UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, DC
`
`Before the Honorable Theodore R. Essex
`Administrative Law Judge
`
`
`Investigation No. 337-TA-750
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`
`
`RESPONDENT MOTOROLA MOBILITY LLC’S
`REPLY STATEMENT REGARDING THE PROCEEDINGS ON REMAND
`
`
`In the Matter of
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`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
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`
`
`
`
`
`Date: January 29, 2014
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`

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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
`
`INTRODUCTION ...............................................................................................................1
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`APPLE MISSTATES BOTH THE PROCEDURAL HISTORY OF THIS
`INVESTIGATION AND THE LAW OF THE CASE DOCTRINE ...................................2
`
`III.
`
`FURTHER PROCEEDINGS REQUIRED FOR THE ’607 PATENT ...............................5
`
`A.
`
`B.
`
`C.
`
`The Commission Has Not Addressed The Issues Regarding Infringement
`Of The ’607 Patent Raised In Motorola’s Contingent Petition For Review ............5
`
`Additional Fact Finding On Domestic Industry For The ’607 Patent Is
`Required ...................................................................................................................6
`
`The Federal Circuit Did Not Resolve All Of The Issues Regarding
`Anticipation Of Claim 10 By The Perski ’455 Patent .............................................7
`
`D.
`
`The Obviousness Determination Requires Additional Fact Finding .....................12
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`IV.
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`FURTHER PROCEEDINGS REQUIRED FOR THE ’828 PATENT .............................13
`
`A.
`
`B.
`
`C.
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`The Validity Determination For The ’828 Patent Requires Additional Fact
`Finding ...................................................................................................................13
`
`The Commission Has Not Addressed The Issues Regarding Domestic
`Industry For The ’828 Patent Raised In Motorola’s Contingent Petition
`For Review .............................................................................................................16
`
`The Infringement Determination For The ’828 Patent Should Be
`Remanded To An ALJ ...........................................................................................16
`
`CONCLUSION ..................................................................................................................17
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`i
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`V.
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`

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`
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`TABLE OF AUTHORITIES
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`Cases
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`Page
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`Alloc, Inc. v. Int’l Trade Comm’n,
`342 F.3d 1361 (Fed. Cir. 2003)..................................................................................................7
`
`Amando v. Microsoft Corp.,
`517 F.3d 1353 (Fed. Cir. 2008)..................................................................................................8
`
`Apple Inc. v. Int’l Trade Comm’n,
`725 F.3d 1356 (Fed. Cir. 2013)........................................................................................ passim
`
`Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,
`576 F.3d 1348 (Fed. Cir. 2009)..................................................................................................8
`
`Certain Ground Fault Circuit Interrupters & Prods. Containing Same,
`Inv. No. 337-TA-739, 2012 ITC LEXIS 1458, (U.S.I.T.C. June 8, 2012) ................................6
`
`Certain LED Photographic Lighting Devices and Components Thereof,
`Inv. No. 337-TA-804, Comm’n Op. (Feb. 28, 2013).................................................................6
`
`Commil USA, LLC v. Cisco Sys., Inc.,
`720 F.3d 1361 (Fed. Cir. 2013)..................................................................................................6
`
`Crocker v. Piedmont Aviation, Inc.,
`49 F.3d 735 (D.C. Cir. 1995) ...................................................................................................15
`
`Designing Health, Inc. v. Erasumus,
`226 Fed. Appx. 976 (Fed. Cir. 2007) .......................................................................................15
`
`EEOC v. Kronos,
`694 F.3d 351 (Fed. Cir. 2012)..................................................................................................14
`
`Eichorn v. AT&T Corp.,
`484 F.3d 644 (3d Cir. 2007).....................................................................................................14
`
`Engel Indus., Inc. v. Lockeformer Co.,
`166 F.3d 1379 (Fed. Cir. 1999)..................................................................................................8
`
`Exxon Chem. Patents, Inc. v. Lubrizol Corp.,
`137 F.3d 1475 (Fed. Cir. 1998)......................................................................................8, 11, 15
`
`J.T. Eaton & Co. v. Atl. Paste & Glue Co.,
`106 F.3d 1563 (Fed. Cir. 1997)................................................................................................13
`
`Krupp Int’l Inc. v. Int’l Trade Comm’n,
`626 F.2d 844 (C.C.P.A. 1980) ...............................................................................................3, 4
`
`Laitram Corp. v. NEC Corp.,
`115 F.3d 947 (Fed. Cir. 1997).......................................................................................... passim
`
`
`
`
`ii
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`

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`
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`Mendenhall v. Barber-Greene Co.,
`26 F.3d 1573 (Fed. Cir. 1994)....................................................................................................5
`
`Richdel, Inc. v. Sunspool Corp.,
`714 F.2d 1573 (Fed. Cir. 1983)..................................................................................................7
