Nokia Tells ITC It Didn't Infringe InterDigital Network Patents
By Bryan Koenig
Law360, New York (May 22, 2015, 4:04 PM ET) -- Nokia Corp. asked the International Trade Commission on Thursday to review an administrative law judge's ruling that it and Microsoft Corp. infringed two of InterDigital Communications Inc.'s smartphone network-connection patents, arguing in a redacted filing the infringement determination was at odds with a prior decision.
Nokia said ITC Administrative Law Judge Theodore R. Essex wrongly interpreted the scope of a Federal Circuit remand order changing claim construction in a prior appeal of the case when he did not apply issue preclusion and instead found that Nokia and co-defendant Microsoft Corp. infringe U.S. Patent Nos. 7,190,966 and 7,286,847.
Nokia is also fighting to head off an import and sale ban on its products under the ruling, noting that future U.S. sales would be purely hypothetical since it sold its mobile device business to Microsoft after the Federal Circuit ruling.
The April 27 decision against it and Microsoft “is contradictory to, and inconsistent with, the commission’s prior ruling of no violation on the same patents and the same accused implementation,” Nokia said. It noted that in a prior investigation, the ITC said that the same process — covering smartphone chipsets and how they connect to networks — at issue in this case did not infringe InterDigital's patents.
“While [Judge Essex] acknowledged the commission’s recent ruling, he believed he was constrained by the scope of the remand from applying the doctrine of issue preclusion to bar InterDigital’s infringement claims, and from applying the commission’s claim constructions,” Nokia said. “As a result, [Judge Essex's] conclusions in this remand proceeding are wholly inconsistent with the commission’s decision.”
Moreover, Nokia argued that the Supreme Court's January ruling in Teva Pharms USA Inc. v. Sandoz Inc. requires more deference to the original finding of noninfringement than Judge Essex granted it.
Judge Essex held last month that the accused Nokia handsets used the same signal code and message transmission process as that in the asserted claims of the ‘966 and ‘847 patents. The decision came on the same day trial was set to begin in a Delaware federal suit in which InterDigital is asserting different infringement claims against Microsoft and Nokia.
Nokia also argued in the new filing that any ban under the April ruling wouldn't make much sense, as it sold its entire mobile device business to Microsoft in April 2014, meaning it no longer imports any potentially infringing products.
“Even if, at some point in the future, Nokia Corp. might develop and import new products that, arguably, could fall within the requested remedial orders, no such relief could be granted because there is an insufficient record on which to conduct a public interest analysis,” the company said.
InterDigital in 2007 sought an exclusion order prohibiting the U.S. importation of Nokia and Microsoft Mobile devices with 3G WCDMA capabilities that allegedly infringe the ‘966 and ‘847 patents. In 2013, the investigation was remanded to the ITC from the Federal Circuit, which held that the commission had erred in interpreting certain claim terms in InterDigital's patents.
Those allegedly erroneous interpretations, which led to the commission's finding of no infringement and therefore no violation regarding the ‘966 and ‘847 patents, were reversed, InterDigital has said.
Attorneys for Nokia did not respond Friday to requests for comment. An attorney for InterDigital declined to comment Friday.
The patents-at-issue are U.S. Patent Nos. 7,190,966 and 7,286,847.
InterDigital is represented by Maximilian A. Grant, Bert C. Reiser, Jonathan D. Link, Ron E. Shulman and Julie M. Holloway of Latham & Watkins LLP and David S. Steuer, Michael B. Levin, Maura L. Rees, Lucy Yen and Veronica S. Ascarrunz of Wilson Sonsini Goodrich & Rosati.
Nokia is represented by Marsha E. Diedrich, Patrick J. Flinn and John D. Haynes of Alston & Bird LLP.
Brian R. Nester and Richard A. Cederoth of Sidley Austin LLP.
The investigation is In the Matter of Certain 3G Mobile Handsets and Components Thereof, investigation number 337-TA-613, in the U.S. International Trade Commission.
--Additional reporting by Kurt Orzeck, Stewart Bishop, Ryan Davis and Alex Lawson. Editing by Richard McVay and Jeremy Barker.
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