[Federal Register Volume 79, Number 91 (Monday, May 12, 2014)]
[Notices]
[Pages 26993-26995]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-10769]


-----------------------------------------------------------------------

INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-750]


Certain Mobile Devices and Related Software Thereof; Commission 
Decision 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.

-----------------------------------------------------------------------

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 validity, infringement, and domestic 
industry following remand from the U.S. Court of Appeals for the 
Federal Circuit (``Federal Circuit'').

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.

[[Page 26994]]


SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on November 30, 2010, based on a complaint filed by Apple Inc., f/k/a 
Apple Computer, Inc., of Cupertino, California (``Apple''). 75 FR 
74081-82. The complaint alleges violations of section 337 of the Tariff 
Act of 1930, as amended, 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 mobile devices and related software 
by reason of infringement of 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''). The Commission's notice of 
investigation named Motorola, Inc. n/k/a Motorola Solutions of 
Schaumburg, Illinois (``Motorola Solutions'') and Motorola Mobility, 
Inc. (``Motorola'') of Libertyville, Illinois as respondents. The 
Office of Unfair Import Investigation was named as a participating 
party. The Commission subsequently terminated Motorola Solutions as a 
respondent based on withdrawal of allegations pursuant to Commission 
Rule 210.21(a)(1) (19 CFR 210.21(a)(1)). Notice (Aug. 31, 2011).
    On January 13, 2012, the ALJ issued his final ID, finding no 
violation of Section 337. Specifically, 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''). The 
ALJ also found that the asserted claims of the '828 Patent are not 
invalid. The ALJ further found that the accused products literally 
infringe the asserted claims of the '430 and '607 patents, but do not 
infringe under DOE. The ALJ also found 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. The ALJ 
further found that Apple has standing to assert the '430 Patent, and 
that Motorola is not licensed to practice the '430 Patent. The ALJ also 
found that Apple satisfied the domestic industry requirement.
    On January 30, 2012, Apple filed a petition for review of certain 
aspects of the ID's findings concerning claim construction 
infringement, and validity. Also on January 30, 2012, Motorola filed a 
contingent petition for review of certain aspects of the ID's findings 
concerning claim construction, infringement, validity, and domestic 
industry. On February 7, 2012, Motorola and Apple filed responses to 
each other's petitions. Also on February 7, 2012, the Commission 
investigative attorney (``IA'') filed a joint response to both Apple's 
and Motorola's petitions.
    On March 16, 2012, the Commission issued a notice, determining to 
review the ID in part, and on review, to affirm the ALJ's determination 
of no violation and to terminate the investigation. 77 FR 16860-62. 
Specifically, the Commission determined to review, and on review to 
affirm, the ALJ's finding that the asserted claims of the '828 patent 
are not infringed. The Commission did not review the ID's construction 
of the limitation ``mathematically fit[ting] an ellipse to at least one 
of the [one or more] pixel groups'' in claims 1 and 10 of the '828 
patent. The Commission also determined to review the ALJ's finding that 
the asserted claims of the '607 patent are invalid for obviousness 
under 35 U.S.C. 103, and on review, to affirm with modification the 
ID's finding of obviousness. The Commission did not review the ID's 
finding that the asserted claims of the '607 patent are anticipated 
under 35 U.S.C. 102(e).
    On April 13, 2012, Apple timely appealed the Commission's final 
determination of no violation of section 337 as to the '607 and '828 
patents to the Federal Circuit. Specifically, Apple appealed the ALJ's 
unreviewed finding that the asserted claims of the '607 patent are 
anticipated by U.S. Patent No. 7,372,455 to Perski (``Perski '455''). 
Apple also appealed the Commission's determination that the asserted 
claims of the '607 patent are invalid for obviousness in view of the 
prior art reference ``SmartSkin: An Infrastructure for Freehand 
Manipulation on Interactive Surfaces'' by Jun Rekimoto (``SmartSkin'') 
in combination with Japan Unexamined Patent Application Publication No. 
2002-342033A to Jun Rekimoto (``Rekimoto '033''). Apple further 
appealed the ALJ's unreviewed construction of the claim limitation 
``mathematically fit[ting] an ellipse to . . . pixel groups'' in the 
asserted claims of the '828 patent and the Commission's resulting 
determination of non-infringement.
    On August 7, 2013, the Federal Circuit affirmed-in-part, reversed-
in-part, and vacated-in-part the Commission's decision and remanded for 
further proceedings. Apple, Inc. v. Int'l Trade Comm'n., 725 F.3d 1356 
(Fed. Cir. 2013). Specifically, the Court affirmed the Commission's 
determination that Perski '455 anticipates claims 1-7 of the '607 
patent but reversed the Commission's determination that Perski '455 
anticipates claim 10 of the '607 patent. Id. at 1361-63. The Court also 
vacated and remanded the Commission's determination that claim 10 of 
the '607 patent is invalid for obviousness in view of the SmartSkin 
reference in combination with Rekimoto '033, holding that the 
Commission failed to perform the necessary analysis of secondary 
considerations before finding the claim invalid for obviousness 
although the Court agreed with the Commission's finding that the 
combined prior art references disclose all of the limitations of claim 
10. Id. at 1364-67. The Court also reversed the Commission's 
construction of the limitation ``mathematically fit[ting] an ellipse'' 
in the asserted claims of the '828 patent and remanded the issue of 
infringement for the Commission to make a determination in light of the 
Court's construction of that claim limitation. Id. at 1367-68.
    On September 6, 2013, intervenor Motorola filed a combined petition 
for panel rehearing and rehearing en banc concerning the panel's 
holding that the Commission failed to consider secondary considerations 
in finding claim 10 of the '607 patent invalid for obviousness. On 
November 8, 2013, the Court denied the petition. The mandate issued on 
November 15, 2013, returning jurisdiction to the Commission.
    On January 7, 2014, 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. On January 22, 
2014, Apple, Motorola, and the IA submitted initial comments. On 
January 29, 2014, the parties 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 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 the '607 patent, the Commission remands the issue 
of whether Perski '455 anticipates claim 10 of the '607 patent. 
Specifically, the ALJ should determine whether Apple can establish an 
earlier priority date for claim 10 of the '607 patent than the filing 
date of Perski '455 such that Perski '455 is prior art to claim 10 in 
light of the Commission's prior determination that Perski '455 
discloses all of the limitations of claim 10. The Commission further 
remands the issue of whether claims 10 of the '607 patent is invalid 
for obviousness in view of Smartskin in combination with Rekimoto '033. 
Specifically, the ALJ

