motorola opening brief on commission review

7/29/2019 Motorola Opening Brief on Commission Review

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UNITED STATES INTERNATIONAL TRADE COMMISSION

WASHINGTON, DC

In the Matter of

CERTAIN WIRELESS

COMMUNICATION DEVICES,

PORTABLE MUSIC and DATA

PROCESSING DEVICES, COMPUTERS

AND COMPONENTS THEREOF

Investigation No. 337-TA-745

COMPLAINANT MOTOROLA MOBILITY LLCS

OPENING BRIEF ON COMMISSION REVIEW

Date: March 8, 2013


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TABLE OF AUTHORITIES

Page

Cases

ActiveVideo Networks, Inc. v. Verizon Commc'ns, Inc.,694 F.3d 1312 (Fed. Cir. 2012)....................................................................................13, 23, 24

Cephalon, Inc. v. Watson Pharms., Inc.,No. 2011-1325, 2013 WL 538507 (Fed. Cir. Feb. 14, 2013) ............................................13, 24

Colorado v. New Mexico,467 U.S. 310 (1984) ...................................................................................................................6

Crocs, Inc. v. Int'l Trade Comm'n,

598 F.3d 1294 (Fed. Cir. 2010)................................................................................................26

Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc.,807 F.2d 955 (Fed. Cir. 1986)..................................................................................................27

In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,676 F.3d 1063 (Fed. Cir. 2012)..................................................................................................7

Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,851 F.2d 1387 (Fed. Cir. 1988)................................................................................................29

Gambro Lundia AB v. Baxter Healthcare Corp.,110 F.3d 1573 (Fed. Cir. 1997)................................................................................................26

Glaxo Grp. Ltd. v. Apotex, Inc.,376 F.3d 1339 (Fed. Cir. 2004)................................................................................................26

Graham v. John Deere Co. of Kansas City,383 U.S. 1 (1966) ...........................................................................................................6, 27, 29

Harris Corp. v. Federal Express Corp.,No. 2012-1094, 2013 WL 174185 (Fed. Cir. 2013) ................................................................28

Intel Corp. v. United States Int'l Trade Comm'n,946 F.2d 821 (Fed. Cir. 1991)....................................................................................................6

Iron Grip Barbell Co. v. USA Sports, Inc.,392 F.3d 1317 (Fed. Cir. 2004)..................................................................................................5

KSR Int'l Co. v. Teleflex Inc.,550 U.S. 398 (2007) .............................................................................................6, 7, 18, 23, 25

Mintz v. Dietz & Watson, Inc.,679 F.3d 1372 (Fed. Cir. 2012)..........................................................................................27, 28


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In re NTP, Inc.,654 F.3d 1279 (Fed. Cir. 2011)............................................................................................7, 19

Retractable Techs., Inc. v. Becton, Dickinson & Co.,653 F.3d 1296 (Fed. Cir. 2011)..................................................................................................6

Sjolund v. Musland,847 F.2d 1573 (Fed. Cir. 1988)................................................................................................27

Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,655 F.3d 1364 (Fed. Cir. 2011)......................................................................................7, 24, 28

Stryker Corp. v. Davol Inc.,234 F.3d 1252 (Fed. Cir. 2000)..................................................................................................5

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.(Transocean I),617 F.3d 1296 (Fed. Cir. 2010)................................................................................................27

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.(Transocean II),699 F.3d 1340 (Fed. Cir. 2012)..........................................................................................27, 33

Unigene Labs., Inc. v. Apotex, Inc.,655 F.3d 1352 (Fed. Cir. 2011)............................................................................................6, 25

Uniroyal, Inc. v. Rudkin-Wiley Corp.,837 F.2d 1044 (Fed. Cir. 1988)................................................................................................27

Vizio, Inc. v. Int'l Trade Comm'n,605 F.3d 1330 (Fed. Cir. 2010)................................................................................................22

Vulcan Eng'g Co. v. Fata Aluminum, Inc.,278 F.3d 1366 (Fed. Cir. 2002)................................................................................................27

Statutes

19 C.F.R. 210.43(b)(2) .................................................................................................................18

35 U.S.C. 103 ................................................................................................................................6

35 U.S.C. 282 ................................................................................................................................5

Other Authorities

In the Matter of Certain Optical Disk Controller Chips and Chipsets and Prods. ContainingSame, Including DVD Players and PC Optical Storage Devices, Inv. No. 337-TA-506,Comm'n Op.,2007 WL 4713920 (Public Version, September 28, 2005) ......................................................18


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TABLE OF ABBREVIATIONS

ALJ Administrative Law Judge

CDX Complainants demonstrative exhibit

CIB

CommOp

Motorola Initial Post-Hearing Brief

Commission Opinion dated August 29, 2012

CPreHB Motorola Pre-Hearing Brief

CRB Motorola Post-Hearing Reply Brief

CX Complainants exhibit

ID Initial Determination dated April 24, 2012

JX Joint Exhibit

Remand ID Initial Determination dated December 18, 2012

RDX Respondents demonstrative exhibit

RIB Apple Initial Post-Hearing Brief

RPreHB Apple Pre-Hearing Brief

RRB Apple Post-Hearing Reply Brief

RX Respondents exhibit

Tr.

DWS

RWS

Transcript of Pre-Hearing Conference and Hearing

Direct Witness Statement

Rebuttal Witness Statement

862 patent

Harris

Hoeksma

Van Schyndel

JX-003, U.S. Patent No. 6,246,862

RX-006, U.S. Patent No. 6,052,464

RX-007, U.S. Patent No. 5,894,298

JX-57, U.S. Patent No. 5,729,604


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Complainant Motorola Mobility, LLC1

(Motorola) respectfully submits this brief on

review by the U.S. International Trade Commission (Commission) of the presiding ALJs

Remand ID in the above-captioned investigation, pursuant to the Notice of Commission Decision

to Review in Part a Remand Initial Determination Finding No Violation of Section 337

(Notice) dated February 19, 2013, and Commission Rules 210.45(a) and 210.50(a)(4).

