United States Court Of Appeals for the Federal Circuit 

 

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KYOCERA WIRELESS CORPORATION, 

 Appellant, 

and 

QUALCOMM INCORPORATED, 

Appellant, 

and 

MOTOROLA, INC., 

 Appellant, 

and 

SAMSUNG ELECTRONICS CORPORATION, LTD., 

 Appellant, 

and 

LG ELECTRONICS MOBILECOMM U.S.A., INC., 

Appellant, 

and 

SANYO FISHER CO., 

 Appellant, 

and 

T-MOBILE USA, INC., 

 Appellant, 
and 

AT&T MOBILITY, LLC (formerly known as Cingular Wireless, LLC), 

 Appellant, 

and 

SPRINT NEXTEL CORPORATION, 

 Appellant, 

and 

PALM, INC., 

 Appellant, 

and 

PANTECH WIRELESS, INC., PANTECH CO., LTD., 

and PANTECH & CURITEL COMMUNICATIONS, INC., 

 Appellants, 

and 

UT STARCOM, INC., 

 Appellant, 

and 

HIGH TECH COMPUTER CORPORATION, 

 Appellant, 

and 

SHENZHEN HUAWEI COMMUNICATION TECHNOLOGIES CO., LTD., 

 Appellant, 

and 
RESEARCH IN MOTION LIMITED and RESEARCH IN MOTION CORPORATION, 

 Appellants, 

and 

FOXCONN INTERNATIONAL HOLDINGS LTD., 

 Appellant, 

and 

CASIO HITACHI MOBILE COMMUNICATIONS COMPANY, LTD., 

 Appellant, 

v. 

INTERNATIONAL TRADE COMMISSION, 

 Appellee, 

and 

BROADCOM CORPORATION, 

 Intervenor. 

Kenneth W. Starr, Kirkland & Ellis LLP, of Los Angeles, California, argued for 

appellants, Motorola, Inc., Samsung Electronics Corporation, Ltd., Kyocera Wireless 

Corporation, LG Electronics Mobilecomm U.S.A., Inc., and Sprint Nextel Corporation. 

Gregory A. Castanias, Jones Day, of Washington, DC, argued for appellants Foxconn 

International Holdings Ltd., Casio Hitachi Mobile Communications Company, Ltd., Palm Inc., 

Sanyo Fisher Co., Pantech & Curitel Communications, et al. High Tech Computer 

Corporation, Shenzhen Huawei Communication Technologies Co. Ltd., and UT Starcom, Inc. 

Carter G. Phillips, Sidley Austin LLP, of Washington, DC, argued for appellant 

Qualcomm Incorporated. With him on the brief were Stephen B. Kinnaird, Robert A. Parker, 

William K. West, Jr., Cecilia H. Gonzalez, and Juliana M. Cofrancesco, Howrey LLP, of 

Washington, DC; Karin J. Kramer, Howrey LLP, of San Francisco, California; Timothy S. Teter

and Lorie R.E. Ploeger, Cooley Godward Kronish LLP, of Palo Alto, California; and Stanley J. 

Panikowski, DLA Piper US LLP, of San Diego, California. Of counsel was William D.A. 

Zerhouni, Covington & Burling LLP, of Washington, DC. 
Claudia W. Frost, Pillsbury Winthrop Shaw Pittman LLP, of Houston, Texas, argued for 

appellant T-Mobile USA, Inc., AT&T Mobility LLC, Research in Motion Limited, et al. 

Andrea C. Casson, Assistant General Counsel for Litigation, Office of the General 

Counsel, United States International Trade Commission of Washington, DC, argued for 

appellee. With her on the brief were James M. Lyons, General Counsel, Michael Liberman, 

Paul M. Bartowski, and James A. Worth, Attorneys. 

Robert A. Van Nest, Keker & Van Nest, LLP, of San Francisco, California, argued for 

intervenor. With him on the brief were Ragesh K. Tangri, Steven Hirsh, Daniel E. Purcell, and 

Steven K. Taylor. Of counsel were James M. Dowd, Gregory H. Lantier, and William G.

McElwain, Wilmer Cutler Pickering Hale & Dorr, LLP, of Washington, DC; and Scott P. 

McBride, and Alejandro Menchaca, McAndrews, Held & Malloy, Ltd., of Chicago, Illinois. 

Don F. Livornese, Howrey LLP, of Los Angeles, California, for appellant Kyocera 

Wireless Corp. With him on the brief were Roman E. Darmer and Richard J. Burdge, Jr. Of 

counsel were Tom Crunk and Bradley J. Sparks. 

Russell E. Levine, Kirkland & Ellis LLP, of Chicago, Illinois, for appellant Motorola, Inc. 

With him on the brief were Christopher R. Liro and Nyika O. Strickland. 

Russell E. Levine, Kirkland & Ellis LLP, of Chicago, Illinois, for appellant Samsung 

Electronics Corporation, Ltd. With him on the brief were Gregory S. Arovas and Todd M. 

Friedman. 

Mark S. Zolno, Katten Muchin Rosenman LLP, of Chicago, Illinois, for appellant Sanyo 

Fisher Co. With him on the brief were Michael A. Dorfman and Eric R. Rock, and James A. 

Gromada, of Washington, DC. Of counsel was Kazumune V. Kano. 

Michael J. McKeon, Fish & Richardson, P.C., of Washington, DC, for appellant LG 

Electronics MobileComm U.S.A., Inc. With him on the brief was Scott A. Elengold. 

Josh A. Krevitt, Gibson, Dunn & Crutcher LLP, of New York, New York, for appellant TMobile USA, Inc. With him on the brief was Kevin W. Cherry. Of counsel were Mark A. Perry, 

Mathew D. McGill, and Minodora D. Vancea, of Washington, DC. Of counsel was Richard M. 

Kohel. 

Kathryn L. Clune, Crowell & Moring LLP, of Washington, DC, for appellant Sprint Nextel 

Corporation. With her on the brief were Richard McMillan, Jr. and Lisa A. Murray. 

V. James Adduci, II, Adduci, Mastriani & Schaumberg, LLP, of Washington, DC, for 

appellant Palm, Inc. With him on the brief were Munford P. Hall, II, Patricia Larios, and 

Jamie D. Underwood. 

Adam R. Hess, Pillsbury Winthrop Shaw Pittman LLP, of Washington, DC, for appellant 

Casio Hitachi Mobile Communications Company, Ltd. 
Hae-Chan Park, H.C. Park & Associates, PLC, of Vienna, Virginia, for appellants 

Pantech & Curitel Communications, Inc., et al. With him on the brief was Wayne M. Helge. 

