Microsoft Corp. v. International Trade Commission ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
MICROSOFT CORPORATION,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
AND
MOTOROLA MOBILITY, LLC,
Intervenor.
______________________
2012-1445, -1535
______________________
Appeals from the United States International Trade
Commission in Investigation No. 337-TA-744.
______________________
Decided: October 3, 2013
______________________
CONSTANTINE L. TRELA, JR., Sidley Austin, LLP, of
Chicago, Illinois, argued for appellant. With him on the
brief were DAVID T. PRITIKIN, RICHARD A. CEDEROTH,
ELLEN S. ROBBINS and JOHN W. MCBRIDE. Of counsel on
the brief were BRIAN R. NESTER and RYAN C. MORRIS, of
Washington, DC. Of counsel were MICHAEL R.
2 MICROSOFT CORPORATION v. ITC
FRANZINGER, of Washington, DC, and DOUGLAS I. LEWIS,
of Chicago, Illinois.
MICHAEL LIBERMAN, Attorney, Office of the General
Counsel, United States International Trade Commission,
of Washington, DC, argued for appellee. With him on the
brief were DOMINIC L. BIANCHI, Acting General Counsel,
and JAMES A. WORTH, Acting Assistant General Counsel.
Of counsel was ANDREA C. CASSON.
CHARLES K. VERHOEVEN, Quinn Emanuel Urquhart &
Sullivan, LLP, of San Francisco, California, argued for
intervenor. With him on the brief were DAVID A. NELSON,
of Chicago, Illinois; and EDWARD J. DEFRANCO, RAYMOND
N. NIMROD and MATTHEW A. TRAUPMAN, of New York,
New York.
______________________
Before RADER, Chief Judge, PROST, and TARANTO, Cir-
cuit Judges.
TARANTO, Circuit Judge.
Microsoft Corporation appeals from an order of the
United States International Trade Commission that found
no violation of 19 U.S.C. § 1337 insofar as Microsoft
alleged that Motorola Mobility, Inc. (Motorola), infringed
four of Microsoft’s patents, U.S. Patent Nos. 6,578,054;
6,826,762; 7,644,376; and 5,664,133. The Commission
found no infringement of those patents. As to three of the
patents, the ’054, ’762, and ’376 patents, the Commission
also found no violation on an additional ground, namely,
that Microsoft had not proved that there was a domestic
industry relating to articles protected by the patents.
We affirm the Commission on three of the patents but
reverse in part on the fourth. We affirm the finding that
Motorola does not infringe the ’054 patent, as well as the
finding that Microsoft failed to prove that a domestic
MICROSOFT CORPORATION v. ITC 3
industry exists for products protected by the ’762 and ’376
patents. As to the claims of the ’133 patent that are at
issue, however, we hold that the Commission relied on
incorrect claim constructions in finding no infringement,
the only basis for its finding no violation, for the main
group of accused products, while we affirm the non-
infringement finding for the accused alternative design.
We therefore partly reverse the Commission’s final de-
termination as to the ’133 patent and remand for further
proceedings. 1
BACKGROUND
In 2010, Microsoft filed a complaint in the Commis-
sion against Motorola. Microsoft alleged that Motorola
had violated section 337 of the Tariff Act of 1930, 19
U.S.C. § 1337, by importing mobile phones and tablets
that infringe a number of Microsoft’s patents. The Com-
mission instituted an investigation and assigned the case
to an administrative law judge. In the Matter of: Certain
Mobile Devices, Associated Software, and Components
Thereof; Notice of Investigation, 75 Fed. Reg. 68379-02
(Nov. 5, 2010).
After an evidentiary hearing, the ALJ found, as rele-
vant to the present appeal, that the accused Motorola
products did not infringe any of the asserted claims of the
’054, ’762, ’376, or ’133 patents. Certain Mobile Devices,
Associated Software, and Components Thereof, Inv. No.
337-TA-744, EDIS No. 467464, at ii (Dec. 20, 2011) (Ini-
tial Determination). The ALJ also addressed whether
Microsoft made a showing, required for relief under
section 337, that an industry in the United States “relat-
ing to the articles protected by the patent[s] . . . exists or
1 The Commission granted Microsoft relief based on
another patent. That ruling is the subject of a separate
appeal by Motorola.
4 MICROSOFT CORPORATION v. ITC
is in the process of being established.” 19 U.S.C. §§
1337(a)(2), (3). To make that domestic-industry showing,
Microsoft sought to rely on mobile devices allegedly
loaded with the Microsoft Windows mobile operating
system, in which Microsoft had invested substantial
resources in the United States. But the ALJ found that
Microsoft had failed to prove that the mobile devices on
which it relied actually implemented the ’054, ’762, and
’376 patents. Certain Mobile Devices, Associated Soft-
ware, and Components Thereof, Inv. No. 337-TA-744,
EDIS No. 467464, at 199, 203-08.
