Wednesday, February 20, 2013

ITC orders review of preliminary ruling holding Motorola patent infringed but invalid in Apple case

Gooogle's (Motorola's) quest for an iPhone import ban is entering the next procedural phase. Its case is still breathing, but so are Apple's various defenses. A final ruling (appealable to the Federal Circuit) is scheduled for April 22, 2013 and may or may not affirm a preliminary ruling in Apple's favor.

The sole remaining patent-in-suit before the ITC 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.

In mid-December 2012 an Administrative Law Judge (ALJ) issued a second preliminary ruling concerning a patent over which Google (Motorola) hopes to win a U.S. import ban against the iPhone. The ruling favored Apple and is now going to be reviewed according to an ITC decision announced late on Tuesday. I'll quote the Commission's description of the scope of the review and add an explanation below each sentence:

"Specifically, the Commission has determined to review the Remand ID's construction of the claim limitation "touch sensitive input device" in claim 1 of the '862 patent."

The ALJ construed this term according to its plain and ordinary meaning, which is obviously very broad. Broad claims are particularly likely to be deemed invalid. Google (Motorola) would have preferred a narrower construction limiting claim 1 (the claim that matters here) to a touch screen integrated into a display, or a touch pad. Google's objective here is to arrive at a construction broad enough to capture the iPhone but narrow enough to defeat certain invalidity contentions. While it's potentially good news for Google that this finding will be reviewed, Apple can still prevail even if Motorola's proposed narrower construction is adopted. In that event, the patent might not be anticipated (rendered non-novel) by the prior art, but it might still be deemed obvious, which would work just fine for Apple. Theoretically, a narrower claim construction could also result in a finding of non-infringement, but I'm not aware of a proposed construction that would be so narrow as to have that effect.

"The Commission has further determined to review the Remand ID's finding that the accused products literally infringe claim 1 of the '862 patent."

This part is an opportunity for Apple, which under any of the proposed claim constructions denies infringement.

"The Commission has also determined to review the Remand ID's finding that Harris '464 anticipates claim 1 of the '862 patent."

This part relates to the outcome-determinative issue in the second preliminary ruling. I believe there will be an improvement in Google's (Motorola's) favor on this one if a narrower claim construction is adopted.

"The Commission has further determined to review the Remand ID's finding of non-obviousness pursuant to section 210.44 of the Commission's Rules of Practice and Procedure (19 C.F.R. § 210.44)."

The cited Commission rule relates to review at the Commission's initiative (i.e., not requested by a party). If a narrower claim construction is adopted, this is going to be the key part. It's also the only part of the scope of the review with respect to which the Commission has asked the parties for further briefing, which is necessary since the focus had previously been on other aspects of the case but could be on this one if a narrower claim construction results in a finding of novelty (as opposed to the remand&nbs├╝;ID) and (still) infringement.

These are the obviousness-related questions on which the Commission requests further input from Apple and Google:

"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 above questions present opportunities for both parties to persuade the Commission of their position. The "where" subclause of the first sentence shows that there's no more dispute over the prior existence of touch screens. The question is now one of teaching-suggestion-motivation.

Finally, some more procedural backround:

I said that the December 2012 preliminary decision was the second one of its kind in this case. The first time around (April 2012) the ALJ held this patent invalid for indefiniteness (a fate that 13 Motorola video codec patent claims just recently suffered in a dispute with Microsoft in the federal Western District of Washington) and didn't even reach the other invalidity theories or infringement: an indefinite patent is invalid, and infringement of an invalid patent doesn't matter. Then the Commission, the six-member decision-making body at the top of the U.S. trade agency, reversed the indefiniteness finding and remanded the investigation to the ALJ with respect to only this patent, throwing out the other three patents-in-suit (two other patents had been withdrawn by Motorola). Motorola has already appealed the decision with respect to the three dismissed patents.

In its contingent petition for a review of the remand ID Apple stressed that it reserves the right to appeal (to the Federal Circuit) the Commission's reversal of the ALJ's finding of indefiniteness. But with indefiniteness having been reversed, the ALJ finally had to look at other invalidity theories, and at infringement, in his remand ID.

In my analysis of the detailed remand decision I already said that "whatever the ALJ determines on remand will again be subject to a Commission review". While the Commission could have affirmed the remand ID (which would have resulted in the termination of this case and another appeal to the Federal Circuit by Google/Motorola), I expected another review. The original (pre-remand) initial determination had not addressed this patent besides the question of indefiniteness. A number of issues came up only on remand.

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