At close of business on Monday, wholly-owned Google subsidiary Motorola Mobility filed a 33-page petition for review with the United States International Trade Commission (USITC, or just ITC) concerning a mid-December preliminary ruling by an Administrative Law Judge on the sole remaining patent in Motorola's complaint against Apple.
Judge Thomas Pender had held that Google's (Motorola's) patent-in-suit, which covers the concept of deactivating a touchscreen when the phone is held close to the user's ear during a call in order to avoid inadvertent input, was invalid because another (earlier-filed) Motorola patent rendered it non-novel. But on remand he had identified an infringement by Apple and deemed the ITC's domestic industry requirement satisfied. This means that a U.S. import ban against Apple's allegedly-infringing products would be a possibility if Google (Motorola) could dissuade the ITC of Judge Pender's invalidity theory.
Apple has filed a 28-page contingent petition for review. It's contingent because Apple preferably doesn't want any review to take place at all. Apple would obviously like the ITC to simply adopt Judge Pender's initial determination, in which case there would be no import ban unless Motorola successfully appealed. But in the event that the ITC grants Google's petition and conducts a review, Apple's contingent petition presents theories that might allow Apple to defend itself successfully against Motorola's complaint even if Judge Pender's invalidity theory was overturned. Both parties' petitions are sealed. I presume that Apple's contingent petition relates to infringement and domestic industry questions, and possibly also to invalidity theories Judge Pender didn't adopt.
The two remaining Google/Motorola patents-in-suit in the Microsoft case, which is why Microsoft told the ITC on Friday it expects the complaint to be withdrawn as a result of the FTC-Google settlement. However, the remaining patent-in-suit in the Apple investigation is not standard-essential. The ITC previously dismissed Google's (Motorola's) claims relating to three other patents, including two declared-essential ones. Google has appealed that decision to the Federal Circuit.
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