OT:RR:BSTC:IPR H226615 AAH
Paul F. Brinkman
Quinn Emmanuel Urquhart & Sullivan, LLP
1299 Pennsylvania Avenue NW Suite 825
Washington, DC 20004-2400
RE: U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-744; In the Matter of Certain Mobile Devices, Associated Software, and Components Thereof
Dear Mr. Brinkman:
This is in response to your letter dated May 25, 2012, on behalf of your client Motorola Mobility, Inc. (“Motorola”), seeking a ruling whether certain mobile devices, associated software, and components thereof manufactured or imported by or on behalf of Motorola that contain a redesigned interface to the Microsoft Exchange ActiveSync Protocol are covered by the claims of the patent included in the limited exclusion order issued by the U.S. International Trade Commission (“ITC”) as a result of the above-referenced investigation.
FACTS:
The ITC instituted Inv. No. 337-TA-744 on November 5, 2010, based on a complaint filed by Microsoft Corporation of Redmond, Washington. 75 Fed. Reg. 68379-80 (Nov. 5, 2010). The complaint alleged violations of section 337 of the Tarriff Act of 1930, as amended, 19 U.S.C. § 1337, in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain mobile devices, associated software, and components thereof by reason of infringement of U.S. Patent Nos. 5,579,517 (“the `517 patent”); 5,758,352 (“the `352 patent”); 6,621,746 (“the `746 patent”); 6,826,762 (“the `762 patent”); 6,909,910 (“the `910 patent”); 7,644,376 (“the `376 patent”); 5,664,133 (“the `133 patent”); 6,758,054 (“the `054 patent”); and 6,370,566 (“the `566 patent”). Id. Subsequently, the `517 and the `746 patents were terminated from the investigation. The notice of investigation, as amended, named Motorola Mobility, Inc. of Libertyville, Illinois n/k/a Motorola Mobility LLC and Motorola, Inc. of Schaumburg, Illinois as respondents. Id. Motorola, Inc. n/k/a Motorola Solutions was terminated from the investigation based on the withdrawal of infringement allegations on July 12, 2011. Id.
Subsequently, the presiding Administrative Law Judge’s Final Initial Determination (FID) issued on December 20, 2011. Id. The ALJ found that a violation of section 337 had occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain mobile devices, associated software, and components thereof containing the same by reason of infringement of one or more of claims 1, 2, 5, and 6 of the `566 patent. Id. Both Microsoft, the complainant, and, Motorola, the respondent, filed timely petitions for review of various portions of the FID, as well as timely responses to the petitions. Id.
The ITC determined to review various portions of the FID and issued a notice to that effect dated March 2, 2012. 77 Fed. Reg. 14043 (Mar. 8, 2012). In the notice, the ITC also set a schedule for the filing of written submissions on the issues under review, including certain questions posed by the ITC, and on remedy, the public interest, and bonding. Id. The parties briefed, with initial and reply submissions, the issues under review and the issues of remedy, the public interest, and bonding. Id. Public interest comments were also received from non-parties Association for Competitive Technology, Inc. and Google, Inc. Id.
The ITC determined that the appropriate form of relief was a limited exclusion order prohibiting the unlicensed entry for consumption of mobile devices, associated software, and components thereof covered by claims 1, 2, 5, and 6 of the `566 Patent that are manufactured abroad by or on behalf of, or imported by or on behalf of, Motorola. Id. The exclusion order provides an exception for service repair or replacement articles for use in servicing, repairing, or replacing mobile devices under warranty or insurance contract. Id.
The Accused Products
The Motorola products that were accused of infringing the `566 patent at the ITC were the Motorola Blur Devices and the Google Experience Devices. FID at 24.
The Google Experience Devices incorporate only code written by Google on the Android operating system; these devices do not have additional code layered on by Motorola. At least two products sold by Motorola are classified as a Google Experience Device: the Droid and the Xoom. Of the two, only the Xoom was an accused product at the ITC. Id.
