“Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof”
Next Event: On remand ALJ Pender found literal infringement by Apple but also concluded that Motorola’s patent is invalid for anticipation. ALJ Pender found that a domestic industry practicing on the patent does exist. On February 19, 2013 the full Commission announced it will review the ALJ’s initial determination. No date has been set for this review.
Summary: Motorola asserted that smart phones and other devices produced by Apple infringe on six Motorola patents, later reduced to four. ALJ Pender found that Apple infringed on one Motorola patent, a determination that was reversed by the Commission, which remanded to ALJ Pender a determination on a second patent that ALJ Pender had determined was not subject to infringement by Apple. ALJ Pender’s next action will be a Final Initial Determination on infringement of that patent, due December 21, 2012.
Timeline of Important Events:
- October 6, 2010 – Motorola files its initial complaint. (Document #435041).
- October 14, 2010 – Motorola files a corrected complaint. (Document 435606).
- November 3, 2010 – The ITC opens an investigation (Document #437000).
- December 1, 2010 – Apple files a response to Motorola’s complaint, denying all of Motorola’s claims of infringement. (Document #439146).
- May 25, 2011 – Motorola files a motion for summary determination that it has satisfied the domestic industry requirement, or in the alternative, that it has at least satisfied its economic prong. (Document #451429) (confidential). Chief ALJ Luckern grants the motion on June 22, 2011. (Document #453063) (confidential).
- May 31, 2011 – Motorola moves to terminate the investigation in part as to one claim of patent 5,259,317. (Document #451629). The motion is granted on June 2.
- July 22, 2011 – The Commission gives public notice that it has determined to vacate and remand the May 25, 2011 order granting summary determination to Motorola on whether Motorola has satisfied the domestic industry requirement. (Document #455077).
- November 22, 2011 – Motorola moves to terminate the investigation in part as to all claims of patent 5,259,317. (Document #465062). The motion is granted on November 29.
- December 9, 2011 – Hearing begins. Transcript: Documents #466347, #466348, #466516, #466604, #466666, #466862, #466865, #466963.
- January 5, 2012 – Motorola moves to terminate the investigation in part as to patent 7,751,826 B2. (Document #467769). The motion is granted on January 9.
- April 24, 2012 – ALJ Pender issues notice of his Initial Determination, finding that Apple products infringe on patent 6,246,697, but not the other patents at issue. The ALJ also determines that patents 5,636,223 and 6,246,697 satisfy the domestic industry requirement. ALP Pender recommends the issue of a cease and desist order to Apple to prohibit the import and sale of infringing products. (Document #478475). Full, redacted public version issued May 16, 2012 (Document #480415), as well as public recommended determination on remedy and bond (bond rate redacted). (Document #480760).
- March 2, 2012 – The International Trade Commission announces that it will review the Final Initial Determination and invites parties, interested government agencies, and any other interested parties to file written submissions concerning the issues of 1) remedy, 2) public interest, and 3) bonding. (Document #472616). Among the third party statements received was one by the Federal Trade Commission on June 6, 2012.
- August 24, 2012 – The Commission issues notice that it has affirms ALJ Pender’s ruling of no violation as to patents 6,272,333 and 5,636,223. The Commission reverses the ALJ regarding patent 6,246,697, finding no direct or induced infringement. The Commission also reverses the ALJ’s determination of indefiniteness regarding patent 6,246,862 and remands the investigation to the ALJ to make an initial determination on infringement, validity, and domestic industry requirement. (Document #489364). Full public opinion issued September 17. (Document 491132).
- October 2, 2012 – ALJ Pender sets a new target date of April 22, 2013, with the final Initial Determination on Remand due by December 21, 2012. (Document #492195).
- November 1, 2012 – CAFC grants Apple’s Motion to Intervene in Docket Number 12-1666.
- December 18, 2012 – ALJ Pender issued an initial determination on remand (Document #499498). ALJ Pender finds no 337 violation, and that a domestic industry exists in the United States that practices patent 6,246,862. Specifically ALJ Pender found literal infringement, but determined that patent in question is invalid for anticipation.
- January 10, 2013 – Motorola files a petition for review requesting the full Commission review ALJ Pender’s determination that there was no 337 violation (Document #500799).
- January 14, 2013 – Apple files a petition for review on ALJ Pender’s ruling that there was literal infringement (Document # 501020).
- January 31, 2013 – ALJ Pender’s full initial determination becomes public (Document #502517).
- February 19, 2013 – The Commission announces that it will review in part ALJ Pender’s initial determination on remand (Document # 504119). The review will be limited to claim construction for patent 6,246,862, the finding of literal infringement, and the determination of invalidity due to anticipation.