Oct. 3 --Certain Motorola mobile phones infringe one patent
asserted by Microsoft, but Motorola's proposed alternative designs do not, the
U.S. Court of Appeals for the Federal Circuit ruled Oct. 3 (Microsoft
Corp. v. Int'l Trade Comm'n, Fed. Cir., No. 2012-1445, 10/3/13).
The court upheld the International Trade Commission's rulings in favor of
Motorola Mobility LLC related to its Blur mobile phones and Xoom tablet, with
the exception of that one patent, which covers how menus are presented to the
end user. However, Motorola had asked the ITC to consider the alternative
designs as a backup, and the court's different claim construction reversals did
not cover those designs.
However, the ITC had found in favor of Microsoft
on a patent not at issue in the instant case, which may still require an
additional loss of functionality in Motorola phones to prevent an import
Microsoft Corp. owns
several patents (5,664,133; 5,758,352; 6,370,566; 6,578,054; 6,826,762;
6,909,910; and 7,644,376) generally related to the operating system of a mobile
Microsoft filed an action at the ITC to bar imports by Motorola of
Blur mobile phones--the Atrix, Backflip, Bravo, Charm, Cliq, Cliq2, CliqXT,
Defy, Devour, Droid, Droid Pro, Droid X, Droid 2, Droid 2 Global, Droid X2,
Flipside, Flipout and Spice--and Google Experience devices, including the Xoom
Administrative Law Judge Theodore R. Essex issued a 233-page
initial determination in December 2011. He found the '352 and '910 patents
invalid for obviousness, but otherwise rejected Motorola's arguments for patent
As Motorola did not contest the ALJ's finding of infringement
of four claims of the '566 patent--on scheduling a meeting from the mobile
phone--and the commission did not reverse the validity judgments , Motorola
filed an appeal as to that patent separately. No. 2012-1535 (Fed. Cir., oral
argument Aug. 6, 2013).
Essex held the other four patents to be not
directly infringed, and he found that Motorola had not induced infringement as
to all seven patents. He further found that Microsoft established the domestic
industry requirement for ITC actions, set forth in 19 U.S.C. §1337(a)(2) and
(a)(3), only for the '133 patent, and not for the '054, '762 and '376
Those judgments formed the basis of Microsoft's appeal here.
Judge Richard G. Taranto wrote the court's
opinion, beginning with a rejection of Microsoft's challenge to the ITC's '054
patent claim construction decisions.
That patent is directed to a
synchronization of data, such as a calendar entry, between the mobile phone and
a central server. The court agreed with the ITC that the asserted claims require
passing version information from one device to the other, which the Motorola
devices do not do.
The court affirmed the failure to meet the domestic
industry requirement for both the '762 and '376 patents as well. The court said
it would not overturn the ALJ's judgment that Microsoft's evidence was
inadequate. In each case, Microsoft presented only “the source code that
Microsoft provides to mobile-phone manufacturers, rather than specific code
actually installed and run on a particular third-party mobile device,” the court
three patents relate to the inner workings of the Microsoft operating system,
but the '133 patent is directed to the user interface. The asserted claims are
on displaying context- and object-sensitive menus, such as what to present to
the end user who clicks on a phone number compared to clicking on a calendar
The court disagreed with the ITC on two points. The first was
generally related to the logic of determining which menu to display, and the
court ruled that the ITC had made “unwarranted additions” to the selection
Second, Essex had determined that the positioning of the
menu--in “proximity” to the object the end user is working on--on the screen
must be “deliberate.” That essentially meant that the logic must make a decision
on the menu's location, while the Motorola devices always positioned the menu in
the center of the screen.
The court saw no support for this “deliberate”
positioning requirement and concluded that the existing design of the Motorola
products was infringing because the center of the screen was always in proximity
to the object. “Unavoidable proximity is still proximity,” the court said.
However, the alternate design Motorola proposed was to cover over the
graphical representation of the object with the menu. The court said that a menu
cannot be “in proximity to something not actually seen on the screen.”
Finally, the court noted that its decision here was related to direct
infringement only, and the commission had not considered ALJ Essex's findings on
indirect infringement. The court thus left it to the commission to reconsider
those arguments on remand.
Chief Judge Randall R. Rader and Judge Sharon
Prost joined the opinion.
Constantine L. Trela Jr. of Sidley Austin LLP,
Chicago, represented Microsoft. Charles K. Verhoeven of Quinn Emanuel Urquhart
& Sullivan LLP, San Francisco, represented Motorola. Michael Liberman, an
attorney in the ITC's Office of the General Counsel, Washington, D.C.,
represented the commission.
To contact the reporter on this
story: Tony Dutra in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Naresh Sritharan at email@example.com
Text is available at http://www.bloomberglaw.com/public/document/Microsoft_Corporation_v_ITC_Docket_No_1201445_Fed_Cir_Jun_11_2012.
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