On February 19, 2013, the International Trade Commission (“the Commission”) issued a notice in Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof (Inv. No. 337-TA-745). In the notice, the Commission determined to review in part ALJ Thomas B. Pender’s remand initial determination (“Remand ID”) finding no violation of Section 337.
By way of background, the Investigation is based on a Complaint filed by Motorola Mobility, Inc. (“Motorola”) against Respondent Apple Inc. (“Apple”). On May 16, 2012, ALJ Pender issued the public version of an initial determination (“ID”) finding a violation of Section 337 as to U.S. Patent No. 6,246,697, but no violation of Section 337 with respect to U.S. Patent Nos. 6,272,333, 6,246,862 (the ‘862 patent), and 5,636,223. See our May 31, 2012 post for more details on the ID. On September 17, 2012, the Commission issued the public version of its opinion affirming-in-part, reversing-in-part, and remanding-in-part the findings in the ID. Specifically, the Commission remanded the case to the ALJ with respect to the ‘862 patent. See our September 20, 2012 post for more details on the Commission’s decision. On December 18, 2012, ALJ Pender issued his Remand ID, finding no violation of Section 337 as to the ‘862 patent. In particular, the ALJ determined that although claim 1 of the ‘862 patent was infringed by the accused products, it was invalid as anticipated by U.S. Patent No. 6,052,464 to Harris (“Harris”). The ALJ further found that claim 1 was not invalid for obviousness in light of Harris in combination with the knowledge of one of ordinary skill in the art or in combination with U.S. Patent No. 5,894,298 to Hoeksma (“Hoeksma”). See our January 2, 2013 post for more details on the Remand ID. On January 7, 2013, Motorola filed a petition for review of certain aspects of the Remand ID’s findings and Apple filed a petition for review of certain aspects of the original ID’s findings. Each party submitted responses to the other’s petition.
After examining the Remand ID, the petitions for review, and the responses, the Commission determined to review the Remand ID in-part. Specifically, the Commission determined to review the Remand ID’s construction of the limitation “touch sensitive input device,” its finding that the accused products literally infringe claim 1 of the ‘862 patent, its finding that Harris anticipates claim 1 of the ‘862 patent, and finally its finding regarding non-obviousness. The Commission asked the parties to brief their positions on these issues. The Commission indicated to the parties that it was particularly interested in whether the evidence in the record supported a finding that claim 1 of the ‘862 patent was obvious in view of Harris in combination with the knowledge of one of ordinary skill in the art or Hoeksma where the evidence demonstrated that the existence of portable communication devices using “touch sensitive input devices,” including touch screens, were known in the art prior to the filing of the application leading to the ‘862 patent and were disclosed in Hoeksma. The Commission asked that the parties refer to the teachings of the references, the knowledge of one of ordinary skill in the art at the time of filing, the evidence in the record regarding the motivations to combine, and whether any secondary considerations would prevent a finding of obviousness.