The Commission reviewed the ALJ’s decision in part,
allowing the unreviewed parts, including the non-
infringement findings at issue here, to become Commis-
sion determinations. The Commission specifically upheld
the ALJ’s findings regarding Microsoft’s failure to prove
that the Microsoft-supported products on which it relied
for its domestic-industry showing actually practiced the
’054, ’762, and ’376 patents. Certain Mobile Devices,
Associated Software, and Components Thereof, Inv. No.
337-TA-744, USITC Pub. 4384, at 16 (Mar. 2013) (Final).
Microsoft appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(6).
DISCUSSION
A
We first address the Commission’s finding of no sec-
tion 337 violation based on the ’054 patent. 2 Entitled
“Method And System For Supporting Off-Line Mode Of
Operation And Synchronization Using Resource State
Information,” the ’054 patent discloses a system and
2 We sometimes use “Commission” when referring
to ALJ determinations that the Commission left undis-
turbed and relied on for its ultimate disposition.
MICROSOFT CORPORATION v. ITC 5
method for synchronizing copies of a data resource (e.g., a
calendar entry or document) in a client-server environ-
ment, where any of several clients (i.e., computers or
mobile devices) may make changes to its copy of that
resource even when not connected to the server. ’054
patent, col. 2, lines 49-53, 57-60. When a client receives a
copy of a resource from the server, it also receives “re-
source state information.” Id., col. 16, lines 51-54. The
resource state information “represents the state of the
resource stored at the server at a selected moment.” Id.,col. 16, lines 51-54. The client stores this copy (a local
copy) so that the client can modify the resource even when
it is not connected to the server. Id., col. 16, lines 55-63.
After a connection is reestablished with the server, the
client transmits the resource and the resource state
information stored at the client to the server. Id., col. 16,
line 64, through col. 17, line 3. The server then deter-
mines if the copy just received from the client “is the most
current version of the data object or resource, and all
copies of the data object are synchronized to the most
current version.” Id., col. 3, lines 36-39.
Microsoft asserted independent claim 11 and depend-
ent claims 13-15 of the ’054 patent against Motorola. The
dispute over infringement centered on claim 11’s re-
quirement of “resource state information.” Although the
parties agreed before the hearing that the term “resource
state information” needed no construction, the ALJ con-
cluded that the meaning of the term was actually in
dispute and construed it to mean “information that is
associated with a resource that allows the server, client
computer, or both to determine the version of the resource
stored on the server at a particular moment, and if there
has been a change in the resource, and to take appropri-
ate action to synchronize the documents if there has been
a change.” Certain Mobile Devices, Associated Software,
and Components Thereof, Inv. No. 337-TA-744, EDIS No.
467464, at 40-41, 49. The ALJ explicitly noted that,
6 MICROSOFT CORPORATION v. ITC
under his construction, “resource state information” did
not necessarily require “a version number,” but that it did
require “some information to indicate the version of the
resource.” Id. at 49.
Based on that construction, the ALJ found that the
accused products do not infringe the asserted claims of
the ’054 patent because they do not use “resource state
information” for synchronization. Id. at 59-65. The
accused products use a protocol called ActiveSync—
initially designed and licensed by Microsoft for its enter-
prise server-side software application—to handle syn-
chronization of data between mobile devices and Microsoft
Exchange servers. The ActiveSync protocol uses a Sync
Command to transmit three pieces of information: a
resource field, identifier field, and state tag. The resource
field contains the actual data of the resource, and the
identifier field contains the ServerID, which is a unique
identifier for the particular resource. The state tag indi-
cates whether the state is “add,” “change,” or “delete,”
which the client or server sending the information uses to
indicate whether the resource following the tag has been
added, changed, or deleted. Microsoft’s infringement
argument, which the ALJ found to be inconsistently
presented by Microsoft and its expert Dr. Smith, id. at 62-
63, is that the state tag and identifier field together
constitute the “resource state information” required by
claim 11.
