• HQ H242025
• Jun 24, 2013

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   H226615; H242026   

OT:RR:BSTC:IPR H242025 DAX

Richard Belanger
Sidley Austin LLP
1501 K Street, N.W.
Washington, D.C. 20005

RE: U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-744; Certain Mobile Devices, Associated Software, and Components Thereof Dear Mr. Belanger:

This is in response to your submission, dated May 10, 2013, on behalf of your client, Microsoft Corporation (“Microsoft”), requesting revocation, pursuant to 19 C.F.R. Part 177.12(b), of Headquarters Ruling Letter H226615 (“HQ H226615”), dated April 25, 2013. The ruling letter in question determined that certain mobile devices manufactured by or on behalf of Motorola Mobility, Inc. (“Motorola”), having been modified to remove particular functionality contained therein that was found at the U.S. International Trade Commission (“ITC” or “Commission”) to infringe claims 1, 2, 5, and 6 of U.S. Patent No. 6,370,566 (“the `566 patent”), were no longer covered by those patent claims and, therefore, not subject to exclusion from entry. Microsoft seeks revocation of HQ H226615 on two separate grounds. First, Microsoft claims that the ruling letter fails to consider the infringement that results when the Android Calendar application on the device is set up using means other than Corporate Sync and is configured for a server other than the Exchange server. In essence, Microsoft challenges the entry of the redesigned Motorola devices based on their ability to use Google’s servers and Google’s synchronization protocol to synchronize calendar objects, an ability that was present on the legacy mobile devices accused at the ITC. Microsoft claims that this ability was specifically accused of infringement and formed part of the ITC’s infringement finding, such that the devices at issue in the ruling letter must be refused entry. Second, Microsoft claims that, even absent any consideration as to the use of Google’s servers and synchronization protocol, the redesigned mobile devices, as modified, have not successfully avoided the relevant claims of the `566 patent and therefore are still subject to exclusion.

This ruling letter addresses the first of Microsoft’s two grounds for revocation. However, since HQ H226615, for which Microsoft seeks revocation, did not address the use of Google’s servers and synchronization protocol and whether this functionality was specifically accused and formed part of the infringement finding at the ITC, the portion of Microsoft’s submission involving this claim is being treated as a new ruling request concerning the admissibility of the modified Motorola mobile devices. Microsoft, as the ITC complainant and owner of the `566 patent and thereby an importer, exporter, or other party with a direct and demonstrable interest in the question presented, qualifies as a person that may request such a ruling. See 19 C.F.R. Part 177.1(c). Microsoft’s second ground for revocation–concerning the nature of the modifications in Motorola’s redesigned mobile devices–is addressed in a separate issuance (Headquarters Ruling Letter H242026).

FACTS:

The ITC instituted the above-referenced investigation on November 5, 2010, based on a complaint filed by Microsoft. 77 Fed. Reg. 35,427 (2012). The complaint alleged a violation of section 337 of the Tariff 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 Motorola mobile devices, associated software, and components thereof by reason of infringement of U.S. Patent Nos. 5,579,517; 5,78,352; 6,621,746; 6,826,762; 6,909,910; 7,644,376; 5,664,133; 6,578,054; and 6,370,566. Id. With respect to the latter, the complaint indicated that the `566 patent “relates to mobile devices, and more particularly, to generating meeting requests and group scheduling from a mobile device.” See Complaint at 19, ¶ 74. The complaint also provided that prior to the claimed invention “[s]cheduling meeting requests had been supported by desktop computers or laptop computers which had a hard disk drive or other high capacity memory mechanisms [but]…allowing a mobile device to also generate a meeting request is desirable.” Id. at ¶ 75. The `566 patent, accordingly, “discloses and claims a mobile device which provides the user with the ability to schedule a meeting request from the mobile device itself.” Id. at ¶ 76.

Among the exhibits accompanying the complaint was Exhibit 59, which contained a claim chart for the `566 patent that listed the various claim limitations and identified the features in the accused Motorola mobile devices purported to satisfy those limitations. The chart for claim 1 of the `566 patent from Exhibit 59 is depicted below.

