UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`
`
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
`
`COMPLAINANT APPLE INC.’S RESPONSE TO MOTOROLA’S AND STAFF’S
`INITIAL COMMENTS REGARDING REMAND PROCEEDINGS
`
`
`
`
`
`
`Investigation No. 337-TA-750
`
`
`
`
`
`
`
`Anne M. Cappella
`Jill J. Schmidt
`Brian C. Chang
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3000
`
`
`
`
`
`Served on behalf of Complainant:
`
`Apple Inc.
`1 Infinite Loop
`Cupertino, CA 95014
`Tel: (408) 974-2042
`
`Counsel for Complainant:
`
`Brian E. Ferguson
`Robert T. Vlasis
`Christopher T. Marando
`Weil, Gotshal & Manges LLP
`1300 Eye Street, N.W., Suite 900
`Washington, D.C. 20005
`Tel: (202) 682-7000
`Fax: (202) 857-0940
`
`
`

`
`
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`V. 
`
`
`
`TABLE OF CONTENTS
`
`
`
`INTRODUCTION ................................................................................................. 1 
`
`THE ’607 PATENT ............................................................................................... 3 
`
`A. 
`
`B. 
`
`C. 
`
`The Commission’s Finding of a Domestic Industry is Law of the Case and
`Should Not Be Disturbed. .......................................................................... 3 
`
`The Commission Should Not Reconsider Apple’s Practice of the Asserted
`Claims for Secondary Considerations. ....................................................... 7 
`
`The Commission Should Not Make Further Findings Regarding Perski. . 9 
`
`THE ’828 PATENT ............................................................................................. 14 
`
`REMAND TO AN ALJ IS UNNECESSARY .................................................... 15 
`
`CONCLUSION .................................................................................................... 16 
`
`
`
`
`
`- i -
`
`

`
`
`
`Cases
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Amado v. Microsoft Corp.,
`517 F.3d 1353 (Fed. Cir. 2008)..............................................................................................5, 6
`
`Apple Inc. v. ITC,
`725 F.3d 1356 (Fed. Cir. 2013)........................................................................................ passim
`
`Bailey v. Dart Container Corp. of Michigan,
`292 F.3d 1360 (Fed. Cir. 2002)................................................................................................10
`
`Certain Microsphere Adhesives, Process for Making Same and Prods. Containing Same,
`Including Self-Stick Repositionable Notes,
`Inv. No. 337-TA-366, Comm’n Op. at 8-16 (Jan. 16, 1996) .....................................................4
`
`Certain Silicon Microphone Packages and Products Containing the Same,
`Inv. No. 337-TA-695 .................................................................................................................4
`
`Certain Ground Fault Circuit Interrupters and products Containing Same,
`Inv. No. 337-TA-739, Comm’n Op. at 73-74 (June 8, 2012) ................................................4, 5
`
`Crown Operations Int’l, Ltd. v. Solutia Inc.,
`289 F.3d 1367 (Fed. Cir. 2002)................................................................................................12
`
`Designing Health, Inc. v. Erasmus,
`226 Fed. Appx. 976 2007 U.S. App. LEXIS 4415 (Fed. Cir. 2007)........................................14
`
`Energizer Holdings, Inc. v. ITC,
`275 Fed. Appx. 969, 2008 U.S. App. LEXIS 8593 (Fed. Cir. 2008).........................................2
`
`Engel Indus., Inc. v. Lockformer Co.,
`166 F.3d 1379 (Fed. Cir. 1999)..................................................................................................6
`
`Exxon Chem. Patents v. Lubrizol Corp.,
`137 F.3d 1475 (Fed. Cir. 1998)..........................................................................................12, 13
`
`Gould, Inc. v. United States,
`67 F.3d 925, 930 (Fed. Cir. 1995) .............................................................................................3
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ...................................................................................................................8
`
`
`
`- ii -
`
`

