UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, DC
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`Before the Honorable Theodore R. Essex
`Administrative Law Judge
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`Investigation No. 337-TA-750
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`RESPONDENT MOTOROLA MOBILITY LLC’S
`STATEMENT REGARDING THE PROCEEDINGS ON REMAND
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`In the Matter of
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`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
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`Date: January 22, 2014
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`Pursuant to the Commission’s January 7, 2014 Order, Respondent Motorola Mobility
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`LLC1 (“Motorola”) respectfully submits this Statement Regarding The Proceedings On Remand.
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`The Federal Circuit’s August 7, 2013 decision in Apple v. ITC, 725 F.3d 1356 (Fed. Cir. 2013)
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`requires additional proceedings with respect to both the ’607 patent and the ’828 patent, each of
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`which are discussed separately below.2
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`I.
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`THE ADDITIONAL PROCEEDINGS REQUIRED FOR THE ’607 PATENT
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`The Federal Circuit affirmed the Commission’s finding that claims 1-7 of the ‘607 patent
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`are anticipated by the Perski ’455 patent. 725 F.3d at 1363. Thus, claim 10 is the only asserted
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`claim remaining. With respect to claim 10, the Federal Circuit found that “Perski ’808 fails to
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`incorporate by reference Morag,” and accordingly, “the ITC’s finding that Perski ’455
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`anticipates claim 10 of the ’607 patent lacks substantial evidence.” Id. In addition, the Federal
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`Circuit vacated the Commission’s finding that claim 10 of the ’607 patent is obvious in light of
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`the SmartSkin reference. In doing so, the Federal Circuit found that “the ITC fact findings
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`regarding the scope and content of the prior art (what the reference discloses) are supported by
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`substantial evidence.” Id. at 1367. However, the Federal Circuit remanded the obviousness
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`determination back to the Commission “so that the ITC can consider that evidence in conjunction
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`with the evidence of secondary considerations and determine in the first instance whether claim
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`10 would have been obvious to one of skill in the art at the time of the invention.” Id. In light of
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`the Federal Circuit’s decision on the ’607 patent, Motorola believes the following additional
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`proceedings are necessary with respect to the ’607 patent:
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`1 During the pendency of the Apple v. ITC appeal, named respondent Motorola Mobility,
`Inc. was converted into a Delaware limited liability company, changing its name to Motorola
`Mobility LLC.
`2 In addition to the additional proceedings necessitated by the Federal Circuit’s decision,
`Motorola raised numerous issues in its January 30, 2012 Contingent Petition for Review that
`have not been addressed by the Commission.
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`1
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`1.
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`Determination of Whether Apple Practices Claim 10: In order to satisfy the
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`domestic industry requirement, Apple argued before the ALJ that the iPhone 4 practices all eight
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`claims that were asserted against Motorola (claims 1-7 and 10). ID at 198. However, the ALJ
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`made factual findings only with respect to claim 1. ID at 198-202. Because the Federal Circuit
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`affirmed the Commission’s determination that claim 1 is invalid, that claim cannot as matter of
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`law be used to satisfy the domestic industry requirement. See, e.g. Certain Ground Fault Circuit
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`Interrupters & Prods. Containing Same, Inv. No. 337-TA-739, 2012 ITC LEXIS 1458, at *127-
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`*128 (U.S.I.T.C. June 8, 2012). Accordingly, in order for Apple to satisfy the domestic industry
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`requirement, it is necessary on remand to determine whether the iPhone 4 practices claim 10, the
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`only asserted claim that was not found invalid by the Federal Circuit.
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`In addition to being relevant to issues relating to domestic industry, the determination of
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`whether Apple practices claim 10 is also relevant to whether SmartSkin renders claim 10
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`obvious. See Issue 3, infra. Apple’s secondary considerations are based upon the commercial
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`success of the iPhone. Yet, the relative weight afforded to Apple’s commercial success in
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`determining the obviousness of claim 10 will depend at least in part on whether Apple can
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`demonstrate that it practices claim 10. See, e.g., Tokai Corp. v. Easton Enters., 632 F.3d 1358,
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`1379 (Fed. Cir. 2011) (“[I]t is the province of the district court to determine the weight to be
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`given to evidence of commercial success. . . .”).
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`2.
