On April 30, 2014, the International Trade Commission (the “Commission”) issued a notice terminating the investigation in Certain Mobile Devices, Associated Software, and Components Thereof (Inv. No. 337-TA-744) because the only remaining asserted patent has expired.

By way of background, the Commission instituted this investigation based on a complaint filed by Microsoft Corporation (“Microsoft”) in October 2010 alleging violations of Section 337 by Motorola, Inc. and Motorola Mobility, Inc. (collectively, “Motorola”) in the importation and/or sale of certain mobile devices, associated software, and components thereof that infringe nine Microsoft patents.  The presiding ALJ issued a final Initial Determination on December 20, 2011 finding that Motorola infringed claims 1, 2, 5 and 6 of U.S. Patent No. 6,370,566 (“the ‘566 patent”) only, and the Commission affirmed, issuing a limited exclusion order.  See our June 18, 2012 post for more details regarding the Commission’s opinion.

Microsoft appealed to the Federal Circuit for review of the Commission’s determination of no violation with respect to four asserted patents.  On October 3, 2013, the Federal Circuit affirmed the Commission’s determination as to three of those patents, but remanded consideration of U.S. Patent No. 5,664,133 (“the ‘133 patent”) to the Commission with instructions to apply a different claim construction.  See our October 10, 2013 post for more details regarding the Federal Circuit’s decision.  The Federal Circuit affirmed the Commission’s exclusion order based on infringement of the ‘566 patent.  See our December 24, 2013 post for more details.

The remanded ‘133 patent expired on December 13, 2013.  Motorola moved the Federal Circuit for dismissal of Microsoft’s appeal based on mootness due to the expiration of the ‘133 patent, but the court denied the motion in a non-precedential order, which stated that the decision was not dependent on “whether the Commission can any longer take action on the ‘133 patent or otherwise has any continuing interest in this matter.”  See our January 8, 2014 post for more details.

According to the notice, “[b]ecause the ‘133 patent has expired, the Commission has determined no remedy may issue in this investigation.”  Thus, the investigation was terminated.