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Case 1:13-cv-01063-RWR Document 53 Filed 09/13/13 Page 1 of 28

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA MICROSOFT CORPORATION, Plaintiff, v. UNITED STATES, ET AL., Defendants, and MOTOROLA MOBILITY, INC. Defendant-intervenor. ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

No. 13-1063 (RWR)

DEFENDANTS’ MOTION TO DISMISS STUART F. DELERY Assistant Attorney General RONALD C. MACHEN JR. United States Attorney for the District of Columbia BRYANT G. SNEE Deputy Director PATRICIA M. McCARTHY Assistant Director STEPHEN C. TOSINI (DC Bar No. 470415) SEAN B. McNAMARA Senior Trial Counsels Department of Justice Civil Division Commercial Litigation Branch PO Box 480, Ben Franklin Station Washington, D.C., 20044 Tel: (202) 616-5196 Email: stephen.tosini@usdoj.gov September 13, 2013 Attorneys for Defendant

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TABLE OF CONTENTS BACKGROUND .............................................................................................................................1 ARGUMENT ..................................................................................................................................4 I. Standard of Review ..............................................................................................................4 A. B. II. Rule 12(b)(1) ............................................................................................................4 Rule 12(b)(6) ............................................................................................................5

The Court Lacks Jurisdiction To Entertain Microsoft’s Complaint ....................................5 A. Jurisdiction Under The APA Is Unavailable Because Microsoft Possesses An Adequate ITC Remedy ......................................................................5 1. 2. 3. Section 337 Remedies Preclude APA Jurisdiction ......................................6 The Patent Laws Preclude APA Jurisdiction .............................................13 Alternatively, This Case Should Be Rejected Because It Falls Within The ITC’s Primary Jurisdiction.............................................13

B. III.

Count III Of The Complaint Is Moot .....................................................................15

Microsoft Fails To State A Claim For Which Relief May Be Granted .............................15

CONCLUSION ..............................................................................................................................19

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TABLE OF AUTHORITIES CASES Allnet Communication serv., Inc. v. Nat’l Exchange Carrier Ass’n, 965 F.2d 1118 (D.C. Cir. 1992) ....................................................................................... 14 American Road & Transp. Builders Ass’n v. E.P.A., 865 F. Supp. 2d 72 (D.D.C. 2012) .................................................................................. 5, 6 Ashcroft v. Iqbal, 556 U.S. 662 (2009) ........................................................................................................ 4, 5 Barr v. Clinton, 370 F.3d 1196 (D.C. Cir. 2004) .......................................................................................... 4 Bell Atl. Corp. v. Twombly, 550 U.S. 544, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ..................................................... 5 Bowen v. Massachusetts, 487 U.S. 879 (1988) .......................................................................................................... 11 Califano v. Sanders, 430 U.S. 99 (1977) .............................................................................................................. 5 Camreta v. Greene, 131 S. Ct. 2020 (2011)…...………………………………………………………………15 Cook v. FDA, --- F. 3d ----, 2013 WL 3799987 (D.C. Cir. July 23, 2013) .............................................. 18 Corning Gilbert, Inc. v. United States, 896 F. Supp. 2d 1281 (Ct. Int’l Trade 2013) ................................................................... 17 County of Los Angeles v. Davis, 440 U.S. 625 (1979) ......................................................................................................... 15 Enercon GmbH v. Int’l Trade Comm’n, 151 F.3d 1376 (Fed. Cir. 1998)......................................................................................... 16 FDIC v. Meyer, 510 U.S. 471 (1994) ............................................................................................................ 4 First Nat. Bank of Chicago v. Steinbrink, 812 F. Supp. 849 (N.D. Ill 1993) ..................................................................................... 12

