Tuesday, September 18, 2012

Analysis of detailed ITC decision on Motorola's first complaint against Apple

Today the ITC decided to investigate Google subsidiary Motorola Mobility's second ITC complaint against Apple. Yesterday the Commission, the six-member decision-making body at the top of the U.S. trade agency, published a redacted version of its detailed decision to dismiss Motorola's first complaint against Apple with respect to three patent and to remand it to a judge with respect to a fourth patent. That decision was announced on August 24, and I commented on it at the time. There was little public interest in that decision because the Apple v. Samsung jury verdict came down less than two hours later and temporarily overshadowed all other patent-related events.

I always look at the details of ITC decisions in the investigations I follow. Detailed rulings become available only after significant delay, but they provide useful information on what the likely outcome of the further dispute (including an appeal) may be.

Apple is in pretty good shape with respect to the investigation of Motorola's first complaint. In short, various parts of the investigation that have been dismissed are going to be fairly difficult for Google (Motorola Mobility) to appeal, and Apple still has multiple defenses in place against the part that has been remanded. By comparison, many other remand decisions provide some guidance that points in a certain direction. Here, the outcome is up in the air.

Since the sole remaining patent is not standard-essential, Apple can work around it if necessary. The FRAND issues that were at the heart of most of the Commission's review questions weren't even reached, nor will they be reached on remand. If at all, they will come up after Motorola's appeal succeeds with respect to at least one standard-essential patent.

Here's a quick summary of what the Commission concluded with respect to each of the four patents that were alive at the time of its review:

  1. REMANDED: U.S. Patent No. 6,242,862 on a "sensor controlled user interface for portal communication device"

    The Administrative Law Judge (ALJ) had held this patent invalid for indefiniteness. He agreed with Apple that the claim limitation "close proximity to a user" was open-ended. As a result, he didn't even address in his initial determination the other issues, including Motorola's infringement contentions, Apple's invalidity contentions (on anticipation and obviousness grounds), and the technical prong of the domestic industry requirement.

    On remand, those other issues will have to be adjudicated. The Commission disagrees that the term "close proximity to a user" renders the asserted claim (claim 1) indefinite and, as a result, invalid. In the Commission's opinion, Motorola rightly pointed to the fact that the patent is all about "preventing inadvertent actuation of the touch sensitive input device", and that this gives meaning to the otherwise vague notion of "close proximity".

    Like I said above, I've seen remand decisions in which a lot of the issues had already been adjudged and reviewed, and in those cases, a remand makes one outcome more likely than the other. But here anything is possible. And whatever the ALJ determines on remand will again be subject to a Commission review.

  2. DISMISSAL AFFIRMED: U.S. Patent No. 5,636,223 on "methods of adaptive channel access attempts"

    This patent could have caused problems to a variety of Apple products implementing the IEEE 802.11 (WiFi, or WLAN) standard and was asserted against iOS devices as well as various Macintosh computers. The ALJ had not identified a violation anyway, but the Commission has further modified the basis of that finding, and by now, it's virtually impossible for Motorola to prevail on this patent on appeal. The patent is deemed invalid for three reasons (anticipated by first prior art reference, anticipated by second prior art reference, obvious over combination of prior art references); contrary to the ALJ, the Commission does not consider it infringed; and for the same reason as the non-infringement finding, the Commission also holds that Motorola has not satisfied the technical prong of the domestic industry requirement. All of this is a bit too much to overcome on appeal.

  3. DISMISSED (PRELIMINARY FINDING OF VIOLATION REVERSED): U.S. Patent No. 6,246,697 on a "method and system for generating a complex pseudonoise sequence for processing a code division multiple access [CDMA] signal"

    This is the only patent-in-suit the ALJ had deemed both valid and infringed. Apple was pretty optimistic about its ability to have that finding overturned, one of the reasons being that the Mannheim Regional Court had cleared Apple of infringement of the European equivalent of this allegedly 3G-essential patent. And indeed, the Commission has now overruled the ALJ.

    The patent is still considered valid. The reversal of the construction of one claim term ("selecting chip time" in Apple's favor had no bearing on the ALJ's finding -- and the Commission's affirmation -- that the patent was neither anticipated by the prior art presented nor obvious over it. But the new interpretation did result in a reversal of the direct infringement finding and, as an inevitable effect, of the finding of inducement. And since this finding means that the Commission does not consider the patent to be essential to 3G/UMTS, Motorola's standards-based claim to have fulfilled the domestic industry requirement with its 3G-implementing products also fails.

    Compared to the other dismissals, this one is, relatively speaking, easiest for Motorola to overturn through an appeal. The finding of no violation completely hinges on the Commission's construction of one claim term, and claim constructions don't get a huge amount of deference from the appeals court.

  4. DISMISSAL AFFIRMED: U.S. Patent No. 6,272,333 on a "method and apparatus in a wireless communication system for controlling a delivery of data"

    What makes this patent, which relates to managing access to smartphone apps, a bit more interesting than some of the other patents in this investigation is that Motorola is also suing Microsoft over it (in the Western District of Washington).

    The Commission considers the ALJ's construction of the claim term "currently accessible" overly broad, especially in connection with web apps. Since Judge Robart did not address web-accessible applications in his claim construction order in the Motorola Mobility v. Microsoft case in Seattle, the ITC believes its ruling is not inconsistent with his.

    While neither party requested a review with respect to the relevant validity issues, the Commission offered a proactive opinion that the asserted claim (claim 12) is still not invalid for anticipation for obviousness, despite the new claim construction.

    The Commission ultimately agrees with the ALJ that there is no infringement, but for a different set of reasons. It rejected some of the ALJ's thinking that resulted in his finding but adopted a new non-infringement theory. There is one part of the ALJ's non-infringement theory that the Commission supports (Motorola's failure to show that the accused products communicate a "change in accessibility" of the relevant apps). The Commission furthermore said that prosecution history estoppel barred Motorola from making an infringement argument based on the Doctrine of Equivalents.

    On the domestic industry requirement, the Commission also agrees with the result of the ALJ's finding but not with all parts of its derivation.

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