Last week I reported on the fact that Administrative Law Judge (ALJ) Thomas Pender made a remand initial determination (preliminary ruling on remand issues) concerning Apple's complaint against Samsung. The preliminary ruling itself has now become available on the ITC's document system, and I'll discuss it in this post. For more detail on the procedural situation (the next step is now going to be a Commission review of the entirety of the original initial determination) let me refer you to the post I just linked to.
I had already said in my commentary on the remand notice that the scope of the remand was an opportunity for Apple to "broaden its preliminary win with respect to two patents". The review that is going to commence shortly is mostly an opportunity for Samsung to narrow or overturn Apple's win. (The remand proceedings were handled by Judge Pender, while the review will be conducted by the Commission, the six-member decision-making body at the top of the U.S. trade agency.)
The broadening of Apple's preliminary win occurred with respect to one of the two patents (the more important one in my view), but not the other.
U.S. Patent No. RE41,922 on a "method and apparatus for providing translucent images on a computer display" had already been found infringed by Samsung's Android devices, particularly through the text selection feature of the Android Browser application and the translucent buttons of the Android photo gallery. With respect to both features, Judge Pender cleared Samsung's "designaround products": Samsung presented them to the ITC and requested a ruling. Whether Judge Pender even had jurisdictions over the designaround products is something Apple contests. I discussed the related arguments and issues in December.
Apple is asserting multiple claims of the RE'922 patent in this investigation. The initial determination identified infringements of claims 29, 30, and 33-35, and deemed all these claims valid. All of these claims are method claims, which (as Google is just experiencing in its attempt to get Microsoft's Xbox gaming console banned) can only give rise to an ITC exclusion order (i.e., U.S. import ban) if the act of importation itself constitutes a patent infringement (as opposed to post-importation use per se). In this case, the fact that Samsung provides manuals that tell users how to use the accused features means Samsung is liable for induced infringement, and with this finding of inducement, the act of importation also constitutes a violation of the statute governing the ITC's intellectual property enforcement (Section 337).
What happened in the original initial determination can be described as a minor oversight: Judge Pender wrote that there was no infringement of claims 34 and 35 by the text selection feature because "claim 33 is not infringed" -- but he actually did find that feature to infringe claim 33. The remand notice gave him the chance to correct this oversight. Once he started from the correct premise regarding the infringement of claim 33, it was easy for Judge Pender to conclude that claims 34 and 35, which are derived from it, also infringe:
Claim 34 adds to claim 33 the limitation that the base image (the one that's overlapped by a translucent image) must be active to receive user inputs. The initial determination had already established the fact that this requirement is met in connection with claim 29.
Claim 35 additionally requires the electronic device to be a "handheld device", which is obviously the case in this investigation of Samsung smartphones and tablet computers.
The remand initial determination did not result in a finding that an additional product, the SPH-M920 (distributed through Sprint and also known as the Samsung Transform), infringes claim 3 of U.S. Patent No. 7,912,501 on an "audio I/O headset plug and plug detection circuitry". The ITC staff (which participates in some investigations as a third party and does not make binding decisions) was convinced that the Transform does infringe that patent and asked the Commission to overrule the judge on this one right away. But the Commission gave the judge another chance to decide, and he continues to disagree with the staff.
If you'd like to be updated on the smartphone patent disputes and other intellectual property matters I cover, please subscribe to my RSS feed (in the right-hand column) and/or follow me on Twitter @FOSSpatents and Google+.
Share with other professionals via LinkedIn: