United States Court of Appeals 

for the Federal Circuit ______________________ 

MICROSOFT CORPORATION,

Appellant,

v.

INTERNATIONAL TRADE COMMISSION,

Appellee,

AND

MOTOROLA MOBILITY, LLC,

Intervenor.

______________________ 

2012-1445, -1535

______________________ 

Appeals from the United States International Trade 

Commission in Investigation No. 337-TA-744.

______________________ 

Decided: October 3, 2013

______________________ 

CONSTANTINE L. TRELA, JR., Sidley Austin, LLP, of 

Chicago, Illinois, argued for appellant. With him on the 

brief were DAVID T. PRITIKIN, RICHARD A. CEDEROTH,

ELLEN S. ROBBINS and JOHN W. MCBRIDE. Of counsel on 

the brief were BRIAN R. NESTER and RYAN C. MORRIS, of 

Washington, DC. Of counsel were MICHAEL R.
2 MICROSOFT CORPORATION v. ITC 

FRANZINGER, of Washington, DC, and DOUGLAS I. LEWIS, 

of Chicago, Illinois. 

MICHAEL LIBERMAN, Attorney, Office of the General 

Counsel, United States International Trade Commission, 

of Washington, DC, argued for appellee. With him on the 

brief were DOMINIC L. BIANCHI, Acting General Counsel, 

and JAMES A. WORTH, Acting Assistant General Counsel. 

Of counsel was ANDREA C. CASSON. 

CHARLES K. VERHOEVEN, Quinn Emanuel Urquhart & 

Sullivan, LLP, of San Francisco, California, argued for 

intervenor. With him on the brief were DAVID A. NELSON, 

of Chicago, Illinois; and EDWARD J. DEFRANCO, RAYMOND 

N. NIMROD and MATTHEW A. TRAUPMAN, of New York, 

New York. 

______________________ 

Before RADER, Chief Judge, PROST, and TARANTO, Circuit Judges.

TARANTO, Circuit Judge. 

Microsoft Corporation appeals from an order of the 

United States International Trade Commission that found 

no violation of 19 U.S.C. § 1337 insofar as Microsoft

alleged that Motorola Mobility, Inc. (Motorola), infringed 

four of Microsoft’s patents, U.S. Patent Nos. 6,578,054; 

6,826,762; 7,644,376; and 5,664,133. The Commission 

found no infringement of those patents. As to three of the 

patents, the ’054, ’762, and ’376 patents, the Commission 

also found no violation on an additional ground, namely, 

that Microsoft had not proved that there was a domestic 

industry relating to articles protected by the patents. 

We affirm the Commission on three of the patents but 

reverse in part on the fourth. We affirm the finding that 

Motorola does not infringe the ’054 patent, as well as the 

finding that Microsoft failed to prove that a domestic 
MICROSOFT CORPORATION v. ITC 3

industry exists for products protected by the ’762 and ’376 

patents. As to the claims of the ’133 patent that are at 

issue, however, we hold that the Commission relied on 

incorrect claim constructions in finding no infringement, 

the only basis for its finding no violation, for the main 

group of accused products, while we affirm the noninfringement finding for the accused alternative design. 

We therefore partly reverse the Commission’s final determination as to the ’133 patent and remand for further 

proceedings.1 

BACKGROUND

In 2010, Microsoft filed a complaint in the Commission against Motorola. Microsoft alleged that Motorola

had violated section 337 of the Tariff Act of 1930, 19 

U.S.C. § 1337, by importing mobile phones and tablets 

that infringe a number of Microsoft’s patents. The Commission instituted an investigation and assigned the case 

to an administrative law judge. In the Matter of: Certain 

Mobile Devices, Associated Software, and Components 

Thereof; Notice of Investigation, 75 Fed. Reg. 68379-02

(Nov. 5, 2010). 

After an evidentiary hearing, the ALJ found, as relevant to the present appeal, that the accused Motorola

products did not infringe any of the asserted claims of the

’054, ’762, ’376, or ’133 patents. Certain Mobile Devices, 

Associated Software, and Components Thereof, Inv. No. 

337-TA-744, EDIS No. 467464, at ii (Dec. 20, 2011) (Initial Determination). The ALJ also addressed whether

Microsoft made a showing, required for relief under 

section 337, that an industry in the United States “relating to the articles protected by the patent[s] . . . exists or 

1 The Commission granted Microsoft relief based on 

another patent. That ruling is the subject of a separate 

appeal by Motorola.