`
`
`
`Messenger v. Anderson,
`225 U.S. 436 (1912) ...............................................................................................................6, 9
`
`Omni Outdoor Adver., Inc. v. Columbia Outdoor Adver., Inc.,
`974 F.2d 502 (4th Cir. 1992) .....................................................................................................7
`
`Rambus Inc. v. Rea,
`No. 2012-1634, 2013 WL 5312505 (Fed. Cir. Sept. 24, 2013) .................................................8
`
`Stewart v. Dutra Constr. Co.,
`418 F.3d 32 (1st Cir. 2005) ..................................................................................................7, 14
`
`Suel v. Secretary of Health & Human Services,
`192 F.3d 981 (Fed. Cir. 1999)....................................................................................................1
`
`Tronzo v. Biomet, Inc.,
`236 F.3d 1342 (Fed. Cir. 2001)........................................................................................ passim
`
`United States v. Turtle Mountain Band of Chippewa Indians,
`612 F.2d 517 (Ct. Cl. 1979) .......................................................................................................6
`
`United States v. Adesida,
`129 F.3d 846 (6th Cir. 1997) ...............................................................................................7, 14
`
`United States v. Escobar-Urrego,
`110 F.3d 1556 (11th Cir. 1997) .................................................................................................3
`
`Williams v. C.I.R.,
`1 F.3d 502 (7th Cir. 1993) .........................................................................................................6
`
`
`
`- iii -
`
`

`
`
`
`
`
`TABLE OF ABBREVIATIONS
`
`AFCOB
`
`Apple’s Federal Circuit Opening Brief
`
`APR
`
`ACR
`
`
`
`
`
`Apple’s Petition for Review
`
`Apple’s Initial Comments on Remand
`
`APostHB
`
`Apple’s Posthearing Brief
`
`ARB
`
`ID
`
`
`
`
`
`MCPR
`
`MCR
`
`
`
`MFCB
`
`Apple’s Federal Circuit Reply Brief
`
`Initial Determination in Inv. No. 337-TA-750 (Jan. 13, 2012)
`
`Motorola’s Contingent Petition for Review
`
`Motorola’s Initial Comments on Remand
`
`Motorola’s Federal Circuit Brief
`
`MPPRH
`
`Motorola’s Petition for Panel Rehearing and Rehearing En Banc
`
`
`
`MRPRH
`
`Motorola’s Reply in Support of its Petition for Panel Rehearing and Rehearing En
`Banc
`
`SCR
`
`
`
`Staff’s Initial Comments on Remand
`
`
`
`- iv -
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`Apple respectfully submits this response to Motorola’s and Staff’s initial comments on
`
`the Commission’s January 7, 2014 Order regarding what further proceedings must be conducted
`
`in order to comply with the Federal Circuit’s August 7, 2013 judgment in Apple Inc. v. ITC, 725
`
`F.3d 1356 (Fed. Cir. 2013) and subsequent mandate dated November 15, 2013.
`
`Unlike Apple and Staff, Motorola seeks to re-litigate a host of issues that were either
`
`settled by the Federal Circuit or the Commission and not preserved on appeal and thus constitute
`
`law of the case. Suel v. Secretary of Health & Human Services, 192 F.3d 981, 984-85 (Fed. Cir.
`
`1999) (“a litigant given one good bite at the apple should not have a second”). Worse, some of
`
`the arguments made by Motorola are plainly contrary to governing Commission policy. For
`
`example, for the ’607 Patent, Motorola wants a do-over on the issue of domestic industry (an
`
`issue not raised on appeal). In making that request, Motorola demonstrates a misunderstanding
`
`of Commission policy. At the time the Commission found that Apple had a domestic industry
`
`for the ’607 Patent, the Commission treated the issue in accordance with its long-standing policy:
`
`patent claims do not need to be valid for the Complainant to satisfy the domestic industry
`
`requirement. Thus, that the Commission found claim 1 of the ’607 Patent invalid but
`
`simultaneously determined that Apple’s practice of that claim satisfied the domestic industry
`
`requirement is of no consequence now. And at any rate, Motorola failed to raise this issue on
`
`appeal despite having ample opportunity to do so. The argument is thus waived in addition to
`
`being contrary to Commission policy at the relevant time.
`
`Similarly, Motorola claims that the domestic industry issue must be re-litigated for the
`
`additional reason of evaluating the nexus between Apple’s evidence of secondary considerations
`
`and the claimed ’607 invention. Motorola is wrong. The Federal Circuit has already settled this
`
`issue: “[w]e conclude that this fact finding [of no nexus] is not supported by substantial
`
`- 1 -
`
`