Theodore T. Herhold, Townsend & Townsend & Crew LLP, of Palo Alto, California, for 

appellant Shenzhen Huawei Communication Technologies Co., Ltd. 

 

Robert F. Aldrich, Dickstein Shapiro LLP, of Washington, DC, for appellant UT 

Starcom, Inc. On the brief was Charles W. Saber. 

Steven E. Adkins, Jones Day, of Washington, DC, for appellant Foxconn International 

Holdings Ltd. With him on the brief was Kenneth R. Adamo, of Cleveland, Ohio. 

William S. Feiler, Morgan & Finnegan, LLP, of New York, New York, for appellants 

Research In Motion Corporation, et al. On the brief were Peter N. Fill and Eric G. Wright, of 

Washington, DC. Of counsel was Robert K. Goethals, of New York, New York. 

Christopher F. Corr, White & Case LLP, of Washington, DC, for appellant High Tech 

Computer Corporation. With him on the brief were Todd P. Taylor, Alexander W. Dennis. Of 

counsel on the brief was Warren S. Heit. Of counsel was Monisha Deka, of Washington, DC, 

and Farhenna Y. Rasheed, White & Case, LLP, of Palo Alto, California. 

Appealed from: United States International Trade Commission 
United States Court of Appeals for the Federal Circuit

 

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KYOCERA WIRELESS CORPORATION, 

 Appellant, 

and 

QUALCOMM INCORPORATED, 

 Appellant, 

and 

MOTOROLA, INC., 

 Appellant, 

and 

SAMSUNG ELECTRONICS CORPORATION, LTD., 

 Appellant, 

and 

LG ELECTRONICS MOBILECOMM U.S.A., INC., 

 Appellant, 

and 

SANYO FISHER CO., 

 Appellant, 

and 

T-MOBILE USA, INC., 

 Appellant, 

and 

AT&T MOBILITY, LLC (formerly known as Cingular Wireless, LLC), 

 Appellant, 
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and 

SPRINT NEXTEL CORPORATION, 

 Appellant, 

and 

PALM, INC., 

 Appellant, 

and 

PANTECH WIRELESS, INC., PANTECH CO., LTD., and PANTECH & CURITEL 

COMMUNICATIONS, INC., 

 Appellants, 

and 

UT STARCOM, INC., 

 Appellant, 

and 

HIGH TECH COMPUTER CORPORATION, 

 Appellant, 

and 

SHENZHEN HUAWEI COMMUNICATION TECHNOLOGIES CO., LTD., 

 Appellant, 

and 

RESEARCH IN MOTION LIMITED and RESEARCH IN MOTION CORPORATION, 

 Appellants, 

and 

FOXCONN INTERNATIONAL HOLDINGS LTD., 

 Appellant, 

and 

CASIO HITACHI MOBILE COMMUNICATIONS COMPANY, LTD., 

 Appellant, 
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v. 

INTERNATIONAL TRADE COMMISSION, 

 Appellee, 

and 

BROADCOM CORPORATION, 

 Intervenor 

On appeal from the United States International Trade Commission in Investigation No. 

337-TA-543. 

___________________________ 

DECIDED: October 14, 2008 

___________________________ 

Before RADER, BRYSON, and LINN, Circuit Judges. 

RADER, Circuit Judge. 

 The United States International Trade Commission (“ITC” or “Commission”) 

determined that Qualcomm Incorporated (“Qualcomm”) infringed Broadcom 

Corporation’s (“Broadcom’s”) United States Patent 6,714,983 (“’983 Patent”) with its 

imports. As a remedy, the ITC issued a limited exclusion order (“LEO”) against the 

importation of all downstream products containing the accused technology. Aside from 

Qualcomm, the appellants in this action are Qualcomm’s customers. Some customers 

are wireless device manufacturers whose products are subject to the LEO. Others are 

wireless network operators whose networks depend on products subject to the LEO. 

Despite the broad downstream scope of the LEO, Broadcom named only Qualcomm as 

a respondent in its ITC complaint. Because the ITC correctly construed the critical 

disputed claim term in Broadcom’s patent, and because the ITC correctly rejected 
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Qualcomm’s invalidity arguments under 35 U.S.C. §§ 102 and 103, this court affirms the 

ITC’s finding that the ’983 Patent is not invalid. This court also affirms the ITC’s 

determination of no direct infringement by Qualcomm. However, because the ITC 

misapplied the standard for induced infringement, this court vacates and remands on 

infringement. Finally, because the ITC has no statutory authority to issue an LEO 

against downstream products of non-respondents, this court vacates and remands the 

limited exclusion order. 

I. 

 Broadcom’s ’983 patent is entitled “Modular, portable data processing terminal 

for use in a communication network.” The patent claims a mobile computing device that 

can both communicate with wireless networks and operate in a reduced power mode to 

extend battery life: 

One or more circuits adapted for use in a mobile computing device comprising: 

a terminal adapted to receive battery power for at least one of the circuits; 

communication circuitry comprising a reduced power mode and being adapted to 

use a first wireless communication and a second wireless communication 

different from the first wireless communication to transmit data to access 

points, the communication circuitry reducing power by controlling the frequency 

of scanning for the access points; and 

processing circuitry arranged to process data received from the communication 

circuitry. 

’983 Patent col.42 l.57-col.43 l.2 (Claim 1). In the liability phase at the ITC, the parties 

vigorously contested the interpretation of the phrase “a first wireless communication and 

a second wireless communication different from the first wireless communication.” The 

ITC administrative law judge characterized this dispute in terms of “how different these 

wireless communications need to be.” In re Certain Baseband Processor Chips & 
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Chipsets, Transmitter & Receiver (Radio) Chips, Power Control Chips, & Prod.

Containing Same, Including Cellular Telephone Handsets, Inv. No. 337-TA-543, 2006 

ITC LEXIS 803, at *185 (Int’l Trade Comm’n Oct. 10, 2006) (“Initial Determination”). 

Before the ITC, Qualcomm argued that “different” is extremely broad and is not 

limited to any particular type of difference. The ITC concluded Qualcomm’s proposal 

was too broad and would “include any slight difference in wireless communications, 

without regard to the context of the claim.” Id. The ITC construed the term as 

“refer[ring] to two different methods of communication.” Id. at *186. In this appeal, 

Qualcomm challenges the ITC’s construction as too narrow and argues instead for its 

originally proffered broad interpretation. 