The ALJ found that Microsoft failed to prove that the
Sync Commands were “resource state information.” Id.
at 62. The ALJ criticized Dr. Smith’s testimony as “in-
credible and unreliable” because he did not tie his analy-
sis of the claims to the specification or prosecution
history, did not discuss two patents incorporated by
reference into the ’054 patent, and never clearly explained
what the “resource state information” consisted of in the
accused products. Id. at 63. The ALJ concluded that the
standard Sync Commands “in no way, identify the version
MICROSOFT CORPORATION v. ITC 7
of the resource at a given time” and, therefore, do not
constitute “resource state information.” Certain Mobile
Devices, Associated Software, and Components Thereof,
Inv. No. 337-TA-744, EDIS No. 467464, at 64. This is
because “[a] standardized XML command does not provide
any information that can identify the version of a re-
source”; it merely “command[s] the client or server to
perform an action.” Id. The Commission declined to
review the ALJ’s construction and non-infringement
determination.
Microsoft argues on appeal that the ALJ improperly
“construed [resource state information] to require addi-
tional information about the version of the resource, akin
to a version number.” 3 Microsoft has not presented on
appeal an argument, which would have to proceed under
the demanding substantial-evidence standard of review,
that the ALJ could not find lack of infringement even
under the ALJ’s claim construction. All we fairly have
before us is Microsoft’s challenge to the ALJ’s construc-
tion, which we review without deference. Pass & Sey-
mour, Inc. v. Int’l Trade Com’n., 617 F.3d 1319, 1323
(Fed. Cir. 2010).
Microsoft argues that the phrase at issue has a “plain
meaning”: “the current status of the resource”; “the cur-
rent condition of the resource on the platform (i.e., client
or server) that sends the information.” In our view,
however, the term “state” is so general on its face that it
begs for clarification from the specification regarding
what aspect of the resource is to be identified. We con-
clude that the ALJ correctly understood “state” in the
3 Microsoft sufficiently preserved this contention by
arguing to the Commission that the ALJ had ultimately
rejected infringement by improperly imposing its re-
quirement of version information.
8 MICROSOFT CORPORATION v. ITC
context of the whole patent as requiring information
about the version of the resource.
Claim 11 describes “resource state information” as
“representing the state of the resource stored at the
server at a selected moment.” ’054 patent, col. 16, lines
52-54. The specification defines what is meant by “state”:
“The ‘state’ of the contents of a collection stored at a
server refers to the identity of the current version of a
resource stored at a server.” Id., col. 9, lines 19-21. The
patent goes on to explain that “[a]s a particular resource
stored at one or more servers undergoes a series of suc-
cessive updates, the resource is considered to have passed
through a corresponding series of states, each of which
represents a single update version of the resource.” Id.,col. 9, lines 23-27. And in summarizing the invention, the
’054 patent explains that the “current state of the copy” in
the client’s local memory is used by the server to “deter-
mine[] if the copy in the client’s cache is the most current
version of the data object or resource . . . .” Id., col. 3,
lines 34-37.
The specification thus makes clear, consistent with
the invention’s function of synchronizing, that “resource
state information” must provide information about the
comparative recentness of a particular version. We
therefore see no error in the ALJ’s construction requiring
some information that allows the server or client to de-
termine which copy of the resource is the most recent so
that it can take appropriate action to synchronize the
resource if there has been a change to a copy of that
resource. Finding no error in the ALJ’s construction of
“resource state information,” we affirm the Commission’s
determination that the accused products do not infringe
the ’054 patent.
B
We also affirm the Commission’s finding of no section
337 violation based on the ’376 patent. Entitled “Flexible
MICROSOFT CORPORATION v. ITC 9
Architecture For Notifying Applications Of State Chang-
es,” the patent discloses and claims a mechanism for
notifying application programs about changes to the state
of certain mobile-device components of relevance to those
applications. ’376 patent, col. 1, lines 30-60. Applications
may, for example, benefit from having information about
the current state of battery strength, network connectivi-
ty, or memory usage. Id., col. 1, lines 36-39. Multiple
applications may benefit from information about multiple
“state properties.” Instead of each application checking
with each resource about its state, variables for multiple
state properties are stored in a common data store to
which a “notification broker” has access, and client appli-
cations register with that broker to receive notifications of
changes in particular state properties relevant to that
application. Id., col. 79, lines 10-17; see also id. at col. 2,
lines 32-34. The notification broker is “an underlying
driver responsible for adding, updating, and removing
data from a data store.” Id., col. 2, lines 39-41.
Microsoft asserted independent claim 10 and depend-
ent claims 11-13 of the ’376 patent against Motorola.
Claim 10 includes the terms “notification broker” and
“client applications,” both of which were central to the
parties’ dispute before the Commission and now on ap-
peal. The ALJ initially construed “notification broker” to
mean “an underlying driver responsible for, at least,
adding, updating, and removing data from a data store.”