[[Page 26995]]

should determine whether Apple's evidence of secondary considerations 
requires a finding of nonobviousness with respect to the '607 patent in 
light of the Commission's determination, as affirmed by the Federal 
Circuit, that SmartSkin in combination with Rekimoto '033 discloses all 
limitations of claim 10. In deciding the issue of obviousness, the ALJ 
should also determine whether there is a nexus between Apple's evidence 
of secondary considerations and the invention recited in claim 10 of 
the '607 patent. The Commission also remands the issue of domestic 
industry to the ALJ. Specifically, the ALJ should determine whether 
Apple's iPhone 4 practices all of the limitations of claim 10 of the 
'607 patent.
    With respect to the '828 patent, the Commission remands the issue 
of infringement. Specifically, the ALJ should determine whether 
Motorola's accused products infringe the asserted claims of the '828 
patent under the Federal Circuit's construction of the claim limitation 
``mathematically fit[ting] an ellipse.'' The Commission further remands 
the issue of anticipation. Specifically, the ALJ should determine 
whether U.S. Patent No. 5,825,352 to Bisset anticipates claims 1 and 10 
of the '828 patent under the Federal Circuit's construction of the 
claim limitation ``mathematically fit[ting] an ellipse.''
    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 Part 210 of the Commission's Rules of Practice and Procedure (19 CFR 
part 210).

    By order of the Commission.

    Issued: May 6, 2014.
Lisa R. Barton,
Secretary to the Commission.
[FR Doc. 2014-10769 Filed 5-9-14; 8:45 am]
BILLING CODE 7020-02-P