On December 4, 2014, ALJ Theodore R. Essex issued the public version of Order No. 51 (dated November 20, 2014) denying Respondents' motion for summary determination that the accused products do not infringe the asserted claims of U.S. Patent Nos. 7,190,966 (the '966 patent) and 7,286,847 (the '847 patent) in Certain 3G Mobile Handsets and Components Thereof (Inv. No. 337-TA-613).

By way of background, the Commission instituted this investigation on September 11, 2007 based on a complaint filed by InterDigital. The complaint, as amended, alleged violations of Section 337 in the importation and sale of certain 3G mobile handsets and components thereof that infringed certain claims of U.S. Patent Nos. 7,117,004 (the '004 patent), 7,190,966 (the '966 patent), 7,286,847 (the '847 patent), and 6,693,579 (the '579 patent).  The notice of investigation named Nokia Corp. and Nokia, Inc. (collectively, "Nokia") as Respondents. 

On August 14, 2009, former Chief ALJ Paul J. Luckern issued his final Initial Determination ("ID") finding no violation of Section 337 on the grounds that the asserted claims of the patents-in-suit were not invalid and not infringed.  Additionally, the ALJ found that the '004, '966, and '847 patents were not unenforceable due to prosecution laches, and that the '579 patent also was not unenforceable.  See our September 23, 2009 post for more details on the ID.  The Commission reviewed the ID and, on October 16, 2009, issued a notice modifying the ALJ's construction of the term "access signal" in the asserted claims of the '847 and '004 patents and, inter alia, determining not to review the ALJ's construction of the terms "code" and "increased power level" in the asserted claims of the '966 and '847 patents.  See our October 19, 2009 post for more details.

InterDigital appealed the Commission's final determination, specifically regarding the unreviewed constructions of the "code" and "increased power level" limitations.  The Federal Circuit reversed the Commission's construction of these terms, reversed the Commission's determination of non-infringement as to the '966 and '847 patents, and remanded the case to the Commission for further proceedings.  See our August 3, 2012 and January 14, 2013 posts for more details on the Federal Circuit's rulings.  On February 12, 2014, the Commission issued an Order remanding the investigation to Chief ALJ Charles E. Bullock for assignment to a presiding ALJ.  See our February 18, 2014 and April 2, 2014 posts for more details.

According to Order No. 51, Nokia and Microsoft Mobile Oy (collectively, "Respondents") filed a motion for summary determination that its products do not infringe the '966 and the '847 patents based on the Commission's opinion and findings in Inv. No. 337-TA-868 that the Qualcomm chips in that investigation fail to meet the "successively [transmits/transmitted] signals" limitation.  Respondents argued that under the doctrine of issue preclusion ALJ Essex was "compelled" to find that Respondents' products do not infringe the asserted patents as the Qualcomm chips used in its devices in this investigation are the same as the non-infringing chips used in the 337-TA-868 investigation accused products.  Respondents also argued that its products using the other chips at issue did not infringe as they "function in the same relevant way as the Qualcomm chipsets accused of infringing the PRU ["Power Ramp Up"] patents in the [337-TA-868] Investigation."

In response, InterDigital argued that issue preclusion did not apply because the issue resolved in the 337-TA-868 investigation "was whether devices using Qualcomm chipsets met the phrase 'successively transmits signals' construed as 'successively [transmits/transmitted] sequences of chips or bits not modulated by data;" whereas the issue in the current investigation is "whether the accused devices using Qualcomm chipsets meet the 'signal' limitation construed – by the Federal Circuit and the Commission – as 'a sequence of chips' not limited to 'a spreading code or a portion of a spreading code.'"  InterDigital also argued that issue preclusion did not apply to Nokia's products containing the other chipsets at issue.  InterDigital proposed that ALJ Essex stay the investigation pending the 337-TA-800 investigation appeal because the issue on appeal there is highly relevant to Respondents' motion for summary determination here. InterDigital also proposed that if ALJ Essex concluded that the 337-TA-868 construction of "successively transmits" signals applies to the current investigation the right solution would be for ALJ Essex to stay the investigation and revisit summary determination after the Federal Circuit's decision in the 337-TA-800 investigation appeal.

ALJ Essex found that the questions proposed in Respondents' motion were not ripe for summary determination.  First, ALJ Essex noted that there were no findings on the other chips at issue in the 337-TA-800 and 868 investigations.  Additionally, ALJ Essex noted that the other chips at issue met the "signal" claim limitation and that Respondents' motion relating to these chips required that ALJ Essex ignore the Commission's Opinion and specific findings of infringement relating to those chips and only consider it for the findings related to Qualcomm chips.  ALJ Essex further noted that in order to grant Respondents' request, he would have to adopt the Commission's claim constructions from the 337-TA-800 and 868 investigations and that InterDigital was correct in arguing that the issues presented in the current investigation are not identical to those in the 337-TA-800 and 868 investigations and that wholesale adoption of those claim constructions is improper.  While ALJ Essex noted that the conflicting findings regarding claim construction may need to be resolved at some point, he declined to do so on summary determination.  Accordingly, ALJ Essex found that summary determination of issue preclusion was not appropriate.

ALJ Essex further found that InterDigital should be allowed to present evidence as to whether the Qualcomm chips in the currently imported Nokia phones meet the "signal" limitation as construed in the Commission's Opinion because the record regarding the Qualcomm chips in the currently imported products had not yet been developed in the remand proceeding.  Lastly, ALJ Essex rejected InterDigital's proposal to stay the investigation pending the completion of the 337-TA-800 Investigation appeal.  Accordingly, ALJ Essex denied the motion.