Certain Mobile Devices, Associated Software, and Compo-
nents Thereof, Inv. No. 337-TA-744, EDIS No. 467464, at
39. After recognizing that the parties disagreed about the
meaning of “underlying driver,” the ALJ determined that
the term should be given its plain and ordinary meaning,
which he concluded meant that the “identified driver
must, at least, directly add, update, and remove data
from the identified data store, which may be either hard-
ware or software.” Id. at 40 (emphasis added). Because of
this construction requirement of “direct” access, the ALJ
10 MICROSOFT CORPORATION v. ITC
found that Microsoft failed to show that the accused
products contained a “notification broker.” Id. at 91.
The ALJ also found that the accused products did not
meet the “client applications” limitation of claim 10. The
ALJ reasoned that the patent makes clear—including in
claim language requiring that the “notification broker”
“be coupled . . . to the clients”—that the required client
applications could not simultaneously be part of the
required notification broker. Id. at 92. The ALJ found
that Microsoft’s expert, Dr. Olivier, failed to identify claim
applications (or, at least, more than one client applica-
tion) outside the notification broker he identified. For
example, Dr. Olivier identified the battery service as a
client application, but the battery service is also a compo-
nent of the notification broker. Id.
To establish a violation of section 337, Microsoft had
to show not just infringement by Motorola’s products but
the existence of a domestic industry “relating to the
articles protected by the patent.” 19 U.S.C. §§ 1337(a)(2),
(3). The ALJ determined that Microsoft failed to make
that domestic-industry showing because it did not offer
sufficient proof of articles that were actually protected by
the patent. Certain Mobile Devices, Associated Software,
and Components Thereof, Inv. No. 337-TA-744, EDIS No.
467464, at 207. Microsoft’s failing was simple. Although
Dr. Olivier purported to identify “client applications” in
an example application that Microsoft provides to third-
party phone manufacturers, Microsoft failed to show that
any such “client applications” are actually implemented
on any third-party mobile device. Id. According to the
ALJ, because Microsoft did not point to evidence that its
expert examined client applications in fact running on
third-party mobile phones or confirmed how they operat-
ed, Microsoft failed to show that there is a domestic
industry product that actually practices the ’376 patent.
The Commission affirmed this determination. Certain
MICROSOFT CORPORATION v. ITC 11
Mobile Devices, Associated Software, and Components
Thereof, Inv. No. 337-TA-744, USITC Pub. 4384, at 18.
In this appeal, we do not reach Microsoft’s challenge
to the non-infringement determination because we find
substantial evidence to support the Commission’s finding
of no domestic industry, which suffices to support its
finding of no violation based on this patent. There is no
question about the substantiality of Microsoft’s invest-
ment in its operating system or about the importance of
that operating system to mobile phones on which it runs.
But that is not enough under the statute. Section 337,
though not requiring that an article protected by the
patent be produced in the United States, unmistakably
requires that the domestic company’s substantial invest-
ments relate to actual “articles protected by the patent.”
19 U.S.C. §§ 1337(a)(2), (3). A company seeking section
337 protection must therefore provide evidence that its
substantial domestic investment—e.g., in research and
development—relates to an actual article that practices
the patent, regardless of whether or not that article is
manufactured domestically or abroad. InterDigital
Commc’ns v. Int’l Trade Comm’n, 707 F.3d 1295, 1299,
1304 (Fed. Cir. 2013).
We conclude that there is substantial evidence to sup-
port the Commission’s determination that Microsoft failed
to meet that requirement. Claim 10 of the patent re-
quires, among other things, “client applications on the
mobile device that are configured to automatically regis-
ter notification requests and receive notifications in
response to a change in a state property of the mobile
devices for which they have registered” and a “notification
broker on the mobile device that is coupled to the data
store, the notification list, and the clients . . . .” ’376
patent, col. 80, lines 17-21, 31-32. The Commission did
not lack substantial evidence to support its finding that
Microsoft simply failed to identify any actual phones with
the required components performing as required. In so
12 MICROSOFT CORPORATION v. ITC
concluding, we respect a fundamental limit on our role in
reviewing evidentiary sufficiency where the finder of fact
has applied proper legal standards: we do not say what
the party with the applicable burden of proof could have
proved, only what the finder of fact could permissibly find
it did or did not prove.
Microsoft’s expert testified that “[a] mobile device
running Windows Mobile includes client applications on
the mobile device that are configured to automatically
register notification requests . . . and receive notifications
. . . .” He also testified that “client applications” automat-
ically register notification requests that “indicate when
the clients should receive notifications. . . .” But the
evidence he cited in support of his opinion that Windows
Mobile phones practice the “client applications” limitation
is the source code that Microsoft provides to mobile-phone
manufacturers, rather than specific code actually in-
stalled and run on a particular third-party mobile device.