I. INTRODUCTIONProcedural Background: Motorola filed the Complaint in this investigation on October

6, 2010, alleging that Apple infringed six patents.2

As relevant to this brief, Motorola alleged

that Apples iPhone 4 and iPhone 3GS infringe claim 1 of the 862 patent. See CIB at 128. On

November 3, 2010, the Commission issued a Notice of Investigation. The hearing in this

investigation began on December 8, 2011 and concluded on December 16, 2011. On April 24,

2012, ALJ Pender issued an Initial Determination (ID) finding claim 1 of the 862 patent

invalid as indefinite, but did not address several other issues related to the 862 patent, including

infringement, anticipation, obviousness, and the domestic industry technical prong requirement.

See ID at 181-82.

On May 7, 2012, Motorola petitioned the Commission to reverse the finding of

indefiniteness. In an opinion dated August 29, 2012, the Commission granted Motorolas

petition and remanded the issues of infringement, validity, and technical prong for the 862

patent to the ALJ for further proceedings consistent with its opinion. On December 18, 2012,

Judge Pender issued a second Initial Determination (Remand ID), finding that Apple infringed

1On June 22, 2012, complainant Motorola Mobility, Inc. was converted into a Delaware

limited liability company, changing its name to Motorola Mobility, LLC.

2Pursuant to motions filed by Motorola, the investigation as it related to U.S. Patent No.

5,259,317 was terminated prior to the hearing (see Order No. 29), and the investigation as itrelated to U.S. Patent No. 7,751,826 was terminated after the hearing (see Order No. 33).


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claim 1 of the 862 patent and that Motorola satisfied both the economic and technical prongs of

the domestic industry requirement. In reaching his decision, Judge Pender adopted Motorolas

proposed construction of the phrase the sensor to disable communication of the input signal to

the processing section as having its plain meaning. However, Judge Pender also found, based

on hissua sponte construction of the term touch sensitive input device, that claim 1 was

invalid as anticipated by U.S. Patent No. 6,052,464 (Harris). On January 7, 2013, Motorola

petitioned the Commission for review of the ALJs claim construction ruling and finding of

invalidity, and Apple filed a contingent petition on the issue of infringement. Apple did not

petition for review of the ALJs construction of the phrase the sensor to disable communication

of the input signal to the processing section.

In its Notice of February 19, 2013, the Commission informed the parties that it would

review the ALJs claim construction of touch sensitive input device and his findings of

invalidity and infringement. The Commission also determined, on its own initiative, to review

the ALJs finding of non-obviousness. The Commission requested the parties to brief the issue

of whether claim 1 of the 862 patent is obvious in view of Harris in combination with the

knowledge of one of ordinary skill in the art or U.S. Patent No. 5,894,298 (Hoeksma).

Response to the Commissions Question: The evidence overwhelmingly shows that

claim 1 of the 862 patent would not have been obvious to a person of ordinary skill for several

reasons. The inventors of the 862 patent were the first to recognize that the use of large touch

screens in mobile phones created a high risk that the user would inadvertently actuate the touch

screen during phone calls, when the phone touched the users ear or cheek. In 1999, large touch

screens were generally too expensive to implement in mobile devices, in part because they

required a lot of processing power, and they had not been widely adopted by the industry. As a


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result, there was no recognition in the industry that the use of a touch screen in a mobile phone

created a problem of inadvertent actuation and, certainly, no one had thought to solve the

problem using a proximity sensor as described in the claimed invention.

At the hearing, Apple offered no meaningful evidence to the contrary. Its expert, Mr.

Lanning, provided no support for his unsubstantiated opinions as to the state of the art in 1999,

merely concluding that it was well known to use a proximity sensor to disable inadvertent

inputs from . . . sections on a touch sensitive screen. Lanning DWS at Q/A 490. This is

nothing more than pure hindsight bias. As Judge Pender correctly found, Apple provide[d]

absolutely no citation to any record evidence in support for its obviousness arguments, other

than a single citation to the Hoeksma patent itself. Remand ID at 73. Based on the lack of

evidence, Judge Pender correctly determined that Apple has failed as a matter of law to set forth

aprima facie case of obviousness under either of its theories. Id. at 74.

The prior art references at issue (Harris and Hoeksma) do not disclose or suggest the

invention of the 862 patent, whether taken alone or in combination. Harris does not

contemplate using a proximity sensor to prevent the inadvertent actuation of a touch screen; nor

is there any recognition of this problem. Similarly, Hoeksma merely describes turning off the

backlight of the display, which has no effect on the input signal generated from the touch screen.

See Hoeksma at 4:9-17. Thus, when the backlight in Hoeksma is off, the touch screen remains

fully functional, and therefore it does not disclose disabling communication of an input signal

when the touch sensitive input device is in close proximity to a user.

The mere fact that touch screens were known in the prior art does not render claim 1 of

the 862 patent obvious. During prosecution, the U.S. Patent and Trademark Office (PTO)

considered prior art that disclosed a touch screen, such as Van Schyndel. See Van Schyndel at


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1:20-23 (describing portable wireless terminals having elaborate displays including touch and

writeable displays wherein the user needs to see and perhaps write on the display while

listening.). The relevant disclosure of Van Schyndel is nearly identical to that of Hoeksma

because both disclose using a proximity sensor to turn off the backlight of a display to save

power. Id. at 5:9-17. The PTOs consideration of Van Schyndel is further evidence that the 862

patent would not have been obvious to one of ordinary skill in the art in 1999.

Finally, Motorola presented strong evidence regarding several secondary considerations

of non-obviousness. Before the ALJ, Apple argued the invention of the 862 patent was a

trivial solution to a trivial problem. RDX-3-54; Lanning, Tr. at 1196:14-1197:1. But its former

CEO (Mr. Steve Jobs) described the incorporation of a proximity sensor into the iPhone as a

breakthrough: [a]nother breakthrough was the sensor that figured out when you put the

phone to your ear, so that your lobes didnt accidentally activate some function. Lanning, Tr. at

1197:2-1198:25;see Remand ID at 14 n.1.

See

Lanning, Tr. at 1237:21-1238:17. Motorola also proved that the 862 patent has been

successfully licensed, showing its commercial success within the industry.

