UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, DC
Before the Honorable Theodore R. Essex
Administrative Law Judge
In the Matter of CERTAIN 3G MOBILE HANDSETS AND COMPONENTS THEREOF
Investigation No. 337-TA-613 (Remand)
Commission Investigative Staff’s Response to Respondents’ Motion to Supplement Prehearing Briefs Mot. Docket No. 613-100
The Commission Investigative Staff (“Staff�) respectfully submits this response to the January 23, 2015 motion to supplement prehearing briefs filed by Respondents Microsoft Mobile OY (“MMO�), Nokia Inc., and Nokia Corporation as Motion Docket No. 613-100. Respondents seek leave to supplement their two prehearing briefs to address the Supreme Court’s recent decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015). For the reasons discussed below, the Staff opposes Respondents’ motion.
In its January 20, 2015 Teva decision, the Supreme Court noted that Federal Rule of Civil Procedure 52(a)(6) states that a court of appeals “must not . . . set aside� a district court’s “[f]indings of fact� unless they are “clearly erroneous[,]� and held that “this rule and the standard it sets forth must apply when a court of appeals reviews a district court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim.� Teva, 135 S. Ct. at 836. Specifically, “when the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history), the judge’s determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo.� Id. at 841. In some cases, however, the district court will need to consult
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extrinsic evidence in order to understand the background science or the meaning of a term in the relevant art during the relevant time period. “In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the ‘evidentiary underpinnings’ of claim construction that [the Court] discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.� Id. Thus, following Teva, the Federal Circuit will review a district court’s factual findings regarding extrinsic evidence under the “clear error� standard in Fed. R. Civ. P. 52(a)(6).
In this investigation, the Commission originally accepted Administrative Law Judge Luckern’s construction of the claim term “code� as “a sequence of chips[,]� and “synonymous with ‘spreading code’[.]� Certain 3G Mobile Handsets and Components Thereof, Inv. No. 337-TA-613, USITC Pub. No. 4145, Final Initial Det. at 37 (Apr. 2010). The Federal Circuit reversed, holding that the term was not limited to spreading codes alone, and that “the plain meaning of ‘code’ to one of skill in the cellphone communications art is a sequence of bits (if the ones and zeros are transmitted at the ‘data rate’) or chips (if the ones and zeros are transmitted at the faster ‘chip rate’).� InterDigital Commc’ns, LLC v. International Trade Comm’n, 690 F.3d 1318, 1324 (2012), reh’g denied, 707 F.3d 1295 (Fed. Cir. 2013). Respondents have moved for leave to supplement their prehearing briefs to add the argument that because the Federal Circuit did not review the Commission’s construction of the claim term “code� using the “clearly erroneous� standard of review, the Federal Circuit’s construction of that term must be set aside in this remand proceeding. Mot. Mem. at 1 (“Applying the proper standard, the ALJ’s construction of the crucial term ‘code’ and the consequent finding of no violation must be reinstated.�).
The Staff opposes Respondents’ motion. As the Administrative Law Judge has repeatedly recognized, claim construction is not at issue in this remand proceeding, which is
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limited to the topics remanded by the Commission for the Judge’s consideration. See Revised Comm’n Order (Mar. 24, 2014). Those topics did not include any claim construction issues. Accordingly, the Administrative Law Judge has excluded testimony and evidence relating solely to claim construction. See, e.g., Order No. 55 (Jan. 22, 2015) (granting motion in limine to exclude testimony and supporting evidence directed to claim construction for “successively transmits signals�) (“As set forth in the ALJ’s previous orders, claim construction is outside the scope of this remand investigation.�). The Staff submits that further “prehearing� briefing on the topic should not be allowed, either.
In the Staff’s view, not only is the issue outside of the scope of the Commission’s Remand Order, but it is outside of the scope of purview to the Commission, as the Federal Circuit has explicitly decided the correct construction of the claim term “code.� InterDigital Commc’ns, LLC, 690 F.3d at 1324. Under the mandate rule, with regard to issues “actually decided, either explicitly or by necessary implication[,]�
a court below must adhere to a matter decided in a prior appeal unless one of three “exceptional circumstances� exist: (1) subsequent evidence presented at trial was substantially different from the original evidence; (2) controlling authority has since made a contrary and applicable decision of the law; or (3) the decision was clearly erroneous “and would work a manifest injustice.�
Banks v. United States, 741 F.3d 1268, 1276 (Fed. Cir. 2014) (quoting Gindes v. United States, 740 F.2d 947, 950 (Fed. Cir. 1984) (internal quotation marks and citation omitted); Toro Co. v. White Consol. Indus., Inc., 383 F.3d 1326, 1335 (Fed. Cir. 2004)).
The Staff submits that none of the three “exceptional circumstances� identified in Banks apply here. In particular, Teva is not a “contrary and applicable decision of the law� that would justify a departure from the mandate rule. See Banks, 741 F.3d at 1276. Teva clarified that when the Federal Circuit is reviewing a district court’s claim constructions, it should review subsidiary factual findings about extrinsic evidence according to the “clearly erroneous� standard set forth
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in Fed. R. Civ. P. 52(a)(6), rather than reviewing them de novo. The Commission’s factual determinations, however, are reviewed according to the “substantial evidence� standard. E.g., Bourdeau Bros., Inc. v. International Trade Comm’n, 444 F.3d 1317, 1320 (Fed. Cir. 2006); Jazz Photo Corp. v. International Trade Comm’n, 264 F.3d 1094, 1099 (Fed. Cir. 2001); Hyundai Elec. Indus. Co. v. International Trade Comm’n, 899 F.2d 1204, 1208 (Fed. Cir. 1990); see 5 U.S.C. § 706(2)(E). Teva did not address the substantial evidence standard, and therefore is not a directly “contrary and applicable decision of the law.� The Staff submits, therefore, that neither the Administrative Law Judge nor the Commission itself is at liberty to set aside the Federal Circuit’s claim construction, as Respondents’ additional briefing would request.
The argument that Respondents seek to add to their prehearing briefs is not relevant to any issue pending before the Administrative Law Judge, and asks for relief that cannot be granted under the mandate rule. Accordingly, the Staff submits that Respondents’ motion should be denied.
Respectfully submitted,
/s/ Lisa A. Murray
Margaret D. Macdonald, Director
Jeffrey T. Hsu, Supervisory Attorney
Lisa A. Murray, Investigative Attorney
OFFICE OF UNFAIR IMPORT INVESTIGATIONS
U.S. International Trade Commission
500 E Street SW, Suite 401
Washington, DC 20436
202-205-2734
202-205-2158 (facsimile)
January 30, 2015
Certain

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