Moreover, Microsoft provided no evidence that “Windows
Mobile” phones always contain the entirety of Windows
Mobile, rather than only portions. The ALJ thus could
find that Microsoft lacked sufficient evidence about how
client applications on actual “articles” operated.
On that basis, the Commission could find that Mi-
crosoft failed to show that any Microsoft-supported prod-
ucts practiced the ’376 patent. We therefore affirm the
Commission’s finding of no proven domestic industry, and
hence no section 337 violation, involving this patent.
C
For similar reasons, we affirm the Commission’s find-
ing of no violation based on the ’762 patent. Entitled
“Radio Interface Layer in a Cell Phone with a Set of APIs
Having a Hardware-Independent Proxy Layer and a
Hardware-Specific Driver Layer,” the ’762 patent disclos-
es a radio interface layer (RIL) between radio hardware
and software applications in a cell phone. ’762 patent, col.
MICROSOFT CORPORATION v. ITC 13
1, lines 53-56. The RIL is designed to “allow[] applica-
tions running on an operating system in the cellular
telephone to issue commands without knowledge of the
underlying radio structure of the cellular telephone. . . .”
Id., col. 1, lines 60-65. To do so, the RIL contains two
“layers”: (1) a hardware-independent proxy layer, which is
a software component that receives requests from client
applications running on the phone and converts them into
code that can be understood by the second (driver) layer,
id., col. 5, lines 2-4; id., col. 23, line 66 through col. 24,
line 6; and (2) a hardware-specific driver layer, which is a
software component that receives requests from the proxy
layer and generates commands for the specific radio. Id.,col. 2, lines 1-4.
Each of the asserted claims (1-9 and 15-16) requires
an RIL that includes the “hardware-independent” proxy
layer and the “hardware-specific” driver layer. At the
time of the Markman hearing, the parties agreed to the
construction of “hardware independent” as “without
regard to a specific hardware implementation.” After a
dispute arose about whether Motorola was attempting to
read additional limitations into the claim phrase, the ALJ
clarified that “hardware independent” “does not require a
complete lack of knowledge of the underlying hardware or
prohibit any changes to the proxy layer based on the
hardware,” only that the proxy layer be independent of
the “network characteristics” of the hardware. Certain
Mobile Devices, Associated Software, and Components
Thereof, Inv. No. 337-TA-744, EDIS No. 467464, at 24, 31.
Relying on that construction, the ALJ found no in-
fringement. Specifically, he found that the accused
Motorola mobile devices, which contain telephony radios
and run the Android operating system, did not contain the
necessary “hardware independent” proxy layer. Id. at 84-
87. The ALJ also found, and the Commission expressly
affirmed, that Microsoft failed to show that there was a
Microsoft-supported product that practiced the ’762
14 MICROSOFT CORPORATION v. ITC
patent and, hence, failed to meet the domestic-industry
requirement of section 337. Id. at 203-06; Certain Mobile
Devices, Associated Software, and Components Thereof,
Inv. No. 337-TA-744, USITC Pub. 4384, at 18. That
finding rested not on the requirement of a “hardware
independent” proxy layer but on the requirement of a
“hardware specific” driver. Microsoft relied on third-party
mobile devices running Windows Mobile as articles that
practice the ’762 patent, which required Microsoft to show
that the identified devices have a hardware-specific driver
(software), in addition to the Windows Mobile 6.5 operat-
ing system. Certain Mobile Devices, Associated Software,
and Components Thereof, Inv. No. 337-TA-744, EDIS No.
467464, at 203. As with the ’376 patent, however, the
ALJ found that Microsoft failed to make the required
showing for actual articles. Microsoft’s expert, Dr. Olivi-
er, relied on source code only for “an example driver layer”
that Microsoft provides to third-party mobile-device
manufacturers. The ALJ faulted Microsoft for providing
“no evidence that its expert conducted any examination or
analysis of the third-party software that is necessary to
implement the claimed invention or in any way confirmed
how the devices it relies on actually operate.” Id. at 204-
05.
There is substantial evidence to support the Commis-
sion’s determination that Microsoft failed to meet the
domestic-industry requirement because it did not offer
sufficient evidence to prove that any third-party mobile
device implements a hardware-dependent driver layer as
required by the patent. Microsoft’s expert, Dr. Olivier,
analyzed only driver-layer code provided by Microsoft to
third-party mobile-device manufacturers as something
they could choose to load on their devices; he never ana-
lyzed the functionality of an actual driver layer imple-
mented on a phone. And a witness testifying as
Microsoft’s representative under Fed. R. Civ. P. 30(b)(6)
could not identify a single third-party mobile-device
MICROSOFT CORPORATION v. ITC 15
manufacturer that implemented Microsoft’s example
driver-layer code.
