[Federal Register Volume 77, Number 46 (Thursday, March 8, 2012)]
[Notices]
[Pages 14043-14045]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-5609]
-----------------------------------------------------------------------
INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-744]
Certain Mobile Devices, Associated Software, and Components
Thereof; Determination To Review Final Initial Determination
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: Notice is hereby given that the U.S. International Trade
Commission has determined to review in part the final initial
determination (``ID'') issued by the presiding administrative law judge
(``ALJ'') on December 20, 2011.
FOR FURTHER INFORMATION CONTACT: Michael Liberman, Esq., Office of the
General Counsel, U.S. International Trade Commission, 500 E Street SW.,
Washington, DC 20436, telephone (202) 205-3115. Copies of non-
confidential documents filed in connection with this investigation are
or will be available for inspection during official business hours
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S.
International Trade Commission, 500 E Street SW., Washington, DC 20436,
telephone (202) 205-2000. General information concerning the Commission
may also be obtained by accessing its Internet server at http://www.usitc.gov. The public record for this investigation may be viewed
on the Commission's electronic docket (EDIS) at http://edis.usitc.gov.
Hearing-impaired persons are advised that information on this matter
can be obtained by contacting the Commission's TDD terminal on (202)
205-1810.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation
on November 5, 2010, based on a complaint filed by Microsoft
Corporation of Redmond, Washington. 75 FR 68379-80 (Nov. 5, 2010). The
complaint alleges violations of section 337 of the Tariff Act of 1930,
as amended, 19 U.S.C. 1337, in the importation into the United States,
the sale for importation, and the sale within the United States after
importation of certain mobile devices, associated software, and
components thereof by reason of infringement of U.S. Patent Nos.
5,579,517 (``the `517 patent''); 5,758,352 (``the `352 patent'');
6,621,746 (``the `746 patent''); 6,826,762 (``the `762 patent'');
6,909,910 (``the `910 patent''); 7,644,376 (``the `376 patent'');
5,664,133 (``the `133 patent''); 6,578,054 (``the `054 patent''); and
6,370,566 (``the `566 patent.'') Subsequently, the `517 and the `746
patents were terminated from the investigation. The notice of
investigation, as amended, names Motorola Mobility, Inc. of
Libertyville, Illinois and Motorola, Inc. of Schaumburg, Illinois as
respondents. Motorola, Inc. n/k/a Motorola Solutions was terminated
from the investigation based on withdrawal of infringement allegations
on July 12, 2011.
The final ID on violation was issued on December 20, 2011. The ALJ
issued his recommended determination on remedy and bonding on the same
day.
[[Page 14044]]
The ALJ found that a violation of section 337 has occurred in the
importation into the United States, the sale for importation, or the
sale within the United States after importation of certain mobile
devices, associated software, and components thereof containing same by
reason of infringement of one or more of claims 1, 2, 5 and 6 of the
`566 patent. Both Complainant and Respondent filed timely petitions for
review of various portions of the final ID, as well as timely responses
to the petitions.
Having examined the record in this investigation, including the
ALJ's final ID, the petitions for review, and the responses thereto,
the Commission has determined to review the ID in part. In particular,
the Commission has determined to review: (1) The ID's determination
regarding the economic prong of the domestic industry requirement with
respect to all of the presently asserted patents in this investigation,
i.e., the `352 patent, the `762 patent, the `910 patent; the `376
patent, the `133 patent, the `054 patent, and the `566 patent; (2) the
ID's determination regarding the technical prong of the domestic
industry requirement with respect to all of the presently asserted
patents; (3) the ID's anticipation and obviousness determinations with
respect to the `566 patent; (4) the ID's infringement determination
with respect to the `352 patent; and (5) the ID's analysis of induced
infringement with respect to all of the presently asserted patents. The
Commission has determined not to review the remainder of the final ID.
The parties are requested to brief their positions on only the
following issues, with reference to the applicable law and the
evidentiary record:
(1) With respect to the domestic industry:
(a) For all of the presently asserted patents, what statutory
provisions, Federal Circuit and Commission precedent, and record
evidence support respondent's argument that the ALJ impermissibly
analyzed different articles for purposes of the technical and economic
prongs of the domestic industry requirement, see Respondent's Petition
for Review at 28?
(b) Under Federal Circuit and Commission precedent and section 337
statutory provisions, where an asserted patent covers both hardware and
software as one system, is it (i) necessary, and/or (ii) sufficient to
demonstrate that the software at issue is implemented and functions on
a third party's hardware (e.g., a smartphone) in order to satisfy the
technical prong of domestic industry requirement?
(c) For all of the presently asserted patents, what statutory
provisions and Commission precedent specifically support the ID's
determination regarding the economic prong of the domestic industry
requirement and particular findings made in support of such
determination?
