HTC Claims Intervening Rights against Apple in ITC Case

Scott Daniels | October 25, 2011

HTC might be making a comeback in the ITC’s investigation of mobile communication devices  (337-TA-710).  In July Administrative Law Judge Charneski issued an Initial Determination (ID) against HTC, finding that its accused communication devices infringe two data manipulation patents owned by Apple.  That determination, if affirmed by the full Commission, would likely result in exclusion from entry into the United States of HTC’s infringing devices.

But in September the full Commission announced that it was reviewing Judge Charneski’s ID against HTC.  And, in a step that will interest reexamination practitioners, HTC asked the ITC for a determination that it does not infringe one of the Apple patents – U.S. Patent No. 5,946,647 – because HTC is entitled to “absolute intervening rights” created in a co-pending reexamination of Apple’s ‘647 patent. 

Last October HTC asked the PTO to reexamine the ‘647 patent in light of certain newly discovered prior art.  The PTO granted the reexamination request and later rejected certain of the ‘647 claims.  Apple replied to the rejection by distinguishing its claims over the prior art, but did not amend its claims.  Specifically, Apple argued that its claimed step of “linking at least one action [computer subroutine] to the detected structure” requires linking “directly to the detected structure” (emphasis added). This argument, according to HTC, contrasts with Apple’s infringement arguments at the ITC that the action (computer subroutine) merely be associated with the detected structure. 

HTC asserts that Apple’s argument effectively narrows the scope of its claims, thereby creating absolute intervening rights under 35 U.S.C. §307(b)[1].  HTC relies upon the CAFC’s ruling last month in Marine Polymer, 2011 U.S. App. LEXIS 19602, that absolute intervening rights are created in reexamination when the patentee “effectively amends” by construing its claims narrowly to distinguish over the prior art – even though the patentee does not actually amend the text of the claims.  These intervening rights would arise even if HTC’s accused devices were covered by the “effectively amended” claims. 

HTC also asserts that Apple’s arguments against the prior art rejection “cannot be taken back” and therefore immediately created intervening rights.  Thus, the fact that the reexamination is not concluded does not matter: Apple’s “current claims will not survive reexamination with the scope they had when this investigation began and when the ALJ decided the ID.”  HTC therefore asks the ITC to determine that there is no infringement of the ‘647 patent.

HTC’s motion raises a host of questions.  Why was this asserted contradiction between Apple’s infringement argument and its validity argument not manifest during the trial before Judge Charneski?  Why is it impossible for Apple to revise its reexamination argument and avert the creation of intervening rights?  Why do the intervening rights claimed by HTC extend beyond the termination of the reexamination proceeding, at which point a “new” set of “effectively narrowed” claims emerge from the PTO?  And procedurally speaking, since the Marine Polymer decision “created new law,” shouldn’t the full Commission remand this issue to the ALJ for him to consider the issues raised in HTC’s motion? 

[1] 35 U.S.C. 307 (b) Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding will have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section.

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