’566 Patent  Exemplary Motorola Devices  1. A mobile device, comprising: To the extent the preamble is construed to be limiting, the Motorola Droid 2 is a mobile device, as depicted below in Figure 1-1. See Ex. A, "Droid 2 by Motorola A955," http://developer.motorola.com/products/droid2 (visited Sept. 9, 2010).




Figure 1-1

Figure 1-1

 an object store; The Droid 2 includes an object store.

By way of example, the Droid 2 includes 8 GB of microSD memory and 512 MB of RAM. See Ex. B, "Droid 2 by Motorola Technical Specifications," http://www.motorola.com/Consumers/US-EN/Consumer- Product-and-Services/Mobile-Phones/ci.Motorola-DROID- 2-US-EN.alt (visited Sept. 9, 2010); Ex. A.  an application program configured to maintain objects on the object store; The Droid 2 includes an application program configured to maintain objects on the object store.

By way of example, the Droid 2 includes a Calendar application configured to maintain event objects on the object store.  a user input mechanism configured to receive user input information; The Droid 2 includes a user input mechanism configured to receive user input information.

By way of example, the Droid 2 includes an on-screen touch keyboard and a physical "slide side" keyboard. See Ex. A.  a synchronization component The Droid 2 includes a synchronization component  

’566 Patent  Exemplary Motorola Devices  configured to synchronize individual objects stored on the object store with remote objects stored on a remote object store; configured to synchronize individual objects stored on the object store with remote objects stored on a remote object store. See generally Ex. B ("Synchronization Support for Corporate calendar, email and contacts (Exchange 2003 and 2007), Google contacts, calendar and Gmail contacts.").  a communications component configured to communicate with a remote device containing the remote object store; The Droid 2 includes a communications component configured to communicate with a remote device containing the remote object store.

By way of example, the Droid 2 includes EVDO Rev.A wireless capability for data and 802.11x Wireless LAN capability. See Ex. A.  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. The Droid 2’s calendar application program is further configured to generate a meeting object and an electronic mail scheduling request object based on the user input information. See Ex. C, "Droid 2 – Calendar," https://motorola-global- portal.custhelp.com/app/answers/detail/a_id/51633/~/droid- 2---calendar (visited Sept. 9, 2010) ("Add details about the event. Tap in a text box for the keyboard to enter a name, time, and optional additional details about the event . . . . Any contacts from your established Gmail, Enterprise and Social Networking accounts can be searched to contact for an event.").


Figure 1-2: User input generating a meeting object

For instance, as seen in Figure 1-2, the Calendar application program generates meeting objects called "Events" based on the user input information.  

’566 Patent  Exemplary Motorola Devices   




Figure 1-3: User input adding contact information for attendee

As seen in Figure 1-3, the Calendar application program allows users to input contact information for meeting attendees in order to generate electronic mail scheduling requests.  


The chart above from Exhibit 59 includes the claim limitations requiring “an application program configured to maintain objects on the object store” and “a synchronization component configured to synchronize individual objects stored on the object store with remote objects stored on a remote object store” 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.” Significantly, the claim chart shows the features of the accused devices believed to satisfy each of the claim limitations. In particular, Microsoft alleged that the “application program” was satisfied by the device’s “Calendar application” and that the “synchronization component” was supplied by the “Synchronization Support for Corporate calendar, email and contacts (Exchange 2003 and 2007), Google contacts, calendar and Gmail contacts,” according to the accompanying materials from Exhibit B to Exhibit 59.

Motorola was notified of the complaint and the matter was assigned to an Administrative Law Judge (“ALJ”), who presided over the next stage of the investigation. On December 17, 2010, the ALJ set a target date for completion of the investigation and issuance of his final initial determination (“FID”), and also directed the parties to submit a proposed procedural schedule. See Order No. 3. On January 10, 2011, the ALJ confirmed that the joint procedural schedule submitted by the parties would control the investigation. See Order 4. The joint procedural schedule, inter alia, provided for the filing of preliminary infringement and non-infringement contentions, the identification of claim terms in dispute, the taking of depositions, and the exchange of expert reports.

