UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
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`Inv. No. 337-TA-750 (Remand)
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`OFFICE OF UNFAIR IMPORT INVESTIGATIONS’ RESPONSE COMMENTS
`REGARDING FURTHER PROCEEDINGS TO BE CONDUCTED ON REMAND
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`The Office of Unfair Import Investigations (“OUII”) hereby respectfully submits its
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`In the Matter of
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`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
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`response to Apple and Motorola’s comments regarding further proceedings in this investigation
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`according to the Commission’s January 8, 2014 Order, which required the parties to submit
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`responsive comments within five business days of service of the initial comments. See Comm’n
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`Order at 4 (Jan. 8, 2014).
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`Apple argues that the scope of this investigation on remand should be confined to the two
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`issues explicitly remanded by the Federal Circuit; whether claim 10 of U.S. Patent No. 7,663,607
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`(the “’607 patent”) would have been obvious to one of skill in the art at the time of invention and
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`whether U.S. Patent No. 7,812,828 (the “’828 patent”) is infringed under the correct (i.e.,
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`Apple’s) claim construction. See Apple Comments at p. 1. Motorola argues that the
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`Commission should consider three additional issues, namely: (1) whether Apple practices claim
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`10 of the ‘607 patent such that Apple has satisfied the technical prong of the domestic industry
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`requirement; (2) whether Apple can establish a priority date for the ‘607 patent with the existing
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`record evidence of conception and reduction to practice that predates the ‘455 Perski patent such
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`that Perski does not anticipate claim 10 of the ‘607 patent; and (3) whether the ’828 patent was
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`anticipated by the Bisset patent. See Motorola Comments at pp. 2-3, 5.
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` First, OUII agrees with Motorola that to the extent the issue of whether Apple practices
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`claim 10 of the ‘607 patent was not already implicitly decided by the Federal Circuit as part of its
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`discussion of the nexus requirement for secondary considerations of nonobviousness, this issue is
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`properly part of the remand. The ALJ determined that Apple practices claim 1 of the ‘607
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`patent, and then stated that analyses of whether Apple practices the other claims, including claim
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`10, “have been deemed superfluous and immaterial.” See ID at *120. Now, after the appeal,
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`claim 10 is the only claim of the ‘607 patent that Apple has alleged it practices, which remains
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`valid. Thus, in order for Apple to establish it has a domestic industry in the ‘607 patent, it must
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`prove it practices claim 10. See Certain Ground Fault Circuit Interrupters and Products
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`Containing Same, 337-TA-739, Comm’n Opn., 2012 WL 2394435, *46 (June 8, 2012) (“the
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`patentee must establish by a preponderance of the evidence that the domestic product practices
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`one or more valid claims of the patent, either literally or under the doctrine of equivalents”).
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`However, neither the ALJ, nor the Commission, nor the Federal Circuit has explicitly reached
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`the issue of whether claim 10 is practiced by Apple.1
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`Motorola petitioned for review, seeking a determination by the Commission that Apple
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`does not practice claim 10. See Motorola Petition at pp. 50-54 (section entitled “Apple Did Not
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`Prove That The iPhone 4 Practices Claim 10”). Motorola did not appeal this issue, nor in OUII’s
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`view was it required to, in order to preserve the issue on remand. As the prevailing party,
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`1 OUII notes that Motorola seeks to address this issue on remand, presumably to show that Apple
`has not satisfied the technical prong of the domestic industry requirement. See Motorola
`Comments at p. 2. Apple does not deny that it was found to have a domestic industry solely by
`practicing (now invalid) claim 1, but nonetheless takes the position that the issue of domestic
`industry has been resolved in its favor. See Apple Comments at pp. 4-5. The Federal Circuit
`held that “Apple also presented evidence showing a nexus between the undisputed commercial
`success of the iPhone and the patented multitouch functionality... .” See Apple 725 F.3d 1366.
`Because commercial success and the technical prong of domestic industry are conceptually
`related, OUII is of the view that the Federal Circuit, at least implicitly, has decided the viability
`of the technical prong of the domestic industry requirement with respect to claim 10.
