On February 19, 2014, ALJ Theodore R. Essex issued  the public versions of Orders No. 94 and 95 (both dated February 4, 2014) inCertain Wireless Devices With 3G And/Or 4G Capabilities And Components Thereof (Inv. No. 337-TA-868).

According to Order No. 94, Complainants InterDigital Communications, Inc., InterDigital Technology Corporation, IPR Licensing, Inc., and InterDigital Holdings, Inc. (collectively, “InterDigital”) filed a motion for summary determination that U.S. Patent No. 7,941,151 (the ‘151 patent) is not unenforceable based on inequitable conduct of the inventors or prosecuting law firm.  InterDigital also sought an order, if the motion were denied, specifying that all facts are without substantial controversy and therefore deemed established.  Respondents Samsung Electronics C. Ltd., Samsung Telecommunications America, LLC, ZTE Corporation, ZTE (USA), Inc., Huawei Technologies Co., Ltd., Huawei Device USA, INc., Future Wei Technologies, Inc., Nokia Corporation, and Nokia, Inc. (collectively, “Respondents”) filed an opposition.

By way of background, Respondents originally asserted that the ‘151 patent was unenforceable due the failure to disclose six references to the U.S. Patent and Trademark Office (“USPTO”).  In opposition to this motion, Respondents conceded that they only intended to pursue allegations of inequitable conduct regarding one of the originally disclosed references (the Siemens Reference).  Thus, ALJ Essex only considered arguments regarding the Siemens reference as the others had been withdrawn. 

InterDigital argued that there was no evidence that the inventors or prosecuting attorneys withheld the Siemens Reference with the specific intent of deceiving the USPTO.  InterDigital stated that the failure to disclose the Siemens Reference was the result of a clerical mistake and that the Respondents had failed to present evidence that withholding the reference was a deliberate decision. 

Respondents argued that the degree of materiality of the reference is relevant to the issue of intent as the Siemens Reference is extremely material, as recognized by the inventors themselves.  Respondents also argued that an inference of intent to deceive the USPTO could be drawn from the named inventors’ failure to question the omission of the Siemens Reference from the information disclosure statement submitted during prosecution, despite knowing of its materiality.  Respondents further argued that the inventors were motivated to deceive the USPTO, that the prosecuting attorneys acted with the intent to deceive the USPTO, and that InterDigital’s story is not credible. 

ALJ Essex found that this motion presented a close case as to whether summary determination should be granted.  However, ALJ Essex found that there were disputed issues of fact that precluded a grant of summary determination.  ALJ Essex also noted that while he would allow the allegation to proceed to the hearing, the standard for finding inequitable conduct based on the failure to disclose a reference is high, and that when based on inferences drawn from circumstantial evidence, specific intent to deceive the USPTO must be the single most reasonable inference able to be drawn from the evidence to meet the clear and convincing standard required to show inequitable conduct.  Accordingly, ALJ Essex denied the motion. 

According to Order No. 95, InterDigital filed a motion for summary determination that the accused devices of Respondents Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC, ZTE Corporation, ZTE (USA), Inc., Huawei Technologies Co., Ltd., Huawei Device USA, Inc., Future Wei Technologies, Inc. (collectively “Subset of Respondents”) infringe the “successively transmits/transmitted” signals limitations of the asserted claims of U.S. Patent Nos. 7,190,966 (the ‘966 patent) and 7,286,847 (the ‘847 patent).

InterDigital argued that the Federal Circuit has implicitly construed the “signal” term in this limitation in the appeal of the 337-TA-613 Investigation.  InterDigital further argued that although the Federal Circuit did not explicitly construe “signal,” the briefings of the parties and the Commission before the Federal Circuit, as well as the Federal Circuit’s decision establish that the construction of “code” applies to the term “signal.”  In the 337-TA-613 appeal, the Federal Circuit construed the term “code” to mean “a sequence of bits if the ones and zeros are transmitted at the ‘data rate’) or chips (if the ones and zeros are transmitted at the faster ‘chip rate’).”  Therefore, InterDigital asserted that under the Federal Circuit’s construction, there is no genuine dispute that the accused devices infringe the “successively transmits signals” limitation in the asserted claims of the ‘966 and ‘847 patents.
 
Respondents argued that the InterDigital’s motion was procedurally improper because it raised new claim constructions and theories not properly disclosed under the procedural schedule.  Additionally, Respondents argued that the Federal Circuit did not implicitly construe the term and that if it did, stare decisis would not apply to the implicit definition not expressly before the court.  Respondents further argued that even if InterDigital’s claim construction theory was adopted, there were still factual questions remaining. 

ALJ Essex found that summary determination of infringement of the “successively transmits” limitation was not appropriate because the Respondents had identified a number of disputed issues of material fact as to whether their products met the disputed limitation under InterDigital’s proposed construction.  Accordingly, ALJ Essex denied the motion.