“Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof”
Next Event: Remand hearing December 5-6, 2012. The Target Date for the Initial Determination is March 22, 2013 with completion of the investigation due by July 23, 2013.
Summary: Motorola alleges that Microsoft violated Section 337 by producing and importing gaming and entertainment consoles that infringe on five Motorola patents. The patents concern wireless networking and the decoding of digital video files. In his Initial Determination April 2012, Administrative Law Judge David P. Shaw recommended a limited exclusion order against Microsoft. The Commission announced its intention to review the ALJ’s determination, and remanded part of the determination because of inconsistencies with another recent International Trade Commission investigation 337-TA-724. Remand hearings are set for December 5 and 6, 2012. The ALJ is to make another Initial Determination, addressing any portions of his original Initial Determination that are inconsistent with recent ITC caselaw. At this point, the Commission will undertake a full review.
Timeline of Important Events:
- November 22, 2010 – Motorola files its initial complaint. (Document #438381).
- December 17, 2010 – The Commission opens an investigation and assigns Administrative Law Judge Carl C. Charneski.
- January 11, 2011 – Microsoft files an Answer to the Complaint, denying the alleged infringement. Public version issued January 27, 2011. (Document #442827).
- March 21, 2011 – The investigation is reassigned to Administrative Law Judge Theodore R. Essex.
- August 10, 2011 – Motorola moves for summary determination that it has satisfied the domestic industry requirement, or at least the economic prong. The ALJ denied this motion on October 21. (Document #462122) (confidential).
- October 24, 2011 – The investigation is reassigned to Administrative Law Judge David P. Shaw.
- January 10, 2012 – Hearing begins.
- April 24, 2012 – ALJ Shaw issues notice that he has made a Final Initial Determination, finding that Microsoft’s products infringe on four of the five patents at issue. (Document #478413). Full public version of Initial Determination issued May 10. (Document #480000). ALJ Shaw recommends the imposition of a limited exclusion order and cease and desist order against Microsoft, as well as a bond for importation of the accused products. (Document #480637).
- June 22, 2012 – Microsoft files for a partial termination of the investigation, basing its arguments on Commission analysis in Investigation 337-TA-724 (wherein the Commission reversed the ALJ’s finding of a violation in the Final Initial Determination, and found no violation). Microsoft argued that the ALJ took an approach inconsistent with 337-TA-724, in which the Commission ruled that to prevail on a claim of infringement (direct or indirect) one must show that the accused article is infringing in its condition as imported.
- June 29, 2012 – The Commission gives notice that it has determined to review ALJ Shaw’s Initial Determination of April 24, and remands the investigation to the ALJ. (Document #484270).
- July 24, 2012 – ALJ Shaw issues an Initial Determination setting the remand hearing for December 5-6, establishing the due date for the Remand Initial Determination as March 22, 2013, and extending the target date of completion to July 23, 2013. (Document #486312).
- July 31, 2012 – ITC sends letters to Senators Cantwell and Murray who filed public interest comments with the Commission. These letters expressed concern that an exclusion order would undermine the efforts of standards setting bodies, and potentially lead to less collaboration between industry participants. (Document #486904 and 486905).
- October 24, 2012 – Motorola requests termination of the investigation with respect to patents 5,319,712 and 5,357,571.