`
`
`
`evidence. . . . Given the strong record evidence of nexus, this conclusory statement is insufficient
`
`to support the finding of no nexus.” Apple v. ITC, 725 F.3d 1356, 1366 n.4 (Fed. Cir. 2013).
`
`Moreover, Motorola raised this issue in its Petition for Rehearing at the Federal Circuit, which
`
`the Court denied. MPPRH at 7-9; see also Order (D.E. 85) (Fed. Cir. Nov. 8, 2013) (denying
`
`Motorola’s petition for rehearing). Accordingly, as the Federal Circuit made perfectly clear, the
`
`only issue for consideration on remand is whether claim 10 would have been obvious when the
`
`evidence of secondary considerations is properly considered. Apple, 725 F.3d at 1367.
`
`Motorola also argues that the Commission should determine whether Apple established a
`
`priority date before January 15, 2004 for claim 10 of the ’607 Patent, so that the Commission can
`
`determine whether Perski alone anticipates claim 10. But that too is wrong because Motorola
`
`failed to raise this issue on appeal. Indeed, in its Federal Circuit brief, Apple placed Motorola on
`
`notice that the “pixilated image” limitation of claim 10 was missing from Morag, which
`
`Motorola had unsuccessfully argued was incorporated by reference in an earlier Perski
`
`provisional application. In response, Motorola failed to argue that the “pixilated image”
`
`limitation was present in Perski alone and thus failed to preserve the priority date argument. The
`
`Federal Circuit subsequently overturned the Commission’s anticipation finding and did not
`
`remand the anticipation issue for further proceedings. See Apple, 725 F.3d at 1363 (“[b]ecause
`
`Perski ’808 does not incorporate by reference the anticipatory subject matter from Morag, the
`
`ITC’s finding that Perski ’455 anticipates claim 10 of the ’607 patent lacks substantial
`
`evidence”) (emphasis added). The Federal Circuit’s finding is law of the case and cannot be re-
`
`visited on remand. See, e.g., Energizer Holdings, Inc. v. ITC, 275 Fed. Appx. 969, 975, 2008
`
`U.S. App. LEXIS 8593, *15 (Fed. Cir. 2008) (“[w]henever a panel of an appellate court
`
`definitively decides an issue, the issue cannot be reconsidered by a lower court on rehearing the
`
`- 2 -
`
`

`
`
`
`case,” citing Gould, Inc. v. United States, 67 F.3d 925, 930 (Fed. Cir. 1995)); see also ACR at 5
`
`(collecting cases).
`
`Finally, Motorola asks the Commission to consider new arguments concerning the Bisset
`
`reference and the ’828 Patent, but Motorola failed to raise these arguments on appeal. Indeed,
`
`Motorola chose not to ask the Federal Circuit to consider whether Bisset anticipates the ’828
`
`Patent claims under Apple’s construction of “mathematically fitting an ellipse,” and thus,
`
`Motorola cannot ask the Commission to do so now. See, e.g., United States v. Escobar-Urrego,
`
`110 F.3d 1556, 1560 (11th Cir. 1997) (“Under the law of the case doctrine, a legal decision made
`
`at one stage of the litigation, unchallenged in a subsequent appeal when the opportunity existed,
`
`becomes the law of the case for future stages of the same litigation, and the parties are deemed to
`
`have waived the right to challenge that decision at a later time”).
`
`In contrast to Motorola, Staff correctly summarizes the issues needing further resolution
`
`on remand: (1) whether Apple’s evidence of secondary considerations demonstrates that claim
`
`10 of the ’607 Patent is not obvious; and (2) whether Motorola’s products infringe the asserted
`
`claims of the ’828 Patent under Apple’s construction of “mathematically fitting an ellipse.” The
`
`only disagreement between Apple’s and Staff’s position is whether these issues should be
`
`remanded to an ALJ. Apple respectfully submits again that a remand is unnecessary because the
`
`Commission can decide the issues under the existing record in front of the Commission, with
`
`further briefing from the parties.
`
`II.
`
`THE ’607 PATENT
`
`A.
`
`The Commission’s Finding of a Domestic Industry is Law of the Case and
`Should Not Be Disturbed.
`
`Motorola is simply wrong that “claim 1 . . . cannot as [a] matter of law be used to satisfy
`
`the domestic industry requirement” for the ’607 Patent. See MCR at 2. Indeed, as of the date
`
`- 3 -
`
`

