OT:RR:BSTC:IPR H242026 AAH
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 second of Microsoft’s two grounds for revocation.
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. Motorola was notified of the complaint and the matter was assigned to an Administrative Law Judge (“ALJ”), who set a target date for completion of the investigation and issuance of his final initial determination (“FID”).
With respect to the `566 patent, the complaint indicated that it “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. Specifically, Exhibit 59 includes the claim limitations requiring “an application program configured to maintain objects on the object store” and “a user input mechanism configured to receive user input information” 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, that the “user input mechanism” was satisfied by the device’s on-screen touch keyboard, and that the “electronic mail scheduling request object” was satisfied by the Calendar application through which users input contact information for meeting attendees in order to generate an electronic mail scheduling request.
The investigation hearing at the ITC commenced on August 23, 2011 after the parties exchanged briefs, submitted various motions, and engaged in expert discovery. 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.
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.
After the exclusion order issued, Motorola submitted a ruling request on May 25, 2012, seeking a determination whether its redesigned devices were covered by the claims of the `566 patent and subject to exclusion from entry. In the ruling request, Motorola presented modified Android 2.3 devices where three features present on the devices accused at trial were removed. First, Motorola removed the ability to send an electronic mail scheduling request object by eliminating the “Who” and “Optional Attendees” fields that appeared previously when creating a new “Event.” Second, Motorola removed the ability to edit electronic mail scheduling requests received via the “Edit Event” option in the context menu which arises on the long press on a calendar event. Finally, Motorola removed the “Share” feature that allowed users to attach a calendar event to an email and forward that email to invitees. Based on these three changes, HQ H226615 concluded that the Android 2.3 devices lacked the ability to generate an electronic mail scheduling request object and, therefore, did not satisfy this element from claim 1 of the `566 patent. Consequently, HQ H226615 held that the redesigned devices were not subject to exclusion from entry.
In its request for revocation, Microsoft contends that, despite the modifications to the Motorola Android 2.3 devices and irrespective of the Google functionality, the Calendar application still includes infringing functionality. According to Microsoft, the ITC construed “electronic mail scheduling request objects” to be an object that is “simply indicative of the meeting request...[because] [t]here is nothing in the specification or the claim language that would properly impose the additional limitations on the claim.” See Microsoft Ruling Request at 6. Therefore, Microsoft argues that even if Motorola were to remove the “Who,” “Edit Event,” and “Share” features from the Calendar application the Android 2.3 devices still include other functionality that satisfies the claimed “electronic mail scheduling request object.” Microsoft points to three specific functions that it claims satisfy this limitation.
First, according to Microsoft, the Android 2.3 devices allow the user to forward the event in an email, similar to the “Share” function discussed in HQ H226615. Second, Microsoft points to the ability of the Android 2.3 devices to generate accept/decline/tentative/propose new time responses. Lastly, Microsoft accuses the ability of the Android 2.3 to create “Reminders” of the event when creating the event.
ISSUE:
The issue presented is whether the record supports Microsoft’s allegations concerning the accused functionality and establishes that HQ H226615 was issued in error and, therefore, should be revoked.
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 Co., 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 from the asserted patent claims identified in the exclusion order.
CBP, within the confines of its role as set forth above, issues administrative rulings pursuant to 19 C.F.R. Part 177 that address the admissibility of articles in light of ITC exclusion orders. This part of the regulations, as a general matter, covers the issuance of rulings to importers and other interested parties. The various sections therein describe the situations in which a ruling may be requested, the procedures to be followed in requesting a ruling, the conditions under which a ruling will be issued, the effect of a ruling when it is issued, and the publication of a ruling after its issuance. See 19 C.F.R. Part 177.0.
A ruling letter issued under the provisions of this part represents the official position of CBP with respect to the particular transaction or issue described therein and is binding on all CBP officials until modified or revoked. See 19 C.F.R. Part 177.9. The authority for CBP to modify or revoke a ruling stems from 19 U.S.C. § 1625, as promulgated in 19 C.F.R. 177.12, which establishes the procedures CBP must apply to take such an action. See International Custom Products, Inc. v. United States, 549 F. Supp. 2d 1384, 1395 (Ct. Int’l Trade, 2008) (noting the extensive modifications by Congress to 19 U.S.C. § 1625 in 1993 through the Customs Modernization Act).
CBP does not require a compelling reason to revoke a prior ruling, even if there has been reliance on the ruling in question. Instead, the standard for CBP modification or revocation requires establishment that the prior ruling was issued in error or that it is not in accord with the current views of the agency. See 19 C.F.R. Part 177.12(a); see also International Custom Products, 549 F. Supp. 2d at 1394-95. With this framework provided, the decision now turns to the question of whether Microsoft has established that HQ H226615 was issued in error.
As an initial matter, the record does not reflect whether the legacy Motorola devices accused of infringement at the ITC had the ability Microsoft now alleges to satisfy the limitations of claim 1 from the `566 patent and, if so, whether these features were subject to the ITC’s infringement finding. As held in Headquarters Ruling Letter H242025, 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 has not provided any evidence on this issue and therefore CBP does not have a complete record upon which to rule.
Even absent this consideration, the record does not support Microsoft’s allegations regarding the three specific functions identified in the Android 2.3 devices. Microsoft argues these features satisfy the claimed “electronic mail scheduling request object.” See Microsoft Ruling Request at 6. However, the limitations require the claimed “application program” (i.e., the Android Calendar application) to be configured such that it generates the “electronic mail scheduling request object” based on information entered into the mobile device through the “user input mechanism.” Microsoft indicates that “the 2.3 device allows the user to forward the event in an email,” that “the 2.3 Device can generate accept/decline/tentative/propose new time responses,” and that “the 2.3 Devices can create “Reminders” of the event” but does not identify whether, or provide evidence how, these accused functions are generated by the Calendar application. Additionally, with certain of these accused functions, it appears that the user input information, upon which the alleged “electronic mail scheduling request object” is based when generated, is not entered through the device’s user input mechanism but comes from a different party entering information into a separate device.
Lastly, the regulations covering administrative rulings provide that each request for a ruling should be accompanied by photographs, drawings, or other pictorial representations of the article, and, whenever possible, by a sample article. See 19 C.F.R. Part 177.2(b)(3). Although Microsoft’s request for revocation includes images of the 2.3 device that have been taken from HQ H226615, it has not submitted a sample device for CBP’s examination and analysis concerning the issues raised above, to include the Cliq2 device referenced in Microsoft’s submission. Therefore, the administrative record is incomplete in this respect.
HOLDING:
Based on the foregoing, the administrative record does not support Microsoft’s position that HQ H226615 was issued in error. It is unclear whether the accused features were present in the legacy Motorola devices without an ITC infringement finding, such that CBP would not refuse entry on this basis. Moreover, Microsoft has not specified which features satisfy each of the claim limitations, evening assuming they were not present on the legacy devices. For these reasons, Microsoft’s request for revocation is denied.
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