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Fornaro v. James, 416 F.3d 63 (D.C. Cir. 2005) .................................................................................... 6, 9, 10 Fuji Photo Film Co., Ltd. v. Jazz Photo Corp., 394 F.3d 1368 (Fed. Cir. 2005)......................................................................................... 13 Funai v. Vizio, 2010 ITC LEXIS 2811 (2010) ......................................................................................... 12 Funai Elec. Co., Ltd. v. United States, 645 F. Supp. 2d 1351 (Ct. Int’l Trade 2009) ...................................................................... 7 Harrison v. PPG Indus., Inc., 446 U.S. 578 (1980) 19 U.S.C. § 1331 .............................................................................. 6 Heckler v. Chaney, 470 U.S. 821 (1985) ................................................................................................... 17, 19 Historic Eastern Pequots v. Salazar, --- F. Supp. 2d ----, 2013 WL 1289571 (D.D.C. Mar. 31, 2013) ....................................... 4 Jazz Photo Corp. v. United States, 439 F.3d 1344 (Fed. Cir. 2006)..................................................................................... 7, 12 Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340 (Fed. Cir. 2008)........................................................................................... 6 Lane v. Pena, 518 U.S. 187 (1996) ............................................................................................................ 4 Larsen v. Navy, 525 F.3d 1 (D.C. Cir. 2008) ............................................................................................. 15 Logan v. Dep’t of Veterans Affairs, 357 F. Supp. 2d 149 (D.D.C. 2004) .................................................................................... 4 McNutt v. Gen. Motors Acceptance Corp. of Ind., 298 U.S. 178 (1936) ............................................................................................................ 4 Microsoft v. Motorola, Inc.,, No. 2:10-cv-1577-RSM (W.D. Wash.) ............................................................................. 13 Nat’l Treasury Employees Union v. Whipple, 636 F. Supp. 2d 63 (D.D.C. 2009) .................................................................................... 10

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Nat’l Wrestling Coaches Ass’n v. Dep’t of Educ., 366 F. 3d 930 (D.C. Cir. 2004) ........................................................................................... 6 Ninestar v. Int’l Trade Comm’n, 667 F.3d 1373 (Fed. Cir. 2012) ....................................................................................... 12 Norton v. Southern Utah Wilderness Alliance, 542 U.S. 55 (2004) ........................................................................................................... 16 Plaut v. Spendthrift Farm, Inc., 514 U.S. 211 (1995)…………………………………………………………………...…15 Powell v. McCormack, 395 U.S. 486 (1969) ......................................................................................................... 15 Reiter v. Cooper, 507 U.S. 258 (1993) ......................................................................................................... 14 Salmon Spawning Recovery Alliance v. United States, 532 F.3d 1338 (Fed. Cir. 2008) ........................................................................................ 17 Sierra Club v. Jackson, 648 F.3d 848 (D.C. Cir. 2011) .......................................................................................... 16 Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83 (1998) .............................................................................................................. 4 Swan v. Clinton, 100 F.3d 973 (D.C. Cir. 1996) ............................................................................................ 5 Town of Sanford v. United States, 140 F.3d 20 (1st Cir. 1998) ............................................................................................... 11 United States v. Western Pac. R. Co., 352 U.S. 59 (1956) ........................................................................................................... 13 VastFame Camera, Ltd. v. Int’l Trade Comm’n, 386 F.3d 1108 (Fed. Cir. 2004)....................................................................................... 8, 9 Washington Legal Found. v. Alexander, 984 F.2d 483 (D.C. Cir. 1993) ............................................................................................ 6 World Wide Volkswagen v. Int’l Trade Comm’n, 414 F. Supp. 713 (D.D.C. 1976) ......................................................................................... 8