`
`
`
`that the Commission terminated this Investigation (March 19, 2012), Commission policy dictated
`
`that the technical prong of the domestic industry requirement should be determined irrespective
`
`of the validity of the asserted claims that the complainant allegedly practices. See, e.g., Certain
`
`Silicon Microphone Packages and Products Containing the Same, Inv. No. 337-TA-695,
`
`Comm’n Ntc. at 3 (Jan. 21, 2011) (“[i]t is Commission practice not to couple an analysis of
`
`domestic industry to a validity analysis”); see also Certain Microsphere Adhesives, Process for
`
`Making Same and Prods. Containing Same, Including Self-Stick Repositionable Notes, Inv. No.
`
`337-TA-366, Comm’n Op. at 8-16 (Jan. 16, 1996) (finding the domestic industry requirement
`
`satisfied based on complainant’s practice of three claims, reversing ALJ’s finding of a domestic
`
`industry “with regard to only claim 7, the only claim at issue that Judge Saxon had found to be
`
`not invalid, practiced by 3M, and infringed by Kudos,” eliminating the “claim correspondence”
`
`requirement, and reiterating that “it [is] not appropriate to insert limitations into section 337 that
`
`were not placed there by Congress”) (emphasis added).
`
`In June 2012, however, some three months after the Commission issued its final opinion
`
`and terminated the Investigation, the Commission required without explanation in the 739
`
`investigation that the technical prong be demonstrated through the practice of a valid claim. See
`
`Certain Ground Fault Circuit Interrupters and products Containing Same, Inv. No. 337-TA-739,
`
`Comm’n Op. at 73-74 (June 8, 2012). Because this apparent change in Commission policy
`
`occurred after this Investigation was terminated, Apple respectfully submits that the policy
`
`change does not apply to the Commission’s determination here concerning the ’607 Patent as
`
`explained below.
`
`Moreover, Motorola had the opportunity but failed to raise this issue on appeal. In
`
`particular, Motorola submitted its Federal Circuit Brief on October 15, 2012, four months after
`
`- 4 -
`
`

`
`
`
`the Commission decision in the 739 investigation. See MFCB. Even though the Commission
`
`had found claim 1 invalid on two separate grounds (anticipated by Perksi, and rendered obvious
`
`by SmartSkin) and had subsequently ruled in a different case that the technical prong should be
`
`satisfied by the practice of a valid claim, Motorola failed to request that the Federal Circuit
`
`reverse the Commission’s finding that the technical prong had been satisfied based on Apple’s
`
`practice of claim 1. See generally MFCB.
`
`In fact, Motorola did not raise the issue at all until September 6, 2013, in its Petition for
`
`Panel Rehearing and Rehearing En Banc, but even there Motorola failed to ask the Federal
`
`Circuit to reverse the Commission’s finding that the domestic industry requirement was satisfied.
`
`MPPRH at 7-10. Instead, Motorola merely argued for the first time that there could be no nexus
`
`to the secondary considerations since there was no finding that Apple practiced a valid claim. Id.
`
`The Court refused to hear Motorola’s arguments, which in any event never challenged the
`
`underlying domestic industry finding. Apple, Case No. 12-1338 at Order (D.E. 85) (Fed. Cir.
`
`Nov. 8, 2013) (denying Motorola’s petition for rehearing).
`
`Accordingly, the Commission’s finding of a domestic industry thus remains law of the
`
`case, and any proposed challenge now by Motorola has been waived. As the Federal Circuit held
`
`in Amado:
`
`
`
`A decision is generally considered to be intervening when it comes
`between an appellate decision and the proceedings on remand. A
`decision is not intervening, however, if the parties have a
`reasonable opportunity to raise an issue with respect to that
`decision prior to issuance of the appellate mandate. . . . Because
`Microsoft had a reasonable opportunity to raise an issue with
`respect to eBay prior to issuance of our mandate . . . eBay is not an
`intervening decision and thus does not preclude application of the
`mandate rule.
`
`- 5 -
`
`

