Motorola Mobility v. Itc

United States Court of Appeals
for the Federal Circuit
______________________
MOTOROLA MOBILITY, LLC (formerly known as
Motorola Mobility, Inc.),
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
AND
MICROSOFT CORPORATION,
Intervenor.
______________________
2012-1535
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-744.
______________________
Decided: December 16, 2013
______________________
CHARLES K. VERHOEVEN, Quinn Emanuel Urquhart &
Sullivan, LLP, of San Francisco, California, argued for
appellant. 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.
2 MOTOROLA MOBILITY v. ITC
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 WAYNE W. HERRINGTON, Acting General Counsel. Of
counsel was ANDREA C. CASSON.
CONSTANTINE L. TRELA, JR., Sidley Austin, LLP, of
Chicago, Illinois, argued for intervenor. With him on the
brief were DAVID T. PRITIKIN, RICHARD A. CEDEROTH, and
and ELLEN S. ROBBINS. Of counsel on the brief were
BRIAN R. NESTER, RYAN C. MORRIS, and BRIAN JOHNSON of
Washington, DC. Of counsel were MICHAEL R.
FRANZINGER, of Washington, DC and DOUGLAS LEWIS, of
Chicago, Illinois.
______________________
Before RADER, Chief Judge, PROST, and TARANTO, Circuit
Judges.
RADER, Chief Judge.
The International Trade Commission determined that
Motorola Mobility LLC (Motorola) violated § 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. § 1337, by
importing and selling mobile devices that infringe Mi-
crosoft Corporation’s U.S. Patent No. 6,370,566 (’566
patent). Because substantial evidence supports the
Commission’s determinations that Motorola did not show
that the asserted claims are invalid, and that Microsoft
showed that it satisfied the domestic industry require-
ment, this court affirms.
I.
On October 1, 2010, Microsoft filed a complaint in the
International Trade Commission against Motorola.
Microsoft alleged that the importation and sale of certain
Motorola mobile devices infringed nine Microsoft patents,
including the ’566 patent. The Commission instituted an
MOTOROLA MOBILITY v. ITC 3
investigation shortly thereafter. Certain Mobile Devices,
Associated Software, & Components Thereof (Certain
Mobile Devices), Inv. No. 337-TA-744, Notice of Investiga-
tion, 75 Fed. Reg. 68379–02 (Nov. 5, 2010).
Although the Commission’s investigation involved
multiple Microsoft patents, only the ’566 patent is in-
volved in this appeal. The ’566 patent claims a mobile
device containing a personal information manager (PIM).
PIMs typically are applications that manage scheduling,
communications and similar tasks. ’566 patent col. 1
ll. 38–40. Microsoft Outlook is an example of a PIM. ’566
patent col. 1 ll. 43–45.
Microsoft ultimately asserted claims 1, 2, 5 and 6
against Motorola during the investigation. Claim 1 is the
only independent claim. It recites:
A mobile device, comprising:
an object store;
an application program configured to main-
tain 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 ob-
ject 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.
4 MOTOROLA MOBILITY v. ITC
’566 patent col. 23 ll. 33–49 (emphasis added). Claims 2,
5 and 6 depend from claim 1.
During the investigation, Motorola initially contested
infringement of the ’566 patent. It argued, in relevant
part, that the accused feature corresponding to the
claimed synchronization component resides on a server
rather than on Motorola’s accused mobile devices, as
required by the claims. J.A. 34823–25. According to
Motorola, “[s]erver-based synchronization is a fundamen-
tally different way to synchronize than client-based
synchronization.” J.A. 34824. However, Motorola later
abandoned its non-infringement defense, conceding the
issue. J.A. 42573–74. Motorola instead defended on the
grounds that the asserted claims were invalid under 35
U.S.C. §§ 102 and 103, and that Microsoft did not satisfy
the economic prong of the domestic industry requirement.
The administrative law judge issued his Initial De-
termination on December 20, 2011. Certain Mobile Devic-
es, Inv. No. 337-TA-744, Initial Determination, EDIS No.