`
`Sinochem Modern Envtl. Prot. Chems. Co. v. Int’l Trade Comm’n,
`358 Fed. Appx. 161 (Fed. Cir. 2009) .........................................................................................4
`
`Sprague v. Ticonic Nat’l Bank,
`307 U.S. 161 (1939) ...................................................................................................................8
`
`Southern Ry. Co. v. Clift,
`260 U.S. 316, 319 (1920) ...........................................................................................................5
`
`Surface Tech., Inc. v. Int’l Trade Comm’n,
`780 F.2d 29 (Fed. Cir. 1985)..................................................................................................3, 4
`
`Tronzo v. Bioment, Inc.,
`236 F.3d 1342 (Fed. Cir. 2001)................................................................................................15
`
`United States v. Escobar-Urrego,
`110 F.3d 1556 (11th Cir. 1997) .................................................................................................4
`
`Statutes
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`35 U.S.C. § 102(e) ...........................................................................................................................9
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`35 U.S.C. § 282 ................................................................................................................................6
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`19 C.F.R. § 210.42(h)(2) ..................................................................................................................2
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`19 U.S.C. § 1337 ....................................................................................................................3, 4, 14
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`iii
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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 Reply Statement Regarding The Proceedings On
`
`Remand.
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`I.
`
`INTRODUCTION
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`As Motorola explained in its Statement Regarding The Proceedings On Remand, the
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`Federal Circuit’s decision in Apple Inc. v. Int’l Trade Comm’n, 725 F.3d 1356 (Fed. Cir. 2013)
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`affected numerous aspects of this investigation and the appellate decision requires additional fact
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`finding by the ALJ on each of the issues identified in Motorola’s Statement. In contrast, Apple
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`advocates for a narrow remand limited solely to determining whether claim 10 of the ’607 patent
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`is obvious and whether Motorola infringes the asserted claims of the ’828 patent. In doing so,
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`Apple glosses over the numerous issues in this investigation now made relevant by the Federal
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`Circuit’s decision and for which no fact finding has been conducted and still other issues which,
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`although decided by the ALJ, have not been substantively addressed by the Commission.
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`According to Apple, consideration of any of these issues is foreclosed by the law of the
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`case doctrine. However, that doctrine is not applicable in this situation for two reasons. First,
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`the Commission’s final determination was limited to the discrete issues which gave rise to the
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`finding of no violation – invalidity of the ’607 patent and non-infringement of the ’828 patent.
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`Thus, the other issues not associated with the finding of no violation were not finally resolved by
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`the Commission. Second, Apple incorrectly argues that Motorola could have appealed to the
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`Federal Circuit. The Federal Circuit has repeatedly rejected this argument, holding that an ITC
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`respondent who was found not to violate Section 337 has no standing to bring an appeal.
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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.
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`1
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`

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`
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`Because Motorola had no standing to bring an appeal, the law of the case doctrine is
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`inapplicable.
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`II.
`
`APPLE MISSTATES BOTH THE PROCEDURAL HISTORY OF THIS
`INVESTIGATION AND THE LAW OF THE CASE DOCTRINE
`
`Apple’s characterization of the proceedings before the Commission is not accurate.
`
`Throughout its submission, Apple repeatedly characterizes numerous findings in the ALJ’s ID as
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`being incorporated into the Commission’s final determination, citing 19 C.F.R. § 210.42(h)(2).
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`See, e.g., Apple Submission at 2, 5, 8, 9-10. However, 19 C.F.R. § 210.42(h)(2) does not support
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`Apple’s argument. Commission Rule 42(h)(2) states that an initial determination on a violation
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`of Section 337 “shall become the determination of the Commission 60 days after the date of
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`service of the initial determination, unless the commission within 60 days of such service shall
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`have ordered review of the initial determination or certain issues therein.” (emphasis added).