This action began on May 19, 2005, when Broadcom filed a complaint in the ITC 

alleging unfair acts in violation of 19 U.S.C. § 1337 (Section 337 of the Tariff Act of 

1930, or “Section 337”). Broadcom named Qualcomm, and only Qualcomm, as a 

respondent. Broadcom alleged that thirteen Qualcomm chips and chipsets infringe 

several Broadcom patents. The administrative law judge bifurcated the ITC’s 

proceedings into separate liability and remedy proceedings. 

On liability, the ITC determined that Qualcomm had not infringed two of 

Broadcom’s patents (U.S. Patent Nos. 6,374,311 and 6,583,675). These aspects of the 

ITC’s rulings were the subject of a separate, recently decided appeal. See Broadcom 

Corp. v. ITC, No. 2007-1164 (Fed. Cir. Sep. 19, 2008). 

With regard to the ’983 Patent, however, the ITC determined that Qualcomm’s 

chips, when programmed to enable certain battery-saving features, infringe the ’983 

patent. Moreover, the ITC found Qualcomm liable for inducing third party 
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manufacturers to incorporate battery-saving software and Qualcomm’s chips into their 

mobile devices. Further, the Commission rejected Qualcomm’s anticipation and 

obviousness arguments under 35 U.S.C. §§ 102 and 103. 

With regard to remedy, the ITC issued an LEO excluding “[h]andheld wireless 

communications devices, including cellular telephone handsets and PDAs, containing 

Qualcomm baseband processor chips or chipsets that are programmed to enable the 

power saving features covered by claims 1, 4, 8, 9, or 11 of U.S. Patent No. 6,714,983, 

wherein the chips or chipsets are manufactured abroad by or on behalf of Qualcomm 

Incorporated.” In re Certain Baseband Processor Chips & Chipsets, Transmitter & 

Receiver (Radio) Chips, Power Control Chips, & Prod. Containing Same, Including 

Cellular Telephone Handsets, Inv. No. 337-TA-543 3-4 (Int’l Trade Comm’n June 7, 

2007) (“Limited Exclusion Order”). 

Qualcomm appeals both the liability and remedy findings. Kyocera and other 

wireless device manufacturers—non-respondents to Broadcom’s ITC complaint—are 

subject to the LEO because they purchase and incorporate Qualcomm chips into their 

mobile wireless devices outside the United States, and then import them into the United 

States for sale. AT&T and other wireless network carriers—also not named as 

respondents to Broadcom’s complaint—deploy networks which depend on devices that 

include Qualcomm chips. This appeal consolidates the several appeals of Qualcomm 

and these third-party manufacturers and carriers. This court has jurisdiction to review 

ITC determinations under 28 U.S.C. § 1295(a)(6) and 19 U.S.C. § 1337(c). 
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A. 

This court reviews claim construction without deference. Cybor Corp. v. FAS 

Techs., Inc., 138 F.3d 1448, 1451 (Fed. Cir. 1998) (en banc). Generally this court gives 

claim terms their ordinary and customary meanings, according to the customary 

understanding of a person of ordinary skill in the art who reads them in the context of 

the intrinsic record. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 

2005) (en banc). The specification “is the single best guide to the meaning of a 

disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 

1996). This court recognizes, however, “there is sometimes a fine line between reading 

a claim in light of the specification, and reading a limitation into the claim from the 

specification.” Comark Commcns., Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 

1998). 

 The disputed claim term in this case—“different”—appears in the following claim 

phrase: “[A] second wireless communication different from the first.” This phrase does 

not, in and of itself, suggest any limitation on the degree of difference between the two 

wireless communications. The phrase merely requires that the communications be 

“different,” without suggesting any manner or degree of difference. 

However, this court does not interpret claim terms in a vacuum, devoid of the 

context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 

F.3d 1369, 1374 (Fed. Cir. 1999) (“proper claim construction . . . demands interpretation 

of the entire claim in context, not a single element in isolation.”); ACTV, Inc. v. Walt 

Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“While certain terms may be at the 

center of the claim construction debate, the context of the surrounding words of the 
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claim also must be considered . . . .”). Claim 1 requires “communication circuitry” 

“being adapted” to use the two different wireless communications. Communications 

circuitry capable of using a “first wireless communication” need not be “adapted” to use 

a “second wireless communication different from the first” unless the difference between 

the first and second communications is somehow significant. In this context, the 

disputed claim term suggests that the two claimed wireless communications are not 

merely “different” in any way, but in such a way that requires adaptations in 

“communication circuitry” to facilitate both wireless uses. 

With this introduction, this court consults the specification to determine the nature 

of the potential differences in wireless communications. See V-Formation, Inc. v.

Benetton Group SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005) (“In most cases, the best 

source for discerning this proper context is the patent specification wherein the patent 

applicant describes the invention.”). In the background section, the inventors explain 

that the prior art used different communication modules to achieve different methods of 

communication: “Communications supported by computer modules may include wired 

connection, such as over phone lines for a modem or through a wired local area 

network (LAN), and wireless communication such as a wireless LAN, a wide area 

network (WAN), or infrared.” ’983 Patent col.4 ll.52-56. The number of different 

communication methods in one device depended on the number of module slots in that 

computer. Therefore, “there is a need for a multipurpose computer module that can 

provide more than one peripheral function and control switching between those 

functions in a single module.” Id. col.5 ll.4-7. 
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The specification explains further that the invention addresses this need with a 

portable device adapted to accommodate different communications methods. The 

invention is a “portable data terminal” with “at least two communication transceivers 

having different operating characteristics for conducting data communications on . . . 

different subnetworks.” Id. col.5 ll.23-36. The specification supplies examples of 

different possible operating characteristics of these transceivers: “narrowband radio 

frequency, frequency-hopping or direct-sequence spread spectrum radio frequency, 

modem or other wired network communication, infrared, etc.” Id. col.9 ll.46-49. 

Moreover, the specification explains that the transceivers included in the invention’s 

mobile devices are “operable on any number of communication mediums, since the 

differences in their operating characteristics are isolated from the base module of the 

MCDs 1606 by a communication processor.” Id. col.42 ll.25-29. Thus, the specification 

consistently teaches that the relevant difference between the two claimed wireless 

communications is their method of communication. 

Qualcomm argues that reading “different” to mean different methods of 

communication would impermissibly exclude preferred embodiments, specifically the 

one outlined in Figure 11: 
Figure 11 and its accompanying description describe the way a mobile communication 

device (“MCD”) can “roam” between base stations while connected to one or more 

networks. The MCD communicates with an “access point” in a “structured manner,” 

sending several messages such as “request-for-poll” messages, “data message[s],” 

“acknowledge” signals, and “POLL-DATA sequences.” Id. col.30 ll.15-24. According to 

Qualcomm, these structured messages use the same method of wireless 

communication. Therefore, Qualcomm contends, a first wireless communication (e.g., a 

request for poll message) and a second wireless communication (e.g., a data message) 

do not necessarily mean two methods of wireless communication within the context of 

the patent. 