Apple has not met its burden of proving obviousness by clear and convincing evidence,

and Motorola respectfully requests that the Commission affirm the ALJs finding that claim 1 of

the 862 patent would not have been obvious in view of Harris in combination with the

knowledge of one of ordinary skill in the art or in combination with Hoeksma. Remand ID at 74.


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II. QUESTION ON OBVIOUSNESS OF THE 862 PATENT: DOES THE EVIDENCEIN THE RECORD SUPPORT A FINDING THAT CLAIM 1 OF THE 862

PATENT IS OBVIOUS IN VIEW OF HARRIS 464 IN COMBINATION WITH

THE KNOWLEDGE OF ONE OF ORDINARY SKILL IN THE ART OR IN

COMBINATION WITH HOEKSMA 298?

In its Notice, the Commission requested briefing on the following issue:

Does the evidence in the record support a finding that claim 1 of the 862 patent is

obvious in view of Harris 464 in combination with the knowledge of one of

ordinary skill in the art or in combination with Hoeksma 298 where the evidencedemonstrates that the existence of portable communication devices using touch

sensitive input devices, including touch screens, were known in the art prior to

the filing of the application leading to the 862 patent and is disclosed in Hoeksma298?

In discussing this issue, please refer to the teachings of the references, theknowledge of one of ordinary skill in the art at the time of filing the 862 patent

application, and the evidence in the record regarding the motivation to combine

Harris 464 with the knowledge of one of ordinary skill in the art or withHoeksma 298. Also, please address whether there are any secondary

considerations that would prevent a finding of obviousness.

The answer to the Commissions question is no, the evidence does not show that claim 1 of the

862 patent would have been obvious in light of any of the identified combinations. As shown

below, the prior art does not disclose several critical limitations of the patented invention, and

there would have been no suggestion to combine the references to achieve the claimed invention.

The inventors of the 862 patent were the first to recognize and solve the problem of inadvertent

actuation of large touch screens on mobile devices. Thus, Apple has not met its burden of

proving obviousness by clear and convincing evidence, and Motorola respectfully requests that

the Commission affirm the ALJs determination on this issue.

A. Apple Has a High Burden to Prove ObviousnessA patent is presumed valid, and Apple has the burden of proving invalidity by clear and

convincing evidence. 35 U.S.C. 282;Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317,

1320 (Fed. Cir. 2004); Stryker Corp. v. Davol Inc., 234 F.3d 1252, 1259 (Fed. Cir. 2000). Clear


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and convincing evidence has been described as evidence which proves in the mind of the trier of

fact an abiding conviction that the truth of [the] factual contentions [is] highly probable.

Intel Corp. v. United States Intl Trade Commn, 946 F.2d 821, 830 (Fed. Cir. 1991) (quoting

Colorado v. New Mexico, 467 U.S. 310, 316 (1984)).

35 U.S.C. 103 precludes the grant of a patent that would have been obvious to one of

skill in the art at the time of the invention:

A patent may not be obtained if the differences between the

subject matter sought to be patented and the prior art are such that

the subject matter as a whole would have been obvious at the timethe invention was made to a person having ordinary skill in the art

to which said subject matter pertains.

35 U.S.C. 103. The ultimate judgment of obviousness is a legal determination. KSR Intl

Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007) (citing Graham v. John Deere Co. of Kansas City,

383 U.S. 1, 17 (1966)). Obviousness is based on several underlying factual findings, including

(1) the scope and content of the prior art; (2) the level of ordinary skill in the pertinent art; (3) the

differences between the claimed invention and the prior art; and (4) evidence of secondary

factors, such as commercial success, long-felt need, and the failure of others. Retractable

Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1310 (Fed. Cir. 2011).

[A] patent composed of several elements is not proved obvious merely by demonstrating

that each of its elements was, independently, known in the prior art. KSR,550 U.S. at 418;see

also Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citingKSR, 550

U.S. at 418). Instead, a party seeking to invalidate a patents claims as obvious must show, by

clear and convincing evidence, that a person of ordinary skill at the time of the invention would

have selected and combined those prior art elements in the normal course of research and

development to yield the claimed invention. Id. (citingKSR, 550 U.S. at 421).


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Often it will be necessary for a court to look to interrelated teachings of multiple

patents; the effects of demands known to the design community or present in the marketplace;

and the background knowledge possessed by a person having ordinary skill in the art, all in order

to determine whether there was an apparent reason to combine the known elements in the fashion

claimed by the patent at issue. KSR, 550 U.S. at 418. Generally, a party seeking to invalidate

a patent as obvious must demonstrate by clear and convincing evidence that a skilled artisan

would have had reason to combine the teaching of the prior art references to achieve the claimed

invention, and that the skilled artisan would have had a reasonable expectation of success from

doing so. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676

F.3d 1063, 1068-1069 (Fed. Cir. 2012) (internal quotations omitted).

Importantly, the great challenge of the obviousness judgment is proceeding without any

hint of hindsight. Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed.

Cir. 2011). The Federal Circuit has cautioned that [c]are must be taken to avoid hindsight

reconstruction by using the patent in suit as a guide through the maze of prior art references,

combining the right references in the right way so as to achieve the result of the claims in the

suit. In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (internal quotations omitted).

B. The Claimed Invention Would Not Have Been Obvious in Light of the Scopeand Content of the Prior Art

1. The Inventors of the 862 Patent were the First to Recognize andSolve the Problem of Inadvertent Touch Screen Actuations

When the 862 patent was filed in 1999, the use of touch screens in mobile phones was

still quite new. The addition of a touch sensitive input device, such as a touch screen or touch

pad, was a way of improving the conventional user interface by allowing a user to control the


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device via finger tip touching or handwriting.3

862 patent at 1:17-37. The inventors of the

862 patent were the first people to recognize that the addition of a large touch screen to a

smartphone or other portable communication device created a problem. See id. at 3:3-8. As

explained in the specification, the large screen facilitated the performance of PC or PDA

functions, but:

[u]nfortunately, the large user actuatable area makes the touch screen 128

extremely susceptible to inadvertent actuations by a users face when theuser is participating in a telephone call (i.e., listening at the speaker bezel

110 while speaking into the microphone aperture 112).