 
4 MICROSOFT CORPORATION v. ITC 

is in the process of being established.” 19 U.S.C. §§ 

1337(a)(2), (3). To make that domestic-industry showing, 

Microsoft sought to rely on mobile devices allegedly 

loaded with the Microsoft Windows mobile operating 

system, in which Microsoft had invested substantial 

resources in the United States. But the ALJ found that 

Microsoft had failed to prove that the mobile devices on 

which it relied actually implemented the ’054, ’762, and 

’376 patents. Certain Mobile Devices, Associated Software, and Components Thereof, Inv. No. 337-TA-744, 

EDIS No. 467464, at 199, 203-08. 

The Commission reviewed the ALJ’s decision in part, 

allowing the unreviewed parts, including the noninfringement findings at issue here, to become Commission determinations. The Commission specifically upheld 

the ALJ’s findings regarding Microsoft’s failure to prove 

that the Microsoft-supported products on which it relied 

for its domestic-industry showing actually practiced the 

’054, ’762, and ’376 patents. Certain Mobile Devices, 

Associated Software, and Components Thereof, Inv. No. 

337-TA-744, USITC Pub. 4384, at 16 (Mar. 2013) (Final). 

Microsoft appeals. We have jurisdiction under 28 

U.S.C. § 1295(a)(6). 

DISCUSSION

A 

We first address the Commission’s finding of no section 337 violation based on the ’054 patent.2 Entitled 

“Method And System For Supporting Off-Line Mode Of 

Operation And Synchronization Using Resource State 

Information,” the ’054 patent discloses a system and 

2 We sometimes use “Commission” when referring 

to ALJ determinations that the Commission left undisturbed and relied on for its ultimate disposition.

 
MICROSOFT CORPORATION v. ITC 5

method for synchronizing copies of a data resource (e.g., a 

calendar entry or document) in a client-server environment, where any of several clients (i.e., computers or 

mobile devices) may make changes to its copy of that 

resource even when not connected to the server. ’054 

patent, col. 2, lines 49-53, 57-60. When a client receives a 

copy of a resource from the server, it also receives “resource state information.” Id., col. 16, lines 51-54. The 

resource state information “represents the state of the 

resource stored at the server at a selected moment.” Id., 

col. 16, lines 51-54. The client stores this copy (a local 

copy) so that the client can modify the resource even when 

it is not connected to the server. Id., col. 16, lines 55-63. 

After a connection is reestablished with the server, the 

client transmits the resource and the resource state 

information stored at the client to the server. Id., col. 16, 

line 64, through col. 17, line 3. The server then determines if the copy just received from the client “is the most 

current version of the data object or resource, and all 

copies of the data object are synchronized to the most 

current version.” Id., col. 3, lines 36-39. 

Microsoft asserted independent claim 11 and dependent claims 13-15 of the ’054 patent against Motorola. The 

dispute over infringement centered on claim 11’s requirement of “resource state information.” Although the 

parties agreed before the hearing that the term “resource 

state information” needed no construction, the ALJ concluded that the meaning of the term was actually in 

dispute and construed it to mean “information that is 

associated with a resource that allows the server, client 

computer, or both to determine the version of the resource 

stored on the server at a particular moment, and if there 

has been a change in the resource, and to take appropriate action to synchronize the documents if there has been 

a change.” Certain Mobile Devices, Associated Software, 

and Components Thereof, Inv. No. 337-TA-744, EDIS No. 

467464, at 40-41, 49. The ALJ explicitly noted that, 
6 MICROSOFT CORPORATION v. ITC 

under his construction, “resource state information” did 

not necessarily require “a version number,” but that it did 

require “some information to indicate the version of the 

resource.” Id. at 49.

Based on that construction, the ALJ found that the 

accused products do not infringe the asserted claims of 

the ’054 patent because they do not use “resource state 

information” for synchronization. Id. at 59-65. The

accused products use a protocol called ActiveSync—

initially designed and licensed by Microsoft for its enterprise server-side software application—to handle synchronization of data between mobile devices and Microsoft 

Exchange servers. The ActiveSync protocol uses a Sync 

Command to transmit three pieces of information: a 

resource field, identifier field, and state tag. The resource 

field contains the actual data of the resource, and the 

identifier field contains the ServerID, which is a unique 

identifier for the particular resource. The state tag indicates whether the state is “add,” “change,” or “delete,” 

which the client or server sending the information uses to 

indicate whether the resource following the tag has been 

added, changed, or deleted. Microsoft’s infringement 

argument, which the ALJ found to be inconsistently 

presented by Microsoft and its expert Dr. Smith, id. at 62-

63, is that the state tag and identifier field together 

constitute the “resource state information” required by 

claim 11. 

