UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, DC
In the Matter of
CERTAIN 3G MOBILE HANDSETS AND
COMPONENTS THEREOF
Inv. No. 337-TA-613 (Remand)
OFFICE OF UNFAIR IMPORT INVESTIGATIONS' INITIAL COMMENTS
REGARDING FURTHER PROCEEDINGS TO B E CONDUCTED ON REMAND
The Office of Unfair Import Investigations ("OUII") hereby respectfully submits its
response to the Commission's February 4, 2013 Order, which required the parties to "submit
initial comments regarding what further proceedings must be conducted to comply with the
August 1, 2012, judgment of the U.S. Court of Appeals for the Federal Circuit in InterDigital
Communications, LLC v. International Trade Commission, 690 F.3d 1318 (Fed. Cir. 2012)."
Comm'n Order at 3 (Feb. 4, 2013). In OUII's view, it is not necessary to reopen the record or to
remand any issue to an administrative law judge for further investigation. After appropriate
briefing, the Commission should proceed directly to a determination of whether a violation of
Section 337 exists and, i f so, a detennination of the appropriate remedy.
In InterDigital Communications, the Federal Circuit revised two of the Commission's
claim constructions and reversed the noninfringement analysis based on those constructions.1
Specifically, the Court concluded that "[bjecause the Commission erred in construing the claim
terms 'code' and 'increased power level' and in finding, based on those claim constructions, that
1 The patents at issue on appeal and on remand are U.S. Patent No. 7,190,966, "Method and
Apparatus for Performing an Access Procedure" (issued Mar. 13, 2007) ("the '966 patent") and a
continuation of the '966 patent, U.S. Patent No. 7,286,847, "Method and Apparatus for
Performing an Access Procedure" (issued Oct. 23, 2007) ("the '847 patent"). The claim terms at
issue appear in both asserted patents.
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Nokia's products do not infringe InterDigital's patents, we reverse the administrative law judge's
determination of noninfringement and remand for further proceedings." InterDigital
Communications, LLC v. International Trade Commission, 690 F.3d 1318, 1330 (Fed. Cir.
2012), reh'gdenied, Slip Op. No. 2010-1093, 2013 WL 124064 (Fed. Cir. Jan. 10, 2013).
On appeal, the Federal Circuit broadened the constructions of both claim terms at issue.
First, the administrative law judge construed the claim term "code" to mean "a sequence of
chips" and determined that the term is limited to "a spreading code or a portion of a spreading
code." Id. at 1323; Final Initial & Recommended Determinations, USITC Pub. No. 4145 at 34,
38 (Apr. 2010) ("Final ID"). The Court reversed, holding that "by its plain language the term
'code' is broad enough to cover both a spreading code and a non-spreading code." 690 F.3d
at 1324. Second, the administrative law judge construed the term "increased power level" to
mean that the power level of a transmission "is higher than that of a previous transmission" and
"increases during transmission." Id. at 1323, 1327; USITC Pub. No. 4145, at 67, 70. The Court
reversed, holding that it was not necessary for the power level of the code signal to increase
continuously during transmission. Rather, "the administrative law judge should have construed
'increased power level' to include both intermittent and continuous increases in power." 690
F.3d at 1328. In both cases, the Federal Circuit's constructions corresponded with the
constructions advocated by InterDigital before the administrative law judge. See Final ID at 29-
30, 66. The factual record underpinning the Court's claim constructions, therefore, should be
complete.
In light of the Court's claim constructions, the Commission's determination that the '966
and '847 patents are not infringed must be revisited on remand. Id. at 1330. The Federal Circuit
appears to have found that Nokia's accused products fall within the scope of these broader
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constructions. With regard to the claim term "code," the Court noted that "contrary to Nokia's
suggestion, there is no sharp distinction between a spreading code, as that term is used in the
patents, and a scrambling code. In fact, Nokia's scrambling code operates in a manner that is
substantially similar to a spreading code." Id. at 1327. With regard to the term "increased power
level," the Court found that the Commission's narrower construction "had the effect of excluding
systems, such as Nokia's system, that employ discrete power increases during the ramp-up
process, in which the power is increased between transmissions but not during the course of each
transmission." Id. In both cases, the Federal Circuit appears to have determined that Nokia's
accused products meet the claim limitation at issue. The factual bases for these conclusions are
already present in the record.2
The Court recognized, however, that because the Commission adopted narrower claim
constructions, not all of Nokia's noninfringement arguments were explicitly addressed by the
administrative law judge or the Commission, and there may be other bases for concluding that
Nokia's accused products do not infringe. For example, Nokia argued on appeal that "there can
be no infringement in this case because the scrambling codes in the Nokia system are not
transmitted." Id. at 1329. The Court declined to uphold the Commission's determination on a
ground not ruled on by the agency, but held that "[tjhat issue, i f Nokia wishes to raise it again
before the Commission, may be raised on remand." Id. Thus, in OUII's view, on remand the
Commission should allow Nokia to raise this argument, plus any noninfringement arguments that
were raised during the violation proceeding but did not form an explicit basis for the
2 See, e.g., Compls.' Proposed Findings of Facts and Conclusions of Law at CFF 3.370-3.401
(infringement under Compl.'s proposed claim constructions), CFF 3.589-3.600 (power level
increases), CFF 3.709-3.723 (codes), & trial transcripts and exhibits cited therein (June 16,
2009).
Commission's determination of noninfringement.3 OUII submits that Nokia should not be
permitted to raise any new arguments at this stage of the investigation other than the one issue
identified in the Federal Circuit's opinion.
Because the Federal Circuit broadened both claim constructions on appeal, in OUII's
view it is also necessary to revisit the question of whether the asserted patents are invalid in light
of prior art already in the record. As construed by the Court, the asserted claims may now read
on prior art that did not fall within the scope of the Commission's narrower claim constructions,
thus rendering the claims invalid. On remand, OUII submits that the record should not be
reopened to admit additional prior art references. Rather, the Commission should simply
reexamine the prior art that Nokia introduced at the evidentiary hearing to determine whether any
of the administrative law judge's bases for rejecting Nokia's invalidity contentions are affected
by the Federal Circuit's claim constructions.4
OUII submits that there are no other issues pending on remand from the Federal Circuit.
In particular, the Commission's determination that a domestic industry exists was affirmed on
appeal and should not be revisited. 690 F.3d at 1329 ("The administrative law judge held that
InterDigital's activities satisfied the domestic industry requirement, and we agree."). OUII
further submits that the issues to be considered on remand do not require reopening the record or
making new factual determinations. Thus, in OUII's view it is not necessary to remand any issue
to an administrative law judge for further investigation. The remand proceeding can consist of
3 See, e.g., Nokia Posthearing Br. at 11-20 to 11-52,11-58 to 11-63 (June 16, 2009); cf. Final JD
at 100-113 (noninfringement analysis of'966 and '847 patents); Comm'n Notice at 2 (Oct. 16,
2009).
4 See, e.g., Nokia Posthearing Br. at 74-92; cf. Final ID at 131-52 (regarding "Lucas" reference),
152-55 (regarding "CODIT" reference); Comm'n Notice at 2 (Oct. 16, 2009) (taking no position
on validity).
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briefing submitted directly to the Commission, followed by a determination of whether a
violation of Section 337 exists and, i f so, a determination of the appropriate remedy.
Respectfully submitted,
I si Lisa A. Murray
Anne Goalwin, Acting D