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`Determination of Whether Apple Can Establish A Priority Date Before
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`January 15, 2004: In finding that the Commission’s determination that the Perski ’455 patent
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`anticipates claim 10 lacks substantial evidence, the Federal Circuit determined that the Perski
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`’455 patent is not entitled to the filing date of its provisional application and therefore has not
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`been shown to be prior art. 725 F.3d at 1361-63. However, unless Apple can establish a priority
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`2
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`date before January 15, 2004 for claim 10, the Perski ’455 patent is still prior art even without
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`the benefit of the provisional filing date. Based on a finding that the Perski ’455 patent was
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`entitled to the date of its provisional, the ALJ declined to make any findings regarding Apple’s
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`priority date for claim 10 of the ’607 patent. ID at 142. In light of the Federal Circuit’s decision,
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`it is now necessary for the ALJ to make these findings.3 Indeed, Apple explicitly told the
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`Federal Circuit that in the event Perksi ’455 is not entitled to the filing date of its provisional
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`additional fact finding by the Commission is required: “If the ALJ’s ruling on the second
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`proposition [that Perski ’455 is entitled to the filing date of its provisional] was erroneous, this
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`Court must remand to make the requisite finding on the first [whether Apple can establish its
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`alleged priority date].” Reply Brief of Appellant Apple Inc., at 17.
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`To the extent Apple argues that the Commission cannot consider this issue based on the
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`Federal Circuit’s failure to explicitly remand for additional finding on Apple’s priority date,
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`Apple is incorrect. “‘Upon return of its mandate, the district court cannot give relief beyond the
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`scope of that mandate, but it may act on ‘matters left open by the mandate.’” Laitram Corp. v.
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`NEC Corp., 115 F.3d 947, 951 (Fed. Cir. 1997) (quoting In re Sanford Fork & Tool Co., 160
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`U.S. 247 (1895)). “Although . . . issues decided implicitly by the courts of appeals may not be
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`reexamined by the district court, the rule is actually applicable only to those issues decided by
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`necessary implication.” Id. (emphasis in original); see also Exxon Chem. Patents, Inc. v.
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`Lubrizol Corp., 137 F.3d 1475, 1484 (Fed. Cir. 1998) (“[F]ollowing appellate disposition, a
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`district court is free to take any action that is consistent with the appellate mandate, as informed
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`by both the formal judgment issued by the court and court’s written opinion.”); Certain Zero-
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`Mercury-Added Batteries, Parts Thereof, and Products Containing Same, Inv. 337-TA-493
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`3 The ALJ has already determined that the Perski ’455 patent itself discloses every
`limitation of claim 10. ID at 142-46.
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`3
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`(Remand), Comm’n Op. 10 (Feb. 23, 2007) (“[U]nder the mandate rule, the Commission is
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`bound by the Federal Circuit’s decision as to issues that were decided by the Court expressly or
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`by necessary implication.”). In this case, the Federal Circuit decision that the Commission
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`anticipation finding lacks substantial evidence was based solely on the Federal Circuit’s finding
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`that Perski ’455 patent is not entitled to the filing date of its provisional patent and therefore not
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`prior art to the ’607 patent. Apple, 725 F.3d at 1361-63. The Federal Circuit did not make any
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`findings regarding whether the Perski ’455 patent is still prior art even without the benefit of the
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`filing date of its provisional application. Indeed, without fact finding from the Commission on
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`Apple’s priority date, it was impossible for the Federal Circuit to determine if the Perski ’455
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`patent is prior art even without the benefit of the earlier filing date. Thus, further proceedings to
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`determine whether Apple can establish an earlier priority date are fully consistent with the
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`Federal Circuit’s mandate.
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`Finally, the fact that Motorola sought clarification on the scope of the mandate in its
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`petition for rehearing does not alter this analysis. The Federal Circuit has explained that the
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`denial of a request for clarification in a petition for rehearing does not constitute a decision on
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`the merits and therefore does not alter the scope of the remand:
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`No inference can be drawn from the court’s silence in response to
`[petitioner’s] request for clarification. Courts normally do not
`respond to petitions for rehearing and it would be a mistake to
`conclude that a court’s non-response to an argument made in a
`rehearing petition necessarily means that the court has rejected that
`argument on the merits. . . . The court’s failure to grant a request
`for clarification could well reflect the view that clarification was
`not required, rather than an intention to reject on the merits the
`legal argument on which [petitioner] sought clarification.
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`Exxon, 137 F.3d at 1479.
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`3.
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`Determination of Whether SmartSkin Renders Claim 10 Obvious: As noted
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`above, the Federal Circuit explicitly remanded to the Commission the issue of whether claim 10
`4
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`is obvious in view of SmartSkin. Accordingly, additional proceedings are necessary to
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`determine if, after giving proper weight to all four Graham factors, SmartSkin renders claim 10
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`obvious. As noted above, among the considerations to be factored into this analysis is the
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`relative strength of Apple’s secondary considerations based on whether or not Apple’s iPhone
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`practices claim 10.
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`II.
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`THE ADDITIONAL PROCEEDINGS REQUIRED FOR THE ’828 PATENT
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`With respect to the ’828 patent, the Federal Circuit found that the Commission
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`erroneously construed the claim term “mathematically fitting an ellipse.” 725 F.3d at 1367-68.
