Yesterday (Monday, January 9, 2012), Motorola Mobility asked the ITC for an extension of a deadline for each party's responses to the other party's petition for a review. As I reported last week, both Microsoft and Motorola filed detailed briefs asking the ITC to overrule an Administrative Law Judge (ALJ) who found that Motorola infringed four claims of one of Microsoft's seven patents-in-suit.
Instead of having to comment on Microsoft's petition on or before Friday, January 13, 2012, MMI would like to have until Monday, January 17, 2012. This extension would give Motorola one additional business day and two non-business calendar days (this coming weekend). Microsoft doesn't oppose this request (an extension would also apply to Microsoft's response to Motorola's petition for review), though Motorola surprisingly opposed a similar Microsoft request during the Holiday Season (relating to the deadline for petitions for review).
What's interesting is the basis on which Motorola asks for more time:
"Microsoft's petition raises arguments relating to the ALJ's finding of non-infringement of five patents as well as arguments relating to the ALJ's finding of no domestic industry for four of those patents and his findings relating to invalidity for one of those patents."
Prior to reading Motorola's motion, I had no idea of the scope of Microsoft's petition. I just knew that it was 107 pages long (short of the 113 pages of Motorola's petition), and after I saw Microsoft's request for an extension and, especially, after I read the ALJ's less than well-reasoned initial determination, I expected that they'd take issue with a number of the ALJ's findings. The one sentence I just quoted, however, makes it clear to me how many -- and even which -- patents Microsoft asks the ITC to find Motorola to violate.
In my first analysis of the initial determination, I published a table that sums up the ALJ's findings. For your convenience, I'll just republish that table here, but with an additional column entitled "Review Requested":
| Patent | Deemed | Deemed | Domestic | Review |
| '566 | Yes | Yes | Yes | Yes (by MMI) |
| '054 | Yes | No | No | Yes (by MSFT) |
| '352 | No | No | No | Yes (by MSFT) |
| '133 | Yes | No | Yes | Yes (by MSFT) |
| '910 | No | No | Yes | No |
| '376 | Yes | No | No | Yes (by MSFT) |
| '762 | Yes | No | No | Yes (by MSFT) |
Now let me explain the rationale behind the Yes/No values in the new "Review Requested" column. It's a kind of virtual puzzle game with Boolean logic like some of the riddles that I already liked to solve when I was a kid.
For the '566 patent, it's very simple. Since Motorola filed a "petition for review and contingent petition for review" as opposed to merely a "contingent petition for review", it's clear that MMI doesn't want to accept the initial determination as the final outcome and decided to attack the finding of a violation -- and that finding related to four claims of the '566 patent.
For Microsoft, raising issues with respect to any particular patent only makes sense if the ITC's agreement with Microsoft's take on those issues would result in a finding of a violation. In order for a patent to be deemed violated by the ITC, it must be deemed (i) valid and (ii) infringed and there must be (iii) a "domestic industry" for it, a concept that has an economic and a technical prong. The technical prong is about whether the patent is actually practiced (by the patent holder or a licensee) in the United States. Anyway, the bottom line is that Microsoft needs to challenge all "No" findings (in my table) or there's no point in challenging the ALJ's determination with respect to a given patent at all.
The sentence I quoted further above from Motorola's latest motion indicates that Microsoft wants to overturn the ALJ's finding of non-infringement in five cases, finding of no domestic industry for four of those patents, and finding of invalidity for one of those patents. Let's begin with the easiest part: Microsoft wants a positive domestic industry finding with respect to four more patents, and there were exactly four patents for which the ALJ didn't find a domestic industry (the '054, '352, '376 and '762 patents). Asking for a review of the domestic industry finding wouldn't make sense, for the all-three-or-nothing reason I just explained, if Microsoft didn't also challenge the No's in the other columns for those patents. Wherever the ALJ denied the existence of a domestic industry, he also denied infringement by MMI. Therefore, we know four of the five patents on which Microsoft wants to have a finding of non-infringement reversed.
There are two remaining patents that the ALJ didn't consider infringed (though he did hold those practiced by Microsoft): the '133 and '910 patents. We know that Microsoft wants to overturn one of those two findings. To get a more favorable outcome on the '133 patent, Microsoft "only" needs to overturn the finding of non-infringement, but for the '910 patent, Microsoft would additionally need to overturn the finding of invalidity. But according to Motorola, Microsoft challenges only one (of the two) findings of invalidity, and since the '352 patent is definitely challenged (as the domestic industry situation tells us), Microsoft will also (due to the all-three-or-nothing logic I outlined above) fight for this patent in the other columns, including validity. Therefore, there's no validity-related bullet left for the '910 patent.
I found the ALJ's application of the claim language of the '910 patent very narrow (he doesn't accept a partial replacement of data in a database record a "replacement", which in my view is just an implementation detail that's not really essential to this patent), and his invalidity theory (obviousness over a combination of prior art references) isn't completely convincing either. But it appears that Microsoft decided, for the tactical purpose of narrowing the case, to dismiss this patent from the investigation. It can still assert that one in federal litigation.
The five patents (beyond the one the ALJ deemed violated) Microsoft's petition for review relates to
When I reported on the ALJ's preliminary finding of one patent being infringed by Motorola, I published the related infringement claim chart: a document that details why an accused technology makes use of the teachings of an asserted patent. Infringement claim charts are provided as exhibits to ITC complaints. They are in the public record, though few people actually look them up.
I have now also uploaded the infringement claim charts for the five patents Microsoft's petition for review apparently relates to:
infringement claim chart for U.S. Patent No. 5,758,352 on a "common name space for long and short file names"
infringement claim chart for U.S. Patent No. 6,826,762 on a "radio interface layer in a cell phone with a set of APIs having a hardware-independent proxy layer and a hardware-specific driver layer" (in connection with this patent, the ALJ made the utterly absurd statement that he, contrary to probably the entire ICT industry, considers Android "almost the epitome of hardware dependent software")
infringement claim chart for U.S. Patent No. 7,644,376 on a "flexible architecture for notifying applications of state changes"
infringement claim chart for U.S. Patent No. 5,664,133 on a "context sensitive menu system/menu behavior"
infringement claim chart for U.S. Patent No. 6,578,054 on a "method and system for supporting off-line mode of operation and synchronization using resource state information"
The next step is now for the Commission, the six-member decision-making body at the top of the ITC, to decide whether to conduct a review (which is highly likely to happen) and select the issues that will be looked at. This will probably be known in February. If there are many issues, the Commission may (simultaneously with or subsequently to a review notice) choose to extend the target date for the final decision (currently that would be April 20, 2012).
To the extent the Commission doesn't agree with Microsoft and either declines to review the issues or reviews them but affirms any findings of no violation, Microsoft can appeal the Commission decision to the Federal Circuit. Other parties to ITC investigations have previously done that.
These things take time.
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