On November 22, 2010, Motorola responded to the complaint and its various allegations. Afterward, the parties began exchanging briefs and submitting motions related to various aspects of the investigation, such as their respective proposed constructions for the disputed claim terms. Significantly, during this period, the parties also engaged in other aspects of discovery, such as deposing expert witnesses, in preparation for the investigation hearing before the ALJ. This portion of the investigation, particularly that involving expert discovery, developed the administrative record at the ITC.

During this period, Microsoft deposed Peter John Cockerell, one of Motorola’s witnesses, on May 3, 2011. See Microsoft Ruling Request (May 10, 2013) at Exhibit D. Cockerell’s testimony was later incorporated into Microsoft’s direct trial exhibit CX-1081C (an updated claim chart for the `566 patent) that Motorola was served with at least by June 28, 2011. Id. at Exhibit A; see also Motorola Mobility, Inc. Objections to Complainant Microsoft Corporation’s Direct Exhibits at 1 (August 4, 2011). As with Exhibit 59 to Microsoft’s complaint, the “application program” limitation is allegedly met by the accused device’s calendar application. However, unlike Exhibit 59, the “synchronization component” limitation does not expressly reference any Google programs, but does refer at least to the Motorola ActiveSync system as described by Cockerell in his testimony and in the Exchange Protocol. On the other side, Motorola deposed Hugh M. Smith, Microsoft’s expert witness, on July 8, 2011. During the deposition, Smith’s testimony referenced, inter alia, the testimony of Cockerell.

Both Microsoft and Motorola submitted their Pre-Hearing Briefs on August 8, 2011, incorporating their various arguments regarding all issues in light of the testimony up to this point. The investigation hearing commenced on August 23, 2011. However, on August 24, 2011, counsel for Motorola notified Microsoft’s counsel that Motorola withdrew its contentions and responses with respect to Microsoft’s assertion of the `566 patent and thereby would not dispute infringement. See ALJ FID at 65 (citing Hearing Transcript 1438:7-24); see also Microsoft Ruling Request (May 10, 2013) at Exhibit F. After the hearing concluded, the parties submitted their Post-Hearing Briefs addressing various issues. Based on the administrative recorded developed, including Motorola’s concession, the ALJ on December 20, 2011, found that Microsoft established by a preponderance of the evidence that the accused devices infringe claims 1, 2, 5, and 6 of the `566 patent. See ALJ FID at 65.

Microsoft and Motorola both filed Petitions for Commission Review on January 5, 2012, and then filed responses on January 13, 2012, to their respective Petitions for Commission Review. The Commission provided notice of the issues under review on March 2, 2012. The parties then submitted their Opening Briefs on Commission Review on March 19, 2012, and filed their responses thereto on March 27, 2012. In its responsive brief, Motorola raised the issue that any exclusion order that may issue with respect to the `566 patent should not extend to the ability of the Motorola devices to use Google’s servers and synchronization protocols to synchronize calendar objects. See Motorola Mobility Inc.’s Response to Complainant Microsoft Corporation’s Opening Brief on Commission Review at 45.

Motorola explained that the mobile devices accused at the ITC, in two ways, can synchronize calendar objects generated on the device. First, the device can utilize a Microsoft Exchange server and the Microsoft Exchange ActiveSync protocol to synchronize calendar objects. Id. Motorola referred to this implementation as “corporate sync.” Id. The second way is that the device can utilize Google’s server and Google’s synchronization protocol to synchronize calendar objects. Motorola argued that Microsoft abandoned its claim to the latter and presented no evidence regarding infringement based on this functionality. Id. at 46. According to Motorola, in addition to the lack of evidence presented, the second way of synchronization does not satisfy the electronic mail scheduling request object and therefore cannot be found to infringe. Id.

The ITC did not make a finding on this issue and instead took no position, noting that “Motorola…argues that any exclusion order should not extend to the accused products’ use of Google’s servers and Google’s synchronization protocol to synchronize calendar objects. RespResp at 46 (citing MSFT PHB at 79-114; CX-974C at Q89-155). We decline to consider this issue because it was raised by Motorola for the first time in a responsive brief.” Ultimately, the ITC, in affirming, modifying, and reversing aspects of the ALJ’s FID, determined that the appropriate form of relief was a limited exclusion order prohibiting, with limited exception, the unlicensed entry for consumption of mobile devices, associated software, and components thereof covered by claims 1, 2, 5, or 6 of the `566 patent that are manufactured abroad by or on behalf of, or imported by or on behalf of, Motorola.