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STATUTES 5 U.S.C. § 701(a)(2) ................................................................................................................. 6, 17 5 U.S.C. § 702 .............................................................................................................................. 16 5 U.S.C. § 704 .......................................................................................................................... 5, 11 5 U.S.C. § 706(a)(A) ................................................................................................................... 16 5 U.S.C. § 706(1) .................................................................................................................. 15, 16 5 U.S.C. § 706(2)(A) ................................................................................................................... 16 19 U.S.C. § 1337 ................................................................................................................... passim 19 U.S.C. § 1337(a)(1)(B) .............................................................................................................. 6 19 U.S.C. § 1337(a)(1)(B)(i)........................................................................................................... 1 19 U.S.C. § 1337(b) ...................................................................................................................... 14 19 U.S.C. § 1337(c) ........................................................................................................................ 7 19 U.S.C. § 1337(d)-(f) ................................................................................................................. 14 19 U.S.C. § 1337(d)(1) ............................................................................................................... 2, 7 19 U.S.C. § 1337(d)(2) ................................................................................................................... 7 19 U.S.C. § 1337(f)(1) .................................................................................................................... 8 19 U.S.C. § 1337(f)(2) .................................................................................................................... 8 19 U.S.C. § 1514(a) ........................................................................................................................ 6 19 U.S.C. § 1514(c)(2) .................................................................................................................... 7 21 U.S.C. § 352(o) ........................................................................................................................ 18 21 U.S.C. § 381(a) ........................................................................................................................ 18 28 U.S.C. § 1295(a)(1) .................................................................................................................... 6 28 U.S.C. § 1295(a)(6) ................................................................................................................ 6, 7

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28 U.S.C. § 1331 ............................................................................................................................. 5 28 U.S.C. § 1581(a) ........................................................................................................................ 7 28 U.S.C. § 2631(a) ........................................................................................................................ 7 28 U.S.C. § 2631(h) ........................................................................................................................ 7 35 U.S.C. § 281 et seq................................................................................................................... 13 35 U.S.C. § 284 ............................................................................................................................. 13 REGULATIONS 19 C.F.R. § 177 ............................................................................................................................... 2 19 C.F.R. § 210.75 .......................................................................................................................... 8 19 C.F.R. § 210.75(a)...................................................................................................................... 8 19 C.F.R. § 210.75(b)(1) ................................................................................................................. 8 19 C.F.R. § 210.75(c)...................................................................................................................... 8 19 C.F.R. § 210.76 .......................................................................................................................... 9 19 C.F.R. § 210.77(a)...................................................................................................................... 9 19 C.F.R. § 210.79 .......................................................................................................................... 9 FEDERAL RULES Fed. R. Civ. P. 12(b)(1)................................................................................................................... 4 Fed. R. Civ. P. 12(b)(6) ........................................................................................................ 2, 4, 15 ADMINISTRATIVE DECISIONS Certain Mobile Devices, Associated Software, and Components Thereof, Inv. No. 337-TA-944, Limited Exclusion Order (May 18, 2012) ..................................... 2 In the Matter of Certain Digital Television Products, Inv. No. 337-TA-617 ........................................................................................................ 12

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In the Matter of Certain Personal Data and Mobile Communications Devices and Related Software, Inv. No. 337-TA-710 ........................................................................................................ 12

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA MICROSOFT CORPORATION, Plaintiff, v. UNITED STATES, ET AL., Defendants, and MOTOROLA MOBILITY, INC. Defendant-intervenor. ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

No. 13-1063 (RWR)

DEFENDANTS’ MOTION TO DISMISS The governmental defendants (collectively United States) respectfully request that the Court dismiss the complaint filed by plaintiff, Microsoft Corporation (Microsoft), pursuant to Fed. R. Civ. P. 12(b)(1), because the Court lacks jurisdiction to entertain this case. In the alternative, we respectfully request that the Court dismiss this action for failure to state a claim for which relief may be granted pursuant to Fed. R. Civ. P. 12(b)(6). BACKGROUND This case arises from a patent dispute before the United States International Trade Commission (ITC). Microsoft filed a complaint pursuant to 19 U.S.C. § 1337 (section 337) at the ITC alleging that Motorola Mobility, Inc. (Motorola) Android smartphones had infringed U.S. Patent No. 6,370,566 (the ‘566 patent), among others, owned by Microsoft. Under section 337, the ITC possesses authority to bar imports of merchandise that “infringe a valid and enforceable United States patent.” 19 U.S.C. § 1337(a)(1)(B)(i). The ITC issued a limited exclusion order with respect to the ‘566 patent only, which, according to Microsoft, “claims a

