ITC to Review Google’s Claims of Patent Infringement by Apple

Fig. 1 of the ‘862 patent.

More news to report in the ongoing ITC battle between Motorola Mobility (owned by Google) and Apple. Earlier this week the U.S. International Trade Commission announced that it will review part of the presiding Administrative Law Judge’s (“ALJ”) initial determination issued on December 18, 2012, finding no violation of section 337 of the Tariff Act of 1930 by Apple. The ITC case is styled In the Matter of Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof, and is Investigation No. 337-TA-745

The ITC had originally instituted an investigation on November 8, 2010, based on a complaint filed by Motorola Mobility, Inc. The complaint alleged violations of section 337 as the result of importation into the United States and the sale within the United States after importation of certain wireless communication devices, portable music and data processing devices, computers and components thereof. The violation of section 337 was alleged to be the result of patent infringement. Specifically Motorola Mobility charged Apple with infringing U.S. Patent Nos. 6,272,333 (“the ‘333 patent”); 6,246,862 (“the ‘862 patent”); 6,246,697 (“the ‘697 patent”); 5,359,317 (“the ‘317 patent”); 5,636,223 (“the ‘223 patent”); and 7,751,826 (“the’ 826 patent”). The ITC subsequently terminated investigation into the ‘317 patent (on June 28, 2011) and the ‘826 patent (on January 27, 2012).

On April 24, 2012, the ALJ issued his final decision, finding a violation of section 337 as to the ‘697 patent and finding no violation as to the ‘223, ‘333, and ‘697 patents. On June 25, 2012, the Commission determined it would review the final ID in part. On August 24,2012, the Commission found no violation with respect to the ‘333 patent, the ‘697 patent, and the ‘223 patent, but remanded the investigation to the ALJ with respect to the ‘862 patent. The remand was necessitated as the result of the Commission reversing the ALJ’s finding that the asserted claim of the ‘862 patent is invalid as indefinite. Specifically, the Commission instructed the ALJ to make findings regarding infringement, validity, and domestic industry concerning the asserted claim of the ‘862 patent.


On December 18, 2012, the ALJ issued his initial determination in the remanded proceeding relative to the ‘862 patent, finding no violation of section 337 with respect to that patent. More specifically, the ALJ found that the relevant accused products infringe claim 1 of the ‘862 patent literally and under the doctrine of equivalents, but that claim 1 is invalid as anticipated by U.S. Patent No. 6,052,464 to Harris (“Harris’ 464”). The ALJ further found that claim 1 is not invalid for obviousness in light of Harris ‘464 in combination with the knowledge of one of ordinary skill in the art or in combination with U.S. Patent No. 5,894,298 to Hoeksma (“Hoeksma ‘298”). The ALJ also found that Motorola Mobility had satisfied the economic and technical prongs of the domestic industry requirement with respect to the’ 862 patent.

On January 7, 2013, Motorola Mobility filed a petition for review by the Commission of certain findings concerning claim construction and validity. On the same day Apple also filed a petition for review of certain aspects of the ALJ’s determination concerning findings relating to infringement.

After examining the record of the investigation the Commission decided to review the ALJ’s determination with respect to the claim construction of the phrase “touch sensitive input device,” which appears in claim 1 of the ‘862 patent. The Commission will also review: (1) the finding that the accused products literally infringe claim 1 of the ‘862 patent; (2) the finding that Harris ‘464 anticipates claim 1 of the ‘862 patent; and (3) the finding of non-obviousness. In connection with the Commission’s review, the parties have been requested to brief their positions these discrete issues.  The Commission will review no other issues.

With respect to the obviousness issue, the Commission has notified the parties that it is particularly interested in responses to the following question:

Does the evidence in the record support a finding that claim 1 of the ‘ 862 patent is obvious in view of Harris ‘464 in combination with the knowledge of one of ordinary skill in the art or in combination with Hoeksma ‘298 where the evidence demonstrates that the existence of portable communication devices using “touch sensitive input devices,” including touch screens, were known in the art prior to the filing of the application leading to the ‘862 patent and is disclosed in Hoeksma ‘298? In discussing this issue, please refer to the teachings of the references, the knowledge of one of ordinary skill in the art at the time of filing of the’ 862 patent application, and the evidence in the record regarding the motivation to combine Harris ‘464 with the knowledge of one of ordinary skill in the art or with Hoeksma ‘298. Also, please address whether there are any secondary considerations that would prevent a finding of obviousness.

The written submissions must be filed no later than close of business on March 8, 2013. Reply submissions must be filed no later than the close of business on March 15, 2013.

Note: I first learned of this through Florian Mueller at FOSS Patents. If you are interested in the smartphone patent wars you really should be following him on Twitter @FOSSPatents.


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