Microsoft argues that one portion of Dr. Olivier’s tes-
timony—about the HTC HD2 phone running Windows
Mobile 6.5—established that a Microsoft-supported phone
practiced the ’762 patent. The Commission could find
otherwise. Dr. Olivier did not analyze the driver on the
HD2 and demonstrate that its driver is hardware-specific.
When discussing the driver layer, Dr. Olivier relied on
Microsoft’s sample RIL driver that works with GSM
radios, rather than the actual driver layer code used in
the HD2. And while he made reference to certain stand-
ard telephony commands that the HD2 may use, he did
not establish that such use meant that the driver is
hardware-specific. Under the deferential substantial-
evidence standard of review, we cannot reverse the Com-
mission’s finding that Microsoft lacked sufficient proof
that the actual driver layer in the HD2 is hardware
specific.
In sum, the ALJ had a sufficient basis to find that Mi-
crosoft did not make the necessary showing about third-
party software actually implemented on a mobile device
running Windows 6.5. Because the Commission could
find insufficient proof that the ’762 patent covers the
articles on which Microsoft relied to prove a domestic
industry, it could properly find no section 337 violation.
We therefore affirm that finding without reaching the
issue of infringement.
D
Finally, we address the Commission’s finding of no
section 337 violation based on the ’133 patent. Entitled
“Context Sensitive Menu System/Menu Behavior,” the
’133 patent generally discloses and claims a computer
system having a graphical user interface that presents a
set of representations corresponding to actual computer
resources, including objects and containers, and offers
16 MICROSOFT CORPORATION v. ITC
“context sensitive” menus for user interaction. 4 ’133
patent, col. 2, lines 47-50. When a user selects a comput-
er resource, such as a picture file, a “context menu” is
automatically generated. Id., col. 10, lines 38-47. This
context menu has information of two types: it includes at
least one selection relating to a class of objects to which
that resource belongs (e.g., the class of personal contacts,
or of telephone numbers, or of pictures) and at least one
selection associated with a container in which the selected
computer resource resides (e.g., the directory of contacts,
or of telephone numbers, or of pictures). Id., col. 10, lines
47-54. The menu, moreover, is displayed in a position in
proximity to the selected computer resource. Id., col. 10,
lines 54-56.
Microsoft asserted claims 1, 2, 35, and 36 of the ’133
patent against Motorola. Independent claim 1 requires
retrieving a menu selection relating to a class of
objects to which the selected computer resource
belongs; and
retrieving a menu selection associated with a con-
tainer in which the selected computer resource re-
sides; and
displaying upon the display the set of menu selec-
tions in a menu positioned in the proximity of a
graphical representation of the selected computer
resource.
4 As explained by Microsoft, without contradiction
by the other parties, an object is any distinct entity of
data—for example, a document, spreadsheet, picture file,
or audio file. Brief for Appellant Microsoft at 17 n.2.
Containers are repositories where objects reside, such as
folders, directories, and databases. Id.MICROSOFT CORPORATION v. ITC 17
Id., col. 10, lines 49-56. Independent claim 35 includes
similar “related to” and “associated with” language, and
similar proximity language, though it refers to an “object”
instead of the “computer resource” and involves software
for “adding” the claimed menu selections to the menu.
Id., col. 15, line 13 through col. 16, line 3. The parties
have not identified any material difference in the direct-
infringement issues raised by the two independent claims.
The ALJ construed “a menu selection relating to a
class of objects” as “a choice or option in a menu based
upon or determined by the class of objects to which the
selected computer resource belongs.” Certain Mobile
Devices, Associated Software, and Components Thereof,
Inv. No. 337-TA-744, EDIS No. 467464, at 68. He also
construed “a menu selection associated with a container”
as “a choice or option in a menu based upon or determined
by the environment or context in which the selected
computer resource resides.” Id. Based on those construc-
tions, the ALJ found that the accused products do not
meet the retrieving or adding limitations because each
application in the accused products acts only on a single
class of objects. Id. at 70. Each accused application
“provides the set of menu selections without regard to the
class of objects (since it operates only on a single class of
objects) and only changes selections in the context menu
based on the container.” 5 “The menu selections are ‘static’
and will appear regardless of what object or container has
5 We understand the ALJ’s conclusion to mean
simply that each particular application always summons
up the same menu (and does not vary it according to
different objects), not that all applications (one for pic-
tures, one for text messages, etc.) summon up the same
menu. There is no evidence suggesting the latter, and all
the evidence relied on by the ALJ (and by the Commission
and Motorola here) says only the former.