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mobile device . . . that allows a user (1) to schedule an event in his or her calendar (such as a teleconference), (2) synchronize that device with another device (such as a desktop computer), and (3) to generate scheduling requests (such as an email request to schedule a meeting on another person’s calendar).” Cmpl. at ¶ 33. The ITC ordered that unlicensed mobile devices, associated software, and components covered by claims 1, 2, 5, or 6 of the ‘566 patent and manufactured abroad or imported by or on behalf of Motorola were, with limited exception, excluded from entry for consumption into the United States. Cmpl. at ¶¶ 1, 3, 38-57; Certain Mobile Devices, Associated Software, and Components Thereof, Inv. No. 337-TA-944, Limited Exclusion Order, ¶ 1 (May 18, 2012). Attachment A. Pursuant to 19 U.S.C. § 1337(d)(1), U.S. Customs and Border Protection (CBP) administers ITC exclusion orders at the border. On May 25, 2012, Motorola requested that CBP allow it to import certain redesigned mobile devices that Motorola asserted were not covered by the ITC’s exclusion order. Headquarters Ruling (HQ) H226615 (April 25, 2013), Attachment B; Cmpl. at ¶ 67. In particular, Motorola requested that CBP issue an administrative ruling pursuant to 19 C.F.R. Part 177. Motorola’s request informed CBP that it had redesigned certain devices to remove the ability to generate meeting requests when using Microsoft Exchange ActiveSync protocols and described the features that were removed in the modified devices. HQ H226615 at 6-10. Although the redesigned smartphones lacked the ability to generate meeting request emails through Microsoft Exchange, the redesigned devices still could generate “email meeting requests through Google servers.” Cmpl. at ¶ 69. According to Motorola, the devices did not infringe. Cmpl. at ¶ 67. CBP issued HQ H226615 in response to Motorola’s request, finding that Motorola had “removed the ability to edit meeting requests when using the Exchange ActiveSync protocols on the redesigned products.” Cmpl. at ¶ 67 (quoting HQ H226615 at 7).

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Microsoft requested revocation of HQ H226615 on two grounds. First, Microsoft contended that the ITC had found the Google functionality present on the legacy devices to infringe. Cmpl. at ¶ 69-70; HQ H242025, 1 (Jun. 24, 2013) (Attachment C). Second, even absent consideration of Google functionality, Microsoft contended that the redesigned devices do not successfully avoid infringement. Cmpl. at ¶ 69-70; HQ H242026 (Jun. 24, 2013). CBP subsequently issued HQ H242025 and HQ H242026 in which it found that the record did not support Microsoft’s allegations regarding Google functionality and the redesigned Motorola devices. Cmpl. at ¶ 71-78.1 Microsoft contends that CBP’s decision not to exclude Motorola’s phones pursuant to the ITC exclusion order was arbitrary and capricious. Cmpl. at ¶¶ 2, 86. In particular, Microsoft asserts that CBP erred by concluding that Microsoft abandoned its claim before the ITC that Motorola’s Google functionality infringed its patent. Cmpl. at ¶ 8. Microsoft further alleges that CBP failed to provide Microsoft with proper notice before issuing its decision, and that CBP inappropriately shifted the burden to Microsoft to prove that Motorola’s phones should be excluded. Cmpl. at ¶¶ 9-10. Microsoft seeks injunctive and declaratory relief compelling CBP to exclude certain redesigned smartphones from the United States and to order redelivery of certain merchandise already imported. Cmpl. at ¶¶ 15-16.