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`In this investigation, the Commission did order review of certain issues within the ID,
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`specifically the ID’s finding that the asserted claims of the ’607 patent were invalid and that
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`Motorola did not infringe the asserted claims of the ’828 patent. See Notice of Comm’n
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`Decision to Review in Part (March 16, 2012). Because the Commission determined to review
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`the ID within 60 days, the ID did not become the final determination of the Commission
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`pursuant 19 C.F.R. § 210.42(h)(2). The Commission’s final determination is set forth in the
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`Commission’s Notice of Decision to Review in Part and the associated Commission Opinion.
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`The Commission’s notice detailing its review of the ID was limited to the specific issues
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`that led to the finding of no violation. That notice makes no mention of the substantive
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`arguments underlying the ALJ’s findings that Motorola infringes the ’607 patent, that Apple
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`satisfies the technical prong for the ’607 and ’828 patents or that the asserted claims of the ’828
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`patent are not invalid. In its contingent petition for review, Motorola identified errors in each of
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`2
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`

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`
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`these initial findings, and none of Motorola’s arguments were substantively addressed by the
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`Commission. Thus, there is no support in the record for Apple’s argument that the issues
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`explicitly raised in Motorola’s contingent petition for review were rejected or even considered by
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`the Commission.
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`Beyond its inaccurate description of the procedural history, Apple also misapplies the law
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`of the case doctrine. Arguing that the law of the case doctrine precludes further of review of the
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`ALJ’s ID, Apple repeatedly asserts that Motorola failed to appeal to the Federal Circuit the
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`portions of the ID that were unfavorable to Motorola. See, e.g., Apple Submission at 2 (“The
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`ALJ’s infringement findings thus became the Commission’s opinion, which Motorola elected not
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`to appeal to the Federal Circuit.”), 5 (“The ALJ’s finding that the technical prong of the domestic
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`industry requirement was satisfied thus became the Commission’s opinion; moreover, Motorola
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`did not request appellate review thereof”). However, Apple is incorrect that Motorola could
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`have appealed any of these findings. Under 19 U.S.C. § 1337, only parties adversely affected by
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`a final determination may appeal: “[a]ny person adversely affected by a final determination of
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`the Commission under subsection (d), (e), (f), or (g) of this section may appeal such
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`determination, within 60 days after the determination becomes final, to the United States Court
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`of Appeals for the Federal Circuit.” (emphasis added).
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`The Federal Circuit and its predecessor have repeatedly emphasized that respondents who
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`were found not to violate Section 337 are not “person[s] adversely affected by a final
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`determination of the Commission.” For instance in Surface Tech., Inc. v. Int’l Trade Comm’n,
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`780 F.2d 29, 30 (Fed. Cir. 1985), the Federal Circuit dismissed an appeal by two respondents
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`who were found by the Commission not to be in violation of Section 337, stating “[i]n view of
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`the ITC’s finding of no violation of § 337 by [respondents], these parties are without standing to
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`3
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`

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`
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`appeal.” Similarly, in Krupp Int’l Inc. v. Int’l Trade Comm’n, 626 F.2d 844 (C.C.P.A. 1980), the
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`CCPA dismissed the appeals of two respondents who were found not to violate Section 337. The
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`CCPA explained that “ITC respondents, such as Krupp and Bell, are not ‘adversely affected’ by
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`a determination that they did not violate section 337. Moreover, findings associated with the
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`ultimate determination that section 337 has not been violated are not final determinations within
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`the meaning of [Section 337] subsection (c) and do not give standing to appeal to a respondent
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`dissatisfied with those findings.” Id. at 846 (citation omitted); see also Sinochem Modern Envtl.
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`Prot. Chems. Co. v. Int’l Trade Comm’n, 358 Fed. Appx. 161 (Fed. Cir. 2009) (dismissing cross
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`appeal of invalidity where ITC found no violation of Section 337). Like the respondents in
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`Surface Tech. and Krupp, Motorola was found not to be in violation of Section 337 and thus had
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`no standing to appeal.
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`Because Motorola was unable to appeal, the law of the case doctrine is inapplicable in
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`this investigation. As Apple’s own cited case law explains, the law of the case doctrine can
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`apply only where there was an opportunity to appeal: “Under the law of the case doctrine, a
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`legal decision made at one stage of the litigation, unchallenged in a subsequent appeal when the
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`opportunity existed, becomes the law of the case for future stages of the same litigation. . . .”