18 MICROSOFT CORPORATION v. ITC
been selected.” For that reason, the ALJ concluded, they
are not “based upon or determined by” the class of the
object or the container as the claim (as construed) re-
quires. Id. at 70-71.
The ALJ also found that the accused products do not
meet the requirement for display of the menu in proximi-
ty of a graphical representation of the selected computer
resource (or object). The parties agreed that the require-
ment means “displaying on the display the set of menu
selections positioned at or near the location of a graphical
representation” of the resource (or object). The ALJ
ultimately concluded, however, that it is not enough to
meet this requirement that the context menu is actually
close to the graphical representation of the selected com-
puter resource; rather, the ALJ concluded, the placement
of the context menu in relation to the graphical represen-
tation of the selected resource must be “deliberate.” Id. at
72. For that reason, the ALJ found that the context menu
in the main group of accused products is not “positioned in
proximity” to the selected computer resource, because the
context menu in those products is always in the center of
the screen and is not “deliberately” positioned near the
on-screen representation of the selected computer re-
source. Id. at 71. For the other accused products, embod-
ying an “Alternate Design,” the ALJ found that the menu
does not meet the “positioned in the proximity” require-
ment based on an additional interpretation of the re-
quirement, namely, that the menu must not wholly
obscure the graphical representation of the computer
resource. Certain Mobile Devices, Associated Software,
and Components Thereof, Inv. No. 337-TA-744, EDIS No.
467464, at 72. On those grounds, the ALJ found no direct
MICROSOFT CORPORATION v. ITC 19
infringement (or, therefore, indirect infringement), a
finding the Commission adopted. 6
The Commission’s grounds for finding no infringe-
ment rest ultimately on its view of what the claims re-
quire. There is no dispute here about how the accused
products work, only about what the claims require. These
are matters of claim construction, which we review with-
out deference. On a correct understanding of the claim
requirements, we conclude, the main group of accused
products infringe, but the alternative design does not.
As to the “retrieving” and “adding” limitations, the ev-
idence is clear that the accused products contain at least
two applications, each one of which, when a user sum-
mons a menu for an object, displays a menu that contains
both an entry dependent on the particular object (say, a
telephone number) and an entry concerning the container
(say, the inclusion of the number in the contact-list fold-
er). To use the language of the ALJ’s own construction, a
menu for a contact, for example, offers an option to email
the person, which is an option “based upon or determined
by” the fact that this object is a person with an email
address (not, say, a picture), and another option to delete
the contact from the list, which is an option “based upon
or determined by” the file in which the listing resides.
6 The ALJ found the domestic-industry requirement
satisfied for this patent, based on Microsoft’s proof that
certain mobile devices that run the Windows Mobile 6.5
operating system, specifically the LG Fathom, practice
claim 1 of the ’133 patent. Certain Mobile Devices, Asso-
ciated Software, and Components Thereof, Inv. No. 337-
TA-744, EDIS No. 467464, at 201. The Commission
declined to review that finding. Motorola has not chal-
lenged the finding as an alternative ground to support the
Commission’s denial of relief on the ’133 patent.
20 MICROSOFT CORPORATION v. ITC
A related example involves a menu for a call list (from
the accused products), shown in an exhibit from trial
annotated by Microsoft in its opening brief:
Brief for Appellant Microsoft at 55. The image shows that
selecting an object produces a context menu that includes
a menu selection associated with the class of objects (for a
phone number, add to contacts; or call the number) and
another associated with the container (environment or
context) in which the object resides (remove from list).
And it is undisputed that the menu selections change
depending on the selected object: for example, a menu
item about a contact will be to call the contact, which will
not be an item on a photo-menu.
No more is required by the claim language or, even,
the express construction adopted by the ALJ. An applica-
tion gives menu choices, one based on the type of object,
another based on the container. Although the ALJ
seemed to think otherwise, the object-based choice is no
less object-based just because what makes it object-based
is the action that selecting it will perform (call a number,
say, or open a photo). And nothing in the claim language
or the express construction requires an individual appli-
MICROSOFT CORPORATION v. ITC 21
cation itself to offer different menus for different objects
or, what amounts to the same thing, to make an inquiry
about a particular object once the application is launched
to see which of several application-specific menus to
display. The ALJ’s non-infringement finding with respect
to the “retrieving”/“adding” limitations rested entirely on
incorrectly imposing such extraneous restrictions. With-
out those unwarranted additions, the limitations encom-
pass the accused products—both the main group of
products and the alternative design.