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Microsoft does not challenge HQ H242026. 3

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ARGUMENT I. Standard Of Review A. Rule 12(b)(1)

This Court must consider jurisdiction as a threshold matter. Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83, 94 (1998). “There is a presumption against federal court jurisdiction and the burden is on the party asserting the jurisdiction, the plaintiff in this case, to establish that the Court has subject matter jurisdiction over the action.” Logan v. Dep't of Veterans Affairs, 357 F. Supp. 2d 149, 153 (D.D.C. 2004) (citing McNutt v. Gen. Motors Acceptance Corp. of Ind., 298 U.S. 178, 182-83 (1936)). If Microsoft cannot meet its burden, the Court must dismiss. Steel Co., 523 U.S. at 94. Moreover, the Court lacks jurisdiction to entertain a matter absent a statutory waiver of sovereign immunity. Sovereign immunity is “jurisdictional in nature,” FDIC v. Meyer, 510 U.S. 471, 475 (1994), and any waiver must be “express[ed] in statutory text.” Lane v. Pena, 518 U.S. 187, 192 (1996). In deciding a Fed. R. Civ. P. 12(b)(1) motion to dismiss, “the Court accepts as true the allegations of the complaint . . . and liberally construes the pleadings such that the plaintiff benefits from all inferences derived from the facts alleged.” Historic Eastern Pequots v. Salazar, --- F. Supp. 2d ----, 2013 WL 1289571, *2 (D.D.C. Mar. 31, 2013) (citing Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); Barr v. Clinton, 370 F.3d 1196, 1199 (D.C. Cir. 2004)). Nevertheless, “[w]hen the inquiry focuses on the Court’s power to hear the claim, ‘the Court may give the plaintiff’s factual allegations closer scrutiny and may consider materials outside the pleadings.’” Id. (quoting Logan v. Dep’t of Veterans Affairs, 357 F. Supp. 2d 149, 153 (D.D.C. 2004)).

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B.

Rule 12(b)(6)

A complaint must contain “a short and plain statement of the claim showing that the pleader is entitled to relief, in order to give the defendant fair notice of what the . . . claim is and the grounds upon which it rests.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (internal quotation marks and citations omitted). Plaintiffs must plead enough facts “to raise a right to relief above the speculative level.” Id. Accordingly, “only a complaint that states a plausible claim for relief survives a motion to dismiss.” Iqbal, 556 U.S. at 679. II. The Court Lacks Jurisdiction To Entertain Microsoft’s Complaint The Court lacks jurisdiction to entertain this matter because, although the Administrative Procedure Act (APA) provides a limited waiver of sovereign immunity in cases in which there is no other adequate legal remedy, Microsoft possesses an adequate remedy before the ITC for its complaints regarding Motorola’s redesigned smartphones. Moreover, count III of the complaint is moot because the “transition period” about which Microsoft complains has passed. Similarly, Microsoft can obtain redress in its pending patent action against Motorola before the Western District of Washington. A. Jurisdiction Under The APA Is Unavailable Because Microsoft Possesses An Adequate ITC Remedy

Microsoft attempts to invoke the Court’s jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1337. Alone, neither statute can waive sovereign immunity. Swan v. Clinton, 100 F.3d 973, 981 (D.C. Cir. 1996). But the APA, when it provides a cause of action, can both waive sovereign immunity and form a basis for jurisdiction in tandem with section 1331. Califano v. Sanders, 430 U.S. 99, 107 (1977); American Road & Transp. Builders Ass’n v. E.P.A., 865 F. Supp. 2d 72, 81 (D.D.C. 2012). Nevertheless, if “another statute provides an ‘adequate remedy in a court,’ 5 U.S.C. § 704, then the APA neither provides a cause of action nor waives sovereign 5

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immunity.” Id. (citing Washington Legal Found. v. Alexander, 984 F.2d 483, 486 (D.C. Cir. 1993); Fornaro v. James, 416 F.3d 63, 66 (D.C. Cir. 2005); Nat’l Wrestling Coaches Ass’n v. Dep’t of Educ., 366 F. 3d 930, 947 (D.C. Cir. 2004)). Likewise, section 702 of the APA bars “claims seeking relief expressly or impliedly forbidden by another statute.” Fornaro, 416 F.3d at 66. And “if the statute providing the adequate remedy channels review to the courts of appeals, it eliminates the federal question jurisdiction that the district courts would otherwise enjoy.” American Road, 865 F. Supp. 2d at 81 (citing Harrison v. PPG Indus., Inc., 446 U.S. 578, 584 (1980)). Two statutory schemes provide remedies sufficient to bar any claim by Microsoft that the APA provides a waiver of sovereign immunity. The first is section 337 itself. The second is the patent laws. In both schemes, Congress, through 28 U.S.C. § 1295(a)(1) and (6), has channeled review of these remedies by vesting the United States Court of Appeals for the Federal Circuit with exclusive jurisdiction to entertain challenges to Government action. In sum, there is no supportable basis to open yet another judicial front in the smartphone wars. 1. Section 337 Remedies Preclude APA Jurisdiction

