more on Nokio mandate
Fed. Circ. Says ITC Can Decline Nokia Infringement Argument
Share us on: By Vin Gurrieri
Law360, New York (July 24, 2014, 4:16 PM ET) -- The Federal Circuit ruled Thursday that the U.S. International Trade Commission does not have to let Nokia Inc. present an argument that it didn't infringe patented wireless technology, despite a previous order that a dissenting justice says obligates the commission to hear Nokia's contention.
In a precedential opinion, a split three-judge panel rejected Nokia's request for mandamus to compel the ITC to hear a noninfringement argument that scrambling codes in Nokia's accused systems are not transmitted as required by the patent claims asserted by InterDigital Communications LLC in the underlying investigation.
Nokia had challenged a decision by the ITC that the company waived its right to present the argument, even though an earlier Federal Circuit ruling in 2012 that reopened the investigation said the issue “may be raised on remand.”
The majority, however, rejected Nokia's challenge by saying that “nothing in our prior decision compelled the commission to address [Nokia's] non-infringement contention.”
The investigation dates back to 2007, when InterDigital brought Section 337 claims that Nokia had engaged in unfair trade practices by importing the allegedly infringing 3G handsets into the U.S.
In August 2012, the Federal Circuit reopened the investigation after the ITC terminated three years earlier by affirming Administrative Law Judge Paul J. Luckern's determination that four InterDigital patents were valid and enforceable but that Nokia had not infringed them.
The ruling, which Nokia now claims allowed it to present its scrambling code argument, remanded the case back to the ITC.
Circuit Judges Haldane Robert Mayer and William C. Bryson said Thursday that the language cited by Nokia in the original opinion pertaining to the scrambling code argument simply explained that the issue couldn't be addressed on appeal because it was not the rationale of the agency’s decision.
“We explained that petitioners were free to raise the issue, if they chose to do so, on remand,” the panel said. “But that did not suggest, and did not mandate, that the commission could not consider whether the issue had been preserved for review.”
The panel added that if Nokia wants to challenge the merits of the commission’s waiver determination, it can raise those arguments on appeal after the ITC has issued its final judgment in the case.
In a terse dissent, however, Circuit Judge Pauline Newman said Nokia raised its scrambling-code argument on remand just as the panel had clearly authorized and that the commission is required to follow the court's instructions — a fact the ITC's own investigators acknowledged.
“I understood our mandate as did Nokia and the commission’s investigative staff, that we authorized Nokia to raise its scrambling-code argument on remand to the commission,” Judge Newman said. “The commission is required to follow this court’s mandate [and] my colleagues on this panel err in holding otherwise.”
Judge Newman said the issue of scrambling codes is fundamental to whether Nokia infringed the asserted patents and that “it could not be clearer” that Nokia had the right to raise the issue during the proceedings.
The dissenting judge further chided the ITC for discarding the panel's previous mandate and deciding that the scrambling code issue had been waived even though it never had been.
Additionally, Judge Newman also admonished her Federal Circuit colleagues, saying that it is “our responsibility to assure that our mandate is applied” and that they “should have been clear” if they wanted the initial order to not be understood as permitting Nokia to raise the issue.
The same three-judge panel presided over both rulings in the investigation, with Judge Newman filing dissents to both majority opinions.
The 2012 ruling revived the case because the commission erred in defining key claim terms. Judge Luckern had defined “spreading code” — a term related to the patented technology of allowing multiple cellphones to share the same portion of radio frequency spectrum — differently from InterDigital's construction of the term in two patents, the ruling said.
A representative for Microsoft Corp., the parent company of Nokia, declined to comment on the ruling Thursday.
Nokia is represented by Patrick J. Flinn, John D. Haynes and Ross R. Barton of Alston & Bird LLP.
The ITC is represented by Megan Michele Valentine and Wayne W. Herrington of the ITC's Office of the General Counsel.
The ITC case is In the Matter of Certain 3G Mobile Handsets and Components, investigation number 337-TA-613, before the U.S. International Trade Commission.
The case is In Re Nokia Inc. and Nokia Corp., case number 14-133, in the U.S. Court of Appeals for the Federal Circuit.
--Editing by Richard McVay.
AI