467464 (Dec. 20, 2011) (Initial Determination). The
administrative law judge rejected Motorola’s anticipation
defense. Specifically, he found that Motorola had not
demonstrated that the Apple Newton MessagePad—a
prior art personal digital assistant—included the claimed
synchronization component. Id. at 107. Motorola had
argued that the disclosure of a synchronization feature in
a manual for the related Newton Connection Utilities
software demonstrated that the MessagePad satisfied this
limitation. To the contrary, the software referenced in the
manual was installed on the desktop rather than the
mobile device. While the administrative law judge found
it plausible that a synchronization component resided on
the Apple Newton MessagePad, he concluded that the
“inference of a possibility” did not rise to the level of clear
and convincing evidence. Id.
MOTOROLA MOBILITY v. ITC 5
Regarding obviousness, the administrative law judge
found that Motorola had not delineated the scope and
content of the prior art. Id. at 166. Motorola had argued
that alleged admissions from Microsoft’s expert, Dr.
Smith, proved that the various claim limitations were
known in the prior art, and that a motivation existed to
implement those features on mobile devices. The admin-
istrative law judge determined that these “conclusory and
generalized statements” did not rise to the level of clear
and convincing evidence. Id. at 167–68.
The administrative law judge also concluded that Mi-
crosoft satisfied the domestic industry requirement.
Motorola had argued that Microsoft relied on mobile
devices for the technical prong, while relying on the
mobile device’s operating systems, an allegedly different
product, for the economic prong. According to Motorola,
this reliance on different products for the two prongs was
improper. The administrative law judge rejected this
argument, concluding instead that the operating systems
and mobile devices running the operating systems were a
single product for purposes of the domestic industry
requirement. Id. at 208.
Motorola petitioned for Commission review. The
Commission affirmed the administrative law judge’s
determinations in relevant part. Certain Mobile Devices,
Inv. No. 337-TA-744, Commission Opinion, USITC Pub.
4384 (May 18, 2012) (Commission Opinion). The Com-
mission agreed that the Apple Newton MessagePad did
not satisfy the synchronization component limitation.
And it adopted the administrative law judge’s determina-
tion with respect to obviousness without modification.
With respect to the domestic industry requirement, the
Commission affirmed but with a modified reasoning. The
Commission identified the specific subsections of
§ 337(a)(3) that Microsoft satisfied. And it rejected
Motorola’s argument that Microsoft improperly relied on
different products for the technical and economic prong.
6 MOTOROLA MOBILITY v. ITC
The Commission concluded that the operating system is
merely part of the entire mobile device rather than a
distinct product.
Motorola appeals. This court has jurisdiction under
28 U.S.C. § 1295(a)(6).
II.
This court reviews the Commission’s legal determina-
tions without deference and its factual findings for sub-
stantial evidence. Crocs, Inc. v. Int’l Trade Comm’n, 598
F.3d 1294, 1302 (Fed. Cir. 2010). Anticipation, including
whether a limitation is inherent in the prior art, is a
question of fact. Finnigan Corp. v. Int’l Trade Comm’n,
180 F.3d 1354, 1362 (Fed. Cir. 1999). Obviousness is a
legal conclusion based on underlying findings of fact. In
re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). These
factual findings are: (1) the scope and content of the prior
art; (2) the differences between the prior art and the
claims at issue; (3) the level of ordinary skill in the art at
the time the invention was made; and (4) objective indicia
of nonobviousness, if any. Id. (citing Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966)). The party challeng-
ing the patent bears the burden of proving invalidity by
clear and convincing evidence. See Microsoft Corp. v. i4i
Ltd. P’ship, 131 S. Ct. 2238, 2242 (2011). Finally, wheth-
er a complainant has satisfied the domestic industry
requirement generally involves questions of both law and
fact. John Mezzalingua Assocs. v. Int’l Trade Comm’n,
660 F.3d 1322, 1327 (Fed. Cir. 2011).
III.
The Commission affirmed the finding that the Apple
Newton MessagePad did not satisfy the synchronization
component limitation, and consequently did not anticipate
the asserted claims. Motorola appeals this decision.
First, Motorola asserts that the claimed synchronization
component refers to software that merely facilitates
MOTOROLA MOBILITY v. ITC 7
communication and synchronization, as opposed to more
active management. Second, with this understanding of
the limitation, Motorola argues that a synchronization
component must necessarily be present on both the Apple
Newton MessagePad and the desktop in order to accom-
plish synchronization.
