• ITC Issues Public Version Of Opinion In Certain Wireless Devices With 3G And/Or 4G Capabilities (337-TA-868)
  • September 18, 2014 | Authors: Eric W. Schweibenz; Thomas C. Yebernetsky
  • Law Firm: Oblon, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On August 29, 2014, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Wireless Devices With 3G And/Or 4G Capabilities and Components Thereof (Inv. 337-TA-868).

    By way of background, the investigation in this matter is based on a January 2, 2013 complaint filed by InterDigital Communications, Inc., InterDigital Technology Corporation, IPR Licensing, Inc., and InterDigital Holdings, Inc. (collectively, "InterDigital") alleging violation of Section 337 in the importation into the U.S. and sale of certain wireless devices with 3G and/or 4G capabilities and components thereof.  See our January 3, 2013 and February 1, 2013 posts for more details on the Complaint and Notice of Investigation, respectively. 

    ALJ Essex issued his final initial determination ("ID") on June 13, 2014, finding no violation of Section 337 as to U.S. Patent Nos. 7,190,966 (the '966 patent) and 7,286,847 (the '847 patent) (collectively, the "Power Ramp-Up Patents"), and U.S. Patent No. 7,941,151 (the '151 patent).  InterDigital asserted claims 1, 3, 6, 8, and 9 of the '966 patent, claims 3 and 5 of the '847 patent, and independent claims 1 and 16 and dependent claims 2-6, 8-9, 17-21 and 23-24 of the '151 patent.  On August 14, 2014, the Commission issued a notice determining to review the final ID in part, but terminating the investigation with a finding of no violation of the section 337.  However, the Commission determined that it would review the final ID's construction of "and to."  See our August 18, 2014 post for more details.

    According to the Opinion, the Commission determined that the term "and to" should take on its plain and ordinary meaning.  In the final ID, the ALJ agreed with InterDigital and the Commission Investigative Staff and construed the "and to" claim term to means "and if so."  The Commission held that the final ID improperly imported a limitation from the prosecution history and the preferred embodiment in the specification.  However, the Commission held that neither the specification nor the prosecution history disavowed the breadth of the term "and to."  Accordingly, without a clear disavowal, the claim term should be given its plain and ordinary meaning.  Therefore, the Commission reversed the final ID's findings of noninfringement of asserted claims 16-21 and 23-24 of the '151 patent.  As to the remaining issues, the Commission determined to review but take no position on the issues.  Despite the reversal of the final ID's noninfringement determination for claims 16-21 and 23-24 of the '151 patent, the Commission affirmed the ALJ's ultimate finding of no violation of Section 337.