To the contrary, claim 1 of the ’983 Patent may require a device capable of using 

two different wireless communication methods and still fall within the terms of Figure 11. 

Figure 11 describes communication with a device through one access point with just 

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one of those methods. The ’983 Patent’s inventors were clear that different access 

points could employ different communications methods: “[A]ccess point 1409 provides 

for communication via one type of radio communication while access point 1403 

provides for another. For example, access point 1409 may provide a long-distance 

digital cellular link while access point 1413 provides for local spread spectrum link.” 

’983 patent col.39 ll.31-36. Further, “[t]he present invention contemplates various 

combinations of communication technologies, all accommodated by communication 

modules of MCD 1606.” Id. col.42, ll.22-26. 

Thus, read in the context of the entire specification, Figure 11 merely provides 

exemplary details of a claimed device communicating with a particular access point 

using a particular method of communication. This Figure does not change claim 1’s 

requirement for a device “adapted” to use two different communications. The 

specification provides the necessary context for the difference between the claimed first 

and second wireless communications. The difference envisioned by the claim is a 

difference in their method of communication. In other words, the ITC properly construed 

the meaning of the term “different.” 

Qualcomm also contends that this court’s construction of the same claim term in 

Sorensen v. ITC, 427 F.3d 1375 (Fed. Cir. 2005), mandates a broad construction of 

“different” in this different patent. The patent in Sorensen pertained to a method of 

spacing plastic mold sections during sequential steps of plastic injection molding. Id. at 

1377. The claim in question required “injecting a second plastic material having 

different characteristics than the first plastic material . . . .” Id. at 1378. This court 

construed “different characteristics” to mean “any difference in characteristics between 
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the two injected materials,” including a difference in color alone. Id. at 1379. 

Qualcomm reads that particular holding to create a rule that use of the claim term 

“different” without further qualification must mean “any difference.” 

Sorensen created no such categorical rule. In Sorensen, this court only 

discerned a broad meaning for the term “different” after concluding that a) the claim 

term in the context of the entire claim connoted that “different” implied any difference in 

characteristics and b) the specification and the prosecution history showed “no 

disavowal of claim scope in relation to material characteristics.” Id. at 1379. This 

court’s analysis of the context of this different claim as a whole, as well as the intrinsic 

record for this different patent, to arrive at the proper context for the term “different” is 

thus not inconsistent with Sorensen. In sum, the specification and context of the claim 

term in Sorensen did not qualify or limit the nature of the “different” characteristics of the 

plastic; the specification and context in this case show that the “different” wireless 

communications means a difference in the method of communication, not simply any 

conceivable difference. Accordingly, this court sustains the ITC determination that 

“different” first and second wireless communications refers to two different methods of 

communication. 

B. 

 Qualcomm argues the ITC erred by concluding the ’983 Patent claims are not 

anticipated by three pieces of prior art: U.S. Patent Nos. 4,964,121 (“Moore”); 5,128,938 

(“Borras”); and 5,203,020 (“Sato”). Qualcomm does not contest the ITC’s findings that 

each of Moore, Borras, and Sato discloses communication via a single communication 

method. Thus, Qualcomm’s argument on appeal depends entirely on this court 
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disturbing the ITC’s claim construction in favor of a broader understanding of the word 

“different.” 

Because this court affirms the ITC’s claim construction and rejects Qualcomm’s 

broader understanding of “different” in the context of claim 1 of the ’983 patent, this 

court affirms the ITC’s finding that the Moore, Borras, and Sato references do not 

anticipate under 35 U.S.C. § 102. 

C. 

 Qualcomm further appeals the ITC’s finding that a collection of technical 

specifications known as the Global System for Mobile Communications (“GSM”) 

standard does not anticipate the asserted ’983 claims. The GSM standard is a 

comprehensive set of specifications for a second generation (“2G”) mobile network. 

The European Telecommunications Standards Institute (“ETSI”), an independent 

standards organization comprised of telecommunications manufacturers and carriers, 

devised this standard. The standards are technical specifications that describe one 

aspect of the technology for inter-operable GSM-compliant equipment. 

The ITC determined Qualcomm did not show that the GSM standard was a 

“printed publication” under 35 U.S.C. § 102. Specifically, Qualcomm did not show that 

the GSM standard was publicly available. In addition, the ITC found the GSM standard 

did not constitute a single prior art reference for purposes of anticipation under 35 

U.S.C. § 102. Initial Determination, 2006 ITC LEXIS 803, at *267. 

1. 

“Whether an asserted anticipatory document qualifies as a ‘printed publication’ 

under § 102 is a legal conclusion based on underlying factual determinations.” Cooper 
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Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1321 (Fed. Cir. 2002). 

This court reviews the legal conclusion without deference while according substantial 

evidence deference to the factual components of the determination. See Bourdeau 

Bros., Inc. v. ITC, 444 F.3d 1317, 1320 (Fed. Cir. 2006). 

The “printed publication” requirement appears in 35 U.S.C. § 102: “A person shall 

be entitled to a patent unless . . . (b) the invention was patented or described in a 

printed publication in this or a foreign country . . . more than one year prior to the date of 

the application for patent in the United States.” “Because there are many ways in which 

a reference may be disseminated to the interested public, ‘public accessibility’ has been 

called the touchstone in determining whether a reference constitutes a ‘printed 

publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898-899 (Fed. Cir. 

1986). A reference is publicly accessible “upon a satisfactory showing that such 

document has been disseminated or otherwise made available to the extent that 

persons interested and ordinarily skilled in the subject matter or art exercising 

reasonable diligence, can locate it . . . .” SRI Int'l, Inc. v. Internet Sec. Sys. Inc., 511 

F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 

F.3d 1374, 1378 (Fed. Cir. 2006)). This court assesses public accessibility on a caseby-case basis. In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989). 

The ITC concluded the GSM standard was not publicly available because it was 

analogous to the publication in Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931 

(Fed. Cir. 1990). In Northern Telecom, the documents described a complex military 

system. The company maintaining the documents housed them in a proprietary library 
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with access restricted to persons authorized by the company. Id. at 936. Under these 

circumstances, the document was not sufficiently available to the public. Id. at 936-37. 