(2) With respect to the `566 patent:
(a) (i) Please identify all the arguments made before the ALJ that
rely on factual support from the record and legal support provided by
applicable Federal Circuit and Commission precedent demonstrating that
the Apple Newton MessagePad prior art reference discloses the
``synchronization component'' of claim 1; (ii) What, if any,
disclosures are missing from the Apple Newton MessagePad reference such
that it does not meet the ``synchronization component'' limitation of
claim 1;
(b) Please identify all the arguments made before the ALJ that rely
on factual support from the record and legal support provided by
applicable Federal Circuit and Commission precedent demonstrating that
respondent met its burden of proof to show that the Apple Newton
MessagePad reference anticipates claim 5.
(c) Please identify all the arguments made before the ALJ that rely
on factual support from the record and legal support provided by
applicable Federal Circuit and Commission precedent demonstrating that
prior art references render the asserted claims of the `566 patent
obvious;
(3) With respect to the `352 patent, please identify all the
arguments made before the ALJ that rely on factual support from the
record and legal support provided by applicable Federal Circuit and
Commission precedent demonstrating that complainant met its burden of
proof to show that (a) the accused products infringe the asserted
claims of the `352 patent, and (b) complainant satisfied the technical
prong of the domestic industry requirement.
In connection with the final disposition of this investigation, the
Commission may (1) issue an order that could result in the exclusion of
the subject articles from entry into the United States, and/or (2)
issue one or more cease and desist orders that could result in the
respondent being required to cease and desist from engaging in unfair
acts in the importation and sale of such articles. Accordingly, the
Commission is interested in receiving written submissions that address
the form of remedy, if any, that should be ordered. If a party seeks
exclusion of an article from entry into the United States for purposes
other than entry for consumption, the party should so indicate and
provide information establishing that activities involving other types
of entry either are adversely affecting it or are likely to do so. For
background, see Certain Devices for Connecting Computers via Telephone
Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843, Comm'n Op. at 7-10
(Dec. 1994).
If the Commission contemplates some form of remedy, it must
consider the effects of that remedy upon the public interest. The
factors the Commission will consider include the effect that an
exclusion order and/or cease and desist orders would have on (1) the
public health and welfare, (2) competitive conditions in the U.S.
economy, (3) U.S. production of articles that are like or directly
competitive with those that are subject to investigation, and (4) U.S.
consumers. The Commission is therefore interested in receiving written
submissions that address the aforementioned public interest factors in
the context of this investigation.
If the Commission orders some form of remedy, the President has 60
days to approve or disapprove the Commission's action. During this
period, the subject articles would be entitled to enter the United
States under bond, in an amount determined by the Commission and
prescribed by the Secretary of the Treasury. The Commission is
therefore interested in receiving submissions concerning the amount of
the bond that should be imposed.
Written Submissions: The parties to the investigation are requested
to file written submissions on the issues under review. The submissions
should be concise and thoroughly referenced to the record in this
investigation. Parties to the investigation, interested government
agencies, and any other interested parties are encouraged to file
written submissions on the issues of remedy, the public interest, and
bonding. Such submissions should address the recommended determination
on remedy and bonding issued on December 20, 2011, by the ALJ.
Complainant is also requested to submit proposed remedial orders for
the Commission's consideration. Complainant is further requested to
provide the expiration date of the '352 patent, the '762 patent, the
'910 patent, the '376 patent, the '133 patent, the '054 patent, and the
'566 patent, and state the HTSUS numbers under which the accused
articles are imported. The written submissions and proposed remedial
orders must be filed no later than the close of business on March 19,
2012. Reply submissions must be filed
[[Page 14045]]
no later than the close of business on March 27, 2012. No further
submissions on these issues will be permitted unless otherwise ordered
by the Commission.
Persons filing written submissions must do so in accordance with
Commission rule 210.4(f), 19 CFR 210.4(f) which requires electronic
filing. The original document and eight true copies thereof must also
be filed on or before the deadlines stated above with the Office of the
Secretary. Any person desiring to submit a document (or portion
thereof) to the Commission in confidence must request confidential
treatment unless the information has already been granted such
treatment during the proceedings. All such requests should be directed
to the Secretary of the Commission and must include a full statement of
the reasons why the Commission should grant such treatment. See section
201.6 of the Commission's Rules of Practice and Procedure, 19 CFR
201.6. Documents for which confidential treatment by the Commission is
sought will be treated accordingly. All nonconfidential written
submissions will be available for public inspection at the Office of
the Secretary.
The authority for the Commission's determination is contained in
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and
in sections 210.42-.46 of the Commission's Rules of Practice and
Procedure (19 CFR 210.42-.46).
Issued: March 2, 2012.
By order of the Commission.
James R. Holbein,
Secretary to the Commission.
[FR Doc. 2012-5609 Filed 3-7-12; 8:45 am]
BILLING CODE 7020-02-P