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`Motorola was not required to raise alternate grounds for affirmance, nor was it required to cross-
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`appeal because, analogously to the appellee in Laitram, “there were no rulings on the merits
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`against its motions, but merely denials ‘as moot’.” See Laitram Corp. v. NEC Corp., 115 F.3d
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`947, 954 (Fed. Cir. 1997) (“[a]ppellees do not select the issues to be appealed.”); see also Krupp
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`Int’l v. U.S. Int’l Trade Comm’n, 626 F.2d 844, 845-46 (Fed. Cir. 1980) (“Under subsection (c)
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`of section 337, only persons who are ‘adversely affected’ by a final determination of the ITC
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`have standing to appeal to this court. ITC respondents … are not ‘adversely affected’ by a
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`determination that they did not violate section 337.”) (footnote omitted). Thus, Motorola has
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`preserved this issue before the Commission, and to the extent that no determination has explicitly
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`been made by the Commission whether Apple practices claim 10 of the ‘607 patent, such a
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`determination should be made. See 19 U.S.C. 1337(a)(1)(A) and (a)(3).
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`Second, OUII does not agree with Motorola that the Commission should address the issue
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`of whether Apple can establish a priority date for claim 10 of the ‘607 patent that antedates the
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`‘455 Perski prior art patent (“Perski”). See Motorola Comments at pp. 2-4. The ALJ found that
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`Perski anticipates all the claims of the ‘607 patent. See ID at *90-93. Because the ALJ found
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`that Perski was prior art under 35 U.S.C. § 102(e), the ALJ “decline[d] to make any findings on
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`Apple’s date of invention arguments as it would be immaterial given the priority date for Perski
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`‘455.” See id. at *90. That is, the ALJ found that the inventions of the ‘607 patent were
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`described in an application for a patent by another (i.e., Perski) filed in the United States before
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`the invention by the applicant for the ‘607 patent. See id., see also 35 U.S.C. §102(e) (pre-AIA).
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`Consequently, the ALJ determined that it was immaterial to make findings on Apple’s evidence
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`of conception and reduction to practice, which indisputably occurred after the filing of the
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`provisional patent application that led to Perski. See ID at *90. The Commission did not review
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`this portion of the initial determination and, thus, adopted it as its own.
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`While the Federal Circuit agreed with the ALJ and the Commission that Perski
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`anticipates claims 1-7 of the ‘607 patent, the Federal Circuit held that Perski does not anticipate
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`claim 10. See Apple Inc. v. Int’l Trade Comm’n, 725 F.3d 1356, 1363 (Fed. Cir. 2013). (“[t]he
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`ITC’s decision that Perski ‘455 anticipates claims 10, however, lacks substantial evidence”).
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`Specifically, the Federal Circuit ruled that the Commission erred in relying on material in the
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`Perski provisional application that was incorporated by reference from the Morag application.
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`See id. at 1362-63. OUII is of the view that Motorola is correct that no ruling has been made
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`whether Apple’s evidence of conception and reduction to practice is sufficient to antedate Perski.
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`See Motorola Comments at pp. 2-4. Moreover, because the ALJ and the Commission
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`determined that Perksi anticipated all the claims of the ‘607 patent, Motorola was the prevailing
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`party and had no obligation to seek appellate review of the ALJ’s dismissal of Apple’s evidence
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`of antedating conception and reduction to practice as an alternate ground of affirmance. See
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`Laitram Corp., 115 F.3d at 954. Yet, in OUII’s view, the specific issue of whether Apple’s
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`evidence of conception and reduction to practice can antedate Perski cannot be addressed on
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`remand under the mandate rule because the Federal Circuit has already decided the larger issue
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`of whether Perski anticipated claim 10. See Apple, 725 F.3d at 1363.
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`While the grounds on which Motorola seeks to revisit this ruling are different that those
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`addressed by the Federal Circuit, the mandate rule, which is a part of the law-of-the-case
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`doctrine, prevents the issue of whether Perski anticipates claim 10 from being re-litigated. See
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`Banks v. U.S., No. 2012-5067, --F.3d --, 2014 WL 292403 at *5 (Fed. Cir. Jan. 28, 2014)
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`(“[o]nce a question has been considered and decided by an appellate court, the issue may not be
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`reconsidered at any subsequent stage of the litigation, save on appeal. … Under the mandate rule,
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`a court below must adhere to a matter decided in a prior appeal unless one of three ‘exceptional
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`circumstances’ exist: (1) subsequent evidence presented at trial was substantially different from
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`the original evidence; (2) controlling authority has since made a contrary and applicable decision
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`of the law; or (3) the decision was clearly erroneous ‘and would work a manifest injustice.’ …
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`This rule is limited to issues ‘actually decided, either explicitly or by necessary implication’ in
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`the previous litigation.”) (internal citations omitted). In OUII’s view, none of these exceptional
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`circumstances exist. Thus, because the question of whether Perski anticipates claim 10 has been
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`decided by the Federal Circuit, albeit on different grounds than Motorola seeks to address now, it
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`cannot be within the scope of the remand.