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`United States v. Escobar-Urrego, 110 F.3d 1556, 1560 (11th Cir. 1997) (emphasis added). In
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`this investigation, it would be manifestly unfair to preclude Motorola from litigating issues that
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`were not part of Apple’s appeal to the Federal Circuit. This is not a situation where Motorola is
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`getting a “second bite of the apple.” Rather, as Motorola explained in its Statement, the remand
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`proceeding must include fact finding into unresolved issues, such as domestic industry and
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`infringement for the ’607 patent and invalidity and domestic industry for the ’828 patent, that
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`have not been considered by either the Commission or the Federal Circuit.
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`4
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`

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`Finally, the case law cited by Apple makes clear that the law of the case doctrine is
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`discretionary. The law of the case doctrine “is a doctrine resting on the need for judicial
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`economy. . . ‘Although courts are often eager to avoid reconsideration of questions once
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`decided in the same proceeding, it is clear that all federal courts retain power to reconsider if
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`they wish.. . .’” Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1582 (Fed. Cir. 1994).
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`Moreover, “[t]he [Supreme Court] has also noted ‘there is a difference between [law of the case]
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`and res judicata; one directs discretion, the other supersedes it and compels judgment.’” Id.
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`(quoting Southern Ry. Co. v. Clift, 260 U.S. 316, 319 (1920)). As explained in detail below,
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`even if the Commission determines that the law of the case doctrine is applicable, there are
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`several reasons why the Commission should exercise its discretion to consider the arguments
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`raised in Motorola’s contingent petition for review.
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`III.
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`FURTHER PROCEEDINGS REQUIRED FOR THE ’607 PATENT
`
`A.
`
`The Commission Has Not Addressed The Issues Regarding Infringement Of
`The ’607 Patent Raised In Motorola’s Contingent Petition For Review
`
`Motorola’s contingent petition for review identifies several errors committed by the ALJ
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`when conducting his infringement analysis for the ’607 patent. Contrary to Apple’s arguments,
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`the ALJ’s infringement findings are not subject to the law of the case doctrine. As noted above,
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`the ALJ’s infringement findings were not addressed in the Commission’s Notice of Review, and
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`even if they were, Motorola had no standing to appeal the ALJ’s infringement findings. Because
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`the Commission has not substantively addressed the issues raised in Motorola’s contingent
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`petition for review, the Commission should review the ALJ’s infringement determination
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`concurrently with its review of any additional determinations made by the ALJ on remand. In
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`the event the Commission determines not to remand this investigation to an ALJ, the
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`Commission should consider the issues raised in Motorola’s contingent petition for review in
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`5
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`

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`
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`conjunction with any briefing on the issues addressed on remand.
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`B.
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`Additional Fact Finding On Domestic Industry For The ’607 Patent Is
`Required
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`As Motorola explained in its Statement Regarding The Proceedings On Remand, the ALJ
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`made factual findings on domestic industry only with respect to claim 1 of the ’607 patent. ID at
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`182-202. The Federal Circuit found that claim invalid on appeal. Apple, 725 F.3d at 1363.
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`Ignoring this determination, Apple alleges that the ALJ’s finding that Apple practices an invalid
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`claim is law of the case, even though it was based solely on Apple’s practice of an invalid claim.
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`The Commission has explained that an invalid claim cannot, as a matter of law, be used
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`to satisfy the domestic industry requirement. See Certain Ground Fault Circuit Interrupters &
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`Prods. Containing Same, Inv. No. 337-TA-739, 2012 ITC LEXIS 1458, at *127-*128
`
`(U.S.I.T.C. June 8, 2012); see also Certain LED Photographic Lighting Devices and
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`Components Thereof, Inv. No. 337-TA-804, Comm’n Op. at 18 (Feb. 28, 2013) (“As discussed
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`below, and in the ID in more detail (at 76-79), the Commission finds that claim 17 of the ’823
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`patent is invalid. Thus, with respect to the ’823 patent, Litepanels has not proven that a valid
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`patent claim is practiced by the domestic industry products. For this reason, Litepanels has not
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`proven a violation of section 337 based on the ’823 patent.”). Thus, the Federal Circuit’s
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`invalidity finding with respect to claim 1 means that the ALJ’s finding that Apple practices claim
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`1 is legally insufficient to satisfy the domestic industry requirement.