Microsoft possesses a host of remedies under section 337 and the ITC’s implementing regulations, which preclude APA jurisdiction. Among its duties related to international trade, the ITC investigates and adjudicates claims that a party is importing or has imported items that infringe a valid United States patent. 19 U.S.C. § 1337(a)(1)(B). If the ITC determines that an importer is infringing a patent, the ITC will issue a “limited exclusion order,” which governs the parties before the ITC, or it may issue a “general exclusion order,” covering a broader range of circumstances. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1356 (Fed. Cir. 2008). The purpose of both types of

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orders is to exclude infringing goods from entering the United States. 19 U.S.C. § 1337(d)(2). The ITC does not, however, directly implement its orders at the border. Rather, the statute entrusts the Treasury Department (currently through CBP) with that responsibility. 19 U.S.C. § 1337(d)(1). Accordingly, after the ITC issues an exclusion order, the ITC notifies CBP of the order, and CPB “shall, through the proper officers, refuse” entry to subject goods. Id. Parties may obtain judicial review of the ITC’s and CBP’s actions in section 337 cases in two ways. Most directly, after the ITC makes a final determination under section 337, an adversely affected party may appeal within 60 days to the Federal Circuit. 19 U.S.C. § 1337(c); 28 U.S.C. § 1295(a)(6). This direct review is happening in this case – both Microsoft and Motorola appealed from the ITC’s order to the Federal Circuit, which heard argument on August 6, 2013. Fed. Cir. Docket Nos. 12-1445 and 12-1535. The other avenue of judicial review, though more limited, is through the United States Court of International Trade. Pursuant to 19 U.S.C. § 1514(a), an importer may protest a decision by CBP to exclude entry pursuant to an ITC exclusion order. See, e.g., Jazz Photo Corp. v. United States, 439 F.3d 1344, 1347-48 (Fed. Cir. 2006). If CBP denies an importer’s protest, the importer may challenge that denial in the Court of International Trade. 28 U.S.C. § 1581(a); Jazz Photo Corp., 439 F.3d at 1347. As Microsoft notes, however, only importers may challenge CBP’s exclusions in the Court of International Trade because of that court’s jurisdictional limitations. Funai Elec. Co., Ltd. v. United States, 645 F. Supp. 2d 1351 (Ct. Int’l Trade 2009); see 28 U.S.C. §§ 2631(h) & (a) (standing to challenge pre-importation rulings and CBP protest decisions); 19 U.S.C. § 1514(c)(2) (enumerating parties with standing to file protests with CBP).

