UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`
`
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES, AND
`
`Inv. No. 337-TA-750 RELATED SOFTWARE
`
`
`ORDER
`
`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
`
`Fed. Reg. 74081-82. The complaint alleged 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 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”)
`
`(collectively “the patents-in-suit”). The Commission’s notice of investigation named Motorola,
`
`Inc. n/k/a Motorola Solutions of Schaumburg, Illinois (“Motorola, Inc.”) and Motorola Mobility,
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`Inc. of Libertyville, Illinois (“Motorola”) as respondents. The Office of Unfair Import
`
`Investigations was named as a participating party. On August 16, 2011, the presiding
`
`administrative law judge (“ALJ”) issued an initial determination (“ID”) granting a joint
`
`unopposed motion to terminate the investigation as to Motorola, Inc. See Order No. 10 (Aug. 16,
`
`2011). The Commission determined not to review Order No. 10. See Notice (Aug. 31, 2011).
`
`On January 13, 2012, the ALJ issued his final initial determination (“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.
`
`
`
`Washington, D.C.
`
`
`
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES, AND
`
`Inv. No. 337-TA-750 RELATED SOFTWARE
`
`
`ORDER
`
`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
`
`Fed. Reg. 74081-82. The complaint alleged 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 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”)
`
`(collectively “the patents-in-suit”). The Commission’s notice of investigation named Motorola,
`
`Inc. n/k/a Motorola Solutions of Schaumburg, Illinois (“Motorola, Inc.”) and Motorola Mobility,
`
`Inc. of Libertyville, Illinois (“Motorola”) as respondents. The Office of Unfair Import
`
`Investigations was named as a participating party. On August 16, 2011, the presiding
`
`administrative law judge (“ALJ”) issued an initial determination (“ID”) granting a joint
`
`unopposed motion to terminate the investigation as to Motorola, Inc. See Order No. 10 (Aug. 16,
`
`2011). The Commission determined not to review Order No. 10. See Notice (Aug. 31, 2011).
`
`On January 13, 2012, the ALJ issued his final initial determination (“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.
`
`
`
`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 the doctrine of equivalents. 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 has
`
`satisfied the technical prong of 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, domestic industry, standing, and licensing. On
`
`February 7, 2012, Motorola and Apple filed responses to each other’s petitions. Also on
`
`February 7, 2012, the Commission investigative attorney 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 Fed. Reg. 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). The Commission further determined to review the ALJ’s finding that the accused
`
`products infringe the asserted claims of the ’430 patent, and on review, to affirm with
`
`modification the ID’s finding of direct infringement.
`
`On April 13, 2012, Apple timely appealed the Commission’s final determination of no
`
`violation of section 337 as to only the ’607 and ’828 patents to the U.S. Court of Appeals for the
`
`Federal Circuit (“Federal Circuit”). Specifically, Apple appealed the ALJ’s unreviewed finding
`
`that the asserted claims of the ’607 patent are anticipated by the prior art reference U.S. Patent
`
`No. 7,372,455 to Perski, et al. (“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. 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 affirrned-in—part, reversed-in-part, and vacated-in-
`
`part the Commission’s decision and remanded for further proceedings. Apple Inc. v.
`
`International Trade Commission, 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. The Court vacated and remanded the Commission’s determination that claim 10
`
`of the ’607 patent is invalid for obviousness in view of the SmartSkin reference, holding that the
`
`Commission failed to perform the necessary analysis of secondary considerations before finding
`
`the claim invalid for obviousness. The Court also reversed the Commission’s construction of the
`
`limitation “mathematically fitting 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.
`
`On September 6, 2013, intervenor Motorola Mobility Inc. 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. The question presently before the
`
`Commission is which issues are still pending on remand from the Federal Circuit.
`
`Upon consideration of this matter, the Commission hereby ORDERS that:
`
`1. Within ten (10) days of service of this Order, the parties shall
`submit initial comments regarding what further proceedings must
`be conducted to comply with the August 7, 2013 judgment of the
`U.S. Court of Appeals for the Federal Circuit in Apple Inc. v.
`International Trade Commission, 725 F.3d 1356 (Fed. Cir.
`2013).
`
`2. Within five (5) business days of service of the parties’ initial
`comments, the parties shall submit their response comments.
`
`3. The parties shall address whether any issues should be remanded
`to an administrative lawjudge to be assigned by the Chief
`Administrative Law Judge.
`
`
`
`4. The Secretary to the Commission shall serve a copy of this Order
`upon each party to this investigation.
`
`By order of the Commission.
`
`272%
`
`Lisa R. Barton
`
`Acting Secretary to the Commission
`
`Issued: January 7, 2014
`
`
`
`CERTAIN MOBILE DEVICES AND RELATED SOFTWARE
`
`Inv. No. 337-TA—750
`
`PUBLIC CERTIFICATE OF SERVICE
`
`1, Lisa R. Barton, hereby certify that the attached NOTICE has been served by hand
`upon the Commission Investigative Attorney, Lisa M. Kattan, Esq., and the following parties as
`indicated‘ on January 8, 2014.
`.
`
`Lisa R. Barton, Acting Secretary
`U.S. Intemational Trade Commission
`
`500 E Street, SW, Room 112
`Washington, DC 20436
`
`On Behalf of Complainant Apple Inc.:
`
`Brian E. Ferguson, Esq.
`WEIL, GOTSHALL & MANGES LLP
`
`1300 Eye Street, NW, Suite 900
`
`Washington, DC 20005
`
`On Behalf of Respondent Motorola Mobilifl, Inc.:
`
`Charles F. Schill, Esq.
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036
`
`(
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