[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]


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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.

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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