The ALJ found that Microsoft failed to prove that the 

Sync Commands were “resource state information.” Id. 

at 62. The ALJ criticized Dr. Smith’s testimony as “incredible and unreliable” because he did not tie his analysis of the claims to the specification or prosecution 

history, did not discuss two patents incorporated by 

reference into the ’054 patent, and never clearly explained 

what the “resource state information” consisted of in the 

accused products. Id. at 63. The ALJ concluded that the 

standard Sync Commands “in no way, identify the version 
MICROSOFT CORPORATION v. ITC 7

of the resource at a given time” and, therefore, do not 

constitute “resource state information.” Certain Mobile 

Devices, Associated Software, and Components Thereof, 

Inv. No. 337-TA-744, EDIS No. 467464, at 64. This is 

because “[a] standardized XML command does not provide 

any information that can identify the version of a resource”; it merely “command[s] the client or server to 

perform an action.” Id. The Commission declined to 

review the ALJ’s construction and non-infringement 

determination. 

Microsoft argues on appeal that the ALJ improperly 

“construed [resource state information] to require additional information about the version of the resource, akin 

to a version number.”3 Microsoft has not presented on 

appeal an argument, which would have to proceed under 

the demanding substantial-evidence standard of review,

that the ALJ could not find lack of infringement even 

under the ALJ’s claim construction. All we fairly have 

before us is Microsoft’s challenge to the ALJ’s construction, which we review without deference. Pass & Seymour, Inc. v. Int’l Trade Com’n., 617 F.3d 1319, 1323 

(Fed. Cir. 2010).

Microsoft argues that the phrase at issue has a “plain 

meaning”: “the current status of the resource”; “the current condition of the resource on the platform (i.e., client 

or server) that sends the information.” In our view, 

however, the term “state” is so general on its face that it 

begs for clarification from the specification regarding 

what aspect of the resource is to be identified. We conclude that the ALJ correctly understood “state” in the 

3 Microsoft sufficiently preserved this contention by 

arguing to the Commission that the ALJ had ultimately 

rejected infringement by improperly imposing its requirement of version information. 

 
8 MICROSOFT CORPORATION v. ITC 

context of the whole patent as requiring information 

about the version of the resource. 

Claim 11 describes “resource state information” as

“representing the state of the resource stored at the 

server at a selected moment.” ’054 patent, col. 16, lines 

52-54. The specification defines what is meant by “state”: 

“The ‘state’ of the contents of a collection stored at a 

server refers to the identity of the current version of a 

resource stored at a server.” Id., col. 9, lines 19-21. The 

patent goes on to explain that “[a]s a particular resource 

stored at one or more servers undergoes a series of successive updates, the resource is considered to have passed 

through a corresponding series of states, each of which 

represents a single update version of the resource.” Id., 

col. 9, lines 23-27. And in summarizing the invention, the 

’054 patent explains that the “current state of the copy” in 

the client’s local memory is used by the server to “determine[] if the copy in the client’s cache is the most current 

version of the data object or resource . . . .” Id., col. 3, 

lines 34-37. 

The specification thus makes clear, consistent with 

the invention’s function of synchronizing, that “resource 

state information” must provide information about the

comparative recentness of a particular version. We 

therefore see no error in the ALJ’s construction requiring

some information that allows the server or client to determine which copy of the resource is the most recent so 

that it can take appropriate action to synchronize the 

resource if there has been a change to a copy of that 

resource. Finding no error in the ALJ’s construction of 

“resource state information,” we affirm the Commission’s

determination that the accused products do not infringe 

the ’054 patent.

B 

We also affirm the Commission’s finding of no section 

337 violation based on the ’376 patent. Entitled “Flexible 
MICROSOFT CORPORATION v. ITC 9

Architecture For Notifying Applications Of State Changes,” the patent discloses and claims a mechanism for 

notifying application programs about changes to the state 

of certain mobile-device components of relevance to those 

applications. ’376 patent, col. 1, lines 30-60. Applications 

may, for example, benefit from having information about 

the current state of battery strength, network connectivity, or memory usage. Id., col. 1, lines 36-39. Multiple 

applications may benefit from information about multiple 

“state properties.” Instead of each application checking 

with each resource about its state, variables for multiple 

state properties are stored in a common data store to 

which a “notification broker” has access, and client applications register with that broker to receive notifications of 

changes in particular state properties relevant to that 

application. Id., col. 79, lines 10-17; see also id. at col. 2, 

lines 32-34. The notification broker is “an underlying 

driver responsible for adding, updating, and removing 

data from a data store.” Id., col. 2, lines 39-41.

Microsoft asserted independent claim 10 and dependent claims 11-13 of the ’376 patent against Motorola. 

Claim 10 includes the terms “notification broker” and 

“client applications,” both of which were central to the 

parties’ dispute before the Commission and now on appeal. The ALJ initially construed “notification broker” to 

mean “an underlying driver responsible for, at least, 

adding, updating, and removing data from a data store.” 