`
`
`
`Amado v. Microsoft Corp., 517 F.3d 1353, 1359-60 (Fed. Cir. 2008) (allowing district court to
`
`reconsider prospective injunctive relief on inapplicable grounds, but finding that a change in
`
`Federal Circuit precedent was not intervening because the litigant had failed to raise it during the
`
`appeal); see also Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999);
`
`Messenger v. Anderson, 225 U.S. 436, 444 (1912) (law of the case doctrine “expresses the
`
`practice of courts generally to refuse to reopen what has been decided”); Tronzo v. Biomet, Inc.,
`
`236 F.3d 1342, 1349 (Fed. Cir. 2001) (appellee’s belated attack on the punitive damages award
`
`was foreclosed by the appellate court’s mandate in the first appeal because appellee could have
`
`raised a challenge to the punitive damages award in the first appeal but did not); Williams v.
`
`C.I.R., 1 F.3d 502, 503 (7th Cir. 1993) (“If a final judgment had been entered, the case appealed,
`
`the judgment reversed, and the case remanded, the trial judge would be required to adhere on
`
`remand to the rulings that he had made before the case was first appealed, provided of course
`
`that they had not been set aside by the appellate court”); United States. v. Turtle Mountain Band
`
`of Chippewa Indians, 612 F.2d 517, 520 (Ct. Cl. 1979) (“No litigant deserves an opportunity to
`
`go over the same ground twice, hoping that the passage of time or changes in the composition of
`
`the court will provide a more favorable result the second time”).
`
`
`
`The technical prong of the domestic industry requirement has thus been conclusively
`
`resolved in Apple’s favor. But should the Commission nevertheless determine that the domestic
`
`industry requirement is now not satisfied based on the invalidity of claim 1—again, an issue
`
`originally decided in Apple’s favor and not appealed—Apple requests the opportunity to
`
`demonstrate again through further briefing that the iPhone 4 also practices claim 10. Apple has
`
`already submitted ample evidence and argument concerning Apple’s practice of claim 10, and
`
`thus, this issue would not need to be remanded to an ALJ. See, e.g., APostHB at 120-26
`
`- 6 -
`
`

`
`
`
`(summarizing how the iPhone 4 practices claim 10); CX-202C at Q. 677-767 (Subramanian
`
`WS).
`
`B.
`
`The Commission Should Not Reconsider Apple’s Practice of the Asserted
`Claims for Secondary Considerations.
`
`Motorola next argues that whether Apple practices claim 10 of the ’607 Patent is also
`
`relevant to the “weight afforded to Apple’s commercial success,” but importantly, Motorola
`
`failed to raise this argument until its Petition for Panel Rehearing and Rehearing En Banc and,
`
`thus, did not properly preserve the issue for Commission review on remand. Indeed, Apple
`
`presented evidence at the hearing that the iPhone 4 practices each limitation of each asserted
`
`claim. See, e.g., APostHB at 120-26; CX-202C at Q. 677-767. The ALJ found it sufficient that
`
`Apple practiced claim 1 of the ’607 Patent and did not consider the other claims, deeming such
`
`an analysis “superfluous and immaterial.” ID at 198. The Commission adopted this portion of
`
`the ALJ’s opinion, and Motorola failed to argue that the iPhone’s alleged failure to practice
`
`claim 10 provides an alternative basis for affirming the Commission’s decision. Instead,
`
`Motorola told the Federal Circuit that “claim 10 is slightly different” from claim 1 “but has no
`
`additional limitations relevant to the issues presented to this Court.” MFCB at 11. The
`
`Commission should not now be burdened with addressing an argument that Motorola could have
`
`raised on appeal but elected to omit. Tronzo, 236 F.3d at 1349; Omni Outdoor Adver., Inc. v.
`
`Columbia Outdoor Adver., Inc., 974 F.2d 502, 505 (4th Cir. 1992) (“[r]egarding this issue as
`
`having been waived furthers the judicial system’s interests in avoiding piecemeal litigation. The
`
`most rudimentary procedural efficiency demands that litigants present all available arguments to
`
`an appellate court on the first appeal”); Stewart v. Dutra Constr. Co.., 418 F.3d 32, 36 (1st Cir.
`
`2005) (“a party who failed to present an argument in previous appellate proceedings ‘may not
`
`revive in the second round an issue he allowed to die in the first’”); United States v. Adesida, 129
`
`- 7 -
`
`

