Something a bit out of the ordinary occurred earlier this month in the ITC investigation Certain Devices for Mobile Data Communication, 337-TA-809. There, Unwired Planet had accused Apple and Research-In-Motion of infringing four patents related to data transmission with cellular phones. A trial before the ITC’s Administrative Law Judge Gildea was scheduled to begin October 15, but shortly before that date, Unwired withdrew its Complaint and filed a motion with the Judge Gildea to terminate the investigation. Unwired’s problem was that the Judge had previously construed the asserted claims to require that the mobile devices do not contain “a computer module,” thereby precluding a finding of infringement by the accused devices that do contain module computers. Unwired, however, has not entirely given up on its infringement allegations against Apple and RIM – rather, Unwired continues to pursue those claims in a parallel infringement action in Delaware.
Unwired’s withdrawal of its Complaint raises several interesting questions. First, could Unwired have continued its ITC case?
Yes. Unwired could have proceeded with the trial, and if Judge Gildea ruled that there was no infringement in view of his earlier claim construction, Unwired could have appealed that ruling to the full Commission. In fact, there are instances of and ITC Judge changing at trial an earlier claim construction.
Second, has an ITC complainant ever withdrawn its Complaint before? It is not common for an ITC complaint to give up immediately before trial, but it is not unprecedented either. I recall a case between two Japanese companies in which the patent owner withdrew on a Friday afternoon, where the trial was to start the following Monday.
Certainly, there are circumstances in which a complainant might reasonably conclude that the case was “going against” it and that the likelihood of success at the ITC was not sufficient to justify further efforts. Here, Unwired might have concluded that it was spending too much money on the ITC case – the trial period is by far the most expensive time of any infringement proceeding.
Third, how can Unwire lose at the ITC and continue with the same claims in a District Court? Is there no estoppel? No, there is not. By statute, the ITC decision is not binding on the District Court. On the other hand, the legislative history of the ITC’s Section 337 states that a holding of patent invalidity in the Federal courts is binding on the ITC. (What about a holding of non-infringement in the Federal courts? Please don’t ask me that question).
All that said, though trial judges have very different attitudes toward ITC rulings. Some genuinely believe that an ITC determination on validity or infringement should have no effect on a parallel infringement action. None, zero. Others, on the other hand, say that they are not influenced by the ITC, but actually are. I recall one District Court opinion that was taken largely verbatim from an earlier ITC determination.