17 December 2013Patents

Appeals court upholds ITC ban on Motorola products

A US appeals court has upheld a ruling from the International Trade Commission (ITC) which will see Google-owned Motorola Mobility face an import ban on some of its products.

Motorola had appealed against the ITC’s 2012 decision which ruled that it had infringed a Microsoft patent.

Following the ruling, Motorola was faced with an import ban on all devices deemed to be infringing claims 1, 2, 5 and 6 of the patent.

The patent, US number 6,370,566, was for "generating meeting requests and scheduling” using a mobile device and covered a method for mobile devices to synchronise calendars with computers.

Motorola, which conceded infringement during the initial 2010 investigation, tried to convince the ITC that the patent was invalid and that Microsoft did not meet the domestic industry requirements needed to obtain a banning order.

However, the ITC dismissed the claims and, in a ruling published on December 16, the US Court of Appeals for the Federal Circuit upheld the decision.

The court ruled that there was “substantial evidence” that Motorola had failed to prove that patent was invalid.

Motorola had argued that that the accused feature, which corresponded to a synchronisation component, resided in a previous technology and was therefore not a new invention.

To back up its claims it cited the Apple Newton MessagePad—a personal digital assistant, manufactured by both Apple and Motorola in the 1990’s—which it said included the claimed component.

However, the court rejected the argument.

“While the administrative law judge found it plausible that a synchronisation component resided on the Apple Newton MessagePad, he concluded that the ‘inference of a possibility’ did not rise to the level of clear and convincing evidence,” Chief Judge Rader wrote.

According to Florian Mueller, author of the FossPatents blog, a lack of “convincing” evidence was a “rather difficult” standard of review to overcome.

“It doesn't necessarily mean that the appellate judges would have decided the case the same way with the same set of facts before them. It merely means that there were facts based on which one can't blame the ITC for arriving at its conclusions, but the appeals court might have upheld the opposite decision as well,” Mueller wrote.

Motorola’s argument that Microsoft failed to satisfy the domestic industry requirement was also rejected.

Motorola said Microsoft “improperly relied” on different products to show the technical and economical requirements needed to prove domestic industry.

When proving domestic industry, a complainant has to prove that its products implement sufficient claims to show both technical requirement and prove investment in the US in its development, marketing and manufacturing.

They are known as technical and economic prongs.

Motorola said Microsoft relied on the mobile device’s operating systems, an allegedly different product, for the economic prong and that the requirements were therefore not met.

However, the court ruled that operating systems were part of a mobile device and constituted a single product.

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