In this case, however, the record shows that the GSM reference was not 

secluded under a similar veil of secrecy. The record shows that GSM specifications, 

though drafted within smaller technical subcommittees, were widely distributed before 

the critical date of the ’983 Patent. Versions of the standard were “publicly available 

and released as consistent sets.” Pautet Witness Statement 17, Jan. 23, 2006. Several 

U.S. companies took part in the ETSI work and had access to the GSM specifications 

through their European subsidiaries. The specifications themselves were visible to any 

member of the interested public without requesting them from an ETSI member. 

Further, ETSI did not impose restrictions on ETSI members to prevent them from 

disseminating information about the standard to non-members. Pautet Witness 

Statement 14, 19. 

The ITC places inordinate emphasis on the record evidence that archival paper 

copies of the standard are maintained in a limited-access facility. The record does not 

show, however, that the standard was closed to public access in that manner at the time 

critical to the invention of the ’983 Patent’s claims. To the contrary, the record details 

the publication in 1992 of a seven-hundred page technical book entitled “The GSM 

System for Mobile Communications,” referred to popularly as the “GSM bible.” This 

“bible” sold more than 25,000 copies with the express purpose of giving wider access to 

the GSM standard. Pautet Witness Statement 6. 

Indeed, the primary purpose of the GSM standard was to develop a system 

interoperable across national borders. This purpose made it crucial to grant access to 
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any interested parties. ETSI’s broad membership is a testament to the fruition of this 

purpose. Thus, the GSM standard documents do not fall in the same confidential 

category as the Northern Telecom documents, which were not authorized for public 

release and were maintained under a policy of restricted access. Because the GSM 

standard was “sufficiently accessible, at least to the public interested in the art,” this 

court finds insubstantial evidence for the ITC’s conclusion that the GSM standard was 

not publicly available. See In re Hall, 781 F.2d at 899. 

2. 

This court next turns to Qualcomm’s contention that the ITC incorrectly found that 

Qualcomm’s proffered collection of eleven separate GSM specifications does not 

anticipate the asserted ‘983 Patent claims because the specifications do not together 

constitute a single reference for § 102 purposes. Qualcomm argues the different GSM 

specifications are like chapters of a book and function as a single, coherent reference 

that is simply too voluminous to bind into one volume. 

This court requires that in order to anticipate a claim, “a single prior art reference 

must expressly or inherently disclose each claim limitation.” Finisar Corp. v. DirecTV 

Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). The record evidence suggests that 

the GSM standard is not a single reference. The different specifications that comprise 

the GSM standard were authored by different subsets of authors at different times. 

Indeed, the GSM standard includes hundreds of individual specifications drafted by 

approximately ten different subgroups, each with its own title and separate page 

numbering. Each specification, though part of the greater GSM standard, stands as a 

separate document in its own right. Even Qualcomm’s witness—admittedly one of the 
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most knowledgeable people in the world about the operation of GSM—testified that she 

had not read the entire standard and did not know of any person who had read the 

entire standard. Open Session Tr. 1712, Mar. 15, 2006. Under these circumstances, 

the GSM standard is actually several prior art references with separate dates of 

creation, rather than a single prior art reference. 

Qualcomm asserts that each GSM specification incorporates the others by 

reference. Even if true, this fact does not qualify the GSM standard as a single 

reference. This court has been clear that in order for one document to incorporate 

another document by reference, the incorporating document must identify the 

incorporated document with detailed particularity, clearly indicating the specific material 

for incorporation. See Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 

1282 (Fed. Cir. 2000). At most, each relevant GSM specification identifies itself as a 

part of the greater GSM standard; specifications at times cross-reference other 

specifications. This vague referencing practice is hardly sufficient to meet this court's 

legal requirements for incorporation. In sum, the GSM standard is simply not a 

coherent whole document that can be assigned a single prior art date of creation. 

For this reason, as opposed to the secrecy justification, this court affirms the 

ITC’s determination that the GSM standard is not available for use as a single 

anticipating reference under § 102. Because the GSM standard is not a single 

reference for an anticipation examination, this court need not reach Qualcomm’s 

arguments that the GSM standard discloses all the requirements of Broadcom’s 

asserted claims. 
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D. 

 Qualcomm’s final invalidity defense on appeal pertains to obviousness under 35 

U.S.C. § 103. The Commission rejected Qualcomm’s obviousness arguments, finding 

that Qualcomm waived this defense by failing to raise it in a timely manner. Qualcomm 

now argues it never had the opportunity to present evidence under the proper legal 

standard because the Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc., 127 S. 

Ct. 1727 (2007), was decided after the ITC’s determination of liability. Accordingly, 

Qualcomm maintains, this court should now assess obviousness in the light of the 

Supreme Court’s language in KSR. 

 Qualcomm cannot invoke intervening Supreme Court case law to correct its own 

procedural misstep. As the ITC correctly determined, Qualcomm did not set forth an 

obviousness analysis for the independent claims of the ’983 patent until after the 

administrative law judge had made an initial determination. Neither Qualcomm’s expert 

reports nor written testimony contained an obviousness opinion. Qualcomm’s prehearing brief was similarly devoid of an obviousness analysis. This court need not 

engage in an obviousness inquiry when Qualcomm did not assert relevant obviousness 

arguments at the proper time. Further, because Qualcomm waived the defense of 

obviousness, this court declines to consider the merits of Qualcomm’s position that 

Broadcom’s asserted claims are obvious in light of the prior art. See Hazani v. U.S. 

ITC, 126 F.3d 1473, 1476-77 (Fed. Cir. 1997) (“We find no legal error in the 

administrative law judge's determination that the arguments that Hazani raised for the 

first time on reconsideration were untimely and could properly be rejected on that 

ground alone.”). 
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II. 

 Broadcom argued before the ITC that Qualcomm violated Section 337 through 

both direct and indirect infringement of the ’983 Patent. As intervenor, Broadcom here 

challenges the ITC’s finding of no direct infringement by Qualcomm as an alternative 

basis on which to sustain the Commission’s Order. With regard to indirect infringement, 

Qualcomm appeals the Commission’s finding of inducement. 

A. 

The Commission unambiguously rejected Broadcom’s sole proffer with regard to 

direct infringement by Qualcomm, which was an allegation relating to Qualcomm’s 

importation and use of certain testing devices known as “Form Factor Accurate” (FFA) 

devices. Initial Determination, 2006 ITC LEXIS 803, at *209-13. 

This finding was amply supported by substantial evidence. Broadcom’s own 

expert did not test any of Qualcomm’s FFAs, and Broadcom’s only real evidence 

regarding infringement by these devices was the testimony of three Qualcomm 

witnesses. Id. at *213. The testimony of these witnesses, Messrs. Grob, Proakis, and 

Mollenkopf, did not come close to establishing direct infringement by Qualcomm. Mr. 