Id. at 2:67-3:8. When placed on the same side of the phone as the speaker and microphone, the

touch sensitive input device becomes susceptible to inadvertent actuations by a users head while

the user is listening at the speaker and/or speaking into the microphone. Id. at 1:40-46. In other

words, when a user places the phone to their head during a call, their ear or cheek may contact

the screen causing the phone to behave undesirably perhaps ending the call or placing it on

mute.

3As set forth in Motorola's Petition to the Commission dated January 7, 2013, hereby

incorporated by reference in its entirety, Motorola contends that, when properly construed, the

term "touch sensitive input device" does not include a physical keypad with pushbutton keys.

Motorola's use of the term "touch sensitive input device" throughout this brief assumes thatconstruction.


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862 patent at Fig. 1.

In order to solve this problem, the inventors developed a system in which the

smartphone has a sensor that triggers when brought into close proximity to the user and,

while triggered, disables the touch sensitive input device. Id. 3:17-20. One embodiment of the

invention prevents a smartphone from taking unwanted action in response to touching the users

head during a telephone call. In this way, inadvertent actuations are prevented while the user

holds the portable communication device against his or her head to facilitate communication.

Id. 2:6-9.

Motorola is asserting claim 1 of the 862 patent against Apples iPhone 4 and iPhone

3GS. Claim 1 reads as follows:

1. A portable communication device comprising:

a processing section to control operation of the portable

communication device in response to an input signal;


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a user interface comprising a touch sensitive input device

coupled to the processing section, the touch sensitive input device

actuatable to generate the input signal; and

a sensor coupled to the user interface, the sensor to disable

communication of the input signal to the processing section when the

portable communication device is positioned in close proximity to a user,

thereby, preventing inadvertent actuation of the touch sensitive input

device.

862 patent at 8:20-31.

2. Level of Ordinary Skill in the ArtIn the Remand ID, Judge Pender found that a person of ordinary skill in the art at the

time of the invention of the 862 patent would have a Bachelors or Masters degree in Electrical

Engineering, Computer Science or equivalent, and at least two years of experience in

telecommunications technology, including at least one year of technical user interface

requirements definition and/or design of wireless handsets. Remand ID at 16. The parties do

not dispute this finding.


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3. In 1999 the Problem of Inadvertent Actuation of a Touch Screen WasNot Recognized

In 1999, when the 862 patent was filed, touch screens for mobile phones were still a new

technology. As Apples expert, Mr. Lanning, testified:

Providing a proximity sensor in a mobile phone to disable inadvertentinput by the user during a voice conversation was generally not an issue

for the earliest model phones because they (i) were much larger than the

phones used more recently, (ii) did not have touch screen displays, and (iii)required considerable pressure to depress the keys on the keypad.

Lanning DWS at Q/A 404. On this point, Motorolas expert, Dr. Madisetti, agreed. Madisetti

RWS at Q/A 15. The experts disagreed, however, overwhen the state of the art shifted such that

inadvertent actuation of a touch screen became a recognized problem in the industry. Mr.

Lanning testified that this shift had already occurred before 1999 by which time prohibiting

inadvertent inputs was a widely known issue and was solved by the mobile phone suppliers.

Lanning DWS at Q/A 405. He also contended that it was already known to use proximity

sensors to solve this problem. Id. Dr. Madisetti, on the other hand, testified that [i]t would be

several more years beforethe inclusion of a large touch screen that created a risk of inadvertent

actuation . . . became common. Madisetti RWS at Q/A 14. The evidence supports Dr.

Madisettis conclusion.

Notably, Mr. Lanning did not cite to a single prior art reference or provide evidence of a

single device from 1999 or earlier that actually used a proximity sensor to prevent inadvertent

actuation of a touch screen or other touch sensitive input device. The reason for this omission

is simple: no such device existed and the problem was not yet recognized in the industry. As Dr.

Madisetti testified, in 1999 [i]t was not economically feasible to include a touch screen

susceptible to inadvertent actuation in a mobile phone, because of the costs of the screen itself

and the increased processing power necessary to support it. Id. at Q/A 15. This conclusion is


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supported by the testimony of Motorolas corporate representative, Dan Konrad.

Indeed, Apple did not release its iPhone until

years later in 2007 and, even then, it was priced at the high end of the market. Madisetti RWS at

Q/A 14.

Dr. Madisettis testimony was informed by his first-hand experience designing three

mobile phones between 2000 and 2003, starting about a year after the filing of the 862 patent.

Madisetti RWS at Q/A 12. In designing these phones, Dr. Madisetti worked with numerous

mobile phone companies, including Sony Ericsson, Ericsson, and Cisco, but none of those

companies offered touch screens as part of the user-interface at that time. Id. at Q/A 13. A touch

screen was still something new and unconventional, even then.

Of course, cell phones existed before 1999 that had touch screens, such as the IBM

Simon phone. See Lanning, Tr. at 1403:19-1404:1. But those phones did not incorporate a

proximity sensor to prevent inadvertent actuation of the touch screen. And, further, there is no

evidence that the touch screens in those early phones were susceptible to inadvertent actuation at

all. To the contrary, Dr. Madisetti testified that, although the IBM Simon phone had a touch

screen, the problem of inadvertent actuation was not yet recognized. Madisetti, Tr. at 2042:17-

2043:8; Madisetti RWS at Q/A 13. Indeed, even a cursory review of the figures of U.S. Patent

No. 5,815,142, which allegedly describes the IBM Simon phone, Madisetti, Tr. at 2043:16-


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2044:17, shows that the touch screen was recessed and located below the raised earpiece.4 See,

e.g., U.S. Patent No. 5,815,142 at Figs. 1 & 2. Thus, even assuming arguendo that the touch

screen in the Simon phone was sensitive enough to detect inadvertent touches during a call (e.g.,

by an ear or cheek), this problem would not have arisen because of the placement of the touch

screen within a recess away from the users head.

