• ALJ Bullock Issues Public Version of Initial Determination In Certain Portable Electronic Devices (337-TA-721)
  • January 6, 2012 | Authors: Lisa M. Mandrusiak; Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On December 21, 2011, Chief ALJ Charles E. Bullock issued the public version of the Initial Determination (“ID”) (dated October 17, 2011) finding no violation of Section 337 in Certain Portable Electronic Devices and Related Software (Inv. No. 337-TA-721).

    By way of background, the Complainant in this investigation is HTC Corporation (“HTC”) and the Respondent is Apple Inc. (“Apple”).  In the ID, ALJ Bullock determined that no violation of Section 337 had occurred by Apple in the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain portable electronic devices and related software.  As detailed below, the ALJ found that Apple does not infringe various claims of U.S. Patent Nos. 6,999,800 (the ‘800 patent), 5,541,988 (the ‘988 patent), 6,320,957 (the ‘957 patent), and 7,716,505 (the ‘505 patent).  ALJ Bullock also found that the asserted claims are not invalid.  Lastly, the ALJ found that a domestic industry exists with respect to the ‘988 and ‘957 patents, but not with respect to the ‘800 and ‘505 patents.  Because the domestic industry analyses in the ID are heavily redacted, we have not provided a separate discussion of these issues below.

    The Dialer Patents

    Infringement:

    The ‘988 patent and ‘957 patent are directed to telephone dialers.  Based on the claim constructions established, ALJ Bullock determined that Apple’s products do not practice the “keypad,” “manually operable selector,” “and manually operable scanning device” of the asserted claims and thus do not infringe the ‘988 or ‘957 patents either literally or under the doctrine of equivalents.

    Specifically, ALJ Bullock determined that “the claimed ‘keypad’ must be one that can enter letters and numbers” and since the Apple products have separate keypads for entering letters or numbers, “HTC has failed to show, by a preponderance of the evidence, that Apple’s accused products satisfy the ‘a keypad to generate a sequence of indicia corresponding to a telephone number’ limitation of claim 1 of the ‘988 patent and claim 8 of the ‘957 patent.”

    With regard to the “manually operating scanning device/scanning control device,” construed as a sliding or rotary-type control, HTC argued that the combination of touchscreen, touch processor, and associated software in the accused products “provide a sliding or sliding-type control that enables a user to look through and select information on a particular page.”  Apple argued that HTC was attempting to inappropriately equate “control by sliding” with a finger on the touchscreen with a “sliding-type control” as set forth in the claim construction of the scanning control device.  ALJ Bullock agreed, noting that “the only thing that moves or slides is the user’s finder, which even HTC concedes cannot be part of the claimed apparatus,” and determined that “because the accused products lack a physical moveable ‘sliding-type control,’ they do not infringe the Dialer patents.”

    Since the “manually operable selector” was construed to be “a part moveable by hand used [to select]” HTC argued that the touchscreens of the accused products meet this limitation in a number of ways, including selecting user groups from within phone contacts, directory entries in a favorite or recent page, etc.  Apple argued that “because there are no moveable parts, there is no infringement.”  ALJ Bullock agreed with Apple, determining that since the touchscreen is not moveable, nor are any virtual buttons, and thus “HTC has failed to prove by a preponderance of the evidence that Apple’s accused products literally infringe claim 1 of the ‘988 patent or claim 8 of the ‘957 patent.”

    Invalidity:

    Apple unsuccessfully attempted to argue that the Dialer patents are not entitled to their earliest priority dates, alleging that the first applications fail to disclose the claimed “discrete pages” and “page selection device.”  ALJ Bullock agreed with HTC that there was sufficient disclosure of these limitations to warrant a priority date of at least May 6, 1992, and thus three references identified by Apple were eliminated as prior art.  ALJ Bullock determined that Apple’s “cursory assertions and conclusory arguments” regarding the remaining two references were insufficient to meet the clear and convincing standard necessary to invalidate the Dialer patents.

    Power Management Patents

    Infringement:

    In heavily redacted portions of the opinion relating to the ‘800 patent, ALJ Bullock determined that the elements “switching the PDA system from normal mode to sleep mode when the PDA system has been idle for a second period of time” and “implementing a power detection method comprising steps of: detecting an amount of power of a source in the power system; switching the mobile phone system to off mode when the detected amount is less than a first threshold; and switching the PDA system to off mode when the detected amount is less than a second threshold” were not met by the accused products, and therefore Apple did not infringe the ‘800 patent.

    In similarly heavily redacted portions of the opinion relating to the ‘505 patent, ALJ Bullock determined that the elements “maintaining only sufficient power to restore the device,” “when the remaining power of the battery exceed[s] the amount, supplying power to the volatile memory and accessing data from the non-volatile memory to initiate the normal device operation” and “determining whether the remaining power of the battery exceeds an amount required for a normal device operation” were not met by the accused products, and therefore Apple did not infringe the ‘505 patent.

    Invalidity:

    ALJ Bullock held that the ‘800 patent was entitled to its priority date and that the prior art devices relied upon by Apple do not teach all the limitations of claim 1, and therefore the ‘800 patent is valid in light of these devices.  The details of the invalidity section in relation to the ‘800 patent are heavily redacted.  ALJ Bullock also determined that the ‘505 patent was entitled to its priority date, and the single reference relied on by Apple did not anticipate the ‘505 patent or render it obvious, noting that “Apple makes nothing more than a one-paragraph cursory argument that the claims of the ‘505 patent are invalid.  This is the extent of Apple’s argument.  Accordingly...making superficial assertions and conclusory arguments is insufficient for Apple to meet the clear and convincing standard necessary to invalidate the ‘505 patent.”

    In light of the above, ALJ Bullock determined that there was no violation of Section 337 based on infringement of the ‘800, ‘505, ‘957, and ‘988 patents.

    Remedy and Bond

    In the event that the ITC finds a violation of Section 337, ALJ Bullock recommended that the ITC issue a limited exclusion order “that covers all of Apple’s accused portable electronic devices and related software found to infringe the asserted patents.”  ALJ Bullock further recommended that if the ITC determines a violation of Section 337 has occurred, a cease and desist order against Apple should issue.  Lastly, the ALJ also recommended that a bond not be required during the Presidential review period.

    ITC Review

    As explained in our December 20, 2011 post, the ITC has determined to review the ID in part with respect to the ‘800 patent, and has terminated the investigation with respect to the ‘500, ‘988, and ‘957 patents.