On October 11, 2012, ALJ Gildea issued Order No. 57, denying (i) Complainant Unwired Planet’s (formerly Openwave Systems, Inc.) motion to stay the procedural schedule pending resolution of Complainant’s concurrently filed acknowledgement that under ALJ Gildea’s claim constructions, Respondents do not infringe the asserted patents remaining in the investigation, and (ii) a joint request by the parties for an initial determination of no violation and termination of the investigation in Certain Devices for Mobile Data Communication (Inv. No. 337-TA-809).  ALJ Gildea then issued Order No. 60 on October 12, 2012, granting Complainant’s unopposed motion to terminate the Investigation based on the withdrawal of its complaint.

By way of Background, Complainant alleged that Apple Inc. (“Apple”) and Research In Motion Ltd. and Research In Motion Corp. (the latter two parties, collectively, “RIM”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain devices for mobile data communication that infringe U.S. Patent Nos. 6,233,608 (the ‘608 patent), 6,289,212 (the ‘212 patent), 6,405,037 (the ‘037 patent), 6,430,409 (the ‘409 patent), and 6,625,447 (the ‘447 patent) (collectively, the “asserted patents”).  See our September 1, 2011 post for more information.  On March 22, 2012, the ALJ issued Order No. 23, which granted Complainant’s unopposed motion to terminate the investigation as to the ‘212 patent.

According to Order No. 57, the parties jointly requested the ALJ to cancel the evidentiary hearing in this matter and issue an initial determination of no violation terminating the investigation, because with respect to the remaining asserted patents, there was a pending motion to terminate the investigation as to the ‘608 patent, and the Complainant acknowledged that Respondents do not infringe the ‘037, ‘409, and ‘447 patents under the ALJ’s claim constructions.

ALJ Gildea responded that the Notice of Investigation ordered the investigation to determine not only matters of infringement, but also whether an industry exists or is in the process of being established in the U.S., and that Respondents raised further issues that remained outstanding, such as the invalidity of certain asserted patents.  ALJ Gildea also stated that Commission rules at 19 C.F.R. § 210.42(d) require the initial determination of an ALJ to include “conclusions and the reasons or bases therefore necessary for the disposition of all material issues of fact, law, or discretion in the record.”  ALJ Gildea accordingly denied the joint requests by the parties and determined that his initial determination should include these other pending issues, in addition to summary determination of noninfringement.  In order to meet the present deadline to issue a final determination by February 6, 2013, ALJ Gildea further determined that the parties must proceed with the evidentiary hearing scheduled to begin October 15, 2012 on all pending issues other than (i) infringement and (ii) the ‘608 patent.

On October 12, 2012, ALJ Gildea issued Order No. 60, granting Unwired Planet’s unopposed motion to terminate the investigation due to the withdrawal of its complaint.  According to the order, Unwired Planet’s motion stated that there were no agreements between the parties concerning the subject of the investigation.  ALJ Gildea also granted Unwired Planet’s request to suspend the procedural schedule of the investigation pending the Commission’s final determination regarding Unwired Planet’s motion.  Accordingly, ALJ Gildea determined to grant Unwired Planet’s motion and terminated this investigation in its entirety based on the withdrawal of its complaint.