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`This legal conclusion is a direct result of the Federal Circuit’s invalidity determination,
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`not any findings made by the ALJ regarding domestic industry. In addition to finding that claim
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`1 was invalid, the ALJ also determined that claim 1 was both practiced by Apple, thereby
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`satisfying the technical prong of the domestic industry requirement, and infringed by Motorola.
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`However, “[i]t is axiomatic that one cannot infringe an invalid patent.” Commil USA, LLC v.
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`6
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`

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`
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`Cisco Sys., Inc., 720 F.3d 1361, 1368 (Fed. Cir. 2013); see also 35 U.S.C. § 282 (enumerating
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`patent invalidity as a defense to a claim of infringement); Richdel, Inc. v. Sunspool Corp., 714
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`F.2d 1573, 1580 (Fed. Cir. 1983) (“The claim being invalid there is nothing to be infringed.”).
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`The same logic applies to the domestic industry requirement. Indeed, the Federal Circuit has
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`stated that test for satisfying the technical prong is “essentially the same as that for infringement,
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`i.e., a comparison of domestic products to the asserted claims.” Alloc, Inc. v. Int’l Trade
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`Comm’n, 342 F.3d 1361, 1375 (Fed. Cir. 2003). Once the Federal Circuit affirmed the ALJ’s
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`finding that claim 1 was invalid, “there was nothing to be [practiced]” by Apple. Richdel, 714
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`F.2d at 1580. Based on the current record, there has been no fact finding that Apple practices a
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`valid claim of the ’607 patent and therefore the domestic industry requirement has not been
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`satisfied.
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`Before the ALJ, Apple alleged that it practices claim 1-7 and 10. Of these claims, only
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`claim 10 has not been declared invalid. Accordingly, in order to satisfy the domestic industry
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`requirement, Apple will need to show that it practices claim 10. Because the ALJ declined to
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`conduct any fact finding on this issue, Motorola respectfully submits that the investigation
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`should be remanded to the ALJ for fact finding on whether Apple practices claim 10.
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`C.
`
`The Federal Circuit Did Not Resolve All Of The Issues Regarding
`Anticipation Of Claim 10 By The Perski ’455 Patent
`
`Apple erroneously alleges that “the validity of claim 10 over the Perksi reference has
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`been conclusively established by the Federal Circuit and constitutes law of the case” as a result
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`of the mandate issued by the Federal Circuit Apple Submission at 3. In making this argument,
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`Apple ignores both the relevant case law regarding the scope of issues on remand and its own
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`direct admission to the Federal Circuit that additional fact finding by the Commission is required
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`in the event that the Perksi ’455 patent is not entitled to the filing date of its provisional: “If the
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`7
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`

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`ALJ’s ruling on the second proposition [that the Perski ’455 patent is entitled to the filing date of
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`its provisional] was erroneous, this Court must remand to make the requisite finding on the first
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`[whether Apple can establish its alleged priority date].” Reply Brief of Appellant Apple Inc., at
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`17.
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`The “mandate rule” requires a district court to “follow an appellate decree as the law of
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`the case.” Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1356 (Fed. Cir.
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`2009). However, on remand on the Commission is free to address issues not within the scope of
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`the mandate. See, e.g., Sprague v. Ticonic Nat’l Bank, 307 U.S. 161, 168 (1939) (“[W]hile a
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`mandate is controlling as to matters within its compass, on the remand a lower court is free as to
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`other issues.”). To determine the scope of the mandate, the Commission must analyze the
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`Federal Circuit’s opinion. See Laitram Corp. v. NEC Corp., 115 F.3d 947, 951-52 (Fed. Cir.
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`1997). Only those issues decided expressly or “by necessary implication” are foreclosed from
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`further review. Id. at 951; see also Amando v. Microsoft Corp., 517 F.3d 1353, 1364 (Fed. Cir.