ISSUE:

The issue presented is whether the record supports a finding that Microsoft specifically alleged and established that the use of Google’s servers and Google’s synchronization protocol by the legacy Motorola mobile devices satisfies particular claim limitations of the `566 patent and, as such, formed part of the ITC’s infringement finding.

LAW AND ANALYSIS:

Section 337, as amended, 19 U.S.C. § 1337, makes unlawful the importation of articles that infringe a valid and enforceable United States patent and authorizes the ITC, upon finding a violation, to direct that those articles be excluded from entry. 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d); see also John Mezzalingua Associates, Inc. v. U.S. Int’l Trade Comm’n, 660 F.3d 1322, 1324 (Fed. Cir. 2011). The ITC, therefore, must find that patent infringement has occurred for there to be a violation this section.

Patent infringement determinations 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. One variety of direct infringement in patent law is literal infringement. “To show literal infringement of a patent, a patentee must supply sufficient evidence to prove that the accused product or process meets every element or limitation of a claim.” Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). It, therefore, is “well settled” that each element of a claim is material and essential and, for a court or the ITC to find infringement, the patentee must show the presence of every element in the accused device by a preponderance of the evidence. Id. As the complainant asserting infringement, Microsoft bore the burden of proof to accuse and establish which specific features satisfied the various claim limitations. See Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1574 (Fed. Cir. 1991) (recognizing that beyond the claim chart prepared by patentee’s expert witness, no detailed analysis occurred linking the particular parts of the accused device with the claimed elements and finding infringement limited to that which was contained in the claim chart); see also Rohm & Haas, 127 F.3d at 1091-1093.

When a violation is found, 19 U.S.C. § 1337(d) provides that the ITC shall notify the Secretary of the Treasury of its finding and the Secretary, through CBP, shall refuse entry to the articles in question. The ITC provides notification by issuing exclusion orders, of which there are two types: limited exclusion orders and general exclusion orders. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007). Regardless of the remedy imposed, both types of exclusion orders direct CBP to bar the infringing products from entering the country. Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed Cir. 2008). Both types of exclusion orders place the burden on the importer to establish an article’s admissibility through its modification, authorization, or as otherwise provided by law. Hyundai Electronics Industries Co., Ltd. v. U.S. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990).

The ITC generally directs its exclusion orders to articles “covered by” the infringed claims of the relevant patents. In the Matter of 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.”). Moreover, “exclusion orders must be read in the context of the investigations in which they were issued and the Commission’s findings in that investigation.” In the Matter of Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Advisory Opinion at 4 (dated April 20, 2010).

Accordingly, it is the ITC that is charged with administering section 337 and determining whether the complainant has met its burden during the investigation to establish infringement with evidence that every limitation from the asserted claim has been satisfied by a feature in the accused device. See Vastfame Camera, Ltd. v. U.S. Int’l Trade Comm’n, 386 F.3d 1108, 1110 (Fed. Cir. 2004); see also Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 386 F.3d 1095 (Fed. Cir. 2004) (recognizing the ITC’s paramount authority to determine whether section 337 has been violated, the issuance any Customs rulings notwithstanding); see also In the Matter of Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, Consolidated Enforcement and Advisory Opinion (acknowledging the ITC as the arbiter of whether its orders have been violated). CBP’s enforcement responsibility in the exclusion order context is to apply the infringement findings from the ITC record to determine whether imported articles exhibit those elements of the adjudged infringing products that the ITC complainant previously contended and proved satisfy the specific limitations of the asserted claims. In light of the above, CBP will not refuse entry on the basis of features that were present on the accused devices at the time of the ITC investigation but were not specifically accused and found to satisfy the limitations in the asserted patent claims identified in the exclusion order.