Certain Mobile Devices, Associated Software, and Components Thereof, Inv. No. 337-TA-744, EDIS No. 467464, at 

39. After recognizing that the parties disagreed about the 

meaning of “underlying driver,” the ALJ determined that 

the term should be given its plain and ordinary meaning, 

which he concluded meant that the “identified driver 

must, at least, directly add, update, and remove data 

from the identified data store, which may be either hardware or software.” Id. at 40 (emphasis added). Because of 

this construction requirement of “direct” access, the ALJ 
10 MICROSOFT CORPORATION v. ITC 

found that Microsoft failed to show that the accused 

products contained a “notification broker.” Id. at 91.

The ALJ also found that the accused products did not 

meet the “client applications” limitation of claim 10. The 

ALJ reasoned that the patent makes clear—including in 

claim language requiring that the “notification broker” 

“be coupled . . . to the clients”—that the required client 

applications could not simultaneously be part of the 

required notification broker. Id. at 92. The ALJ found 

that Microsoft’s expert, Dr. Olivier, failed to identify claim 

applications (or, at least, more than one client application) outside the notification broker he identified. For 

example, Dr. Olivier identified the battery service as a 

client application, but the battery service is also a component of the notification broker. Id.

To establish a violation of section 337, Microsoft had 

to show not just infringement by Motorola’s products but 

the existence of a domestic industry “relating to the 

articles protected by the patent.” 19 U.S.C. §§ 1337(a)(2), 

(3). The ALJ determined that Microsoft failed to make 

that domestic-industry showing because it did not offer 

sufficient proof of articles that were actually protected by 

the patent. Certain Mobile Devices, Associated Software, 

and Components Thereof, Inv. No. 337-TA-744, EDIS No. 

467464, at 207. Microsoft’s failing was simple. Although 

Dr. Olivier purported to identify “client applications” in 

an example application that Microsoft provides to thirdparty phone manufacturers, Microsoft failed to show that 

any such “client applications” are actually implemented

on any third-party mobile device. Id. According to the 

ALJ, because Microsoft did not point to evidence that its 

expert examined client applications in fact running on

third-party mobile phones or confirmed how they operated, Microsoft failed to show that there is a domestic 

industry product that actually practices the ’376 patent. 

The Commission affirmed this determination. Certain 
MICROSOFT CORPORATION v. ITC 11

Mobile Devices, Associated Software, and Components 

Thereof, Inv. No. 337-TA-744, USITC Pub. 4384, at 18.

In this appeal, we do not reach Microsoft’s challenge 

to the non-infringement determination because we find 

substantial evidence to support the Commission’s finding 

of no domestic industry, which suffices to support its 

finding of no violation based on this patent. There is no 

question about the substantiality of Microsoft’s investment in its operating system or about the importance of 

that operating system to mobile phones on which it runs. 

But that is not enough under the statute. Section 337, 

though not requiring that an article protected by the 

patent be produced in the United States, unmistakably 

requires that the domestic company’s substantial investments relate to actual “articles protected by the patent.” 

19 U.S.C. §§ 1337(a)(2), (3). A company seeking section 

337 protection must therefore provide evidence that its 

substantial domestic investment—e.g., in research and 

development—relates to an actual article that practices 

the patent, regardless of whether or not that article is

manufactured domestically or abroad. InterDigital 

Commc’ns v. Int’l Trade Comm’n, 707 F.3d 1295, 1299, 

1304 (Fed. Cir. 2013). 

We conclude that there is substantial evidence to support the Commission’s determination that Microsoft failed 

to meet that requirement. Claim 10 of the patent requires, among other things, “client applications on the 

mobile device that are configured to automatically register notification requests and receive notifications in 

response to a change in a state property of the mobile 

devices for which they have registered” and a “notification 

broker on the mobile device that is coupled to the data 

store, the notification list, and the clients . . . .” ’376 

patent, col. 80, lines 17-21, 31-32. The Commission did 

not lack substantial evidence to support its finding that 

Microsoft simply failed to identify any actual phones with 

the required components performing as required. In so 
12 MICROSOFT CORPORATION v. ITC 

concluding, we respect a fundamental limit on our role in 

reviewing evidentiary sufficiency where the finder of fact 

has applied proper legal standards: we do not say what 

the party with the applicable burden of proof could have 

proved, only what the finder of fact could permissibly find 

it did or did not prove.

Microsoft’s expert testified that “[a] mobile device 

running Windows Mobile includes client applications on 

the mobile device that are configured to automatically 

register notification requests . . . and receive notifications 

. . . .” He also testified that “client applications” automatically register notification requests that “indicate when 

the clients should receive notifications. . . .” But the 

evidence he cited in support of his opinion that Windows 

Mobile phones practice the “client applications” limitation 

is the source code that Microsoft provides to mobile-phone 

manufacturers, rather than specific code actually installed and run on a particular third-party mobile device. 