Grob’s testimony did not make reference to a reduced power mode, and thus could not 

have established infringement of the asserted claims of the ‘983 Patent, which all 

require this feature. Id. at *212. With regard to Dr. Proakis, substantial evidence 

supports the conclusion that his testimony was inconclusive, because he stated he had 

no “specific knowledge” as to how FFA testing was performed. Id. at *213. Finally, Mr. 

Mollenkopf’s testimony was equally unenlightening because (a) he was never 

personally involved in performing FFA testing, (b) his recollection was that such testing 
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occurred two years before the ’983 patent issued, and (c) such recollection was still just 

a “guess.” Mollenkopf Dep. 108:4-25, Dec. 9, 2005. In sum, because there was 

substantial evidence for the Commission to conclude that Broadcom failed to establish 

infringement by Qualcomm’s FFA devices, this court affirms the finding of no direct 

infringement. 

B. 

Qualcomm’s appeal of the ITC’s finding of induced infringement is squarely 

before this court. The Commission found that the “MSM6250” baseband processor chip 

is representative of thirteen Qualcomm chips (all with the prefix “MSM”) that Broadcom 

alleges infringe the ‘983 claims. Specifically, the Commission found that Qualcomm’s 

MSM chips infringe the ’983 Patent’s asserted claims when they are programmed with 

computer source code (“system determination software”) that implements battery-saving 

features such as reducing the frequency of scanning for network access points. Initial 

Determination, 2006 ITC LEXIS 803, at *226. 

For example, the ITC found that the MSM6250 chipset scans for an access point 

for up to fifteen minutes before entering into a power-saving search algorithm. If fifteen 

minutes of searching does not yield an access point, the system determination software 

directs the chipset to alternate between periods of scanning for an access point and 

powering down the communication circuitry. Such software alleviates the familiar 

problem of rapid battery drainage that occurs, for example, when a mobile phone is in a 

network “dead spot” and continually searches for an access network. 

The ITC determined that Qualcomm’s handset manufacturer customers directly 

infringe the ’983 Patent by making handsets that incorporate the accused MSM chipsets 
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and system determination software. The ITC further determined that Qualcomm 

induces the infringing acts of its handset manufacturer customers by, inter alia, 

providing customers with the system determination software, training them on 

implementation of their mobile devices, providing software and firmware updates, 

offering customer support, furnishing promotional and technical documents for the 

accused MSM chipsets, and recommending that its customers implement battery saving 

features. Id. 

 Under 35 U.S.C. § 271(b), “[w]hoever actively induces infringement of a patent 

shall be liable as an infringer.” To prevail on inducement, “the patentee must show, first 

that there has been direct infringement, and second that the alleged infringer knowingly 

induced infringement and possessed specific intent to encourage another's 

infringement.” Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1304-05 

(Fed. Cir. 2002) (citation omitted). In DSU Med. Corp. v. JMS Co., this court clarified en 

banc that the specific intent necessary to induce infringement “requires more than just 

intent to cause the acts that produce direct infringement. Beyond that threshold 

knowledge, the inducer must have an affirmative intent to cause direct infringement.” 

471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc review of intent requirement). 

 The ITC released its initial determination before this court’s clarification of the 

intent standard for inducement in DSU. The ITC’s administrative law judge understood 

Federal Circuit law to permit a finding of inducement upon “a showing of either general 

or specific level of intent” and expressly adopted Broadcom’s argument that “the only 

intent required of the defendant is the intent to cause the acts that constitute 

infringement.” Initial Determination, 2006 ITC LEXIS 803 at *126, *225. Applying this 
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understanding of the law, the Commission determined that “Qualcomm intends to 

induce infringement because it provides its customers with the system determination 

code.” Id. at *225. 

Although thought to be proper at the time, the approach adopted by the ITC is 

improper under this court’s decision in DSU. Proof of intent to cause infringing acts is a 

necessary but not sufficient condition for induced infringement. Inducement additionally 

requires “evidence of culpable conduct, directed to encouraging another’s infringement,” 

i.e., specific intent to encourage infringement. DSU, 471 F.3d at 1306. This specific 

intent may, of course, be demonstrated by circumstantial evidence such as that 

presented by Broadcom. Id. But the ITC’s conclusion that “Qualcomm intends to 

induce infringement because it provides its customers with the system determination 

code” evinces, at most, a finding that Qualcomm generally intended to cause acts that 

produced infringement. Thus, the current record falls short of the necessary intent 

showing for inducement—that Qualcomm possessed a specific intent to cause 

infringement of Broadcom’s patent. 

Because the Commission based its finding on an approach overruled by DSU, 

this court vacates and remands the ITC’s determination of induced infringement. On 

remand, the ITC will have the opportunity to examine whether Qualcomm's conduct 

satisfies the specific intent requirement set forth in DSU. 

III. 

 Under the statutory framework of Section 337, the ITC must determine the 

appropriate remedy for an adjudged violation. Between July 6 and 11, 2006, the ITC 

held a hearing in which Broadcom, Qualcomm, and six intervenors (whose participation 
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was limited to the remedy phase) presented extensive testimony about proper 

remedies. Because virtually all putatively infringing articles sold for importation or 

imported into the United States are contained in handsets manufactured by downstream 

third parties, the Commission held a further remedy hearing on March 21-22, 2007 in 

which it considered evidence (both written and live) related to remedy and the public 

interest. The Commission entertained testimony from dozens of witnesses. 

 On June 7, 2007, the Commission issued a lengthy remedy decision setting forth 

a limited exclusion order. The LEO covers both Qualcomm baseband processor chips 

programmed to enable the power saving features covered by claims 1, 4, 8, 9, or 11 of 

the ’983 patent; and handheld wireless devices (including cellular phones and personal 

digital assistants) that contain such programmed Qualcomm chips and that were not 

imported for sale before the date of the order. Limited Exclusion Order, Inv. No. 337-

TA-543 at 3-4. 

On appeal, Qualcomm and the third-party appellants argue, inter alia, that the 

Commission exceeded its statutory authority by issuing an LEO that excludes imports of 

downstream manufacturers who were not named as respondents in Broadcom’s initial 

complaint. According to these appellants, LEOs may only exclude the products of 

named parties. Broadcom and the Commission maintain that the ITC has authority to 

order an LEO which excludes all of a respondent’s articles that are determined to 

violate, regardless of the identity of the importer. 