In other early touch screen phones, similar factors such as low sensitivity, small screen

size, and placement of the touch screen away from the users face also did not create the risk of

inadvertent touch screen actuation. Apple has cited no evidence to the contrary, only

unsubstantiated expert opinion. See Cephalon, Inc. v. Watson Pharms., Inc., No. 2011-1325,

2013 WL 538507, at *6 (Fed. Cir. Feb. 14, 2013) (concluding that largely unsupported expert

testimony carrie[d] little weight and was insufficient under the clear and convincing evidence

standard);see ActiveVideo Networks, Inc. v. Verizon Commcns, Inc., 694 F.3d 1312, 1327-28

(Fed. Cir. 2012) (holding that conclusory and factually unsupported expert testimony was

insufficient to show obviousness and fraught with hindsight bias);see also Madisetti RWS at

Q/A 11 (explaining that he would expect to see evidence to corroborate Mr. Lannings

testimony).

Harris was filed in 1998, and Hoeksma was filed in 1997. A review of these patents

confirms that the problem of inadvertent actuation of a touch screen was not recognized prior to

the filing of the 862 patent in 1999. Indeed, Harris makes only passing reference to a writable

display in the background of the invention. Harris at 1:53-55. Although true that Harris

discusses accidental activation of pushbutton keys, it never once mentions preventing

4U.S. Patent No. 5,815,142 is not alleged as prior art in this case and is not part of

Apples case-in-chief. It was introduced at trial only for the purposes of impeachment. Tr. at2044:25-2047:1.


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inadvertent actuation of a writable display or other touch sensitive input device. Hoeksma is

similarly deficient; it merely describes blanking the backlight of a display in order to save power.

Hoeksma at 3:34-39 and 4:9-17; Lanning DWS at Q/A 482 (recognizing that in Hoeksma 298,

merely the backlighting is disabled); Madisetti RWS at Q/A 72. But power conservation is a

completely different problem from inadvertent actuation of a touch screen. And blanking the

backlight does nothing to prevent inadvertent actuation of the touch screen, which is a separate

component of the phone and can still be used even when the backlight is off. Hoeksma at 3:50-

54 and Fig. 3; Madisetti RWS at Q/A 82. Thus, the prior art demonstrates that inadvertent

actuation of a touch sensitive input device was not recognized as a problem in 1999, before the

invention of the 862 patent.

Apples expert, Mr. Lanning, also testified that mobile phone suppliers solved the issue

of inadvertent actuation of physical keypads by including a proximity sensor in their phones to

detect when the phone was close to the users head, which disabled inadvertent key inputs made

by the user during a voice conversation. Lanning DWS at Q/A 404. But the only purported

evidence of this is a single patent to Motorola Harris that describes using a proximity sensor

in a very specific context as one of several embodiments of the invention. See Harris at 8:22-47.

Other than Mr. Lannings own statements, there is no evidence that the use of proximity sensors

to prevent the inadvertent actuation of a physical keypad was broadly adopted or known within

the industry. Apple did not identify a single product on the market that actually used this

approach in 1999 or earlier. As Dr. Madisetti convincingly testified, cell phone providers solved

the problem of inadvertent actuation of a physical keypad in an entirely different way by

developing software that would ignore multiple simultaneous key presses. Madisetti RWS at

Q/A 16;see Remand ID at 24 ([Dr. Madisetti] was pointing out the obvious differences between


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Harris at Fig. 1.

Integrating the earpiece with the keypad created a problem that the keys could be

accidentally pressed during a call. Id. at 7:57-60. In order to avoid accidental physical

actuation of the pushbutton keys, Harris describes a variety of different methods of disabling a

plurality of key input signals. These methods include limiting the height that the pushbutton

keys extend beyond the housing, increasing the force needed to actuate the pushbutton keys, and

disabling the plurality of input signals from the pushbutton keys when an acoustic signal is

detected, when a telephone call is made, or using a manual switch. Harris at 8:2-47. In one of

the many examples, controller 88 disables the plurality of key input signals responsive tothe

ear cup 78 being positioned proximate to the persons ear 84 or the persons head 86 responsive

to a signal from the proximity sensor 92. Id. at 8:38-42.

Harris describes a writable display in the following passage from the background of the

invention:

The handsfree mode may be used when a person holds the telephone set in

one hand while entering a phone number into the keypad with the other


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hand. The hands free mode may also be used when the person needs to see

or touch writable displayswhile listening to the loudspeaker. Thehandsfree mode may also be used when several listeners wish to listen to

the same conversation over the loudspeaker.

Harris at 1:50-57 (emphasis added). There is no other reference to a writable display anywhere

in Harris. Critically, nothing in this passage or elsewhere in Harris suggests that inadvertent

actuation of such a writable display was a problem. Indeed, Harris does not even contemplate

using a writable display in the disclosed embodiments of the invention. See Madisetti RWS at

Q/A 54. And there certainly is nothing to suggest using a proximity sensor to prevent the

inadvertent actuation of such a display. As Judge Pender noted at the hearing, it is not even clear

that the writable display referenced in Harris is part of the telephone set. Tr. at 1207:12-1210:5.

It could be a separate display on a different device altogether. Id.

At the hearing, Apple offered no evidence or testimony that Harris in combination with

the knowledge of one of ordinary skill in the art renders obvious claim 1 of the 862 patent under

the claim constructions adopted by the ALJ.5

In the Remand ID, the ALJ adopted Motorolas

construction of the claim limitation the sensor to disable communication of the input signal to

the processing section as having its plain meaning. Remand ID at 22. Apple has not petitioned

for review of this construction. Notably, the only opinion offered by Apples expert, Mr.

Lanning, that it would have been obvious to modify Harris in view of the knowledge of a person

of ordinary skill in the art, is based on Apples proposed construction of this limitation.

Specifically, Mr. Lanning testified that:

My invalidity analysis is the same under Apples and Motorolas proposedconstructions with one exception. Under Apples proposed construction,

the limitation the sensor to disable communication of the input signal to

the processing section is not disclosed by Harris 464 because in Harris

5Similarly, Apple did not argue obviousness under Motorolas construction in its post-

hearing briefs. RIB at 63-70.