Moreover, Microsoft provided no evidence that “Windows 

Mobile” phones always contain the entirety of Windows 

Mobile, rather than only portions. The ALJ thus could 

find that Microsoft lacked sufficient evidence about how

client applications on actual “articles” operated.

On that basis, the Commission could find that Microsoft failed to show that any Microsoft-supported products practiced the ’376 patent. We therefore affirm the 

Commission’s finding of no proven domestic industry, and 

hence no section 337 violation, involving this patent.

C 

For similar reasons, we affirm the Commission’s finding of no violation based on the ’762 patent. Entitled 

“Radio Interface Layer in a Cell Phone with a Set of APIs 

Having a Hardware-Independent Proxy Layer and a 

Hardware-Specific Driver Layer,” the ’762 patent discloses a radio interface layer (RIL) between radio hardware 

and software applications in a cell phone. ’762 patent, col. 
MICROSOFT CORPORATION v. ITC 13

1, lines 53-56. The RIL is designed to “allow[] applications running on an operating system in the cellular 

telephone to issue commands without knowledge of the 

underlying radio structure of the cellular telephone. . . .” 

Id., col. 1, lines 60-65. To do so, the RIL contains two 

“layers”: (1) a hardware-independent proxy layer, which is 

a software component that receives requests from client 

applications running on the phone and converts them into 

code that can be understood by the second (driver) layer, 

id., col. 5, lines 2-4; id., col. 23, line 66 through col. 24, 

line 6; and (2) a hardware-specific driver layer, which is a 

software component that receives requests from the proxy 

layer and generates commands for the specific radio. Id., 

col. 2, lines 1-4. 

Each of the asserted claims (1-9 and 15-16) requires 

an RIL that includes the “hardware-independent” proxy 

layer and the “hardware-specific” driver layer. At the 

time of the Markman hearing, the parties agreed to the 

construction of “hardware independent” as “without 

regard to a specific hardware implementation.” After a 

dispute arose about whether Motorola was attempting to 

read additional limitations into the claim phrase, the ALJ 

clarified that “hardware independent” “does not require a 

complete lack of knowledge of the underlying hardware or 

prohibit any changes to the proxy layer based on the 

hardware,” only that the proxy layer be independent of 

the “network characteristics” of the hardware. Certain 

Mobile Devices, Associated Software, and Components 

Thereof, Inv. No. 337-TA-744, EDIS No. 467464, at 24, 31. 

Relying on that construction, the ALJ found no infringement. Specifically, he found that the accused 

Motorola mobile devices, which contain telephony radios 

and run the Android operating system, did not contain the 

necessary “hardware independent” proxy layer. Id. at 84-

87. The ALJ also found, and the Commission expressly 

affirmed, that Microsoft failed to show that there was a 

Microsoft-supported product that practiced the ’762 
14 MICROSOFT CORPORATION v. ITC 

patent and, hence, failed to meet the domestic-industry 

requirement of section 337. Id. at 203-06; Certain Mobile 

Devices, Associated Software, and Components Thereof, 

Inv. No. 337-TA-744, USITC Pub. 4384, at 18. That 

finding rested not on the requirement of a “hardware 

independent” proxy layer but on the requirement of a 

“hardware specific” driver. Microsoft relied on third-party 

mobile devices running Windows Mobile as articles that 

practice the ’762 patent, which required Microsoft to show 

that the identified devices have a hardware-specific driver 

(software), in addition to the Windows Mobile 6.5 operating system. Certain Mobile Devices, Associated Software, 

and Components Thereof, Inv. No. 337-TA-744, EDIS No. 

467464, at 203. As with the ’376 patent, however, the 

ALJ found that Microsoft failed to make the required 

showing for actual articles. Microsoft’s expert, Dr. Olivier, relied on source code only for “an example driver layer” 

that Microsoft provides to third-party mobile-device 

manufacturers. The ALJ faulted Microsoft for providing

“no evidence that its expert conducted any examination or 

analysis of the third-party software that is necessary to 

implement the claimed invention or in any way confirmed 

how the devices it relies on actually operate.” Id. at 204-

05.

