Yesterday the initial determination on remand came down in the Motorola v. Apple ITC case that started more than two years ago, and on this preliminary basis there is no finding of a violation of the sole remaining patent-in-suit. While Apple was deemed to infringe this patent and Google-owned Motorola Mobility was found to practice the patent invention (the existence of a domestic industry is a requirement at the ITC), the patent was considered invalid because of another, earlier-filed and meanwhile-expired, Motorola patent as I'll explain below.
This initial determination (ID) is subject to a review by the Commission, the six-member decision-making body at the top of the U.S. trade agency, which could still result in an import ban. If the recommended dismissal of the remainder of the complaint is affirmed, Google may appeal the decision to the Federal Circuit, to which it has already appealed the previous dismissal of three other patents-in-suit from the investigation. The original complaint asserted six patents, but not all dismissals were involuntary: Motorola also narrowed its case, as ITC complainants are expected to do, during the course of the investigation.
The patent-in-suit is U.S. Patent No. 6,246,862 on a "sensor controlled user interface for portable communication device", a non-standard-essential patent (unlike a couple of patents that were previously dismissed). Simply put, it covers the concept of the phone ignoring any touches (of physical keys or, in this case, the touchscreen; the patent broadly refers to a "touch sensitive input device") if the phone is held "in close proximity" to the head, just to prevent accidental actions such as the inadvertent termination (or initiation) of a phone call. I always had doubts about the validity of the patent because it's a high-level idea (as opposed to, for example, a patent on a particular proximity sensor) but I looked at this as a patent that could give Google some leverage against Apple if successfully enforced.
While the remand ID is good news for Apple, Google (Motorola) has made some headway in recent months (though not enough to win a favorable recommendation from the judge), and this means that Apple still has to take a Commission review and a potential appeal somewhat seriously. The headway I just mentioned is that under yesterday's remand ID, Google (Motorola) fulfills two of the three requirements for an import ban (domestic industry and infringement, but not validity), while it didn't satisfy any of those requirements when the original initial determination was made in the spring. The validity part is still a reasonably high hurdle, which is why an import ban is still a rather unlikely outcome, but as the saying goes, "two out of three ain't bad".
The original ID found claim 1 of the patent-in-suit invalid for indefiniteness of the term "in close proximity". An indefinite claim is invalid and can't be infringed (or practiced by Motorola, since this question depends on the same technical analysis as infringement). The indefiniteness finding was dispositive of all the issues, and that's why the original ID didn't even address the prior art that Apple had presented (and Motorola's arguments in favor of validity). In late August, the Commission reversed the indefiniteness finding and then remanded the case.
Following the remand, Judge Pender had to set a new schedule. Usually a remand requires a new hearing/trial, but in this case the judge determined that he already had all the information he needed (because the parties had previously addressed all of the relevant issues in their briefs and at an evidentiary hearing) and said that he could hand down his remand ID at this time. And he delivered on that promise.
A detailed version of his remand ID has not yet entered the public record. I only know the summary. There's a literal infringement finding as well as (in the alternative) one under the Doctrine of Equivalents. This combination is more difficult to overcome on review (or in the event of a subsequent appeal) than a finding based on only one of the two theories, so the focus is now really on validity. Unless Apple can convince the appeals court that the patent is indefinite as the judge originally thought, validity is a question of non-novelty or obviousness in light of prior art. Very interestingly, the prior art that won the day for Apple at this stage is, as I wrote above, another Motorola patent: U.S. Patent No. 6,052,464 was filed on May 29, 1998, while the patent-in-suit was filed on February 3, 1999.
Judge Pender concluded that the '464 patent anticipated (rendered non-novel) the '862 patent. This is a very strong finding because obviousness (meaning the thing was new, but the difference between old and new was not sufficient to justify a patent grant) would suffice. Even if Motorola convinced the Commission or the appeals court that the '464 patent didn't anticipate its '862 patent, Apple could still prevail on obviousness.
Judge Pender ruled against a couple of prior art combinations (the '464 patent plus some other material) as rendering the '862 patent invalid, but if the '464 patent alone is enough to render the patent non-novel, then it can also be used alone for a plausible obviousness contention, which would serve Apple's purposes. The findings against those combinations must be based on the fact that the combinations wouldn't be obvious to make, but again, the combinations aren't even needed (so far).
It is indeed possible that a company has a patent A that renders its own patent B non-novel (or obvious). There are rules against this phenomenon, which is called double patenting. In this case, double-patenting rules don't apply in a strict sense because the older patent no longer exists. As per the status date of May 19, 2008, the "Patent Expired Due to NonPayment of Maintenance Fees Under 37 CFR 1.362". In other words, Motorola, which at the time was in financial dire straits, decided that the '464 patent wasn't worth paying the modest annual renewal fees for. Nevertheless the patent serves as prior art: for prior art purposes, all that matters is that something is published, which includes patent applications that are never granted as well as documents of granted but expired patents.
An obvious even if hypothetical/academic question is now whether the older patent, if Motorola hadn't wanted to save the fees, could now have been or be used against Apple instead of the newer one that it appears to render invalid.
A patent document can serve as prior art regardless of whether the relevant disclosure was in the claims or in the description. If the description talked about an alternative embodiment that isn't even claimed by the patent, it's still a disclosure and can prevent others from patenting that thing. In this case, I have taken a quick look and I believe the claims of the discontinued patent do, in principle, cover the relevant technique, but the older patent goes into more detail and has some claim limitations that today's devices may not meet. For one example, it refers to a first housing and a second housing -- not sure if that makes sense for the iPhone. The newer patent is more general, but that's the problem of broad patents: they're more likely to be held invalid.
Another observation: while both patents were assigned to Motorola, Inc., there's no overlap between the lists of inventors. The older ('464) patent was invented by Daryl Harris, Kevin Kaschke, and David L. Bond; the patent-in-suit was invented by Chris J. Grivas, Rachid M. Alameh, and Fan He. This makes it even more of a coincidence that we have two patents from the same company, one of which apparently invalidates the other.
I will follow the review process. I understand from media reports that Google (Motorola) is disappointed and still wants to pursue this matter. For Google, after paying $12.5 billion for Motorola Mobility, the litigation record against Apple and Microsoft (the two companies against which it primarily wanted to use Motorola's patents) is a disaster of gigantic proportions so far. Its leverage against Microsoft at this stage is precisely zero, and against Apple there's only one patent being enforced in one jurisdiction: the push notification patent in Germany. With Motorola's ITC case against Apple now also being in bad shape (though not 100% lost yet, as I explained), it's extremely hard to see what the point in the whole Motorola Mobility deal was.
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