Microsoft contends that Motorola conceded, and that the ITC therefore held, that the Android Calendar application infringes the `566 patent regardless of whether the application is configured for Google servers using Google Account or Exchange servers using Corporate Sync. See Microsoft Ruling Request (May 10, 2013) at 2. Microsoft argues that “[w]hen the Calendar application is set up with Google Account it is configured to communicate with Google servers; when configured through Corporate Sync, Calendar communicates instead with Exchange servers.” Id. Microsoft concludes that “[r]egardless of which set of servers it is set up to communicate with, the Calendar application infringes because it provides the same ‘electronic mail scheduling request’ that formed the basis of the ITC’s infringement analysis.” Id.

While it may be that the “application program” limitation from claim 1 of the `566 patent is satisfied by the Android Calendar application regardless of the means with which it is set up, this does not indicate where in the record Microsoft actually accused and established that the use of Google’s synchronization protocol by the legacy Motorola mobile devices satisfies the “synchronization component” limitation. Microsoft points to the testimony from Cockerell’s deposition but that testimony in its entirety seems to counter Microsoft’s position more than support its claim that Google’s synchronization protocol was specifically accused. See Microsoft Ruling Request (May 10, 2013) at 2 (citing to its Exhibit D (i.e., Cockerell Deposition) at 20); but compare at 26:20-27:9; 42:24-43:18. Moreover, the updated claim chart contained in CX-1081C, which incorporates aspects of Cockerell’s deposition testimony, focuses on the ActiveSync system and does not refer to Google’s synchronization protocol. Microsoft has not identified any portion of its expert reports or witness statements that clarifies where in the record a Google synchronization protocol was claimed to satisfy the “synchronization component.” Moreover, during his deposition, Microsoft’s expert witness, Hugh M. Smith, testified that the focus of his infringement analysis was on the ActiveSync protocol alone concerning the limitation in question, which, as CX-1081C reveals, was the “synchronization component.” See Smith Deposition (July 8, 2011) at 141:7-143-13. Microsoft, likewise, does not point to any support in its Pre- or Post-Hearing Briefs for its position that Google’s synchronization protocol was specifically accused to satisfy this claim limitation.

Microsoft does point to the statement in the Commission Opinion that the ITC declined to consider this issue. However, this statement seems to imply that the use of Google’s servers and Google’s synchronization protocol was not specifically accused, or at the very least that the record was unclear, because if it had been specifically accused, the ITC would have expressly denied Motorola’s assertion as having been subject to the concession it made and, consequently, the ALJ’s infringement finding.

Nevertheless, since the admissibility question for CBP’s purposes depends exclusively on whether Microsoft specifically accused these features in the Motorola mobile devices of satisfying the particular claim limitation from the `566 patent, CBP contacted the Office of the General Counsel at the ITC for guidance and clarification of the agency’s own record. However, the General Counsel’s Office was unable to provide the clarification requested. When asked for confirmation regarding the record it developed and the precise infringement findings that resulted in the exclusion order’s issuance, the ITC reiterated that it took no position on the matter and suggested an approach for CBP to resolve the issue that it declined to consider.

In light of the above, CBP determines that the record is insufficient to support a finding that the legacy Motorola devices at the ITC were specifically accused and proven to infringe based on their ability to use Google’s servers and Google’s synchronization protocol and, as noted above, CBP will not refuse entry on the basis of features that were present on the accused devices at the time of the ITC investigation but were not specifically accused and found to satisfy the limitations of the asserted patent claims in the exclusion order. HOLDING:

Based on the foregoing, including the determination that the administrative record does not support a finding that Microsoft specifically accused the ability in the legacy Motorola devices of using Google’s servers and Google’s synchronization protocols to satisfy the limitation from claim 1 of the `566 patent requiring a “synchronization component,” and because there is no dispute that these features were present on the devices before the ITC during the investigation, CBP shall not refuse entry on the basis of these features, absent additional guidance from the ITC.

This decision is limited to the specific facts set forth herein. However, as with ruling letters generally, if the imported articles differ from the embodiment 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. § 177.2(b)(1), (2) and (4), and § 177.9(b)(1) and (2).


Sincerely,

Charles R. Steuart
Branch Chief
Intellectual Property Rights Branch