The ITC is a creature of statute, and must find authority for its actions in its 

enabling statute. See Vastfame Camera, Ltd. v. ITC, 386 F.3d 1108, 1112 (Fed. Cir. 

2004). Accordingly, this court must examine the Commission's authority under 35 
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U.S.C. § 1337(d) to issue exclusion orders. This court conducts statutory 

interpretations in accordance with the framework established by Chevron U.S.A. Inc. v. 

Nat’l Res. Def. Council, Inc., 467 U.S. 837 (1984). Under Chevron, “a reviewing court 

must first ask ‘whether Congress has directly spoken to the precise question at issue.’” 

FDA v. Brown & Williamson Tobacco Corp., 529 U.S. 120, 132 (2000) (quoting 

Chevron, 467 U.S. at 842). “If Congress has done so, the inquiry is at an end; the court 

‘must give effect to the unambiguously expressed intent of Congress.’” Id. (quoting 

Chevron, 467 U.S. at 843). However, if “the statute in question is ambiguous and the 

agency’s interpretation is reasonable,” “a court must defer to an agency's construction 

of a statute governing agency conduct.” Cathedral Candle Co. v. U.S. ITC, 400 F.3d 

1352, 1361 (Fed. Cir. 2005). 

 In order to determine whether the Smoot-Hawley Act or any of its amendments 

has directly spoken to the precise question at issue, this court must give the terms of 

that statute their “ordinary, contemporary, common meaning, absent an indication 

Congress intended them to bear some different import.” Williams v. Taylor, 529 U.S. 

420, 431 (2000) (internal quotation marks omitted). This court must “give effect, if 

possible, to every clause and word of [the] statute.” United States v. Menasche, 348 

U.S. 528, 538-39 (1955) (citation omitted). Further, “in expounding a statute, we must 

not be guided by a single sentence or member of a sentence, but look to the provisions 

of the whole law, and to its object and policy.” U.S. Nat'l Bank of Or. v. Indep. Ins. 

Agents of Am., Inc., 508 U.S. 439, 455 (1993) (internal quotation marks omitted). 

Section 1337(d) provides, in relevant part: 

(d) Exclusion of articles from entry 
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(1) If the Commission determines, as a result of an investigation under this 

section, that there is a violation of this section, it shall direct that the articles 

concerned, imported by any person violating the provision of this section, be 

excluded from entry into the United States, unless, after considering the effect of 

such exclusion upon the public health and welfare, competitive conditions in the 

United States economy, the production of like or directly competitive articles in 

the United States, and United States consumers, it finds that such articles should 

not be excluded from entry . . . 

(2) The authority of the Commission to order an exclusion from entry of articles 

shall be limited to persons determined by the Commission to be violating this 

section unless the Commission determines that— 

(A) a general exclusion from entry of articles is necessary to prevent 

circumvention of an exclusion order limited to products of named persons; 

or 

(B) there is a pattern of violation of this section and it is difficult to identify 

the source of infringing products. 

19 U.S.C. § 1337(d) (2006) (emphases added). 

 According to the plain language of the statute, Congress created two distinct 

forms of exclusion orders: one limited and one general. The default exclusion remedy 

“shall be limited to persons determined by the Commission to be violating this section.” 

Id. § 1337(d)(2). By contrast, a “general exclusion” order (“GEO”) is only appropriate if 

two exceptional circumstances apply. Specifically, under subsection d(2)(A), the 

Commission may issue a GEO if it is “necessary to prevent circumvention of an 

exclusion order limited to products of named persons” or, under subsection d(2)(B), if 

“there is a pattern of violation of this section and it is difficult to identify the source of 

infringing products.” Id. §§ 1337(d)(2)(A) and (B). By implication, an LEO is both “an 

order limited to products of named persons,” and one where the complainant has not 

demonstrated “a pattern of violation of this section and [difficulty in identifying] the 

source of infringing products.” Thus, on its face, the statutory context limits LEOs to 

named respondents that the Commission finds in violation of Section 337. The ITC 

cannot expand its authority from “persons determined by the Commission to be 
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violating” to “articles manufactured by persons determined by the Commission to be 

violating.” See Burlington N. R.R. Co. v. Okla. Tax Comm'n, 481 U.S. 454, 463 (U.S. 

1987) (“[T]he addition of words to a statutory provision which is complete as it stands . . 

. would require amendment rather than construction of the statute, and it must be 

rejected here”). If a complainant wishes to obtain an exclusion order operative against 

articles of non-respondents, it must seek a GEO by satisfying the heightened burdens of 

§§ 1337(d)(2)(A) and (B). 

 Any reading of Section 337(d) that would enable LEOs to exclude articles 

manufactured by non-respondents would impermissibly render sections of the statute 

superfluous. Section 337(d)(1) provides that the Commission “shall direct that the 

articles concerned, imported by any person violating the provision of this section, be 

excluded from entry into the United States.” 19 U.S.C. § 1337(d)(1) (emphasis added). 

In a similar vein, Section 337(e)(1) provides preliminary relief for “articles concerned, 

imported by any person with respect to whom there is reason to believe that such 

person is violating this section, be excluded from entry into the United States.” Id. § 

1337(e)(1) (emphasis added). If, as Broadcom and the ITC argue, an infringing article 

is excludable under an LEO, regardless of the importer, the language in these sections 

requiring the importer to be in violation of the statute would be redundant. Those 

sections could merely state that once the Commission finds any violation to have 

occurred, it “shall direct that the articles concerned be excluded from entry . . . .” This 

court, however, must interpret Section 337 to give meaning to all of its clauses. See,

e.g., TRW Inc. v. Andrews, 534 U.S. 19, 31 (2001) (“It is a cardinal principle of statutory 

construction that a statute ought . . . to be so construed that . . . no clause, sentence, or 
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word shall be superfluous . . . .”) (internal quotation marks and citation omitted); 

Huntleigh USA Corp. v. United States, 525 F.3d 1370, 1382 (Fed. Cir. 2008) (“[T]he 

words of a statute are not to be rendered superfluous if such a construction can be 

avoided.”). 

 The Commission and Broadcom argue that Congress could not possibly have 

intended to limit the effect of LEOs to named respondents, because unnamed, difficultto-identify importers of infringing articles might escape enforcement through this 

loophole. To the contrary, this court does not perceive that its ruling today renders 

Section 337 relief illusory. Rather, the trade law speaks directly to the very concerns 

voiced by the Commission and Broadcom in Section 337(d)(2). A party concerned 

about potential “circumvention” of an LEO “limited to products of named persons” or 

fearing the difficulty of identifying “the source of infringing products” has the option to 

bring a case under either subsection 337(d)(2)(A) or 337(d)(2)(B). In other words, the 

trade act has made it clear that a party must meet these heightened requirements 

before the ITC has authority to issue a general exclusion order against products of nonrespondents. See 19 U.S.C. § 1337(d)(2). 

