On Friday, March 22, 2013, Administrative Law Judge David P. Shaw of the United States International Trade Commission issued a remand determination relating to the investigation instituted by the Commission to investigate patent infringement allegations leveled against Microsoft’s Xbox . Judge Shaw determined that the Xbox does not infringe the remaining patent involved in the ITC investigation, which is a complete reversal of his earlier determination that the Xbox did infringe (see below).
Shaw’s remand determination was brief:
It is held that a violation of section 337 of the Tariff Act, as amended, has not occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation, or the sale within the United States after importation, of certain gaming and entertainment consoles, related software, or components thereof that are alleged to infringe asserted claims 1 and 12 of U.S. Patent No. 6,069,896.
The full Commission now has until July 23, 2013, to consider Judge Shaw’s remand ID.
On December 23, 2010, based on a complaint filed by Motorola Mobility, Inc. and Instrument Corporation. The complaint alleged violations of section 337 of the Tariff Act of 1930. The alleged violation being the importation into the U.S. of certain gaming and entertainment consoles, related software, and components that were alleged to infringe U.S. Patent Nos. 5,357,571, 5,319,712, 6,069,896, 7,162,094, and 6,980,596.
On December 16, 2010, the Commission ordered the investigation to commence and look into whether there was infringement of imported goods relating to one or more of claims 6, 8–10,and 17 of the ‘712 patent; claims 9–18 of the ‘571 patent; claims 1–3 and 12 of the ‘896 patent; claims 1–3, 7, and 8 of the ‘596 patent; and claims 5–8 and 10 of the ‘094 patent. The Commission also ordered that inquiry be made into sufficient domestic industry within the United States exists to support ITC jurisdiction. See 75 Fed. Reg. 80843.
Judge Shaw first provided his Initial Determination on April 23, 2012, which found that the domestic injury requirement had been satisfied. Further, the ID found that claims 1 and 12 of the ‘896 patent were infringed; claims 7, 8, and 10 of the ‘094 patent were infringed; claims 1 and 2 of the ‘596 patent were infringed; claims 12 and 13 of the ‘571 patent were infringed; but that claims 6, 8, and 17 of the ‘712 patent were not infringed. Further, Shaw at that time found that the claim 1 of the ‘596 patent was invalid. Thus, four of the asserted patents were found to have valid, infringed claims.
On May 7, 2012, Microsoft filed a petition for review of the ID, and on the same day Motorola also filed a petition for review. On May 15, 2012, the parties filed responses to the petitions filed by the other party. On June 29, 2012, the Commission remanded the investigation to the ALJ. The Commission remand order stated that “[t]he ALJ shall issue an ID within 30 days of this Order extending the target date as he deems necessary to accommodate the remand proceedings, allowing four months for Commission review.” On June 22, 2012, Microsoft filed a motion for partial termination of the investigation, alleging that termination was appropriate relative to the ‘094 and ‘596 patents.
On June 29, 2012, the Commission, after reviewing the ALJ’s final ID, determined that it would review the decision entirely. The Commission specifically ordered the case remanded to the ALJ to:
(1) apply the Commission’s opinion in Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software, Inv. No. 337-TA-724, Comm’n Op. (Dec. 21, 2011); (2) rule on Microsoft’s motion for partial termination of the investigation filed June 22, 2012; and (3) set a new target date for completion of the investigation.
On July 24, 2012, the ALJ issued the ID extending the target date for completion of the investigation from August 23, 2012 to July 23, 2013, and setting March 22, 2013, as the due date for issuance of the remand ID.
On October 24, 2012, Motorola filed a motion to terminate the investigation as to the ‘571 and ‘712 patents based upon withdrawal of allegations pertaining to those patents from the complaint. On November 6, 2012, the ALJ issued the motion granting the removal of the ‘571 and ‘712 patents. This was confirmed by the Commission’s refusal to review that order on December 6, 2013. See Withdrawal of Allegations.
According to The Essential Patent Blog, the FTC-Google/Motorola settlement announced at the beginning of the year caused Google subsidiary Motorola Mobility to request that the ITC drop two standard-essential patents from its Xbox infringement dispute at the ITC. As a result, on January 8, 2013, Motorola Mobility requested that the Commission terminate its investigation into the ‘596 and ‘094 patents.
Thus, after the many twists, turns and FTC settlement, the only patent the remains a part of this ITC investigation is the ‘896 patent. Now we wait to see what the full Commission will do, but by any fair and honest view this is a major win in this ongoing battle for Microsoft.