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464, it is the processor and not the sensor that disables the input signal.

However, one of ordinary skill in the art would have understood that

the proximity sensor rather than the processor could send the signal

that disables the input signal. Indeed, this alternative design was known

in the prior art.

Lanning DWS at Q/A 465 (emphasis added). This argument is now moot, because the ALJ

concluded (and Apple has now conceded) that under the plain meaning of this limitation there

are many ways to disable communication of the input signal and the processor could send the

signal that disables the input signal.6

Remand ID at 23-24;see also id. at 48-49 (Mr. Lanning

admitted that even under Apples construction, the signal from the sensor could pass through

other components.). Mr. Lanning offered no obviousness opinion under the plain meaning of

this term. Accordingly, the ALJ properly concluded that Apple has failed as a matter of law to

set forth aprima facie case of obviousness in view of Harris and the knowledge of one of

ordinary skill in the art. Quite simply, there is no evidence in the record to support such a

finding, and Apple cannot sustain its burden of proof by clear and convincing evidence.

In order for Harris in combination with the knowledge of a person of ordinary skill in the

art to render claim 1 obvious, there must be some reason to combine the elements as claimed in

the 862 patent. See KSR, 550 U.S. at 418. Harris provides no such reason: the invention of

Harris does not use a touch sensitive input device, and there is no recognition of the problem of

inadvertent actuation of such a device. See Madisetti RWS at Q/A 54. A person of ordinary skill

in the art reading Harris would understand how to make a smaller phone that integrates the

6

Under the Commission rules, [a]ny issue not raised in a petition for review will bedeemed to have been abandoned by the petitioning party and may be disregarded by the

Commission in reviewing the initial determination (unless the Commission chooses to review the

issue on its own initiative under 210.44). 19 C.F.R. 210.43(b)(2);see alsoIn the Matter of

Certain Optical Disk Controller Chips and Chipsets and Prods. Containing Same,IncludingDVD Players and PC Optical Storage Devices, Inv. No. 337-TA-506, Commn Op., 2007 WL

4713920, at *56 (Public Version, September 28, 2005) (We have consistently declined toconsider on review arguments that were not timely raised before the ALJ.).


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physical keypad with the earpiece and microphone, nothing more. Harris does not disclose or

suggest at least generating an input signal in response to actuation of a touch sensitive input

device or a sensor to disable communication of the input signal to the processing section when

in close proximity to a user, thereby, preventing inadvertent actuation of the touch sensitive input

device, as required by claim 1 of the 862 patent. See Madisetti RWS at Q/A 43.

The knowledge of a person of ordinary skill in the art in 1999 does not cure the

deficiencies in Harris. As discussed above, in 1999 the use of a touch screen in a mobile phone

was still unconventional and many of the issues posed by that technology were as yet unknown

and unsolved. In particular, a person of ordinary skill in the art would not have recognized the

problem of inadvertent actuation created by the use of a large touch screen in a mobile phone.

Madisetti RWS at Q/A 13. And such a person certainly would not have thought to solve that

problem using a proximity sensor, a solution first recognized by Motorola with its filing of the

862 patent. See id. at Q/A 15. Absent any such reason to combine the elements as claimed, any

obviousness rejection of claim 1 would be pure hindsight, created by using the 862 patent itself

as a roadmap. The Federal Circuit has made clear that such hindsight reasoning is improper. In

re NTP, Inc., 654 F.3d at 1298-99 (Care must be taken to avoid hindsight reconstruction by

using the patent in suit as a guide through the maze of prior art references, combining the right

references in the right way so as to achieve the result of the claims in the suit.) (internal

quotations omitted).

D. The Claimed Invention Also is Valid in Light of Harris and HoeksmaAs acknowledged by Apples expert, Mr. Lanning, in Hoeksma 298, merely the

backlighting is disabled. Lanning DWS at Q/A 482. On this point, Dr. Madisetti concurs.

Madisetti RWS at Q/A 82 (Turning off the backlight makes the screen more difficult to view,

but a user can still view and actuate the touch screen when the backlight is off.). Thus, it is


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undisputed that Hoeksma does not disclose or suggest [a] sensor to disable communication of

the input signal to the processing section, as described in claim 1 of the 862 patent. See

Lanning DWS at Q/A 482.

Hoeksma describes a system and method for conserving battery power by turning off the

backlight to a display of a wireless handset. Hoeksma at 1:26-33. Specifically, backlight

segments 27 and 28 permit viewing of the screen 25 during periods of low level ambient light

but consume a large amount of battery power. Id. at 3:33-38. Backlight segments 27 and 28

essentially are lights behind the display that make the display more visible. Hoeksma describes

that the backlight segments 27 and 28 may be blanked, in response to signal from the CPU, to

conserve power when the handset is against a users face during a call. Id. at 4:9-17. A

proximity detector may be used to sense the placement of the handset. Id. However, blanking

the backlights does not mean that the display is no longer visible. Rather, without the backlights

on, the display would simply be more difficult to view in low lighting conditions. See id. at

4:24-31 (explaining that a backlight is not required under normal light levels when the opaque

symbols appearing on the screen 25 are readily observable). Hoeksma does not disclose or

suggest turning off touch-sensitive screen interface 31.


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At the hearing, Apple failed to establish that the combination of Harris with Hoeksma

renders obvious claim 1 of the 862 patent. Apples only testimony on combining these

references under the plain meaning of the sensor to disable communication of the input signal

limitation a construction proposed by Motorola and adopted by the ALJ comes from Mr.

Lannings direct witness statement. Specifically, Mr. Lanning provided the following

conclusory testimony:

Under Motorolas proposed construction, Hoeksma 298 discloses that the

backlighting segments are disabled when the device is in close proximity

to a user, as a result of information provided by the sensor.. . . .

As I have explained, Harris 464 discloses that the input signals are

disabled when the proximity sensor senses that the device is in closeproximity to a user. When these disclosures are combined, the result is a

proximity sensor that disables communication of the input signal when the

device is in close proximity to a user.

