#20: Judge Oversite Resolved

Last week, Administrative Law Judge Thomas Pender made a preliminary ruling on remand issues concerning Apple’s complaint against Samsung. That ruling is available on the ITC’s document system. Now a Commission review will be held.
The remand was an opportunity for Apple to broaden its preliminary win with respect to two patents. The review that will commence shortly is an opportunity for Samsung to narrow or overturn Apples win. One of Apples two patents were broadened.
U.S. Patent No. RE41,922 on a "method and apparatus for providing translucent images on a computer display" already infringes by Samsungs Android devices, especially in the text selection feature on the Android browser app and the translucent buttons of the android photo gallery. Judge Pender cleared Sumsung’s “designaround products.” Apparently, Judge Pender may not have had jurisdiction over the designaround products, which Apple is claiming.


Apple is asserting multiple claims of the RE'922 patent in this investigation. The initial determination identified infringements of claims 29, 30, and 33-35, and deemed all these claims valid. All of these claims are method claims, which (as Google is just experiencing in its attempt to get Microsoft's Xbox gaming console banned) (I wrote about this in a previous post http://patentengineering190g.blogspot.com/2013/03/google-vs-microsoft.html) can only give rise to an ITC exclusion order (i.e., U.S. import ban) if the act of importation itself constitutes a patent infringement (as opposed to post-importation use per se). In this case, the fact that Samsung provides manuals that tell users how to use the accused features means Samsung is liable for induced infringement, and with this finding of inducement, the act of importation also constitutes a violation of the statute governing the ITC's intellectual property enforcement (Section 337).

In the original determination Judge Pender made a slight oversight when he found that claim 33 did not infringe as he later decided that the text selection feature did in fact infringe claim 33. The remand gave him the opportunity to make this correction and then easily apply that judgment to claims 34 and 35 because those claims derived from claim 33.

·             Claim 34 adds to claim 33 the limitation that the base image (the one that's overlapped by a translucent image) must be active to receive user inputs. The initial determination had already established the fact that this requirement is met in connection with claim 29.

·         Claim 35 additionally requires the electronic device to be a "handheld device", which is obviously the case in this investigation of Samsung smartphones and tablet computers.