Broadcom has a particular difficulty making its argument about the drastic 

potential consequences of following the statutory requirement of a general exclusion to 

reach imports beyond those of a respondent. The record in this case shows that the 

Commission explicitly found that Broadcom knew the identity of the handset 

manufacturers whose products contain the accused chips. Initial Determination, 2006 

ITC LEXIS 803, at *414. Broadcom thus could have named such manufacturers as 

respondents to the Section 337 investigation. Further, the Commission found that 
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Broadcom knew when it filed its complaint that almost all of the accused chips entering 

the United States were incorporated into handsets by third parties, rather than being 

imported separately by Qualcomm. Id. Broadcom appears to have made the strategic 

decision to not name downstream wireless device manufacturers and to not request the 

ITC to enter a GEO. Thus, Broadcom chose to forego the full advantage of an LEO’s 

statutory scope by not naming known downstream respondents. Broadcom also chose 

to forego the burden of proving the extra statutory requirements for a GEO. Based on 

those choices, Broadcom does not stand in the best position to attempt to blur the clear 

line drawn by the statute between LEOs and GEOs. 

 The Commission and Broadcom further argue that LEOs are neutral with respect 

to the importing entity because section 337 exclusion orders are in rem instruments. 

They point to subsection 337(d)’s title, “Exclusion of articles from entry,” and section 

d(1)’s requirement excluding “articles concerned” from importation (emphases added). 

According to the Commission and Broadcom, a requirement to name downstream 

importers as respondents for a LEO impermissibly converts Section 337 into an in

personam instrument. To the contrary, the Act plainly constrains the Commission’s 

authority to exclude articles to those of “persons determined by the Commission to be 

violating this section” without a GEO. 19 U.S.C. § 1337(d)(2). Broadcom and the ITC’s 

desired interpretation ignores the language of 337(d)(2), which incorporates the in

personam element. 

This court’s decision in Hyundai Electronics Industries Co. v. United States ITC, 

899 F.2d 1204 (Fed. Cir. 1990), does not suggest that LEOs may cover downstream 

products of non-respondents. In Hyundai, this court affirmed an ITC “limited exclusion 
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order” that excluded both infringing memory devices and downstream products that 

contained those memory devices. Id. at 1209. However, in Hyundai, the downstream 

products affected by the ITC’s order were “Hyundai computers, computer peripherals, 

telecommunications equipment, and automotive electronic equipment containing 

infringing [memory devices].” Id. at 1206. Thus, in approving such an LEO, this court 

did not address the Commission’s authority to exclude downstream products of third 

parties. The only downstream products affected by the ITC’s LEO were those of the 

sole adjudged violator of section 337, namely, Hyundai. 

Indeed, this court has consistently honored the Act’s distinction between limited 

and general exclusion orders. For example, this court has held that LEOs “only apply to 

the specific parties before the Commission in the investigation.” Fuji Photo Film Co. v. 

ITC, 474 F.3d 1281, 1286 (Fed. Cir. 2007). By contrast, GEOs “bar the importation of 

infringing products by anyone, regardless of whether they were a respondent in the 

Commission's investigation.” Id.; see also Vastfame Camera, Ltd. v. ITC, 386 F.3d 

1108, 1114 (Fed. Cir. 2004) (“A general exclusion order broadly prohibits entry of 

articles that infringe the relevant claims of a listed patent without regard to whether the 

persons importing such articles were parties to, or were related to parties to, the 

investigation that led to issuance of the general exclusion order.”). 

 This court notes as well: regardless of the limitations within Section 337 on 

LEOs, the Commission’s downstream order in this case would be ultra vires. The ITC’s 

June 7, 2007 LEO identifies the excluded downstream articles as, e.g., “[h]andheld 

wireless communications devices . . . containing Qualcomm baseband processor chips 

or chipsets that are programmed to enable the power saving features covered by claims 
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1, 4, 8, 9, or 11 of U.S. Patent No. 6,714,983.” Qualcomm does not manufacture these 

finished articles. Indeed, the ITC found a Section 337 violation solely based on an 

inducement theory, rejecting Broadcom’s argument that Qualcomm directly infringes the 

’983 Patent. Thus, even if LEOs could exclude beyond the limits of listed respondents, 

the order would still be limited to downstream articles manufactured by a person found 

to be violating the statute (here, Qualcomm). The Commission would lack authority to 

exclude devices manufactured by anyone other than Qualcomm. The ITC seems to 

miss its own factual conclusion that Qualcomm is not a manufacturer of infringing 

programmed chips. Therefore, the ITC’s attempt to fashion a GEO that poses as an 

LEO fails even under the ITC’s erroneous interpretation of Section 337. 

 In summary, Section 337 permits exclusion of the imports of non-respondents 

only via a general exclusion order, and then too, only by satisfying the heightened 

requirements of 1337(d)(2)(A) or (B). The statute permits LEOs to exclude only the 

violating products of named respondents. Because the Act speaks unambiguously to 

the precise question at issue in this case, the Chevron inquiry is at an end. This court 

must simply “give effect to the unambiguously expressed intent of Congress.” Chevron, 

467 U.S. at 843. 

Because the Commission did not issue a GEO under either of the two statutory 

exceptions in 19 U.S.C. § 1337(d)(2), the Act prevents the Commission from issuing a 

limited exclusion order that excludes products of those who are not “persons 

determined . . . to be violating [Section 337].” Accordingly, this court vacates the ITC’s 

exclusion order. On remand, the Commission can reconsider its enforcement options. 
2007-1493, -1494, -1495, -1496, 

 -1497, -1498, -1499, -1514, -1573; 

2008-1004, -1009, -1010, -1012, 

-1013, -1015, -1018, -1019 

31

CONCLUSION 

This court affirms the ITC’s claim construction and determination of validity, both 

as to anticipation and obviousness. Further, this court vacates and remands the finding 

of liability based on the ITC’s erroneous application of the legal standard for induced 

infringement. Finally, this court vacates and remands the exclusion order fashioned by 

the Commission because Section 337 unambiguously limits the ITC’s exclusionary 

authority to persons named by the complainant. 

COSTS 

Each party shall bear its own costs. 

AFFIRMED-IN-PART, VACATED-AND-REMANDED-IN-PART.