The Motorola Blur Devices (“Blur Devices”), which are also sometimes referred to as Motorola Experience Products, on the other hand, include both code written by Google on the Android operating system and code written by Motorola. FID at 65. Specifically, Blur Devices can be recognized by their “Corporate Sync” account. Id. There are several products sold by Motorola that are classified as Blur Devices, including: Atrix, Backflip, Bravo, Charm, Cliq, Cliq 2, Cliq XT, Defy, Devour, Droid 2, Droid 2 Global, Droid Pro, Droid X, Droid X2, Flipout, Flipside, Spice, Droid Bionic, Citrus, and Droid 2 R2-D2. Id.; see also Ruling Request at 2.
As the Android operating system is common to both the Motorola Blur Devices and the Google Experience Devices, they essentially operate in the same manner. Specifically, with the Calendar Application, there is little difference between the two categories of devices. Whereas the Google Experience Devices utilize the Android Calendar application written exclusively by Google, the Blur Devices use a slightly modified version of the Android Calendar application. However, the functionality of the two is materially the same. Id. at 25.
Motorola did not dispute infringement of the `566 Patent at trial and so the ALJ found that Microsoft had shown by a preponderance of the evidence that the Motorola Blur Devices and Google Experience Devices infringed claims 1, 2, 5, and 6 of the `566 Patent. FID at 65. Motorola’s devices were not found to infringe any of the other patents asserted in the Investigation. FID at 212.
ActiveSync Exchange Protocol
The Motorola Blur Devices utilize the Exchange Protocol described in the “Microsoft Exchange Server 2003; Exchange Mobile Device Synchronization Protocol Reference Specification, Version 2.5.” Id. at 25. This specification is also referred to as the “ActiveSync Exchange Protocol version 2.5,” the “ActiveSync protocol,” or “Exchange Protocol.” The Exchange Protocol defines all communications between client and server, including the communications steps necessary to synchronize resource objects between a mobile device and an Exchange server. Id. It governs how synchronization of emails, tasks, contacts, and calendar events occurs between the server and the client. Id. The implementation of the ActiveSync protocol in the Motorola Blur Devices is known as “Corporate Sync.” Id. at 91.
ISSUE:
The issue presented is whether Motorola’s devices running the modified version of Android 2.3 and exhibiting the specific functionality identified below are covered by the patent claims at issue.
LAW AND ANALYSIS:
Patent infringement determinations for utility patents entail two steps. The first step is to interpret the meaning and scope of the patent claims asserted to be infringed. The second step is to compare the properly construed claims to the accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The first step is a question of law; the second step is a question of fact. See Freedman Seating Co. v. American Seating Company, 420 F.3d 1350, 1357 (Fed. Cir. 2005).
In patent law, there are two types of infringement: direct and indirect infringement. Direct infringement includes two varieties: literal infringement and infringement under the doctrine of equivalents.
Literal infringement is when every limitation recited in a claim is found in the accused device. See Strattec Security Corp. v. General Automotive Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997); see also Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1349 (Fed. Circ. 1998) (“An accused device cannot infringe, as a matter of law, if even a single limitation is not satisfied.”). However, a dependent claim cannot be found to infringe if the independent claim from which it depends is not found to infringe. See Becton Dickinson & Co. v. C.R. Bard Inc., 922 F.2d 792 (Fed. Cir. 1990) (“The holding of noninfringement of claim 1 applies as well to all claims dependent on claim 1.”). One may infringe an independent claim and not infringe a claim dependent on that claim. The reverse is not true. One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim. Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 (Fed. Cir. 1989).
As for the scope of protection provided, it is a “bedrock principle” of patent law that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[W]e look to the words of the claims themselves…to define the scope of the patented invention.”).
Furthermore, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) has made clear that claim terms are given their ordinary and customary meaning, which refers specifically to the ordinary and customary meaning that the claim term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova 381 F.3d at 1116. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002).
The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. See Phillips, 415 F.3d at 1313. Often, this requires an examination of terms that have a particular meaning in a field of art. Id. Since the meaning of a claim term, as understood by persons of skill in the art, is often not immediately apparent, and since patentees frequently act as their own lexicographers, a court or administrative body responsible for making patent infringement determinations should look to sources available to the public that show what a person of skill in the art would have understood a disputed claim term to mean. Id. These sources include, for example, the words of the claims themselves, the remainder of the specification and the prosecution history, along with certain extrinsic evidence in appropriate circumstances. Id.