There is substantial evidence to support the Commission’s determination that Microsoft failed to meet the 

domestic-industry requirement because it did not offer

sufficient evidence to prove that any third-party mobile 

device implements a hardware-dependent driver layer as 

required by the patent. Microsoft’s expert, Dr. Olivier,

analyzed only driver-layer code provided by Microsoft to 

third-party mobile-device manufacturers as something 

they could choose to load on their devices; he never analyzed the functionality of an actual driver layer implemented on a phone. And a witness testifying as 

Microsoft’s representative under Fed. R. Civ. P. 30(b)(6)

could not identify a single third-party mobile-device 
MICROSOFT CORPORATION v. ITC 15

manufacturer that implemented Microsoft’s example 

driver-layer code. 

Microsoft argues that one portion of Dr. Olivier’s testimony—about the HTC HD2 phone running Windows 

Mobile 6.5—established that a Microsoft-supported phone 

practiced the ’762 patent. The Commission could find 

otherwise. Dr. Olivier did not analyze the driver on the 

HD2 and demonstrate that its driver is hardware-specific. 

When discussing the driver layer, Dr. Olivier relied on 

Microsoft’s sample RIL driver that works with GSM 

radios, rather than the actual driver layer code used in

the HD2. And while he made reference to certain standard telephony commands that the HD2 may use, he did 

not establish that such use meant that the driver is 

hardware-specific. Under the deferential substantialevidence standard of review, we cannot reverse the Commission’s finding that Microsoft lacked sufficient proof 

that the actual driver layer in the HD2 is hardware 

specific. 

In sum, the ALJ had a sufficient basis to find that Microsoft did not make the necessary showing about thirdparty software actually implemented on a mobile device 

running Windows 6.5. Because the Commission could 

find insufficient proof that the ’762 patent covers the 

articles on which Microsoft relied to prove a domestic 

industry, it could properly find no section 337 violation. 

We therefore affirm that finding without reaching the 

issue of infringement. 

D 

Finally, we address the Commission’s finding of no 

section 337 violation based on the ’133 patent. Entitled

“Context Sensitive Menu System/Menu Behavior,” the 

’133 patent generally discloses and claims a computer 

system having a graphical user interface that presents a 

set of representations corresponding to actual computer 

resources, including objects and containers, and offers 
16 MICROSOFT CORPORATION v. ITC 

“context sensitive” menus for user interaction.4 ’133 

patent, col. 2, lines 47-50. When a user selects a computer resource, such as a picture file, a “context menu” is 

automatically generated. Id., col. 10, lines 38-47. This 

context menu has information of two types: it includes at 

least one selection relating to a class of objects to which 

that resource belongs (e.g., the class of personal contacts, 

or of telephone numbers, or of pictures) and at least one 

selection associated with a container in which the selected 

computer resource resides (e.g., the directory of contacts, 

or of telephone numbers, or of pictures). Id., col. 10, lines 

47-54. The menu, moreover, is displayed in a position in 

proximity to the selected computer resource. Id., col. 10, 

lines 54-56.

Microsoft asserted claims 1, 2, 35, and 36 of the ’133 

patent against Motorola. Independent claim 1 requires

retrieving a menu selection relating to a class of 

objects to which the selected computer resource 

belongs; and

retrieving a menu selection associated with a container in which the selected computer resource resides; and

displaying upon the display the set of menu selections in a menu positioned in the proximity of a 

graphical representation of the selected computer 

resource. 

4 As explained by Microsoft, without contradiction 

by the other parties, an object is any distinct entity of 

data—for example, a document, spreadsheet, picture file, 

or audio file. Brief for Appellant Microsoft at 17 n.2. 

Containers are repositories where objects reside, such as 

folders, directories, and databases. Id.

 
MICROSOFT CORPORATION v. ITC 17

Id., col. 10, lines 49-56. Independent claim 35 includes 

similar “related to” and “associated with” language, and 

similar proximity language, though it refers to an “object” 

instead of the “computer resource” and involves software 

for “adding” the claimed menu selections to the menu. 

Id., col. 15, line 13 through col. 16, line 3. The parties 

have not identified any material difference in the directinfringement issues raised by the two independent claims.

The ALJ construed “a menu selection relating to a 

class of objects” as “a choice or option in a menu based 

upon or determined by the class of objects to which the 

selected computer resource belongs.” Certain Mobile 

Devices, Associated Software, and Components Thereof, 

Inv. No. 337-TA-744, EDIS No. 467464, at 68. He also 

construed “a menu selection associated with a container” 

as “a choice or option in a menu based upon or determined 

by the environment or context in which the selected 

computer resource resides.” Id. Based on those constructions, the ALJ found that the accused products do not 

meet the retrieving or adding limitations because each 

application in the accused products acts only on a single 

class of objects. Id. at 70. Each accused application 

“provides the set of menu selections without regard to the 

class of objects (since it operates only on a single class of 

objects) and only changes selections in the context menu 

based on the container.”5 “The menu selections are ‘static’

and will appear regardless of what object or container has 

5 We understand the ALJ’s conclusion to mean 

simply that each particular application always summons 

up the same menu (and does not vary it according to 

different objects), not that all applications (one for pictures, one for text messages, etc.) summon up the same 

menu. There is no evidence suggesting the latter, and all 

the evidence relied on by the ALJ (and by the Commission 

and Motorola here) says only the former.

