does not anticipate the asserted 
claims of the '966 and '847 patents because it fails to disclose the 
claim limitations requiring the subscriber unit to transmit a code 
selected from a ``plurality of different codes'' or the limitation 
requiring the subscriber unit to transmit a ``message'' in order to 
indicate that the subscriber units wants to establish communications 
with a base station. The Commission also affirms the final ID's finding 
that the Lucas reference does not render obvious the asserted claims of 
the '966 and '847 patents. The Commission further affirms the final 
ID's finding that the asserted claims of the '966 and '847 patents are 
not rendered obvious by the IS-95

[[Page 17573]]

references combined with the CODIT reference.
    With respect to infringement, the Commission finds that the PRACH 
preamble used in the accused Nokia handsets satisfies the ``code''/
``signal'' limitation of the asserted claims of the '966 and '847 
patents under the Federal Circuit's revised claim construction. The 
Commission also finds that the transmission of the PRACH preambles 
meets the claim limitation ``increased power level'' in the asserted 
claims of the '966 and '847 patents based on the Federal Circuit's 
revised claim construction. The Commission further finds waived Nokia's 
argument that the PRACH preamble and PRACH message signals in the 
accused Nokia handsets are never transmitted. The Commission also 
affirms the ID's finding that the accused handsets do not satisfy the 
``synchronize to the pilot signal'' limitation under the doctrine of 
equivalents.
    With respect to the issue of domestic industry, the Commission 
acknowledges the Federal Circuit's finding that Nokia has waived any 
argument regarding the nexus between its licensing investments and the 
asserted patents. The Commission also declines to reconsider the issue 
of whether the ``economic prong'' of the domestic industry requirement 
has been satisfied under Certain Multimedia Display and Navigation 
Devices and Systems, Components Thereof, and Products Containing Same, 
Inv. No. 337-TA-694, Commission Opinion, Public Version (August 8, 
2011).
    The Commission remands the following issues to the Chief ALJ for 
assignment to a presiding ALJ. Specifically, the Commission remands the 
issue of whether the accused Nokia handsets meet the ``generated using 
a same code'' limitation or ``the message being transmitted only 
subsequent to the subscriber unit receiving the indication'' limitation 
in the asserted claims of the '966 and '847 patents. The Commission 
further remands the issue of whether the 3GPP standard supports a 
finding that the pilot signal (P-CPICH) satisfies the claim limitation 
``synchronized to a pilot signal'' as recited in the asserted claims of 
the '847 patent by synchronizing to either the P-SCH or S-SCH signals 
under the Commission's construction of that claim limitation.
    The Commission also remands the investigation for assignment to the 
presiding ALJ to reopen the evidentiary record and take evidence 
concerning Nokia's currently imported products, including: (1) Whether 
they contain chips other than those that were previously adjudicated, 
(2) whether those chips infringe the asserted claims of the patents-in-
suit, and (3) whether the chips are licensed. The Commission further 
remands the investigation in order for the assigned ALJ to: (1) Take 
evidence concerning the public interest factors as enumerated in 
sections 337(d) and (f); (2) take briefing on whether the issue of the 
standard-essential patent nature of the patents-in-suit is contested; 
(3) take evidence concerning and/or briefing on whether there is patent 
hold-up or reverse hold-up in this case; and (4) include an analysis of 
this evidence in his remand ID.
    The motion for reconsideration is granted in part with respect to 
claims 6, 9, and 11 of the '847 patent. The remainder of the motion is 
denied.
    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).

    By order of the Commission.

    Issued: March 24, 2014.
William R. Bishop,
Supervisory Hearings and Information Officer.
[FR Doc. 2014-06897 Filed 3-27-14; 8:45 am]
BILLING CODE 7020-02-P