Article by Flora M. Amwayi*
In Microsoft Corp. v. International Trade Commission, Nos. 12-1445, -1535 (Fed. Cir. Oct. 3, 2013), the Federal Circuit affirmed-in-part, reversed-in-part, and remanded the ITC's finding of no violation of section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337. In particular, the Federal Circuit affirmed the ITC's findings that Motorola Mobility, Inc. ("Motorola") did not infringe one of the asserted patents and that Microsoft Corporation ("Microsoft") failed to prove domestic industry for products protected by two other patents. Regarding the fourth asserted patent, the Federal Circuit partly reversed the ITC's finding of infringement based on its determination that the ITC incorrectly construed certain claims.
Microsoft initiated an ITC investigation against Motorola, alleging that Motorola's mobile phones and tablets infringed four Microsoft patents relating to mobile devices. U.S. Patent No. 6,578,054 ("the '054 patent") discloses a system and method for synchronizing copies of a data resource in a client-server environment, where any of several clients may make changes to its copy of that resource even when not connected to the server. U.S. Patent No. 7,644,376 ("the '376 patent") relates to a mechanism for notifying application programs about changes to the state of certain mobile-device components of relevance to those applications. U.S. Patent No. 6,826,762 ("the '762 patent") generally discloses a radio interface layer between radio hardware and software applications in a cell phone. U.S. Patent No. 5,664,133 ("the '133 patent") relates to a computer system having a graphical user interface that presents a set of representations corresponding to actual computer resources and offers "context sensitive" menus for user interactions.
The ALJ found that Motorola's accused products did not infringe any of the asserted claims, and that Microsoft had failed to prove the existence of a domestic industry. Specifically, the ALJ concluded that Microsoft had failed to prove that the mobile devices on which it relied to show domestic industry actually implemented the '054, '762, and '376 patents. The ITC upheld the ALJ's domestic-industry determination and adopted the ALJ's noninfringement findings. Microsoft appealed.
On appeal, the Federal Circuit affirmed the ITC's finding of noninfringement of the '054 patent, finding no error in the construction of the claim term "resource state information" as requiring some information that allows the server or client to determine which copy of the resource is the most recent.
"A company seeking section 337 protection must therefore provide evidence that its substantial domestic investment—e.g., in research and development—relates to an actual article that practices the patent, regardless of whether or not that article is manufactured domestically or abroad." Slip op. at 11 (citing InterDigital Commc'ns v. Int'l Trade Comm'n, 707 F.3d 1295, 1299, 1304 (Fed. Cir. 2013)).
The Court also affirmed the ITC's determination that Microsoft failed to prove the existence of a domestic industry for products protected by the '376 patent. The Court reasoned that while there was no question about the substantiality of Microsoft's investment in its operating system or about the importance of that operating system to mobile phones on which it runs, that was not enough under the statute. The Court stated, "Section 337, though not requiring that an article protected by the patent be produced in the United States, unmistakably requires that the domestic company's substantial investments relate to actual 'articles protected by the patent.'" Slip op. at 11 (quoting 19 U.S.C. § 1337(a)(2), (3)). The Court further explained that "[a] company seeking section 337 protection must therefore provide evidence that its substantial domestic investment—e.g., in research and development—relates to an actual article that practices the patent, regardless of whether or not that article is manufactured domestically or abroad." Id.(citing InterDigital Commc'ns v. Int'l Trade Comm'n, 707 F.3d 1295, 1299, 1304 (Fed. Cir. 2013)). The Court affirmed the ITC's finding of no violation based on the '762 patent for similar reasons, stating that there was substantial evidence to support the determination that Microsoft failed to meet the domestic-industry requirement because it did not offer sufficient evidence to prove that any third-party mobile device implements a hardware-dependent driver layer as required by the '762 patent.
Regarding the '133 patent, the Court concluded that the ITC relied on an improper claim construction from the ALJ. Specifically, the Court explained that the noninfringement finding "rested entirely on incorrectly imposing . . . extraneous restrictions." Id. at 21. The Court reversed the noninfringement finding as to the main group of accused products, where no alternative grounds were advanced to support the noninfringement finding. The Court remanded the noninfringement finding as to the alternative design products, where the ITC rejected direct infringement and did not reach the additional requirements for indirect infringement. The Court stated that, on remand, the ITC should also address "the effect of infringement findings—direct infringement already established, indirect infringement possibly to be found on remand—on whether there is a section 337 violation and what remedy is appropriate . . . ." Id. at 23.
Judges: Rader, Prost, Taranto (author)
[Appealed from ITC]
*Flora M. Amwayi is a Law Clerk at Finnegan.
This article previously appeared in Last Month at the Federal Circuit, November 2013.
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