In 2010, Microsoft filed a complaint in the International Trade Commission alleging that Motorola had violated Section 337 of the Tariff Act (19 U.S.C. § 1337) by importing mobile phones and tablets that infringe a number of Microsoft’s patents. After an evidentiary hearing, the administrative law judge (ALJ) found that the accused Motorola products did not infringe any of the asserted claims of Microsoft’s U.S. Patent Nos. 6,578,054; 6,826,762; 7,644,376; and 5,664,133. On review, the Commission also found no infringement of those patents.
On appeal to the Federal Circuit, the court affirmed the Commission on three of the patents but reversed in part on the fourth. The Federal Circuit affirmed the finding that Motorola does not infringe the ’054 patent, as well as the finding that Microsoft failed to prove that a domestic industry exists for products protected by the ’762 and ’376 patents. As to the claims of the ’133 patent that are at issue, however, the court held that the Commission relied on incorrect claim constructions in finding no infringement, the only basis for its finding no violation, for the main group of accused products. The Commission’s final determination was therefore partly reversed as to the ’133 patent and remanded for further proceedings.
Regarding the '133 patent, the Federal Circuit concluded that the ALJ's interpretation of the claim language "a menu selection relating to a class of objects” as “a choice or option in a menu based upon or determined by the class of objects to which the selected computer resource belongs” and “a menu selection associated with a container” as “a choice or option in a menu based upon or determined by the environment or context in which the selected computer resource resides” was improper.
The Federal Circuit stated that selecting an object produces a context menu that includes a menu selection associated with the class of objects (for a phone number, add to contacts; or call the number) and another associated with the container (environment or context) in which the object resides (remove from list). The menu selections change depending on the selected object: for example, a menu item about a contact will be to call the contact. Nothing more was deemed required by the claim language or, even, the express construction adopted by the ALJ.
Regarding the limitation of displaying the menu in proximity to the object, the Federal Circuit held that the ALJ’s sole basis for finding the display in proximity requirement not to be met for the main group of products was a notion of “deliberate” positioning that cannot be justified and that no such notion is fairly found in the claim or the agreed-on construction. The court reasoned that the claim does not require a user’s choice about display; it plainly contemplates control of the display by built-in software, making the language of “deliberate” odd. The court further reasoned that the claim speaks only of results, not the details of underlying functions and that unavoidable proximity is still proximity.
Since the Commission’s finding of non-infringement as to certain of the Motorola products was based on these erroneous claim constructions, the Federal Circuit reversed that aspect of the determination.