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`2008). Contrary to Apple’s argument, the fact that the Federal Circuit did not explicitly remand
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`issues regarding anticipation by claim 10 is not dispositive. The Federal Circuit has explained
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`that “[w]e . . . reiterate that a judgment that does not specifically provide for a remand only
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`speaks only to the issues incorporated in the mandate: ‘[it] is not necessarily incompatible with
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`further proceedings to be undertaken in the district court.’ Only the issues actually decided –
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`those within the scope of the judgment appealed from, minus those explicitly reserved or
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`remanded by the court – are foreclosed from further consideration.” Engel Indus., Inc. v.
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`Lockeformer Co., 166 F.3d 1379, 1382 (Fed. Cir. 1999) (quoting Exxon Chem. Patents, Inc. v.
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`Lubrizol Corp., 137 F.3d 1475, 1483 (Fed. Cir. 1998)).
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`In this investigation, the Federal Circuit’s mandate regarding anticipation of claim 10 by
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`8
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`

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`Perski is limited to its finding that Perski is not entitled to the filing date of its provisional
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`application and this finding does not resolve all of the issues regarding the anticipation of claim
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`10 by Perski. The Perski ’455 patent was filed on January 15, 2004 – approximately five months
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`before the ’607 patent was filed. Thus, unless Apple can establish an earlier priority date, the
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`Perski ’455 patent is prior art under 35 U.S.C. § 102(e). Before the ALJ, Apple alleged that it
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`invented the subject matter of the ’607 patent no later than December 2003, thereby antedating
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`the Perski ’455 patent. However, the Perksi ’455 patent also claims priority to a provisional
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`application, the Perski ’808 application, filed on February 10, 2003. Thus, Apple’s priority date
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`is irrelevant if Perski is entitled to the filing date of its provisional application. Because the ALJ
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`found that Perski is entitled to the filing date of its provisional application, he made no factual
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`findings regarding Apple’s priority date. ID at 141-42. After determining that the Perski ’455
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`patent is prior art, the ALJ found that Perski anticipates all of the asserted claims of the ’607
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`patent. ID at 142-46.
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`On appeal, the Federal Circuit explained the issues raised by Apple as follows:
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`Apple argues that the ITC anticipation findings were in error. It
`contends that Perski ’455 is not prior art because (1) Perski ’808
`does not disclose any way to determine whether multiple fingers
`touch the screen; and (2) Perski ’808 does to specifically
`incorporate by reference the “front end” and “digital unit” aspect
`of U.S. Provisional Patent Application 60/406,662 (Morag) that the
`ALJ used to find claim 10 anticipated.
`
`Even if Perksi ’455 is prior art, Apple argues that the reference
`does not disclose “detect[ing] multiple touches or near touches that
`occur at a same time and at distinction locations.”
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`Apple Inc. v. Int’l Trade Comm’n, 725 F.3d 1356, 1361 (Fed. Cir. 2013). The Federal Circuit
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`then proceeded to address each of these arguments in order. First, the Federal Circuit found that
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`“substantial evidence supports the ITC’s determination that the disclosure in the Perski ’808
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`provisional application provides adequate written support for Perski ’455.” Id. at 1362. Next,
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`9
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`the Federal Circuit “agree[d] with Apple . . . that Perksi ’808 fails to incorporate by reference
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`Morag.” Id. Accordingly, the Federal Circuit found that “the ITC’s finding that Perski ’455
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`anticipates claim 10 of the ’607 patent lacks substantial evidence.” Id. at 1363. Finally,
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`“[h]aving resolved that Perski ’455 is prior art for claims 1-7 of the ’607 patent,” the Federal
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`Circuit affirmed the ITC’s finding that Perski anticipates those claims. Id. This last
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`determination by the Federal Circuit disposed of Apple’s argument that Perski ‘455 lacked the
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`“multitouch element” required by the asserted claims.
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`The Federal Circuit’s decision demonstrates that the sole basis for the Federal Circuit’s
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`findings with respect to claim 10 is that the Perski ’455 patent was not entitled to the filing date
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`of its provisional application. However, this finding does not resolve the issue of whether the
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`Perski ’455 patent itself is prior art. As noted above, even without the benefit of the filing date
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`of the provisional application, the Perski ’455 patent is still prior art unless Apple can sustain its
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`burden of establishing a priority date before January 15, 2004 for claim 10. Neither the
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`Commission nor the Federal Circuit has made any findings that Apple has met its burden of
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`establishing an earlier priority date. Accordingly, the Federal Circuit’s finding that the Perski
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`’455 patent is not entitled to the filing date of its provisional application does not resolve either
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`explicitly or by necessary implication all of the issues regarding anticipation of claim 10.