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`The Federal Circuit found that “[t]he plain language requires the software to ‘mathematically
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`fit[]’ an ellipse to the data. That process refers to calculating the mathematical parameters that
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`define an ellipse.” Id. at 1367. In light of this finding, the Federal Circuit vacated the
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`Commission’s finding that Motorola does not infringe the ’828 patent and remanded case for
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`further proceedings. Id. at 1368. Motorola believes the following additional proceedings are
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`necessary with respect to the ’828 patent:
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`1.
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`Determination of Infringement Under the Correct Construction for
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`“Mathematically Fitting an Ellipse”: The Federal Circuit explicitly remanded this action “to
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`allow the ITC to consider in the first instance whether the accused products infringe under the
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`correct construction of ‘mathematically fitting an ellipse.’” Id. at 1368.
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`2.
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`Determination of Invalidity Under the Correct Construction for
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`“Mathematically Fitting an Ellipse”: Before the ALJ, Motorola argued that under Apple’s
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`proposed construction for “mathematically fitting an ellipse,” the asserted claims of the ’828
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`patent are anticipated by the Bisset patent. ID at 139-40. Because he rejected Apple’s proposed
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`construction, the ALJ made no factual findings regarding the Bisset patent. ID at 140. However,
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`Apple’s proposed construction has now been adopted by the Federal Circuit. Accordingly,
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`additional proceedings on whether the asserted claims of the ’828 patent are invalid in light of
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`the new construction for “mathematically fitting an ellipse” are required.
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`III. THIS INVESTIGATION SHOULD BE REMANDED TO ALJ ESSEX
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`The Commission’s January 7th Order also asks the parties to address “whether any issues
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`should be remanded to an administrative law judge to be assigned by the Chief Administrative
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`Law Judge.” Motorola believes that the investigation should be remanded to an ALJ. All of the
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`issues identified above require additional fact finding as well as the application of law to facts.
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`Although it will not be necessary to reopen discovery to resolve these issues, an ALJ is best
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`positioned to make these determinations in the first instance. This course is consistent with
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`Commission practice with respect to newly instituted investigations, in which factual
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`determinations are initially made by the ALJ who received the evidence and then reviewed by
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`the Commission.
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`In particular, remanding this investigation to ALJ Essex will promote judicial economy
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`and conserve the resources of both the Commission and the private parties. ALJ Essex is already
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`familiar with the technology at issue, the patents-in-suit, and Motorola’s and Apple’s products.
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`Allowing ALJ Essex to resolve the issues on remand will avoid the need for a new ALJ to
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`educate himself regarding the complex technical issues implicated by the issues on remand and
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`to familiarize himself with this investigation’s extensive record. In addition, ALJ Essex presided
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`over the evidentiary hearing in this investigation. In doing so, he was able to make credibility
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`determinations based on his direct observations at the hearing. These credibility determinations
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`may be key to resolving outstanding factual issues and they cannot be duplicated based on a
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`review of a cold record. In short, ALJ Essex is best positioned to resolve the remand issues
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`quickly and efficiently.
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`6
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`Dated: January 22, 2014
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`By:
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`Respectfully submitted,
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`Charles F. Schill
`Jamie B. Beaber
`Steptoe & Johnson LLP
`1330 Connecticut Avenue, N.W.
`Washington, DC 20036
`Tel. (202) 429-8162
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`Paul F. Brinkman
`777 6th Street, NW
`11th Floor
`Washington, D.C. 20001
`Tel. (202) 538-8000 Direct
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`Charles K. Verhoeven
`Quinn Emanuel Urquhart & Sullivan, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Tel. (415) 875-6600
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`Edward J. DeFranco
`Alexander Rudis
`Matthew A. Traupman
`Quinn Emanuel Urquhart & Sullivan, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel. (212) 849-7000
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`David A. Nelson
`Quinn Emanuel Urquhart & Sullivan, LLP
`500 West Madison Street, Ste. 2450
`Chicago, IL 60661
`Tel. (312) 705-7400
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`Attorneys for Respondent Motorola
`Mobility LLC
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`7
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`

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`Certain Mobile Devices and Related Software
` Investigation No. 337-TA-750
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, on January 22, 2014, she caused
` RESPONDENT MOTOROLA MOBILITY LLC'S STATEMENT
` REGARDING THE PROCEEDINGS ON REMAND
` to be served upon the parties as indicated below:
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`_____________________________________
`Timaka R. Senior
`Paralegal Specialist
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`The Honorable Lisa R. Barton
`Acting Secretary
`U.S. International Trade Commission
`500 E Street, S.W.
`Washington, D.C. 20436
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`The Honorable Theodore R. Essex
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, SW
`Washington, DC 20436
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`Lisa Kattan
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, SW
`Washington, DC 20436
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`Brian E. Ferguson, Esq.
`Weil, Gotshall & Manges LLP
`1300 Eye Street, NW, Suite 900
`Washington, DC 20005
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`Counsel for Complainant, Apple Inc.
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` Lisa.kattan@usitc.gov
`
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` apple.moto.750@weil.com