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`Third, OUII agrees with Motorola that the issue of whether the Bisset patent anticipates
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`the ‘828 patent should be part of the scope of this investigation on remand. See Motorola
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`Comments at pp. 5-6. At the hearing, Motorola only argued that the Bisset patent anticipated the
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`‘828 patent under Apple’s claim construction of “mathematically fitting an ellipse.” See ID at
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`*88. Because the ALJ rejected Apple’s construction of this term, the ALJ did not make a
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`determination whether Bisset anticipated the claims of the ‘828 patent under Apple’s
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`construction. See id. Motorola filed a contingent petition for review on this issue, but the
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`Commission did not review this portion of the initial determination. See Motorola Petition for
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`Review at p. 16. As discussed previously, Motorola did not have grounds to appeal the
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`Commission’s ruling. See Laitram Corp., 115 F.3d at 954; see also Krupp Int’l, 626 F.2d at 845-
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`46. Now, the Federal Circuit has adopted Apple’s construction. See Apple, 725 F.3d at 1367-68.
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`But neither the Commission nor the Federal Circuit has ruled on whether Bisset anticipates the
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`claims of the ‘828 patent under Apple’s (or any) claim construction. To the extent that Motorola
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`was required to preserve this issue in its contingent petition for review, it has done so, and OUII
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`is of the view that whether Bisset anticipates the asserted claims of the ‘828 patent should be
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`addressed on remand.
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`In sum, OUII respectfully submits that four issues should be addressed during the remand
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`of this investigation: (1) whether claim 10 of the ‘607 patent would have been obvious; (2)
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`whether an explicit determination is needed that Apple practices claim 10 of the ‘607 patent such
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`that Apple has satisfied the technical prong of the domestic industry requirement; (3) whether
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`claims 1, 2,10, 11, 24-26 and 29 of the ’828 patent are infringed; and (4) whether the asserted
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`claims of the ’828 patent were anticipated by the Bisset patent.
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`Respectfully submitted,
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`/s/ Lisa M. Kattan
`Margaret D. Macdonald, Director
`Anne Goalwin, Supervisory Attorney
`Lisa M. Kattan, Investigative Attorney
`OFFICE OF UNFAIR IMPORT INVESTIGATIONS
`U.S. International Trade Commission
`500 E Street SW, Suite 401
`Washington, DC 20436
`202-205-2058
`202-205-2158 (facsimile)
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`January 29, 2014
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`Certain Mobile Devices and Related Software
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`Inv. No. 337-TA-750
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on January 29, 2014, she caused the foregoing OFFICE
`OF UNFAIR IMPORT INVESTIGATIONS’ RESPONSE TO COMMENTS
`REGARDING FURTHER PROCEEDINGS TO BE CONDUCTED ON REMAND to be
`filed with the Commission, served by hand upon Administrative Law Judge Theodore R. Essex
`(2 copies plus .pdf and .docx copies to Tamara.Foley@usitc.gov), and served upon the parties via
`email:
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`On behalf of Complainant Apple Inc.:
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`Brian E. Ferguson, Esq.
`Weil, Gotshall & Manges LLP
`1300 Eye Street
`Washington, D.C. 20005
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`Apple.moto.750@weil.com
`Weil_TLG.Apple.Moto.750.external@weil.com
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`On behalf of Respondent Motorola Mobility, Inc.:
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`Charles K. Verhoeven, Esq.
`Quinn Emanuel Urquhart & Sullivan LLP
`50 California Street. 22nd Floor
`San Francisco, CA 94111
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`Moto-Apple-750@quinnemanuel.com
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`Charles F. Schill, Esq.
`Steptoe & Johnson LLP
`1330 Connecticut Ave, NW
`Washington, DC 20036
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`Motorola750@steptoe.com
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`/s/ Lisa M. Kattan
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, S.W.
`Washington, D.C. 20436
`202.205.2058
`202.205.2158 (Facsimile)