`
`
`
`F.3d 846, 850 (6th Cir. 1997) (“The law-of-the-case doctrine bars challenges to a decision made
`
`at a previous stage of the litigation which could have been challenged in a prior appeal, but were
`
`not. A party who could have sought review of an issue or a ruling during a prior appeal is
`
`deemed to have waived the right to challenge that decision thereafter”) (citation omitted).
`
`Moreover, that claim 1 has been invalidated does not mean, as Motorola suggests, that its
`
`elements are irrelevant to the novelty of the display arrangement set forth in claim 10. Indeed, “a
`
`patent composed of several elements is not proved obvious merely by demonstrating that each of
`
`its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
`
`398, 418 (2007); Rambus Inc. v. Rea, No. 2012-1634, 2013 WL 5312505, at *8 (Fed. Cir. Sept.
`
`24, 2013) (“While objective evidence of nonobviousness lacks a nexus if it exclusively relates to
`
`a feature that was ‘known in the prior art,’ the obviousness inquiry centers on whether ‘the
`
`claimed invention as a whole’ would have been obvious.”) (citations omitted).
`
`Finally, as Apple explained in its initial comments, the Federal Circuit already
`
`determined that there was a sufficient nexus between Apple’s commercial success and the
`
`claimed technology. See MCR at 2; ACR at 7; Apple, 725 F.3d at 1366, fn. 4:
`
`We conclude that this fact finding [of no nexus] is not supported
`by substantial evidence. Apple’s evidence of industry copying of
`the multitouch screen and industry praise of this feature are strong
`evidence of nexus. The only contrary evidence is a cursory
`statement of Motorola’s technical expert. Given the strong record
`evidence of nexus, this conclusory statement is insufficient to
`support the finding of no nexus.
`
`
`The Federal Circuit was correct in this holding, as the elements of claim 10 fully support the
`
`Federal Circuit’s nexus finding. Like claim 1, claim 10 requires a transparent touch panel that is
`
`capable of recognizing multiple touch events that occur at different locations on the touch panel
`
`at the same time. JX-002.031 [’607 Patent] at 22:23-55. But claim 10 is specifically directed to
`
`- 8 -
`
`