The first prong of Motorola’s argument presents a
claim construction dispute. Neither the Commission nor
its administrative law judge construed the term “synchro-
nization component.” And, despite the earlier dispute
over client-based and server-based synchronization, the
parties do not appear to have proffered any construction—
not even when Motorola conceded infringement. The
claim phrase “synchronization component configured to
synchronize” (certain objects with other objects) is there-
fore left with its ordinary meaning. Given the use of an
active transitive verb with the mobile-device component
as the subject, that meaning requires something more
than whatever software may be needed simply for the
mobile device to operate at all and to act entirely under
the control of another device. Under that ordinary mean-
ing, Motorola’s argument is unpersuasive.
Here, the administrative law judge found that while
“[i]t is certainly possible to infer that the Apple Newton
contains a synchronization component, . . . the inference
of a possibility does not rise to the level of clear and
convincing evidence.” Initial Determination at 107. And,
in affirming, the Commission noted that Motorola had
only “shown that the Apple Newton may have a synchro-
nization function—without specifying any of the compo-
nents that provide that synchronization.” Commission
Opinion at 14. In other words, both the judge and Com-
mission found no clear and convincing evidence of any
synchronization component in the Apple Newton Mes-
sagePad, regardless of whether that component actively
managed synchronization or simply facilitated it.
8 MOTOROLA MOBILITY v. ITC
Nevertheless, Motorola asserts that a synchronization
component is inherently present in the Apple Newton
MessagePad. Motorola cites to the ʼ566 patent and expert
testimony as support. Turning first to the ʼ566 patent, it
does not state that the only way synchronization may be
achieved is with a synchronization component being
present on the mobile device. Instead, the ʼ566 patent
simply describes its manner of synchronizing, which
happens to involve a synchronization component on the
mobile device. It is silent as to other possibilities. That
silence is not evidence that synchronization, including the
process referenced in the Newton Connection Utilities
manual, necessarily requires a synchronization compo-
nent on the mobile device. Indeed, Motorola specifically
explained that “[s]erver-based synchronization is a fun-
damentally different way to synchronize than client-based
synchronization.” J.A. 34824.
The expert testimony is likewise unavailing. In a sin-
gle sentence, without explanation, Motorola’s expert
opined that the synchronization function disclosed in the
Newton Connections Utilities manual required the execu-
tion of software on the Apple Newton MessagePad. J.A.
86639. The administrative law judge and Commission did
not act unreasonably in finding this conclusory sentence
did not rise to the level of clear and convincing evidence.
Nor did they act unreasonably in their treatment of the
alleged admission of Microsoft’s expert that the Apple
Newton MessagePad satisfied the synchronization com-
ponent limitation. J.A. 41479. The presiding judge in
this case was best situated to consider the statement of
Microsoft’s expert, Dr. Smith, and the weight it should be
given. Moreover, the alleged admission preceded the
parties’ joint stipulation that the Newton Connections
Utilities source code was likely implemented on a desktop.
J.A. 42428. See also Norgren Inc. v. Int’l Trade Comm’n,
699 F.3d 1317, 1326 (Fed. Cir. 2012) (“The responsibility
of this court is not to re-weigh de novo the evidence on
MOTOROLA MOBILITY v. ITC 9
close factual questions; it is to review the decision of the
Commission for substantial evidence.”).
In sum, the Newton Connection Utilities manual
simply states that “[t]he Newton Connection Utilities
work with the Newton 2.0 operating system,” J.A. 74174,
and that synchronization may be initiated using the
Apple Newton MessagePad, J.A. 74254–55. However, the
manual does not identify what role, if any, the operating
system has in the synchronization of the Apple Newton
MessagePad and the desktop. While the operating system
presumably allowed the MessagePad to operate at all
(without which synchronization, or anything else, might
have been impossible), substantial evidence supports the
Commission’s conclusion that Motorola did not present
clear and convincing evidence that the operating system
necessarily required any additional capacity that would
qualify it as a component “to synchronize.” Inherency
requires more than probabilities or possibilities. Bettcher
Indus. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir.
2011).
Motorola’s obviousness argument fares no better. For
starters, Motorola did not clearly identify the scope and
content of the prior art that it was asserting, or provide
any argument that certain prior art references render a
specific claim obvious. Initial Determination at 166–67.
