ITC's Import Ban on Motorola Phone Outlook-Like App Upheld by Federal Circuit

Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...

By Tony Dutra  

Dec. 16 --Microsoft Corp. had a better result in a second ruling by the U.S. Court of Appeals for the Federal Circuit on Dec. 16 related to its smartphone fight at the International Trade Commission with Motorola Mobility LLC (Motorola Mobility, LLC v. Int'l Trade Comm'n, Fed. Cir., No. 2012-1535, 12/16/13).

The court affirmed the ITC's judgments that should lead to an import ban on devices that infringe Microsoft's patent on a personal information manager such as Microsoft Outlook.

The decision followed a mixed ruling Oct. 3 when the Federal Circuit affirmed infringement of only one of six other asserted patents, which covers how menus are presented to the end user. Microsoft Corp. v. Int'l Trade Comm'n, 731 F.3d 1354, 2013 BL 271317, 108 U.S.P.Q.2d 1443 (Fed. Cir. 2013) (193 PTD, 10/4/13).

Second Case

Microsoft Corp. owns several patents (U.S. Patent Nos. 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 phone.

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 tablet.

Administrative Law Judge Theodore R. Essex issued a 233-page initial determination in December 2011, which the commissioners affirmed in relevant part. Microsoft appealed rulings that led to its limited victory Oct. 3.

Motorola appealed rulings specifically related to the '566 patent, which includes claims on features such as scheduling a meeting from a mobile phone.

Anticipation, Obviousness Arguments Rejected

Chief Judge Randall R. Rader wrote the Federal Circuit's opinion affirming the ITC's decisions.

Motorola's anticipation arguments relied on the patented claims' limitation of “a synchronization component configured to synchronize” on the phone and whether the prior Apple Newton MessagePad had such an element. The MessagePad clearly had a synchronization capability but the court said that “something more than whatever software may be needed” is required to determine whether it had “a synchronization component.”

Motorola's inherency argument, based in part on the '566 patent itself, was to no avail. The court said that the patent “does not state that the only way synchronization may be achieved is with a synchronization component being present on the mobile device.”

The issue as to obviousness revolved around prior art personal information managers. The court ruled that Motorola's expert testimony was inadequate, in that it was only directed to “the general state of prior art desktop-based PIMs and a general desire to implement these alleged prior art features on a mobile device.”

Domestic Industry Requirement Met

Finally, Motorola challenged the domestic industry judgment because, it claimed, Microsoft relied on the mobile devices to show how it met the technical prong of the requirement--on “the articles protected by the patent” under 19 U.S.C. §1337(a)(2)--and relied on the operating system to meet the economic prong requirements of Section 337(a)(3)--either “(A) significant investment in plant or equipment; (B) significant employment of labor or capital; or (C) substantial investment in its exploitation, including engineering, research and development, or licensing.”

Motorola said it was improper to use different “products” to establish a domestic industry.

The court agreed with the ITC that “the operating systems were significant parts of the mobile devices running those operating systems.” More broadly, the court said:

Further, nothing in §337 precludes a complainant from relying on investments 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 specifically tailored, significant aspect of the article is still directed to the article.  


The ITC's judgments were affirmed in all respects.

Judges Sharon Prost and Richard G. Taranto joined the opinion.

Charles K. Verhoeven of Quinn Emanuel Urquhart & Sullivan LLP, San Francisco, represented Motorola. Constantine L. Trela Jr. of Sidley Austin LLP, Chicago, represented Microsoft. Michael Liberman of the ITC's Office of the General Counsel represented the commission.


Text is available at


To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Naresh Sritharan at

Request Intellectual Property on Bloomberg Law