`
`
`
`“a display having a screen for displaying a graphical user interface” and also requires the
`
`formation of a pixelated image by a host device based on the touches. Id. These additional
`
`limitations undisputedly correspond to features in the iPhone and include the limitations that the
`
`Federal Circuit agreed were not found in Perski. See Apple, 725 F.3d at 1362-63. Thus, there is
`
`no basis for disturbing the Federal Circuit’s nexus holding on remand.
`
`
`
`C.
`
`The Commission Should Not Make Further Findings Regarding Perski.
`
`Motorola next argues that it is now “necessary” for the Commission to make additional
`
`findings “regarding Apple’s priority date for claim 10 of the ’607 patent.” MCR at 3. According
`
`to Motorola, “[t]he ALJ has already determined that the Perski ’455 patent itself discloses every
`
`limitation of claim 10,” so the only remaining issue is whether Apple can establish an earlier
`
`priority date behind Perski. Id. But Motorola failed to preserve this meritless argument on
`
`appeal and cannot raise it now. See Messenger, 225 U.S. at 444 (law of the case doctrine
`
`“expresses the practice of courts generally to refuse to reopen what has been decided”); Tronzo,
`
`236 F.3d at 1349 (appellee’s belated attack on the punitive damages award was foreclosed by the
`
`appellate court’s mandate in the first appeal because appellee could have raised a challenge to
`
`the punitive damages award in the first appeal but did not).
`
`By way of background, Motorola had unsuccessfully argued that the “pixilated image”
`
`element of claim 10 was disclosed in another reference, Morag ’662, which was allegedly
`
`incorporated by reference into the Perski ’808 provisional application, to which Motorola alleged
`
`Perski ’455 claimed priority. But as Apple argued in its appellate brief,
`
`in attempting to show that the ’808 application provides written
`description support for the “output this information to a host device
`to form a pixilated image” element of claim 10, Motorola entirely
`relied on another provisional application, Morag ’662. . . . But the
`’808 application does not incorporate by reference that particular
`material from Morag ’662. Motorola’s expert acknowledged that
`only “certain portions” of Morag ’662 are incorporated by
`
`- 9 -
`
`

`
`
`
`reference in the ’808 application, namely the transparent sensor’s
`description—not the “Front End” and “Digital Unit” descriptions. .
`. . When the incorporation statement is limited in this way, it
`cannot be read to incorporate “separate and distinct” elements of
`the referenced document. . . . Because Perski is not entitled to the
`’808 application’s priority date, it is not prior art to the ’607 patent.
`For this reason, alone, the ALJ’s anticipation ruling must be
`reversed.
`
`AFCOB at 66-67 (emphasis added). In response to this argument, Motorola could have—but did
`
`not—argue that Perski ’455 alone anticipates claim 10 of the ’607 patent. Instead, Motorola
`
`made a single argument on appeal – that the Court should find that Perski ’808 indeed
`
`incorporated the relevant parts of Morag. See MFCB at 45-48. Motorola could also have argued
`
`that even if Morag ’662 was not incorporated into Perski ’808, the Perski ’455 patent still
`
`anticipates claim 10. See Bailey v. Dart Container Corp. of Michigan, 292 F.3d 1360, 1362
`
`(Fed. Cir. 2002) (“an appellee can present in this court all arguments supported by the record and
`
`advanced in the trial court in support of the judgment as an appellee, even if those particular
`
`arguments were rejected or ignored by the trial court”). But for whatever reason, Motorola did
`
`not make this available argument to the Court. While the Federal Circuit agreed that Perski ’455
`
`properly claimed priority to Perski ’808, it rejected the argument that Perski ’808 incorporated
`
`by reference Morag ’662. The Federal Circuit’s holding may be summarized below:
`
`
`
`- 10 -
`
`

`
`
`
`See Apple, 725 F.3d at 1362 (“we agree with the ITC and Motorola that substantial evidence
`
`supports the ITC’s determination that the disclosure in Perski ’808 provides adequate written
`
`support for Perski ’455…. We agree with Apple, however, that Perski ’808 fails to incorporate
`
`by reference Morag”). Accordingly, the only argument Motorola made on appeal relevant to
`
`claim 10 – that the Commission correctly found it was anticipated by Perski based on the
`
`incorporation by reference of Morag – was reversed by the Federal Circuit. Motorola did not
`
`make the argument it seeks to now revive on remand – that Perski ’455 alone anticipates claim
`
`10.
`
`
`
`Thus, there is no basis for the Commission to review on remand Apple’s priority date
`
`claim because Motorola waived the argument that Perski alone anticipates claim 10. After losing
`
`on the argument it selected to brief, Motorola cannot use the remand process to revive abandoned
`
`arguments; thus, its request to review Apple’s priority date evidence should be denied. See
`
`Tronzo, 236 F.3d at 1349 (appellee’s belated attack on the punitive damages award was
`
`foreclosed by the appellate court’s mandate in the first appeal because appellee could have raised
`
`a challenge to the punitive damages award in the first appeal but did not).
`
`
`
`In its Comments directed to this issue, Motorola mischaracterizes a statement in Apple’s
`
`Federal Circuit briefing. In its reply brief to the Federal Circuit, Apple stated that “[i]f the ALJ’s
`
`ruling on the second proposition [that Perski ’455 is entitled to the filing date of its provisional]
`
`was erroneous, this Court must remand to make the requisite finding on the first [whether Apple
`
`can establish its alleged priority date].” MCR at 3; ARB at 17. That statement was made
`
`assuming the Federal Circuit were to find that Perski ’455 could not claim priority to Perski
`
`’808. Since the Federal Circuit disagreed with that premise, the statement relied on by Motorola
`
`is inapplicable. Importantly, Apple’s briefing before the Federal Circuit nowhere suggests that a
`
`- 11 -
`
`