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`Indeed, Apple itself told the Federal Circuit that if Perski is not entitled to the filing date of its
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`provisional, additional fact finding regarding Apple’s date of invention is necessary. Reply Brief
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`of Appellant Apple Inc., at 17.
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`The procedural posture of this investigation is analogous to the one faced by the Federal
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`Circuit in Laitram. In that case, the defendant filed three JMOL motions following an adverse
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`jury verdict on infringement. Laitram, 115 F.3d at 949. The district court granted the first
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`10
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`JMOL motion regarding infringement, and the remaining two JMOL motions were denied as
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`moot. Id. On appeal, the Federal Circuit reversed the grant of the first JMOL motion and
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`instructed the district court to “reinstate the jury’s verdict.” Id. Prior to issuance of the Federal
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`Circuit’s mandate, the defendant sought clarification of the issues on remand but this request was
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`denied. Id. at 950. On remand, the district court refused to consider the second and third JMOL
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`motions, reasoning that they were foreclosed by the Federal Circuit’s mandate. Id. The case was
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`then appealed to the Federal Circuit a second time, and the Federal Circuit reversed the district
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`court’s interpretation of the appellate mandate. The Federal Circuit explained that issues that
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`have not been decided on the merits below cannot be within the scope of appellate mandate:
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`It is incorrect to conclude that we decided issues not only
`undecided on the merits by the trial court because they were moot,
`and thus on appeal unripe, but also neither presented to us nor
`discussed in our opinion, nor necessary to the disposition of the
`appeal. The scope of our review, and our power to review, was
`limited to the sole order that was appealed.
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`Id. at 952. Like the second and third JMOL motions in Laitram, Apple’s argument that it can
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`swear behind the Perski ’455 patent was mooted by the ALJ’s finding that Perski was entitled to
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`the filing date of its provisional application. Because this issue was not decided on the merits by
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`either the ALJ or the Commission, it was not within the scope of the judgment reviewed by the
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`Federal Circuit and is not within the scope of the Federal Circuit’s mandate.
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`Finally, the fact that Motorola sought clarification of the Federal Circuit’s mandate in a
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`petition for rehearing does not affect the scope of the mandate. As Motorola explained in its
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`Statement Regarding The Proceedings On Remand, “[n]o inference can be drawn from the
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`court’s silence in response to [petitioner’s] request for clarification. Courts normally do not
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`respond to petitions for rehearing and it would be a mistake to conclude that a court’s non-
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`response to an argument made in a rehearing petition necessarily means that the court has
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`11
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`rejected that argument on the merits. . . .” Exxon, 137 F.3d at 1479.
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`D.
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`The Obviousness Determination Requires Additional Fact Finding
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`With respect to the Federal Circuit’s remand regarding the obviousness of claim 10 in
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`view of the SmartSkin reference, Apple argues that “[t]he record on secondary considerations is
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`already fully developed.” Apple Submission at 6. This argument ignores the fact that the
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`Federal Circuit explicitly remanded to the Commission the determination of appropriate weight
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`that should be afforded to Apple’s secondary considerations and that in determining the
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`appropriate weight of Apple’s secondary considerations, neither the ALJ nor the Commission
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`has made any fact finding regarding whether Apple practices claim 10.
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`With respect to obviousness, the Federal Circuit expressly endorsed the Commission’s
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`fact finding regarding the first three Graham factors:
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`[A]s the ALJ and the ITC found, the SmartSkin reference is very
`close and expressly recommends as “Conclusions and Directions
`for Future Work” using transparent ITO electrodes to build a
`“transparent SmartSkin sensor. Indeed, the reference teaches that
`this transparent sensor could be integrated with “most of today’s
`flat panel displays” because those systems rely on an “active
`matrix and transparent electrodes,”
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`Apple, 725 F.3d at 1366. However, the Federal Circuit also found that Apple had established
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`secondary considerations of non-obviousness because “Apple presented evidence showing a
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`nexus between the undisputed commercial success of the iPhone and the patented multitouch
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`functionality. . . .” Id. In its remand instructions, the Federal Circuit explicitly left it to the
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`Commission to determine the appropriate weight afforded to Apple’s s