The “displaying” limitations also read on the main
group of accused products, for which the Android operat-
ing system provides context menus that are centered on
the screen and occupy most of it. It is undisputed that, at
a minimum, the menu is often at or near the location of
the selected object. On a small-screen device, that may
always be so, because it may be effectively impossible to
be anything but proximate, for lack of space.
The ALJ’s sole basis for finding the display-in-
proximity requirement not to be met for the main group of
products was a notion of “deliberate” positioning that
cannot be justified. No such notion is fairly found in the
claim or the agreed-on construction. The claim does not
require a user’s choice about display; it plainly contem-
plates control of the display by built-in software, making
the language of “deliberate” odd. Perhaps the ALJ meant
that the software must make the menu-display location
an explicit function of the location of the graphical repre-
sentation of the selected object. But the claim speaks only
of results, not the details of underlying functions. Nor
would it support the ALJ’s claim construction to observe
that, on a small screen, the display may always be in
proximity to the location of the object’s representation. 7
7 As the illustration excerpted above suggests, su-
pra p. 20, some context menus in the main group of ac-
22 MICROSOFT CORPORATION v. ITC
Unavoidable proximity is still proximity. And in any
event the practical consequence for small screens does not
alter the evident meaning of the claim language, which is
not limited to small-screen devices. This conclusion
requires reversal of the ’133 patent non-infringement
judgment as to the main group of accused products.
We reach a different conclusion regarding Motorola’s
alternative design. The ALJ found the alternative design
to be non-infringing based on his conclusion that, for the
context menu to be in the proximity of the graphical
representation of the selected object, the graphical repre-
sentation must remain at least partly visible on the
screen when the context menu appears. Noting that there
is little to go on in deciding this question (the ALJ’s
analysis was just one sentence), we adopt the ALJ’s
construction.
The ALJ’s construction adopts the meaning of the
claim terms, and even of the slightly different terms of the
agreed-on construction, that embodies the most natural
understanding of the terms when read on their face.
When we look to the rest of the patent for further enlight-
enment, we see that the drawings, in their only pertinent
examples, show still-visible graphic representations of the
selected objects. The specification offers nothing further
of significance and, in particular, nothing specifically to
support Microsoft’s view that it suffices for the context
menu to appear at a place on the screen near where the
graphical representation of the selected object appeared
immediately before launching the menu and will appear
again if the menu is cancelled. That view is hardly un-
cused products may themselves include a graphical repre-
sentation of the selected object, just inside the top border.
That possibility is unnecessary to our disposition. Moreo-
ver, Microsoft has not pointed to, or sought to rely on,
such a possibility regarding the alternative design.
MICROSOFT CORPORATION v. ITC 23
reasonable given the context, which focuses on the experi-
ence of users who often will think of what is “under” a
menu as still “there,” and in which there may be no
practical difference between an image that is 80% ob-
scured or faded and one no longer visible at all. But there
is not enough to overcome the slightly more natural
understanding that a screen image is not in proximity to
something not actually on the screen.
We therefore adopt the ALJ’s some-visual-persistence
construction. Microsoft has not pressed an assertion of
infringement by equivalents. Accordingly, there is no
basis for disturbing the non-infringement finding for the
alternative design.
In short, as to the main group of accused products,
with no alternative grounds advanced to support the
Commission’s non-infringement finding, we reverse that
finding. No further issue remains about direct infringe-
ment by those products. But the Commission, having
rejected direct infringement, did not reach the additional
requirements for indirect infringement. Without prejudg-
ing the issues raised by those additional requirements in
any way, we think it advisable to remand for the Commis-
sion to address those issues in the first instance. Also for
the Commission to address on remand are the effect of
infringement findings—direct infringement already
established, indirect infringement possibly to be found on
remand—on whether there is a section 337 violation and
what remedy is appropriate, on which we likewise state
no views. See Certain Electronic Devices with Image
Processing Systems Components Thereof, and Associated
Software, Inv. No. 337-TA-724, 2012 WL 3246515, at *13
(Dec. 21, 2011) (Comm’n Op.)
CONCLUSION
The Commission’s determination that Motorola does
not infringe the ’054 patent is affirmed, as is its determi-
nation that Microsoft failed to establish a domestic indus-
24 MICROSOFT CORPORATION v. ITC
try for the ’376 and ’762 patents. The decision of the
Commission finding that Motorola does not infringe the
’133 patent is reversed in part, and the matter is remand-
ed.
AFFIRMED IN PART, REVERSED IN PART,
AND REMANDED