ITC Final Initial Determination: Apple Devices Infringe Qualcomm Patent but No Exclusion Order

Several weeks ago, the U.S. International Trade Commission issued a notice regarding final initial determination and recommended determination in a Section 337 patent infringement investigation filed by San Diego, CA-based semiconductor developer Qualcomm against Cupertino, CA-based consumer gadget giant Apple. Although the notice, signed by administrative law judge (ALJ) Thomas Pender, found that accused products imported for sale by Apple infringed upon infringed upon a patent claim asserted by Qualcomm, ALJ Pender recommended against issuing a limited exclusion order for those infringing products.

ALJ Pender’s initial determination in the Section 337 investigation found that certain mobile electronic devices and radio frequency and processing components thereof marketed by Apple infringed upon asserted claim 31 of U.S. Patent No. 9535490, titled Power Saving Techniques in Computing Devices. Claim 31 of this patent covers a mobile terminal comprising a modem timer, a modem processor configured to hold modem processor to application processor data until expiration of the modem timer, an application processor configured to hold application processor to modem processor data until the modem processor pulls data from the application processor, and then an interconnectivity bus communicatively coupling the application processor to the modem processor. The invention covered by this patent enables the use of faster internal buses in mobile devices to handle high data rates while addressing issues with excessive power consumption leading to shorter battery life.

The initial determination issued by ALJ Pender also found that Apple was not guilty of infringing upon two other patents asserted by Qualcomm: U.S. Patent No. 8698558, titled Low-Voltage Power-Efficient Envelope Tracker; and U.S. Patent No. 8633936, titled Programmable Streaming Processor with Mixed Precision Instruction Execution. Asserted claim 7 of the ‘558 patent covered an apparatus for wireless communication wherein a supply generator is operative to generate a second supply voltage for a power amplifier based on an envelope signal and either a boosted supply voltage or a first supply voltage. The ‘558 patent covers techniques for generating a power supply for an amplifier in a way that allows the amplifier to high output power with a low battery voltage. Asserted claim 19 of the ‘936 patent claims a device having a controller configured to receive a graphics instruction for execution within a programmable streaming processor and a plurality of execution units within the processor which are selectable by the controller. The ‘936 patent covers an advance to graphics processing circuitry that can perform advanced graphics operation such as shading without requiring more power or excessive physical space within a device.

For the infringement of the ‘490 patent, ALJ Pender noted that he did find a violation of Section 337 committed by Apple. ALJ Pender also concluded in the initial determination that the technical prong of the domestic industry requirement was satisfied with respect to the ‘490 patent, that the economic prong of the domestic industry requirement was satisfied by all of Qualcomm’s asserted patents and that no clear or convincing evidence has been shown that renders any asserted patent claim invalid.

Rather shockingly, despite finding patent infringement under Section 337 and upholding the validity of Qualcomm’s asserted patents, ALJ Pender found that the statutory public interest factors weighed against issuing a limited exclusion order in this case. This turns the victory for Qualcomm into nothing more than a pyrrhic victory at best given that the only remedy the ITC can hand out are exclusion orders and cease and desist orders. The ITC does not have any jurisdiction to hand out monetary damages. So what exactly would Qualcomm receive for Apple’s infringement? What exactly would Apple be required to pay or change as the result of engaging in infringing behavior? It would seem that there will be no remedy for Qualcomm under ALJ Pender’s decision, and no consequences for Apple infringing the patent claims that have been confirmed valid. 

The statutory public interest factors considered by the ITC in Section 337 cases include public health and welfare, competitive conditions in the U.S. economy, the production of like or directly competitive articles in the U.S., and U.S. consumers. Qualcomm’s Section 337 complaint filed with the ITC last July included a statement on the public interest in which it argued that the public interest wouldn’t be harmed by a limited exclusion order. Qualcomm was seeking exclusion of Apple mobile electronic devices which didn’t employ a Qualcomm baseband processor modem, noting that Apple did import devices which had such Qualcomm processors in them. Further, the accused products didn’t serve an essential public health or welfare objective, any demand for excluded products could be filled and U.S. consumers wouldn’t face a shortage of like products. Qualcomm had also argued that the requested remedial relief would support the strong public interest in upholding intellectual property rights for highly innovative companies.

Obviously, patents have no value to an innovator when the claims can be confirmed valid by a tribunal of competent jurisdiction and then infringement forgiven without consequences. In fact, patent infringers who are allowed to infringe valid patents without consequence present an extraordinary cost to innovators. Not only do innovators not obtain benefit from the exclusive rights they are supposed to be awarded, but they have paid for and continue through maintenance fees to pay for an asset that is worthless. A property right that costs significant sums to obtain and keep is a net negative when those who trespass are given a free pass rather than a penalty.

The term “final initial decision” made pursuant to 19 C.F.R. 21.42 may make this decision seem final and preliminary at the same time, which is correct. The final initial determination by the ALJ is the final determination that will be made by the ALJ prior to consideration by the Commission. Any party to the investigation can seek review by the Commission. 19 C.F.R. 210.43(a). And the Commission has to decide whether to grant, in whole or in part, a petition for review of an initial determination filed pursuant to within 45 days of the service of the initial determination on the parties, or by such other time as the Commission may order. See 19 C.F.R. 210.43(d). Thus, this matter is likely far from being over.

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