`
`
`
`remand on the ’607 priority date is necessary if the Court ruled (as it did) that no substantial
`
`evidence supported the Commission’s filing that Perski anticipated claim 10.1
`
`Motorola also argues that the Commission should ignore the Federal Circuit’s denial of
`
`Motorola’s petition for rehearing, wherein Motorola raised this same issue and the Federal
`
`Circuit rejected it without comment. MPPRH (D.E. 75) at 13-14 (Sept. 6, 2013); Apple, Case
`
`No. 12-1338 at Order (D.E. 85) (Fed. Cir. Nov. 8, 2013) (denying Motorola’s petition for
`
`rehearing). But in making this argument, Motorola mistakenly relies upon the Federal Circuit’s
`
`opinion in Exxon, in which the Court reiterated that “the purpose of rehearing petitions is ‘to
`
`direct the Court's attention to some material matter of law or fact which it has overlooked in
`
`deciding a case, and which, had it been given consideration, would probably have brought about
`
`a different result.’” Exxon Chem. Patents v. Lubrizol Corp., 137 F.3d 1475, 1479 (Fed. Cir.
`
`1998). Here, the issue of claim 10’s validity over Perksi was expressly before the Court; thus,
`
`the holding in Exxon that a negative inference cannot be drawn from the court’s refusal to grant a
`
`petition for rehearing on an issue not before the court is simply inapplicable.
`
`Moreover, the Court’s opinion in Exxon had included an “express disclaimer” taking no
`
`position on infringement under the doctrine of equivalents—the issue raised in the petition for
`
`rehearing. Id. at 1478. Here, there was no “express disclaimer” leaving open the possibility of a
`
`remand on whether Perski anticipates claim 10. Quite the opposite, the Federal Circuit held that
`
`“[b]ecause Perski ’808 does not incorporate by reference the anticipatory subject matter from
`
`1
`Motorola’s attempt to argue that Perski alone can invalidate claim 10 is inconsistent with
`other, unchallenged, holdings of the Court. The Court ruled: “[b]ecause Perski ’808 does not
`incorporate by reference the anticipatory subject matter from Morag, the ITC’s finding that
`Perski ’455 anticipates claim 10 of the ’607 patent lacks substantial evidence.” Apple, 725 F.3d
`at 1363. In other words, without Morag, Perski ’455 cannot anticipate claim 10 as a matter of
`law in this case. Because there are no relevant facts that additional proceedings could identify,
`considering this issue on remand is not warranted. See Crown Operations Int’l, Ltd. v. Solutia
`Inc., 289 F.3d 1367, 1375 (Fed. Cir. 2002).
`
`- 12 -
`
`

`
`
`
`Morag, the ITC’s finding that Perski ’455 anticipates claim 10 of the ’607 patent lacks
`
`substantial evidence.” Apple, 725 F.3d at 1363. Thus, as in Exxon with respect to the issue of
`
`literal infringement, “[t]he exclusion of an explicit remand” on anticipation of claim 10
`
`“prohibit[s] the [Commission] from granting a new trial on that issue.” Exxon, 137 F.3d at 1484.
`
`Finally, there can be no prejudice to Motorola in foreclosing a do-over on the anticipatio