|April 3, 2014|
Previously published on April 2, 2014
Further to our February 18, 2014 post, on March 26, 2014, the International Trade Commission (the “Commission”) issued the public version of its revised opinion remanding the investigation to Chief ALJ Charles E. Bullock for assignment to a presiding ALJ in Certain 3G Mobile Handsets and Components Thereof (Inv. No. 337-TA-613). The remanded investigation is now being handled by ALJ Theodore R. Essex.
By way of background, the Commission instituted the investigation on September 11, 2007 based on a complaint filed by InterDigital Communications Corp. and InterDigital Technology Corp. (collectively, “InterDigital”). The complaint, as amended, alleged violations of Section 337 in the importation and sale of certain 3G mobile handsets and components thereof that infringed certain claims of U.S. Patent Nos. 7,117,004 (the ‘004 patent), 7,190,966 (the ‘966 patent), 7,286,847 (the ‘847 patent), and 6,693,579 (the ‘579 patent). The notice of investigation named Nokia Corp. and Nokia, Inc. (collectively, “Nokia”) as Respondents.
On August 14, 2009, former Chief ALJ Paul J. Luckern issued his final Initial Determination (“ID”) finding no violation of Section 337 on the grounds that asserted claims of the patents-in-suit were not invalid and not infringed. Additionally, the ALJ found that the ‘004, ‘966, and ‘847 patents were not unenforceable due to prosecution laches, and that the ‘579 patent also was not unenforceable.
The Commission reviewed the ID and on October 16, 2009 issued a notice modifying the ALJ’s construction of the term “access signal” in the asserted claims of the ‘847 and ‘004 patents. The Commission also reviewed and took no position on the ALJ’s construction of the term “synchronize” in the asserted claims of the ‘847 patent. Further, the Commission took no position on validity with respect to any of the asserted patents and did not review the ALJ’s construction of the terms “code” and “increased power level” in the asserted claims of the ‘966 and ‘847 patents.
InterDigital appealed the Commission’s final determination, specifically regarding the unreviewed constructions of the “code” and “increased power level” limitations. The Federal Circuit reversed the Commission’s construction of these terms, reversed the Commission’s determination of non-infringement as to the ‘966 and ‘847 patents, and remanded the case to the Commission for further proceedings. Nokia subsequently filed a petition for panel rehearing and rehearing en banc on the issue of domestic industry which the Court denied.
On February 12, 2014, the Commission issued a notice and order remanding the investigation to the Chief ALJ for assignment to a presiding ALJ. According to the March 26, 2014 revised opinion, on February 24, 2014, Nokia filed a petition for reconsideration of the Commission’s order remanding the investigation. The Commission issued its revised opinion in response to Nokia’s petition.
In the revised opinion, the Commission found that the ID’s construction of the claim limitation “synchronize” in the asserted claim of the ‘847 patent was too narrow. In particular, the Commission found that ALJ Luckern had improperly limited the scope of the term based on an embodiment disclosed in the specification. The Commission therefore construed the term more broadly to mean “establishing a timing reference with the pilot signal transmitted by a base station.”
With respect to validity, the Commission affirmed the ID’s finding that a Lucas reference does not anticipate the asserted claims of the ‘966 and ‘847 patents because it fails to disclose the claim limitations requiring the subscriber unit to transmit a code selected from a “plurality of different codes” or the limitation requiring the subscriber unit to transmit a “message” in order to indicate that the subscriber units want to establish communications with a base station. The Commission further affirmed the ID’s finding that Lucas does not render the asserted claims of the ‘966 and ‘847 patents obvious. The Commission also affirmed the ID’s finding that the asserted claims of the ‘966 and ‘847 patents are not rendered obvious by various additional references.
With respect to infringement, the Commission made certain findings based on the Federal Circuit’s revised claim construction. The Commission also affirmed the ID’s finding that the accused handsets do not satisfy the “synchronize to the pilot signal” limitation under the doctrine of equivalents. However, the Commission remanded the investigation to a presiding ALJ to make findings and issue a remand initial determination (“RID”) regarding: (i) whether the accused Nokia handsets meet the “generated using a same code” or “the message being transmitted only subsequent to the subscriber unit receiving the indication” limitations in the asserted claims of the ‘966 and ‘847 patents; and (ii) whether the 3GPP standard supports a finding that the pilot signal satisfies the claim limitation “synchronize to the pilot signal” in the asserted claim of the ‘847 patent by synchronizing to either the P-SCH or S-SCH signals.
With respect to domestic industry, the Commission acknowledged the Federal Circuit’s finding that Nokia had waived any argument regarding the nexus between InterDigital’s licensing investments and the asserted patents and declined to reconsider the issue of whether the economic prong had been satisfied.
The Commission also remanded the investigation for the presiding ALJ to reopen the evidentiary record and take evidence and/or briefing regarding Nokia’s currently imported products, the public interest factors enumerated in Section 337(d) and (f), whether the standard-essential nature of the patents-in-suit is contested, and whether there is patent hold-up or reverse hold-up in the investigation.