United States International Trade Commission
MOBILE ELECTRONIC DEVICES AND RADIO FREQUENCY AND PROCESSING COMPONENTS
Investigation No. 337-TA-1065
NOTICE OF THE COMMISSION’S FINAL DETERMINATION FINDING NO VIOLATION OF
SECTION 337; TERMINATION OF THE INVESTIGATION
International Trade Commission.
SUMMARY: Notice is hereby given that the U.S. International Trade
Commission (the “Commission”) has determined that no violation of 19 U.S.C.
1337, as amended (“Section 337”),
has been proven in the above-captioned investigation and accordingly no
remedial orders shall be issued, which renders moot any issues of remedy, the
public interest, or bonding. The investigation is terminated.
FOR FURTHER INFORMATION CONTACT: Carl P. Bretscher, Office of the
General Counsel, U.S. International Trade Commission, 500 E Street, SW,
Washington, DC 20436, telephone (202) 205-2382. Copies of non-confidential
documents filed in connection with this investigation are or will be available
for inspection during official business hours (8:45 a.m. to 5:15 p.m.) in the
Office of the Secretary, U.S. International Trade Commission, 500 E Street, SW,
Washington, DC 20436, telephone (202) 205-2000. General information concerning
the Commission may also be obtained by accessing its Internet server (https://www.usitc.gov).
The public record for this investigation may be viewed on the Commission’s
Electronic Docket Information System (“EDIS”) (https://edis.usitc.gov).
Hearing-impaired persons are advised that information on this matter can be
obtained by contacting the Commission’s TDD terminal, telephone (202) 205-1810.
SUPPLEMENTARY INFORMATION: On August 14, 2017, the Commission
instituted this investigation based on a Complaint and amendment thereto filed
by Qualcomm Incorporated of San Diego, California (“Qualcomm”). 82 FR 37899
(Aug. 14, 2017). The Complaint alleged that 19 U.S.C. 1337, as amended
(“Section 337”), has been violated by way of importation into the United
States, sale for importation, or sale within the United States after
importation of certain mobile electronic devices and radio frequency and
processing components thereof that infringe one or more claims of U.S. Patent
No. 9,535,490 (“the ’490 patent”), U.S. Patent No. 8,698,558 (“the ’558
patent”), U.S. Patent No. 8,633,936 (“the ’936 patent”), U.S. Patent No.
8,838,949 (“the ’949 patent”),
U.S. Patent No. 9,608,675 (“the ’675 patent”), and U.S. Patent No. 8,487,658
(“the ’658 patent”). The notice of investigation named Apple Inc. of Cupertino,
California (“Apple”) as
Respondent. The Commission also named the Office of Unfair Import
Investigations (“OUII”) as a party.
The Commission, following Qualcomm’s motions, partially terminated the
investigation with respect to the following claims and patents: all asserted
claims of the ’658, ’949, and ’675 patents; claims 1, 20-24, 26, 38, 67, and 68
of the ’936 patent; claims 1, 6, and 8-20 of the ’558
patent; and claims 1-6, 8, 10,
and 16-17 of the ’490 patent. Comm’n Notice (July 17, 2018) (aff’g Order No. 43); Comm’n Notice (May
23, 2018) (aff’g Order No. 37);
Comm’n Notice (May 9, 2018) (amending notice of investigation); Comm’n Notice
(Apr. 6, 2018) (aff’g Order No. 34);
Comm’n Notice (Mar. 22, 2018) (aff’g Order
No. 24); Comm’n Notice (Sept. 20, 2017) (aff’g
Order No. 6). The only claims that remain at issue in this investigation
are claim 31 of the ʼ490 patent, claim 7 of the ʼ558 patent, and claims 19, 25,
and 27 of the ʼ936 patent.
The ALJ held an
evidentiary hearing from June 19-27, 2018.
On September 28, 2018, the ALJ issued a combined initial determination
(“ID”) on violation issues and recommended determination (“RD”) on remedy, the
public interest, and bonding in this investigation. The ID found a violation of Section 337 due to infringement of the
ʼ490 patent. ID at 197. The ID found
no infringement and hence no violation of Section 337 with respect to the ʼ558
patent or the ʼ936 patent. Id. The
ID found that Qualcomm satisfied the technical and economic prongs of the
domestic industry requirement with respect to the ʼ490 patent, but did not
satisfy the technical prong with respect to the ʼ558 patent or the ʼ936 patent.
Id. The ID also found that it was not
shown by clear and convincing evidence that any asserted claim was invalid. Id. The ALJ further recommended that no
limited exclusion order or cease-and-desist order be issued in this
investigation due to their prospective effects on competitive conditions in the
United States, national security, and other public interest concerns. RD at
199-200. The ALJ recommended that bond
be set at zero-percent of entered value during the Presidential review period,
if any. Id. at 201.
