InterDigital Inc (IDCC)

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USITC to review findings in Qualcomm case against Apple
13-12-2018

The US International Trade Commission (ITC) yesterday announced that it will partially review an administrative law judge’s (ALJ) decision not to issue a limited exclusion order against Apple despite finding it had infringed a Qualcomm patent.

This is the latest development in an IP spat between the two companies, which started in January 2017 when technology brand Apple accused semiconductor company Qualcomm of abusing its monopoly in the mobile device market to gain unfair royalties.

In August 2017, the ITC instituted an investigation into Apple after Qualcomm accused the company of section 337 violations.

According to Qualcomm, Apple was importing and selling mobile devices and radio frequency and processing components which infringe six of its US patents (9,535,490; 8,698,558; 8,633,936; 8,838,949; 9,608,675; 8,487,658).

However, during the course of the investigation, Qualcomm removed all asserted claims of the ‘658, ‘949, and ‘675 patents, as well as multiple claims of the other three patents.

In September, an ALJ found that Apple had violated section 337 for infringing the ‘490 patent, but not the other two remaining patents. Qualcomm failed to satisfy the “technical prong” of the domestic industry requirement in relation to these two patents.

But the judge recommended that no limited exclusion order or cease-and-desist order be issued due to the potential “effects on competitive conditions in the US, national security, and other public interest concerns”.

Apple and Qualcomm filed their petitions for review in October and a number of third parties, including Intel Corporation, IP Europe, Innovation Alliance, Electronic Frontier Foundation, American Antitrust Institute, and The App Association, filed public interest statements.

Yesterday, the ITC announced that it will review the judge’s construction of a claim in the ‘490 patent and how the finding on infringement may be affected by this construction. The commission said it has also decided to review whether a claim of the ‘490 patent is obvious.

The ITC will not review the judge’s findings in relation to the other two patents.

Apple and Qualcomm should now make submissions on these areas by January 3, 2019, with reply submissions to be filed no later than January 10, 2019.

The commission asked the parties to “explain the plain and ordinary meaning” of the queried term in the ‘490 patent and to state how this interpretation would impact findings on infringement, or on the technical prong of the domestic industry requirement.

It also asked Apple and Qualcomm to explain a number of technical aspects covered by the patents.

The ITC said it aims to complete the investigation by February 19, 2019, at which point it may issue an exclusion order to prevent infringing products entering the US and/or a cease-and-desist order that could prevent Apple from engaging in the importation and sale of such items.

The commission said it will consider the impact of any potential remedy on the public interest.

For example, it asked the parties to state whether delaying the implementation of a remedy would effectively balance the enforcement of Qualcomm’s patent rights with the adverse consequences that the remedy might have on industry competition.

Also, as Intel supplies the chips used in the accused iPhones, the commission wants to know whether Intel supplies the same chips to any other US merchants. The ITC asked whether Apple or Intel could “design around the claimed invention to avoid infringement”, and how long it would take to implement this in the accused products.

Speaking to WIPR, Don Rosenberg, executive vice president and general counsel of Qualcomm, said: “We are pleased that the commission is going to review the ALJ recommendation that no ITC remedy should result from a finding of infringement.”

The commission’s announcement follows a decision by the Fuzhou Intermediate People’s Court in China, announced earlier this week, to issue injunctions against Apple after finding that certain iPhone models infringe two of Qualcomm’s patents.

https://www.worldipreview.com/news/usitc-to-review-findings-in-qualcomm-case-against-apple-17138