BakerHostetler Patent Watch: Motorola Mobility LLC v. Int'l Trade Comm'n

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[N]othing in § 337 precludes a complainant from relying on investments or employment directed to significant components, specifically tailored for use in an article protected by the patent.

On December 16, 2013, in Motorola Mobility LLC v. Int'l Trade Comm'n, the U.S. Court of Appeals for the Federal Circuit (Rader,* Prost, Taranto) affirmed the Commission's determination, inter alia, that Motorola violated 19 U.S.C. § 1337 by importing goods that infringed U.S. Patent No. 6,370,566, which related to mobile communication devices, and that the '566 patent was not invalid. The Federal Circuit stated:

The Commission affirmed the finding that the Apple Newton MessagePad did not satisfy the synchronization component limitation, and consequently did not anticipate the asserted claims. [T]he Newton Connection Utilities manual simply states that "[t]he Newton Connection Utilities work with the Newton 2.0 operating system," and that synchronization may be initiated using the Apple Newton MessagePad. However, the manual does not identify what role, if any, the operating system has in the synchronization of the Apple Newton MessagePad and the desktop. While the operating system presumably allowed the MessagePad to operate at all (without which synchronization, or anything else, might have been impossible), substantial evidence supports the Commission's conclusion that Motorola did not present clear and convincing evidence that the operating system necessarily required any additional capacity that would qualify it as a component "to synchronize." Inherency requires more than probabilities or possibilities.

Motorola's obviousness argument fares no better. . . . Motorola did not specifically explain in its briefing to the administrative law judge how the desktop-based PIMs render any particular claim obvious. Neither the administrative law judge, nor the Commission, nor this court has the task of divining an invalidity defense from the record. At all times, the burden of persuasion rests on the party challenging the patent. Here, substantial evidence supports the administrative law judge's conclusion, affirmed by the Commission, that Motorola did not prove by clear and convincing evidence that the asserted claims would have been obvious to one of ordinary skill in the art. . . .

A complainant asserting a patent under § 337 must prove that a domestic industry "relating to the articles protected by the patent" exists or is in the process of being established. For purposes of § 337, a domestic industry exists if there is, "with respect to the articles protected by the patent . . . (A) significant investment in plant and equip¬ment; (B) significant employment of labor or capital; or (C) substantial investment in its exploitation, including engineering, research and development, or licensing.". . . With respect to the domestic industry requirement, both the administrative law judge and the Commission rejected the assertion that Microsoft was relying on separate products for the technical and economic prongs. The Commission affirmed the finding that the operating systems were significant parts of the mobile devices running those operating systems. Further, nothing in § 337 precludes a complainant from relying on investments or employment directed to significant components, specifically tailored for use in an article protected by the patent. The investments or employment must only be "with respect to the articles protected by the patent." An investment directed to a specifically tailored, significant aspect of the article is still directed to the article.