 
18 MICROSOFT CORPORATION v. ITC 

been selected.” For that reason, the ALJ concluded, they 

are not “based upon or determined by” the class of the 

object or the container as the claim (as construed) requires. Id. at 70-71.

The ALJ also found that the accused products do not 

meet the requirement for display of the menu in proximity of a graphical representation of the selected computer 

resource (or object). The parties agreed that the requirement means “displaying on the display the set of menu 

selections positioned at or near the location of a graphical 

representation” of the resource (or object). The ALJ 

ultimately concluded, however, that it is not enough to 

meet this requirement that the context menu is actually 

close to the graphical representation of the selected computer resource; rather, the ALJ concluded, the placement 

of the context menu in relation to the graphical representation of the selected resource must be “deliberate.” Id. at 

72. For that reason, the ALJ found that the context menu 

in the main group of accused products is not “positioned in 

proximity” to the selected computer resource, because the 

context menu in those products is always in the center of 

the screen and is not “deliberately” positioned near the 

on-screen representation of the selected computer resource. Id. at 71. For the other accused products, embodying an “Alternate Design,” the ALJ found that the menu 

does not meet the “positioned in the proximity” requirement based on an additional interpretation of the requirement, namely, that the menu must not wholly 

obscure the graphical representation of the computer 

resource. Certain Mobile Devices, Associated Software, 

and Components Thereof, Inv. No. 337-TA-744, EDIS No. 

467464, at 72. On those grounds, the ALJ found no direct 
MICROSOFT CORPORATION v. ITC 19

infringement (or, therefore, indirect infringement), a 

finding the Commission adopted.6

The Commission’s grounds for finding no infringement rest ultimately on its view of what the claims require. There is no dispute here about how the accused 

products work, only about what the claims require. These 

are matters of claim construction, which we review without deference. On a correct understanding of the claim 

requirements, we conclude, the main group of accused

products infringe, but the alternative design does not. 

As to the “retrieving” and “adding” limitations, the evidence is clear that the accused products contain at least 

two applications, each one of which, when a user summons a menu for an object, displays a menu that contains 

both an entry dependent on the particular object (say, a 

telephone number) and an entry concerning the container 

(say, the inclusion of the number in the contact-list folder). To use the language of the ALJ’s own construction, a

menu for a contact, for example, offers an option to email 

the person, which is an option “based upon or determined 

by” the fact that this object is a person with an email 

address (not, say, a picture), and another option to delete 

the contact from the list, which is an option “based upon 

or determined by” the file in which the listing resides. 

6 The ALJ found the domestic-industry requirement

satisfied for this patent, based on Microsoft’s proof that 

certain mobile devices that run the Windows Mobile 6.5 

operating system, specifically the LG Fathom, practice 

claim 1 of the ’133 patent. Certain Mobile Devices, Associated Software, and Components Thereof, Inv. No. 337-

TA-744, EDIS No. 467464, at 201. The Commission 

declined to review that finding. Motorola has not challenged the finding as an alternative ground to support the 

Commission’s denial of relief on the ’133 patent.

 
20 MICROSOFT CORPORATION v. ITC 

A related example involves a menu for a call list (from 

the accused products), shown in an exhibit from trial 

annotated by Microsoft in its opening brief: 

Brief for Appellant Microsoft at 55. The image shows that

selecting an object produces a context menu that includes 

a menu selection associated with the class of objects (for a 

phone number, add to contacts; or call the number) and 

another associated with the container (environment or

context) in which the object resides (remove from list). 

And it is undisputed that the menu selections change 

depending on the selected object: for example, a menu 

item about a contact will be to call the contact, which will 

not be an item on a photo-menu. 

No more is required by the claim language or, even, 

the express construction adopted by the ALJ. An application gives menu choices, one based on the type of object, 

another based on the container. Although the ALJ 

seemed to think otherwise, the object-based choice is no 

less object-based just because what makes it object-based 

is the action that selecting it will perform (call a number, 

say, or open a photo). And nothing in the claim language 

or the express construction requires an individual appli-
MICROSOFT CORPORATION v. ITC 21

cation itself to offer different menus for different objects

or, what amounts to the same thing, to make an inquiry 

about a particular object once the application is launched 

to see which of several application-specific menus to

display. The ALJ’s non-infringement finding with respect 

to the “retrieving”/“adding” limitations rested entirely on 

incorrectly imposing such extraneous restrictions. Without those unwarranted additions, the limitations encompass the accused products—both the main group of 

products and the alternative design. 