Importantly, as stated by the Federal Circuit in Vitronics and reaffirmed in Phillips, claims must be read in light of the specification, of which they are a part, since the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Philips, 415 F.3d at 1315 (citing Vitronics, 90 F.3d at 1582); see also Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (“The specification is, thus, the primary basis for construing the claims.”). Accordingly, the Federal Circuit has provided the framework above for interpreting patent claims and reading those claims, as properly construed in light of the relevant evidence, onto an accused device.
As a general matter, the ITC directs its exclusion orders to articles “covered by” the infringed claims of the relevant patents. See Certain Hardware Logic Emulation Systems and Components Thereof, Inv. No. 337-TA-383, Commission Opinion at 16 (Publication 3089, dated March 1998) (“[T]he Commission’s long-standing practice is to direct its remedial orders to all products covered by the patent claims as to which a violation has been found, rather than limiting its orders to only those specific models selected for the infringement analysis.”).
Pursuant to the Tariff Act of 1930, the ITC has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused products are found to be infringing. See 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d), (f). Specifically, 19 U.S.C. § 1337(d) provides the Commission authority to direct the exclusion from entry of articles found to be infringing. Moreover, when the Commission determines that there has been a violation of section 337, it may issue two types of exclusion orders: a limited exclusion order and/or a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007); see also Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Commission Opinion (October 19, 2007).
Both types of orders direct CBP to bar the infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed Cir. 2008). A limited exclusion order is “limited in that it only applies to the specific parties before the Commission in the investigation. Id. In contrast, a general exclusion order bars importation of the infringing products by everyone, regardless of whether they were respondents in the Commission’s investigation. Id. A general exclusion order is appropriate if two exceptional circumstances apply. See Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see also Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”). Additionally, a seizure and forfeiture order issued under 19 U.S.C. § 1337(i) directs CBP to seize and forfeit articles imported in violation of an exclusion order when the importer previously had articles denied entry and received notice that seizure and forfeiture would result from any future attempt to import covered articles.
The limited exclusion order issued in ITC Inv. No. 337-TA-744 specifically applies to articles manufactured or imported by Motorola that are covered by claim 1 of the `566 patent. Significantly, the U.S. Court of Appeals for Federal Circuit (“CAFC”) has recognized that issuance of a general exclusion order by the ITC binds named parties and non-named parties alike and shifts to would-be importers, “as a condition of entry, the burden of establishing noninfringement.” Hyundai Electronics Industries Co. v. U.S. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). The CAFC also confirmed that such a rational applies with “increased force” to parties named in an investigation that resulted in the issuance of an exclusion order. Id. Accordingly, the burden is on Motorola to establish that the devices at issue are not covered by claim 1 of the `566 patent.
CLAIM 1 OF U.S. PATENT NO. 6,370,566
The `566 patent is entitled “Generating Meeting Requests and Group Scheduling From a Mobile Device” and, as the title suggests, the patent is directed to generating meeting requests from mobile devices and provides for synchronizing calendar objects on the mobile device with a user’s remote calendar application, located on, for example, a desktop or laptop computer. Claim 1 of the `566 patent, the only independent claim asserted by Microsoft, claims:
A mobile device, comprising:
An object store;
An application program configured to maintain objects on the object store;
A user input mechanism configured to receive user input information;
A synchronization component configured to synchronize individual objects stored on the object store with remote objects stored on a remote object store;
A communications component configured to communicate with a remote device containing the remote object store; and
Wherein the application program is further configured to generate a meeting object and an electronic mail scheduling request object based on the user input information.
Thus, according to claim 1, the software on the mobile devices must be configured to generate both a “meeting object” and an “electronic mail scheduling request object.” The “meeting object” is a calendar event that appears on a user’s calendar application. The “electronic mail scheduling request object” is an email that is sent to people invited to attend the meeting which includes information about the meeting (e.g. date, time, and location). Moreover, the mobile device must have the ability to synchronize calendar objects between the mobile device and a remote object store, such as a desktop or laptop computer.
