03/30/2014

Motorola Mobility, LLC v. ITC: No Infringement or Domestic Industry Because Claim Requires Using Same Change for Two Actions


Category: ITC   
 
 
 
By: Samuel Dillon, Contributor   
 
TitleMotorola Mobility, LLC v. ITC, No. 2012-1666 (Fed. Cir. Jan. 10, 2014) (non-precedential).
Issues[Whether the] Commission [was supported by substantial evidence when it] found that [1] the accused mobile devices imported and sold by Apple did not infringe claim 12 of Motorola’s U.S. Patent No. 6,272,333 (“’333 patent”) and that [2] Motorola failed to establish the technical prong of the domestic industry requirement.
Motorola at *2-3 (text added).
Holdings
[1] Motorola’s [infringement] argument fails because Motorola has not identified a single change in accessibility in the accused Apple devices that causes both an update to the application registry and a communication of the change in accessibility to the fixed portion of the wireless network as required by the asserted claim.
Id. at *7 (text added).
[2] Motorola’s Droid 2 ha[s] the same relevant features as the corresponding operations on the accused Apple devices. As with infringement, Motorola’s arguments [are] inconsistent with the claim’s requirements that there be at least one change that alone triggers both an update to the application registry and for that specific change to be communicated to the fixed portion of the network.
Id. at * 10-11 (footnotes removed, text added).
 
 

Procedural History
Motorola Mobility LLC (“Motorola”) [argued before] the International Trade Commission[ that] Apple Inc. (“Apple”) [violated] § 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 [because] accused mobile devices imported and sold by Apple [were alleged to] infringe claim 12 of Motorola’s U.S. Patent No. 6,272,333 (“’333 patent”).
Motorola at *2 (text added).
The Administrative Law Judge (ALJ) issued an initial determination (ID) . . . rejecting Motorola’s position . . . . The Commission affirmed the ALJ’s ID finding of no violation of section 337, but did so based on “modified reasoning.” The Commission’s modified reasoning relied on two grounds for finding non-infringement of claim 12 and also concluded that Motorola had not satisfied its burden of demonstrating that its Droid 2 product satisfied the technical prong of the domestic industry requirement. Motorola appeals the non-infringement and technical-prong findings by the Commission.
Id. at *5.
 
 
 
Legal Reasoning (Prost, Bryson, Reyna)
Background
Claim 12The present appeal involves only claim 12 from the ’333 patent. That claim recites: 12. A subscriber unit in a wireless communication system for controlling a delivery of data from a fixed portion of the wireless communication system, the subscriber unit comprising: . . . a processing system . . . programmed to: . . . in response to a change in accessibility of an application, update the application registry; and control the transmitter to communicate the change to the fixed portion of the wireless communication system.
Motorola at *4-5.
[1] Non-infringement
Claim Interpretation of "a change in accessibility"The parties’ infringement dispute involves the construction of the claim limitations that require the “subscriber unit” be “programmed to . . . , in response to a change in accessibility of an application, update the application registry; and control the transmitter to communicate the change to the fixed portion of the wireless communication system.” . . . [T]he dispositive claim construction issue concerns the correlation between “a change in accessibility” and what must be programmed to occur in response to “a change in accessibility.”
Motorola at *6 (text added).
Claim 12 Requires a Single Change that both Updates Registry and is CommunicatedMotorola’s infringement theory necessarily relies on two changes in accessibility that occur on the accused devices—one change associated with deletion of a push-enabled application and a different change in accessibility regarding cancellation of push notifications. This theory is not consistent with the claim’s limitations. . . . which require[] that the registry be updated in response to “a” change in accessibility and that the transmitter communicate “the” change in accessibility, i.e., the change that resulted in updating the registry. Motorola’s argument fails because Motorola has not identified a single change in accessibility in the accused Apple devices that causes both an update to the application registry and a communication of the change in accessibility to the fixed portion of the wireless network as required by the asserted claim.
Id. at *7.
Apple's Device Includes Two Distinct ChangesThe parties do not materially dispute the relevant operation of the accused functions of Apple’s mobile devices. In short, these functions include two distinct changes in accessibility: (1) the change in accessibility associated with the installation or deletion of an application and (2) the change in accessibility associated with authorizing or cancelling push notifications. These different changes in accessibility trigger different responses on the accused devices. When an application is installed or deleted on the accused devices, the application is added to or removed from the list of applications currently installed on the device, but there is no communication to the fixed portion of the wireless network regarding the act of installation or deletion. When a user . . . cancels authorization of push notifications, the accused devices send a communication to the fixed portion of the network communicating the cancellation but there is no update to the list of applications.
Id. at 9-10 (footnotes removed).
[2] Domestic Industry
Domestic Industry's Technical ProngThe test for the technical prong is essentially the same as that for infringement, i.e., a comparison of the alleged domestic product against the asserted claims.
Motorola at * 10.
Motorola's Device Also Includes Two Distinct ChangesMotorola relied on its Droid 2 product and argued that it practices all elements of claim 12. . . . The installation and deletion of applications and the registering and unregistering for push notifications on Motorola’s Droid 2 have the same relevant features as the corresponding operations on the accused Apple devices. As with infringement, Motorola’s arguments in satisfaction of the technical prong rely on two distinct changes in accessibility to satisfy the limitations of claim 12. But, this is inconsistent with the claim’s requirements that there be at least one change that alone triggers both an update to the application registry and for that specific change to be communicated to the fixed portion of the network. As such, there was substantial evidence to support the Commission’s finding that Motorola failed to satisfy the technical prong of the domestic industry requirement.
Id. at * 10-11 (footnotes removed).
Conclusion
We have considered the parties’ other arguments, but they do not affect the outcome of our decision. We therefore affirm the Commission’s determination that Apple did not violate § 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, in connection with Motorola’s ’333 patent. Motorola at *11.
 
 
 
 
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