The “displaying” limitations also read on the main 

group of accused products, for which the Android operating system provides context menus that are centered on 

the screen and occupy most of it. It is undisputed that, at 

a minimum, the menu is often at or near the location of 

the selected object. On a small-screen device, that may 

always be so, because it may be effectively impossible to 

be anything but proximate, for lack of space. 

The ALJ’s sole basis for finding the display-inproximity requirement not to be met for the main group of 

products was a notion of “deliberate” positioning that 

cannot be justified. No such notion is fairly found in the 

claim or the agreed-on construction. The claim does not 

require a user’s choice about display; it plainly contemplates control of the display by built-in software, making 

the language of “deliberate” odd. Perhaps the ALJ meant 

that the software must make the menu-display location 

an explicit function of the location of the graphical representation of the selected object. But the claim speaks only 

of results, not the details of underlying functions. Nor

would it support the ALJ’s claim construction to observe 

that, on a small screen, the display may always be in 

proximity to the location of the object’s representation.7 

7 As the illustration excerpted above suggests, supra p. 20, some context menus in the main group of ac-

 
22 MICROSOFT CORPORATION v. ITC 

Unavoidable proximity is still proximity. And in any 

event the practical consequence for small screens does not 

alter the evident meaning of the claim language, which is 

not limited to small-screen devices. This conclusion 

requires reversal of the ’133 patent non-infringement 

judgment as to the main group of accused products.

We reach a different conclusion regarding Motorola’s 

alternative design. The ALJ found the alternative design 

to be non-infringing based on his conclusion that, for the 

context menu to be in the proximity of the graphical 

representation of the selected object, the graphical representation must remain at least partly visible on the 

screen when the context menu appears. Noting that there 

is little to go on in deciding this question (the ALJ’s 

analysis was just one sentence), we adopt the ALJ’s 

construction. 

The ALJ’s construction adopts the meaning of the 

claim terms, and even of the slightly different terms of the 

agreed-on construction, that embodies the most natural 

understanding of the terms when read on their face. 

When we look to the rest of the patent for further enlightenment, we see that the drawings, in their only pertinent 

examples, show still-visible graphic representations of the 

selected objects. The specification offers nothing further 

of significance and, in particular, nothing specifically to 

support Microsoft’s view that it suffices for the context 

menu to appear at a place on the screen near where the 

graphical representation of the selected object appeared 

immediately before launching the menu and will appear 

again if the menu is cancelled. That view is hardly uncused products may themselves include a graphical representation of the selected object, just inside the top border. 

That possibility is unnecessary to our disposition. Moreover, Microsoft has not pointed to, or sought to rely on, 

such a possibility regarding the alternative design.

 
MICROSOFT CORPORATION v. ITC 23

reasonable given the context, which focuses on the experience of users who often will think of what is “under” a 

menu as still “there,” and in which there may be no 

practical difference between an image that is 80% obscured or faded and one no longer visible at all. But there 

is not enough to overcome the slightly more natural 

understanding that a screen image is not in proximity to 

something not actually on the screen.

We therefore adopt the ALJ’s some-visual-persistence 

construction. Microsoft has not pressed an assertion of 

infringement by equivalents. Accordingly, there is no 

basis for disturbing the non-infringement finding for the 

alternative design. 

In short, as to the main group of accused products, 

with no alternative grounds advanced to support the 

Commission’s non-infringement finding, we reverse that 

finding. No further issue remains about direct infringement by those products. But the Commission, having 

rejected direct infringement, did not reach the additional 

requirements for indirect infringement. Without prejudging the issues raised by those additional requirements in 

any way, we think it advisable to remand for the Commission to address those issues in the first instance. Also for 

the Commission to address on remand are the effect of 

infringement findings—direct infringement already 

established, indirect infringement possibly to be found on 

remand—on whether there is a section 337 violation and 

what remedy is appropriate, on which we likewise state 

no views. See Certain Electronic Devices with Image 

Processing Systems Components Thereof, and Associated 

Software, Inv. No. 337-TA-724, 2012 WL 3246515, at *13 

(Dec. 21, 2011) (Comm’n Op.)

CONCLUSION

The Commission’s determination that Motorola does 

not infringe the ’054 patent is affirmed, as is its determination that Microsoft failed to establish a domestic indus-
24 MICROSOFT CORPORATION v. ITC 

try for the ’376 and ’762 patents. The decision of the 

Commission finding that Motorola does not infringe the 

’133 patent is reversed in part, and the matter is remanded.

AFFIRMED IN PART, REVERSED IN PART,

AND REMANDED