On May 18, 2012, the International Trade Commission (the “Commission”) issued a notice finding a violation of Section 337 and issuing a limited exclusion order in Certain Mobile Devices, Associated Software, and Components Thereof (Inv. No. 337-TA-744).

By way of background, the Complainant in this investigation is Microsoft Corporation (“Microsoft”) and the Respondent is Motorola Mobility, Inc. (“Motorola”).  On December 20, 2011, ALJ Theodore R. Essex issued the initial determination (“ID”) finding that a violation of Section 337 occurred in connection with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain mobile devices, associated software, and components thereof by reason of infringement of claims 1, 2, 5, and 6 of U.S. Patent No. 6,370,566 (the ‘566 patent).  ALJ Essex further determined that no such violation of Section 337 had occurred with respect to certain claims of U.S. Patent Nos. 5,758,352 (the ‘352 patent); 6,826,762 (the ‘762 patent); 6,909,910 (the ‘910 patent); 7,644,376 (the ‘376 patent); 5,664,133 (the ‘133 patent); and 6,578,054 (the ‘054 patent).  See our December 21, 2011 post for more details.  Both Microsoft and Motorola filed petitions for review of the ID, as well as responses to the petitions.  The Commission determined to review the ID and a set a schedule for the filing of written submissions on the issues under review and on remedy, the public interest, and bonding.  The private parties submitted their respective briefs and public interest comments were also received from non-parties Association for Competitive Technology, Inc. and Google Inc.

According to the May 18 notice, the Commission determined to “affirm with modifications the ALJ’s determination that Microsoft met the economic prong of the domestic industry requirement with respect to all of the presently asserted patents in this investigation…”  Regarding the technical prong of the domestic industry requirement, the Commission determined to (i) affirm with modifications the ALJ’s finding that Microsoft failed to meet the technical prong for the ‘054 patent; (ii) affirm the ALJ’s finding that Microsoft satisfied the technical prong for the ‘566, ‘133, and ‘910 patents; (iii) reverse the ALJ’s determination that Microsoft failed to meet the technical prong for the ‘352 patent; and (iv) affirm the ALJ’s determination that Microsoft failed to meet the technical prong for the ‘762 and ‘376 patents.  As to validity, the Commission determined to “affirm with modifications the ALJ’s determination that the asserted claims of the ‘566 patent are not invalid due to anticipation or obviousness.”  Lastly, regarding infringement, the Commission determined to (i) reverse the ALJ’s finding that Microsoft failed to carry its burden of showing that Motorola’s accused products infringe the asserted claims of the ‘352 patent, and (ii) affirm the ALJ’s determination that Microsoft failed to show that Motorola induced infringement of each of the ‘054, ‘762, ‘376, ‘133, and ‘910 patents, and to affirm with modifications the ALJ’s determination that Microsoft failed to show that Motorola induced infringement of each of the ‘566 and ‘352 patents. 

Regarding the appropriate form of relief, the Commission determined to issue a limited exclusion order prohibiting the unlicensed entry for consumption of mobile devices, associated software and components thereof covered by claims 1, 2, 5, or 6 of the ‘566 patent.  The order provides an exception for service, repair, or replacement articles for use in servicing, repairing, or replacing mobile devices under warranty or insurance contract.  The Commission also determined that the public interest factors do not preclude issuance of the limited exclusion order. The Commission further determined that a bond of $0.33 per device is required for temporary import of the articles in question during the Presidential review period.  According to the notice, the Commission additionally terminated the investigation.