Lanning DWS at Q/A 484. As a threshold matter, Harris and Hoeksma must disclose each and

every element of claim 1 in order to render it obvious. See Vizio, Inc. v. Intl Trade Commn,

605 F.3d 1330, 1342-43 (Fed. Cir. 2010) (affirming Commission holding that patent was not

obvious where the prior art did not disclose all elements of the claim). But, as explained above,

neither Harris nor Hoeksma discloses a sensor that disables communication of an input signal

generated in response to the actuation of a touch sensitive input device, as required by claim 1

of the 862 patent.7 See 862 patent at 8:24-25 (requiring the touch sensitive input device

actuatable to generate the input signal). Yet Mr. Lanning provides no explanation as to how

this missing limitation would be met, merely concluding that the combination of references

would result in the claimed invention.

7Again, this assumes that the term touch sensitive input device is construed to

exclude a physical keypad, as Motorola argued at the hearing and in its Petition to theCommission dated January 7, 2013. See, e.g., Madisetti RWS at Q/A 45-47.


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Indeed, Mr. Lanning completely ignores the fact that the input signals of Harris are

generated in response to pressing push button keys. Harris at 8:34-37. And even if Harris and

Hoeksma were combined as Mr. Lanning suggests, the result would not be the invention of claim

1 of the 862 patent: at best it would be a phone that both turns off the backlight and disables the

physical keypad when in proximity to a user. Mr. Lannings conclusory statements cannot

substitute for actual evidence and certainly cannot make up for missing limitations in the

references themselves. See ActiveVideo, 694 F.3d at 1327-28 (holding that conclusory and

factually unsupported expert testimony was insufficient to show obviousness and fraught with

hindsight bias).

Mr. Lanning also failed to indicate any reason provided in the references that would

motivate a person of ordinary skill in the art to make the claimed invention. KSR, 550 U.S. at

418. Indeed, the only reason that Mr. Lanning identifies to combine the references is taken

directly from his own unsubstantiated opinion as to the state of the art in 1999. Mr. Lanning

testified that:

As I described in my expert report, prohibiting inadvertent inputs was a

widely known issue and solved by the cellular phone suppliers before the1999 timeframe, and different types of proximity sensors existed and were

well known as well as implementing these solutions using a proximity

sensor to disable inadvertent inputs from keys on a key pad or input

sections on a touch sensitive screen.

Thus, one of ordinary skill in the art would have understood that inaddition to using a proximity sensor to avoid inadvertent actuation, the

backlighting could be disabled to conserve power. For example, one

skilled in the art would have understood scenarios wherein a user would

have no intention of generating an input signal while the backlighting isdisabled. It also would have been understood by one of ordinary skill in

the art that there were a limited number of methods for disabling

communication of the input signal to the processing section.

Lanning DWS at Q/A 490;see alsoid. at Q/A 492 (similarly concluding that [o]ne

skilled in the art would be motivated to combine these references because preventing inadvertent


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actuation would further serve the purpose of Hoeksma 298.). Once again, Mr. Lanning

provides no actual evidence: he simply concludes that prohibiting inadvertent inputs was a

widely known issue and that it was well known to use a proximity sensor to disable

inadvertent inputs from . . . sections on a touch sensitive screen. Id. Such unsubstantiated

expert testimony deserves little weight and cannot support Apples burden of proving

obviousness by clear and convincing evidence. See Cephalon, 2013 WL 538507, at *6

(concluding that largely unsupported expert testimony carrie[d] little weight and was

insufficient under the clear and convincing evidence standard);see also ActiveVideo, 694 F.3d at

1327-28. Indeed, the evidence discussedsupra unambiguously shows that the problem of

inadvertent actuation of a touch sensitive screen had not been recognized or solved by 1999. Mr.

Lannings conclusions to the contrary are a perfect example of the type of hindsight reasoning

that the Federal Circuit has warned against. Star Scientific,655 F.3d at 1375 (Importantly, the

great challenge of the obviousness judgment is proceeding without any hint of hindsight.).

Further, Mr. Lanning never argues that it would have been obvious to modify Harris to

disable input signals from a touch screen or other touch sensitive input device. The closest he

comes is the statement that one skilled in the art would have understood scenarios wherein a

user would have no intention of generating an input signal while the backlighting is disabled.

Lanning DWS at Q/A 490. But it is unclear what input signal he means: apparently, he is

referring to an input signal from the backlight or, perhaps, to an input signal from the physical

keypad of Harris. But even assuming that Mr. Lanning means an input signal from a touch

screen, he never explains underwhatscenarios this issue would arise orwhyone skilled in the

art would have thought to make this change. Thus, Apple has provided no reason to combine

the elements of Harris and Hoeksma to arrive at the claimed invention, and Apple cannot meet


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its burden of proving obviousness. See KSR, 550 U.S. at 418;see alsoUnigene Labs., 655

F.3d at 1360.

In his rebuttal witness statement, Dr. Madisetti provided detailed testimony as to why the

combination of Harris and Hoeksma fails to render obvious claim 1 of the 862 patent. Madisetti

RWS at Q/A 89-98. This testimony was not refuted during the hearing. Initially, Dr. Madisetti

noted that neither Hoeksma nor Harris disclose all limitations of claim 1 of the 862 patent and,

thus, cannot render it obvious. Id. at Q/A 93. He also explained that:

Neither Hoeksma 298 nor Harris 464 provide any disclosure of disablingcommunication of an input signal to prevent inadvertent actuation of a

touch sensitive input device. Indeed, they do not even recognize theproblem. Thus, a person of ordinary skill in the art would not have been

motivated to combine the references as suggested by Mr. Lanning.

Id. at Q/A 96. As Dr. Madisetti points out, disabling the backlighting to conserve power does

not teach disabling communication of the input signal. Id. [N]othing in Hoeksma 298

suggests disabling communication of the input signal or stopping its generation. Id. And

modifying the references to disable[e] communication of the input signal whenever the

backlight is off would also prevent use of the touch screen in situations where it is desired for

example, if the backlight is off because of good ambient lighting conditions. Id. Thus, a person

of ordinary skill in the art in 1999 reading Hoeksma and Harris would not have had a reason to

arrive at the invention of the 862 patent. Id. As Dr. Madisetti correctly stated, [t]he only

possible reason for combining these references as [Mr. Lanning] suggests preventing

inadvertent actuation of the touch sensitive input device when it is close proximity to a user

comes from the 862 patent itself. Id. But any such reason would be founded on impermissible

hindsight. Id.