Specifically, Motorola has modified the Android operating system and alleges that these modifications avoid infringement because they do not satisfy element (f) in the claim language above. Motorola claims to have eliminated the generation of an electronic mail scheduling request object based on the user input information. See Ruling Request at 3.
Moreover, Motorola has redesigned all of the products utilizing Android version 2.3 (aka “Gingerbread”).
Removal Of Ability To Generate Meeting Requests. The redesigned products contain a modified version of Motorola’s calendar application – the software that allows a user to generate a meeting request that is then sent to invitees using the Exchange ActiveSync protocols and an Exchange server. The modified Calendar application in the redesigned products does not allow a user to generate meeting requests. This modification was accomplished by removing the field that permits a user to add invitees when generating a calendar event. As depicted in the screenshots below, unlike the original implementation on Motorola’s products at issue before the ITC, the redesigned products do not contain “Who” or “Optional attendees” fields when using the Exchange ActiveSync protocol (right), making it impossible to generate a meeting request:
Motorola’s Products At The ITC Motorola’s Re-Designed Products
Removal of Ability to Edit Meeting Requests. In addition, Motorola has removed the ability to edit meeting requests when using the Exchange ActiveSync protocols on the redesigned products. In the products at the ITC, a user can modify calendar events that the user previously generated either on the device itself or on a remote desktop or laptop computer. This is done by selecting the calendar event and performing a “long press” on the icon to generate a context menu. As shown below and in the screenshot to the left, among the options presented in the context menu is an “Edit event” option that allows a user to make changes to the calendar event that will then get sent to the invitees, if they are included in the “Who” or “Optional attendees” field. Once again, this ability to edit a calendar event has been removed from the Re-Designed Products. As shown in the screenshot on the right, when a user performs a “long press” on a calendar event, the context menu only permits a user to “View event” or to create a “New event”. In the Re-Design products, there is no option to “Edit event”:
Motorola’s Products at the ITC Motorola’s Re-Designed Products
Removal Of The “Share” Feature. Finally, Motorola’s redesigned products have removed a “share” feature that allowed users to attach a calendar event (meeting object) to an email and forward that email to invitees. Thus, users of the redesigned products are unable to send any calendar events from the mobile device to third parties via email. As shown in the screenshots below, the “share” feature in the products at the ITC (left) is completely removed from the redesigned products (right):
Motorola’s Subject Merchandise Motorola’s Re-Designed Products
Given these facts, the determination here is that Motorola’s redesigned Android 2.3 devices do not satisfy element (f) of claim 1 of the `566 patent requiring the generation of an email scheduling request object. Because dependent claims 2, 5, and 6 each depend from claim 1 and each require the generation of an “electronic mail scheduling request object”, the redesigned products also do not satisfy those claims.
HOLDING:
Motorola has met its burden to establish that its devices with modifications described above are not covered by the relevant claims of the patent at issue and therefore the devices in question should not be refused entry for consumption, entry for consumption from a foreign trade zone, and withdrawal from a warehouse for consumption provided that a duly authorized officer or employee of Motorola Mobility LLC having knowledge regarding the contents of the entry with respect to the importation of certain mobile devices, associated software, and components thereof of the kind subject to Investigation No. 337-TA-744 certifies that he or she is familiar with the terms of the exclusion order in Investigation No. 337-TA-744, has made appropriate inquiry, and that with respect to the devices seeking entry, the Android 2.3 (aka “Gingerbread”) devices have modified the Microsoft Exchange ActiveSync protocol such that it does not generate an electronic mail scheduling request object based on user input information and therefore is missing one of the elements of independent claim 1 of U.S. Patent 6,370,566 included in the limited exclusion order resulting from Investigation No. 337-TA-744 and that accordingly, to the best of the signing officer’s knowledge and belief, the Android 2.3 devices seeking entry are not subject to the exclusion order in Investigation No. 337-TA-744.
This decision is limited to the specific facts set forth herein. As with any prospective administrative ruling, if the devices in question differ from those described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. Parts 177.2(b)
Sincerely,
Charles R. Steuart
Chief, Intellectual Property Rights Branch