Revised ITC Commission remand instructions. I think it is more favorable to IDCC.
Having examined the record of this investigation, including the ALJ's final ID, the
petitions for review, the responses thereto, and the parties’ comments on remand, the Commission
has decided certain issues and has determined to remand the investigation to the Chief ALJ for
assigmnent to a presiding ALJ to determine certain outstanding issues concerning violation of
section 337 set forth below.
With respect to claim construction, the Commission construes the claim limitation
“synchronize” in the asserted claim of the ’847 patent to mean “establishing a timing reference
with the pilot signal transmitted by a base station.”
With respect to validity, the Commission affirms the final ID’s finding that the Lucas
reference does not anticipate the asserted claims of the ’966 and ’847 patents because it fails to
disclose the claim limitations requiring the subscriber unit to transmit a code selected from a
“plurality of different codes” or the limitation requiring the subscriber unit to transmit a
“message” in order to indicate that the subscriber units wants to establish communications with a
base station. The Commission also affimis the final ID’s finding that the Lucas reference does
not render obvious the asserted claims of the ’966 and ’847 patents. The Commission further
affirms the final ID’s finding that the asserted claims of the ’966 and ‘847 patents are not
rendered obvious by the IS-95 references combined with the CODIT reference.
With respect to infringement, the Commission finds that the PRACH preamble used in the
accused Nokia handsets satisfies the “code”/“signal” limitation of the asserted claims of the ’966
and ’847 patents under the Federal Circuit’s revised claim construction. The Commission also
finds that the transmission of the PRACH preambles meets the claim limitation “increased power
level” in the asserted claims of the ’966 and ’847 patents based on the Federal Circuit’s revised
claim construction. The Commission further finds waived Nokia’s argument that the PRACH
preamble and PRACH message signals in the accused Nokia handsets are never transmitted. The
Commission also affinns the ID’s finding that the accused handsets do not satisfy the
“synchronize to the pilot signal” limitation under the doctrine of equivalents.
With respect to the issue of domestic industry, the Commission acknowledges the Federal
Circuit’s finding that Nokia has waived any argument regarding the nexus between its licensing
investments and the asserted patents. The Commission also declines to reconsider the issue of
whether the “economic prong” of the domestic industry requirement has been satisfied under
Certain Multimedia Display and Navigation Devices and Systems, Components Thereof and
Products Containing Same, Inv. No. 337-TA-694, Commission Opinion, Public Version (August
8, 2011).
The Commission remands the following issues to the Chief ALJ for assignment to a
presiding ALJ. Specifically, the Commission remands the issue of whether the accused Nokia
handsets meet the “generated using a same code” limitation or “the message being transmitted
only subsequent to the subscriber unit receiving the indication” limitation in the asserted claims of
the ’966 and ’847 patents. The Commission further remands the issue of whether the 3GPP
standard supports a finding that the pilot signal (P-CPICH) satisfies the claim limitation
“synchronized to a pilot signal” as recited in the asserted claims of the ’847 patent by
synchronizing to either the P-SCH or S-SCH signals under the Commission’s construction of that
claim limitation.
The Commission also remands the investigation for assignment to the presiding ALJ to
reopen the evidentiary record and take evidence concerning Nokia’s currently imported products,
including: (l) whether they contain chips other than those that were previously adjudicated, (2)
whether those chips infringe the asserted claims of the patents-in-suit, and (3) whether the chips
are licensed. The Commission further remands the investigation in order for the assigned ALJ to:
(1) take evidence concerning the public interest factors as enumerated in sections 337(d) and (f);
(2) take briefing on Whetherthe issue of the standard-essential patent nature of the patents-in-suit
is contested; (3) take evidence concerning and/or briefing on Whetherthere is patent hold-up or
reverse hold-up in this case; and (4) include an analysis of this evidence in his remand ID.
The motion for reconsideration is granted in part with respect to claims 6, 9, and 11 of the
’847 patent. The remainder of the motion is denied.
| 