During prosecution of the 862 patent, the patent examiner found claim 1 patentable over

Van Schyndel, which is duplicative of the Hoeksma patent. See 862 patent (citing Van


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claimed invention, long-felt need resolved by the claimed invention, the failure of others to find

the solution provided by the claimed invention, unexpected and superior results, and praise by

others in the field for the invention. See, e.g., Graham, 383 U.S. at 17-18; Sjolund v. Musland,

847 F.2d 1573, 1582 (Fed. Cir. 1988).

When evidence of secondary considerations is present, it must be considered and

addressed. See, e.g., Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors

USA, Inc. (Transocean I), 617 F.3d 1296, 1305 (Fed. Cir. 2010) (To be clear, a district court

must always consider any objective evidence of nonobviousness presented in a case.) (emphasis

in original); Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc.,807 F.2d 955, 960 (Fed. Cir.

1986) (When present, such objective evidence must be considered.). As shown below,

Motorola presented strong evidence of non-obviousness, including praise for the invention from

Apple, evidence of commercial success through licensing, and

.

1. Apple Described the Invention As a BreakthroughAppreciation by contemporaries skilled in the field of the invention is a useful indicator

of whether the invention would have been obvious to such persons at the time it was made.

Vulcan Engg Co. v. Fata Aluminum, Inc., 278 F.3d 1366, 1373 (Fed. Cir. 2002);see also

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc. (Transocean II), 699

F.3d 1340, 1351-52 (Fed. Cir. 2012) (recognizing that industry praise is evidence of non-

obviousness). As the Federal Circuit has recognized, [t]hat which may be made clear and thus

obvious to a court, with the invention fully diagrammed and aided by experts in the field, may

have been a breakthrough of substantial dimension when first unveiled. Mintz v. Dietz &

Watson, Inc.,679 F.3d 1372, 1378 (Fed. Cir. 2012) (citing Uniroyal, Inc. v. RudkinWiley Corp.,

837 F.2d 1044, 1051 (Fed. Cir. 1988)).


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Here, the technology of the 862 patent was recognized as a breakthrough by none

other than Apples former CEO (Mr. Steve Jobs). On cross examination, Apples expert, Mr.

Lanning, could not deny that Mr. Jobs himself characterized the incorporation of a proximity

sensor into the iPhone as a breakthrough to his biographer, Walter Isaacson: [a]nother

breakthrough was the sensor that figured out when you put the phone to your ear, so that your

lobes didnt accidentally activate some function. Lanning, Tr. at 1197:2-1198:25;see Remand

ID at 14 n.1. The sensor described by Mr. Jobs is the very technology that the ALJ found to

infringe. Remand ID at 40-41. And there can be no doubt that this passage refers to the

technology of the 862 patent: it describes a sensor that prevents the inadvertent actuation of the

phone when it is put to the users ear. The recognition that the invention of the 862 patent was a

breakthrough weighs heavily against a finding of obviousness, particularly since it came from

Apple itself. SeeMintz,679 F.3d at 1378-1379 (overruling the district courts finding of

obviousness where the accused infringer had itself praised the technology and noting that [t]he

accused infringers recognition of the importance of this advance is relevant to a determination

of nonobviousness (internal quotations omitted)).

2. Licensing of the Claimed InventionA successful licensing program for a patented technology is evidence of market

acceptance and commercial success, and also supports a finding of non-obviousness. Harris

Corp. v. Federal Express Corp., No. 2012-1094, 2013 WL 174185 at *10 (Fed. Cir. 2013);see

also Star Scientific,655 F.3d at 1376 (finding that licenses to the patented technology were

evidence of market acceptance and commercial success).


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Motorola also established at the hearing that there is a nexus between the commercial

success of the iPhone and the patented technology of the 862 patent. Critically, the ALJ found

that the iPhone 4 infringes claim 1 of the 862 patent, concluding that no matter how I parse it, I


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find the proximity sensor in the iPhone 4 still has the effect of disabling the user input. Remand

ID at 53. In reaching this conclusion, the ALJ found

Id. at 52.

JX-103C, Duggineni Dep. at 95:5-24;see

also Remand ID at 52. The 862 patent contemplates using the proximity sensor in precisely this

way in embodiments of the invention covered by claim 1. As described in the 862 patent, [t]o

prevent inadvertent actuations by a users face, the smartphone 100 has a sensor 134 that triggers

when brought into close proximity to the user and, while, triggered disables the touch sensitive

input device. 862 patent at 3:17-20. This is exactly the purpose of the proximity sensor in the

iPhone 4. Thus, Motorola has established that the proximity sensor in the iPhone 4 practices

claim 1 of the 862 patent, and any customer demand resulting from the proximity sensor in the

iPhone 4 is attributable to Motorolas invention. See also Madisetti DWS at Q/A 97-190.

Based on this evidence, Dr. Madisetti correctly concluded that by practicing claim 1 of

the 862 patent, Apple has increased the commercial success of the iPhone. Madisetti RWS at

Q/A 126. Mr. Lanning offered no rebuttal, except to say that [i]t is unclear to me how this is


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evidence of commercial success of the alleged invention. Lanning DWS at Q/A 544. But, as

the Federal Circuit has made clear, such customer demand for the patented technology is

evidence of commercial success supporting a finding of non-obviousness. See Transocean II,

699 F.3d at 1350 (evidence that some customers required the patented technology supported jury

finding that commercial success weighs in favor of non-obviousness).

III. CONCLUSIONFor the reasons set forth above and in its petition for review, Motorola respectfully

requests that the Commission enter a Final Determination finding a violation of Section 337 in

this Investigation with respect to the 862 patent and issue a limited exclusion order and a cease

and desist order against Apple.


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motorola opening brief on commission review

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