UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
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`I“V°S‘iga“°“ N°° 337'TA‘75"
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`In the Matter of CERTAIN MOBILE DEVICES AND
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`RELATED SOFTWARE
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`ORDER REMANDING INVESTIGATION
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`The Commission instituted this investigation on November 30, 2010, based on a
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`complaint filed by Apple Inc., f/k/a Apple Computer, Inc., of Cupertino, California (“Apple”). 75
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`Fea’. Reg. 74081-82. The complaint alleges violations of section 337 of the Tariff Act of 1930,
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`as amended, 19 U.S.C. § 1337 (“section 337”), in the importation into the United States, the sale
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`for importation, and the sale within the United States after importation of certain mobile devices
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`and related software by reason of infringement of certain claims of U.S. Patent Nos. 7,812,828
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`(“the ‘828 patent”); 7,663,607 (“the ‘607 patent”); and 5,379,430 (“the ‘430 patent”). The
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`Commission’s notice of investigation named Motorola, Inc. n/k/a Motorola Solutions of
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`Schaumburg, Illinois (“Motorola, Inc.”) and Motorola Mobility, Inc. of Libertyville, Illinois
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`(“Motorola”) as respondents. The Offrce of Unfair Import Investigation was named as a
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`participating party. The Commission later terminated the investigation as to Motorola, Inc.
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`Notice (Aug. 31, 2011).
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`On January 13, 2012, the ALJ issued his final initial determination (“ID”), finding no
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`violation of section 337. Specifically, the ALJ determined that accused products do not infringe
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`the asserted claims of the ‘828 Patent either literally or under the doctrine of equivalents
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`(“DOE”). The ALJ also found that the asserted claims of the ‘828 Patent are not invalid. The
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`ALJ further found that the accused products literally infringe the asserted claims of the ‘430 and
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`‘607 patents, but do not infringe under DOE. The ALJ also found that the asserted claims of the
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`‘430 Patent are invalid under 35 U.S.C. § 102 for anticipation, and that the asserted claims of the
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`‘607 Patent are invalid under 35 U.S.C. § 102 for anticipation and under 35 U.S.C. § 103 for
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`obviousness. The ALJ fiirther found that Apple has standing to assert the ‘430 Patent, and that
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`Motorola is not licensed to practice the ‘430 Patent. The ALJ also found that Apple has
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`satisfied the technical prong of the domestic industry requirement.
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`On January 30, 2012, Apple filed a petition for review of certain aspects of the IDS
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`findings concerning claim construction infringement, and validity. Also on January 30, 2012,
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`Motorola filed a contingent petition for review of certain aspects of the IDS findings concerning
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`claim construction, infringement, validity, and domestic industry. On February 7, 2012,
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`Motorola and Apple filed responses to each other’s petitions. Also on February 7, 2012, the
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`Commission investigative attorney (“IA”) filed a joint response to both Apple’s and Motorola’s
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`petitions.
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`On March 16, 2012, the Commission issued a notice, determining to review the ID in
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`part, and on review, to affirm the ALJ’s determination of no violation and to terminate the
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`investigation. 77 Fed. Reg. 16860-62. Specifically, the Commission determined to review, and
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`on review to affirm, the ALJ’s finding that the asserted claims of the ’828 patent are not
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`infringed. The Commission did not review the lD’s construction of the limitation
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`“mathematically fit[ting] an ellipse to at least one of the [one or more] pixel groups” in claims 1
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`and 10 of the ’828 patent. The Commission also determined to review the ALJ’s finding that the
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`asserted claims of the ’607 patent are invalid for obviousness under 35 U.S.C. § 103, and on
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`review, to affirm with modification the lD’s finding of obviousness. The Commission did not
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`review the ID’s finding that the asserted claims of the ‘607 patent are anticipated under 35
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`U.S.C. § l02(e).
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`On April 13, 2012, Apple timely appealed the Commission’s final determination of no
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`violation of section 337 as to the ’607 and ’828 patents to the Federal Circuit.1 Specifically,
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`Apple appealed the ALJ’s unreviewed finding that the asserted claims of the ’607 patent are
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`anticipated by U.S. Patent No. 7,372,455 to Perski (“Perski ’455”). Apple also appealed the
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`Commission’s determination that the asserted claims of the ’607 patent are invalid for
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`obviousness in view of the prior art reference “SmartSkin: An Infrastructure for Freehand
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`Manipulation on Interactive Surfaces” by Jun Rekimoto (“SmartSkin”) in combination with
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`Japan Unexamined Patent Application Publication No. 2002-342033A to Jun Rekimoto
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`(“Rekimoto ‘033”). Apple further appealed the ALJ’s unreviewed construction of the claim
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`limitation “mathematically fit[ting] an ellipse to .
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`.
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`. pixel groups” in the asserted claims of
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`the ’828 patent and the Commission’s resulting determination of non-infringement.
