• ITC Issues Public Version Of Opinion Affirming No Violation of Section 337 In Certain Wireless Communication Devices (337-TA-745)
  • May 16, 2013 | Authors: Lisa M. Mandrusiak; John F. Presper
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On May 8, 2013, the International Trade Commission (the “Commission”) issued the public version of its opinion affirming-in-part and reversing-in-part the Remand Initial Determination (“RID”) in Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof (Inv. No. 337-TA-745), although the ultimate conclusion of no violation of Section 337 was affirmed.

    By way of background, the Complainant in this investigation is Motorola Mobility, Inc. (“Motorola”) and the Respondent is Apple Inc. (“Apple”).  On May 16, 2012, ALJ Pender issued the public version of an Initial Determination (“ID”) finding a violation of Section 337 as to U.S. Patent No. 6,246,697, but no violation of Section 337 with respect to U.S. Patent Nos. 6,272,333, 6,246,862 (the ‘862 patent), and 5,636,223. On September 17, 2012, the Commission issued the public version of its opinion affirming-in-part, reversing-in-part and remanding-in-part the findings in the ID.  Specifically, the Commission remanded the case to the ALJ with respect to the ‘862 patent.

    On December 18, 2012, ALJ Pender issued his RID finding no violation of Section 337 as to the ‘862 patent.  In particular, the ALJ determined that although claim 1 of the ‘862 patent was infringed by the accused products, it was invalid as anticipated by U.S. Patent No. 6,052,464 to Harris (“Harris”).  The ALJ further found that claim 1 was not invalid for obviousness in light of Harris in combination with the knowledge of one of ordinary skill in the art or in combination with U.S. Patent No. 5,894,298 to Hoeksma (“Hoeksma”).

    As reported in our March 4, 2013 post, after examining the RID, the petitions for review filed by Motorola and Apple, and the responses, the Commission determined to review the RID in-part.  We now provide the details of the Commission’s opinion.

    Claim Construction

    In the RID, the ALJ construed the limitation “touch sensitive input device” in the ‘862 patent to have its plain and ordinary meaning, but specified that this was not limited to a touchscreen or touch pad (i.e., included physical keypads).  The Commission agreed that “touch sensitive input device” should have its plain and ordinary meaning, but reversed the RID to the extent that this meaning included keypads.  Specifically, the Commission noted that the specification described the touch sensitive input device as an improvement over conventional user interfaces (such as keypads), and dependent claims stated that the user interface could further include a keypad.  As such, the Commission concluded that the patentee intended a keypad to be a separate element, and thus not included in the “touch sensitive input device” element.


    The Commission affirmed the RID’s finding that Apple’s accused products literally infringe the ‘862 patent.  The key element was “a sensor ... to disable communication of the input signal to the processing section when the portable communication device is positioned in close proximity to a user, thereby preventing inadvertent actuation of the touch sensitive input device.”  However, the details of the Commission’s reasoning are redacted in the public version of the opinion.


    The RID found that the ‘862 patent was anticipated by Harris’s disclosure of either push-button keys or a “touch writable display.”  However, since the Commission altered the construction of the term “touch sensitive input device” to exclude keypads, the Commission reversed the determination that the push-buttons anticipated the ‘862 patent.  The Commission also determined that the “touch writable display” did not anticipate the ‘862 patent as the orientation of this display did not clearly meet the other elements of the claim as required to prevent inadvertent actuation.


    In the RID, the ALJ found that Apple failed to prove obviousness by clear and convincing evidence.  However, the Commission reversed this determination after considering the additional briefing on this issue.  The prior art included examples of mobile telephones with touch-sensitive screens subject to inadvertent actuation, and Apple argued that the problem to be solved by the ‘862 patent was well known in the art.  Although Motorola presented some evidence of secondary considerations based on praise by those skilled in the art and commercial success, the Commission did not consider the “slim evidence” provided sufficient to overcome the “strong showing of prima facie obviousness in this case.”  Therefore, the Commission determined that the ‘862 patent was invalid as obvious over Harris either in view of the common general knowledge or in view of Hoeksma.

    As such, the Commission affirmed the RID’s finding of no violation of section 337 with respect to the ‘862 patent.