Motorola instead relied on statements from Microsoft’s
expert, Dr. Smith, concerning prior art desktop-based
PIMs discussed in the ʼ566 patent. But, according to the
presiding judge, “Dr. Smith’s ‘admissions’ however are
insufficient, on their own, to carry [Motorola’s] burden of
proving invalidity.” Id. at 168 n.35. This judge character-
ized Motorola’s obviousness analysis as nothing more
than “conclusory and generalized sentences.” Id. at 168.
The administrative law judge had no obligation to guess
about which prior art combinations Motorola asserted,
and how those references rendered the claims invalid. Id.
10 MOTOROLA MOBILITY v. ITC
at 167. The Commission affirmed as well. Commission
Opinion at 15.
Motorola had the burden of proving that the asserted
claims would have been obvious at the time of invention,
including identifying the scope and content of the prior
art, and the differences between the prior art and the
asserted claims. But Motorola only proffered alleged
admissions from Microsoft’s expert, Dr. Smith, concerning
the general state of prior art desktop-based PIMs and a
general desire to implement these alleged prior art fea-
tures on a mobile device. Dr. Smith’s testimony was not
even necessarily specific to Schedule+ or Outlook in each
instance. Moreover, Motorola did not specifically explain
in its briefing to the administrative law judge how the
desktop-based PIMs render any particular claim obvious.
Neither the administrative law judge, nor the Commis-
sion, nor this court has the task of divining an invalidity
defense from the record. See Schumer v. Lab. Computer
Sys., 308 F.3d 1304, 1316 (Fed. Cir. 2002). At all times,
the burden of persuasion rests on the party challenging
the patent. Here, substantial evidence supports the
administrative law judge’s conclusion, affirmed by the
Commission, that Motorola did not prove by clear and
convincing evidence that the asserted claims would have
been obvious to one of ordinary skill in the art.
Finally, this court also affirms the Commission’s de-
termination that Microsoft satisfied the domestic industry
requirement. A complainant asserting a patent under
§ 337 must prove that a domestic industry “relating to the
articles protected by the patent” exists or is in the process
of being established. 19 U.S.C. § 1337(a)(2); see also Alloc,
Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1375 (Fed. Cir.
2003). For purposes of § 337, a domestic industry exists if
there is, “with respect to the articles protected by the
patent . . . (A) significant investment in plant and equip-
ment; (B) significant employment of labor or capital; or
(C) substantial investment in its exploitation, including
MOTOROLA MOBILITY v. ITC 11
engineering, research and development, or licensing.” 19
U.S.C. § 1337(a)(3). Sections 337(a)(2) and (a)(3) are
commonly referred to as the technical and economic
prongs, respectively.
With respect to the domestic industry requirement,
both the administrative law judge and the Commission
rejected the assertion that Microsoft was relying on
separate products for the technical and economic prongs.
The Commission affirmed the finding that the operating
systems were significant parts of the mobile devices
running those operating systems. Commission Opinion at
10–11 (“The operating system is a part of the entire
mobile device . . . .”); Initial Determination at 198 (“[T]he
operating systems are specifically tailored to meet the
specifications and demands of each mobile device that
utilizes it . . . [I]t is clear that the operating system is
‘significant’ to the mobile device.”). Further, nothing in
§ 337 precludes a complainant from relying on invest-
ments or employment directed to significant components,
specifically tailored for use in an article protected by the
patent. The investments or employment must only be
“with respect to the articles protected by the patent.” 19
U.S.C. § 1337(a)(3). An investment directed to a specifi-
cally tailored, significant aspect of the article is still
directed to the article.
In addition, the Commission provided a thorough
summary of Microsoft’s investments in facilities and
equipment, employment of labor and capital, and invest-
ments in research and development. Commission Opinion
at 9–10. The Commission concluded that “the evidence
shows that Microsoft has made significant and/or sub-
stantial investments . . . related to the development” of its
operating systems satisfying each of § 337(a)(3)(A), (B),
and (C). Id. at 9. Based on this court’s review, substan-
tial evidence supports the Commission’s determination
that Microsoft’s investments and employment satisfied
§ 337(a)(3).
12 MOTOROLA MOBILITY v. ITC
IV.
The Commission’s determination that Motorola failed
to prove the asserted claims of the ’566 patent are invalid
is supported by substantial evidence, as is the Commis-
sion’s determination that Microsoft satisfied the domestic
industry requirement with respect to the ’566 patent.
Therefore, this court affirms.
AFFIRMED