UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
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`Inv. No. 337—TA—750
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`
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`In the Matter of
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`CERTAIN MOBILE DEVICES, AND
`RELATED SOFTWARE
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`AGENCY:
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`U.S. International Trade Commission.
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`ACTION:
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`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 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, S.W., Washington, D.C. 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,
`S.W., Washington, D.C. 20436, telephone (202) 205-2000. General information concerning the
`Commission may also be obtained by accessing its Internet server at httgs//www.usitc. gov. The
`public record for this investigation may be viewed on the Commission’s electronic docket (EDIS)
`at hrtg.‘//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.
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`SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on
`November 30, 2010, based on a complaint filed by Apple lnc., f/k/a Apple Computer, lnc., of
`Cupertino, California (“Apple”). 75 Fed. Reg. 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
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`Solutions as a respondent based on withdrawal of allegations pursuant to Commission Rule
`210.21(a)(1) (19 C.F.R. § 210.21(a)(1)). Notice (Aug. 31, 2011).
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`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
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`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
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`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 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).
`
`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.
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`On August 7, 2013, the Federal Circuit affirmed-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
`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
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`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
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`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.
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`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.
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`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 ’45 5 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
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`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 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 affirrned 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.
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`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 C.F.R. Part 210).
`
`By order of the Commission.
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`Issued: May 6, 2014
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`7279
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`Lisa R. Barton
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`Secretary to the Commission
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`

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`CERTAIN MOBILE DEVICES AND RELATED SOFTWARE
`
`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 NOTICE has been served by hand
`upon the Commission Investigative Attorney, Lisa M. Kattan, Esq., and the following parties as
`indicated on May 6,2014.
`
`-- -
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`Lisa R. Barton, Acting Secretary
`U.S. International Trade Commission
`
`500 E Street, SW, Room 112
`Washington, DC 20436
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`On Behalf of Complainant Apgle 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 Resgondent Motorola Mobility, Inc.:
`
`Charles F. Schill, Esq.
`STEPTOE & JOHNSON LLP
`
`1330 Connecticut Avenue, NW
`Washington, DC 20036
`
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