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`On August 7, 2013, the Federal Circuit affirrned-in—part, reversed-in-part, and vacated-in-
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`part the Commission’s decision and remanded for further proceedings. Apple, Inc. v. Int 7 Trade
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`Comm ’n., 725 F.3d 1356 (Fed. Cir. 2013). Specifically, the Court affirmed the Commission’s
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`determination that Perski ’455 anticipates claims 1-7 of the ’607 patent but reversed the
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`Commission’s determination that Perski ’455 anticipates claim 10 of the ’607 patent. Id. at
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`1 The Commission’s final determination as to the ’430 patent was not appealed, and is, therefore,
`not discussed in this Order.
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`1361-63.2 The Court also vacated and remanded the Commission’s determination that claim 10
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`of the ’607 patent is invalid for obviousness in view of the SmartSkin reference in combination
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`with Rekimoto ’033, holding that the Commission failed to perform the necessary analysis of
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`secondary considerations before finding the claim invalid for obviousness although the Court
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`agreed with the Commission’s finding that the combined prior art references disclose all of the
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`limitations of claim 10. Id. at 1364-67. The Court also reversed the Commission’s construction
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`of the limitation “mathematically fitting an ellipse” in the asserted claims of the ’828 patent and
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`remanded the issue of infringement for the Commission to make a determination in light of the
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`Court’s construction of that claim limitation. Id. at 1367-68.
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`On September 6, 2013, intervenor Motorola filed a combined petition for panel rehearing
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`and rehearing en banc concerning the panel’s holding that the Commission failed to consider
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`secondary considerations in finding claim 10 of the ’607 patent invalid for obviousness. On
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`November 8, 2013, the Court denied the petition. The mandate issued on November 15, 2013,
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`returning jurisdiction to the Commission.
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`On January 7, 2014, the Commission issued an Order directing the parties to submit
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`comments regarding what further proceedings must be conducted to comply with the Federal
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`Circuit’s remand. On January 22, 2014, Apple, Motorola, and the IA submitted initial
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`comments. On January 29, 2014, the parties submitted response comments.
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`2 The Court affirmed the Commission’s determination that claim 10 of the ’607 patent is not
`anticipated by Smartskin. Id. at 1363-64.
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`Upon consideration of this matter, the Commission hereby ORDERS that:
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`1. The investigation is remanded to the Chief Administrative Law Judge
`for assignment to a presiding administrative law judge to make
`findings and issue a remand initial determination (“RID”) concerning:
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`3.. 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 not prior art to claim 10, and if Perski ’45 5 is prior
`art, does it therefore anticipate claim 10 in light of the
`Commission’s prior determination that Perski ’45 5 discloses all of
`the limitations of claim 10;
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`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 affirrned by the Federal
`Circuit, that SmartSkin in combination with Rekimoto ’033
`discloses all limitations of claim 10;
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`whether there is a nexus between Apple’s evidence of secondary
`considerations and the invention recited in claim 10 of the ’607
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`patent;
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`whether Apple’s iPhone 4 satisfies the technical prong of the
`domestic industry requirement with respect to the ’607 patent by
`practicing all of the limitations of claim 10 of the ’607 patent;
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`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”; and
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`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.”
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`The administrative law judge may reopen the record to receive further
`briefing on which to base his RID, but is not to reopen discovery.
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`The RID will be processed in accordance with Commission rules
`210.42, 210.43-.46, and 210.50. Any petitions for review will be due
`12 days after service of the RID. Responses to any petition for review
`will be due 8 days after service of the petition. The RID will become
`the Commission’s final determination 60 days after issuance unless the
`Commission orders review.
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`4. Notice of this Order shall be served on the parties to this investigation.
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`By order of the Commission.
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`7%
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`Lisa R. Barton
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`Secretary to the Commission
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`Issued: May 6, 2014
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`CERTAIN MOBILE DEVICES AND RELATED SOFTWARE
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`Inv. No. 337-TA-750
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`PUBLIC CERTIFICATE OF SERVICE
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`1, Lisa R. Barton, hereby certify that the attached COMMISSION ORDER has been
`served by hand upon the Commission Investigative Attorney, Lisa M. Kattan, Esq., and the
`following parties as indicated onMay 6,l_2,01,4_.‘
`'
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`_
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`Lisa R. Barton, Acting Secretary
`U.S. International Trade Commission
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`500 E Street, SW, Room 112
`Washington, DC 20436
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`On Behalf of Complainant Apple Inc.:
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`Brian E. Ferguson, Esq.
`WEIL, GOTSHALL & MANGES LLP
`1300 Eye Street, NW, Suite 900
`Washington, DC 20005
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`On Behalf of Respondent Motorola Mobilig, Inc.:
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`Charles F. Schill, Esq.
`STEPTOE & JOHNSON LLP
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`1330 Connecticut Avenue, NW
`Washington, DC 20036
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