Apple and Qualcomm filed their
respective petitions for review on October 15, 2018.
The parties, including OUII,
filed their respective responses to the petitions on October 23, 2018. The
parties also filed their submissions on the public interest on October 31,
2018. Intel Corporation, an interested third party, submitted its comments on
the public interest on November 8, 2018.
On December 18,
2018, the Commission determined to review the final ID in part with respect to
certain findings regarding the ʼ490 patent. 83 FR 64875 (Dec. 18, 2018). The
Commission determined to review the ID’s construction of the term “hold” and
its findings on infringement and the technical prong of domestic industry to
the extent they may be affected by that claim construction. Id. at 64876. The Commission further
determined to review the ID’s findings as to whether claim 31 of the ʼ490
patent is invalid as obvious. Id. at
64876-77. The Commission determined not to review any of the ID’s findings with
respect to the ʼ558 patent, the ʼ936 patent, or the economic prong of the domestic
industry requirement. Id. at 64876.
In the same
notice, the Commission asked the parties to brief issues of remedy, the public
interest, and bonding. Id. at 64877.
The Commission also invited members of the public and interested government
agencies to comment on the RD’s findings on the public interest, remedy, and
bonding. Id. The Commission received
a number of public interest statements from third
parties, including but not
limited to Intel Corporation; ACT/The App Association; the American Antitrust
Institute; the American Conservative Union; Americans for Limited Government;
the Club for Growth; the Computer and Communications Industry Association;
Conservatives for Property Rights; Frances Brevets; Frontiers of Freedom;
Innovation Alliance; Inventors Digest; IP Europe; Public Knowledge and Open Markets
(a joint submission); R Street Institute, the Electronic Frontier Foundation,
Engine Advocacy, and Lincoln Network (a joint submission), et al.; RED Technologies; TiVo; certain members of the U.S. Senate
and the U.S. House of Representatives; Hon. Paul Michel, former Chief Judge,
U.S. Court of Appeals for the Federal Circuit; and various professors of law or
On March 19,
2019, while Commission review was ongoing, the parties informed the Commission
of a jury verdict in a parallel lawsuit in the U.S. District Court for the
Southern District of California, Qualcomm
Inc. v. Apple Inc., Case No. 3:17-cv-01375 (S.D. Cal.). See Letter of D. Okun to D. Johanson,
Chairman, U.S. International Trade Commission of March 19, 2019 (“Qualcomm
Letter”); Respondent Apple Inc.’s Request for Leave to Submit a Supplemental
Response to Question D of the Commission’s Questions on the Public Interest
(“Apple Request”). The jury found that the accused Apple iPhones infringe three
Qualcomm patents. Qualcomm Letter at 1-2. Two of those three patents, the ʼ490
and ʼ936 patents, are also part of this investigation. Id. The jury was not asked to determine, nor did it determine,
whether any claim of the ʼ490, ʼ936, or ʼ949 patents is invalid as obvious. Id.
In view of the
jury’s verdict and damages award, Apple requested leave to supplement its
response to the Commission’s Question D on public interest, as set forth in the
Commission’s notice of partial review. See
83 FR at 64877. Qualcomm filed an opposition to Apple’s request. The
Commission has determined to grant Apple’s request for the limited purpose of
supplementing the record with respect to the jury’s verdict. Neither Apple’s
nor Qualcomm’s submissions affect the outcome of this investigation or any
issue decided by the Commission.
On review of the
submissions from the parties and the public, the prior art, the ID, and the
evidence of record, the Commission has determined: (1) the term “hold” in claim
31 of the ʼ490 patent means “to prevent data from traveling across the bus, or
to store, buffer, or accumulate data”; and (2) Apple has shown by clear and
convincing evidence that claim 31 of the ʼ490 patent is invalid as obvious over
U.S. Patent No. 9,329,671 (Heinrich) in combination with U.S. Patent No.
8,160,000 (Balasubramanian), which reflects knowledge in the art.
previously declined to review, and therefore adopted, the ID’s finding that
there is no infringement of either of the other two patents asserted in this
investigation, the ʼ558 patent or the ʼ936 patent. 83 FR at 64876. Accordingly,
the Commission has concluded that Complainant has not shown a violation of
Section 337 and no remedial orders shall be issued, which renders moot any
issues of remedy, the public interest, or bonding.
for the Commission’s determination is contained in Section 337 of the Tariff
Act of 1930, as amended (19 U.S.C. 1337), and in part 210 of the Commission’s
Rules of Practice and Procedure (19 CFR part 210).
By order of the Commission.
Issued: March 26, 2019
Lisa R. Barton
Secretary to the Commission