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Despite these statutory limitations, patent holders still possess further administrative and judicial remedies. The Federal Circuit has held that the ITC possesses statutory authority to enforce its own orders. VastFame Camera, Ltd. v. Int’l Trade Comm’n, 386 F.3d 1108, 1113 (Fed. Cir. 2004) (appeal from ITC enforcement proceeding); see also World Wide Volkswagen v. Int’l Trade Comm’n, 414 F. Supp. 713 (D.D.C. 1976) (holding that Court lacked jurisdiction to entertain APA challenge to ITC’s interlocutory dismissal of parties from section 337 proceeding because the Court of Customs and Patent Appeals, the Federal Circuit’s predecessor, possessed jurisdiction to entertain challenges to final ITC decision). The ITC’s regulations provide a road map for complainants like Microsoft to pursue their rights before the ITC, and, if necessary, the Federal Circuit. As discussed in detail below, Microsoft can: (1) seek either formal or informal enforcement proceedings; (2) ask the ITC to issue a cease and desist order; (3) ask the ITC to provide emergency relief; (4) ask the ITC for an advisory opinion; or (5) ask the ITC to amend the exclusion order to include allegedly infringing redesigned devises. First, the ITC’s enforcement regulations offer both informal and formal proceedings. 19 C.F.R. § 210.75. Informal enforcement proceedings “may be conducted by the [ITC] with respect to any act or omission by any person in possible violation of any provision of an exclusion order . . . .” 19 C.F.R. § 210.75(a). The ITC then “may issue such orders as it deems appropriate to implement and insure compliance with the terms of an exclusion order.” Id. The regulation governing formal proceedings allows a “complainant in the original investigation,” such as Microsoft, to file “a complaint setting forth alleged violations of any exclusion order . . . .” 19 C.F.R. § 210.75(b)(1). Second, ITC enforcement proceedings may also result in the cease and desist orders, which carry substantial civil penalties. Id.; see also 19 U.S.C.

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§ 1337(f)(1) (entitled “[c]ease and desist orders; civil penalty for violation of orders”). The ITC may also bring suit in district court to enforce cease and desist orders against importers. 19 U.S.C. § 1337(f)(2); 19 C.F.R. § 210.75(c). Third, if Microsoft believed that Motorola’s imports were as flagrant and obvious a violation of the exclusion order as it purports, Microsoft could also seek temporary emergency relief before the ITC. This relief would function almost exactly like a preliminary injunction pending formal proceedings. 19 C.F.R. § 210.77(a). Moreover, as it did with respect to the ITC’s initial exclusion order in this case, Microsoft could appeal to the Federal Circuit a decision by the ITC concerning enforcement. See, e.g., VastFame, 386 F.3d at 1110 (noting that “Fuji filed a complaint with the [ITC] requesting enforcement and advisory proceedings to determine whether VastFame and others had violated the general exclusion order”). Fourth, Microsoft may seek an advisory opinion from the ITC concerning the exclusion order’s scope. 19 C.F.R. § 210.79. Fifth, and in addition to seeking enforcement of the existing order, Microsoft could seek modification of the order expressly to include the redesigned products it claims are infringing. 19 C.F.R. § 210.76. This may be the best route for Microsoft to vindicate its purported rights given that it has identified no portion of the ITC record indicating that the ITC found that retention of Google functionality infringes the ‘566 patent. The above remedies under section 337 and the ITC’s implementing regulations provide Microsoft with more than adequate redress for all claims raised in its complaint. These alternative remedies deprive this Court of jurisdiction to entertain this case. Indeed, this case is strikingly similar to Fornaro, in which the District of Columbia Circuit held that the APA did not waive sovereign immunity to allow a district court challenge to an Office of Personnel Management (OPM) decision when review was available at the Federal Circuit. Fornaro, 416 F.3d at 64-66. In that case, law enforcement officers challenged OPM’s decision not to notify

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members of a prospective class of claimants and provide enhanced retirement benefits resulting from earlier Federal Circuit case law. Id. at 65. OPM’s ruling was appealable to the Merit Systems Protection Board (MSPB) and ultimately to the Federal Circuit. Id. at 66. The Court held that allowing plaintiffs to challenge OPM’s action in district court “would plainly undermine the whole point of channeling review of benefits determinations to the MSPB and from there to the Federal Circuit.” Id. at 68. This approach, the Court explained, would also: (a) “reintroduce the haphazard arrangements for administrative and judicial review of personnel action, involving resort to the district courts through various forms of action, including suits for mandamus, injunction, and declaratory judgment, that Congress sought to replace in the CSRA [Civil Service Retirement Act]”; (b) “erode the primacy of the MSPB for administrative resolution of disputes and the primacy of the Federal Circuit for judicial review”; and (c) “impermissibly create a right of access to the courts more immediate and direct than the CSRA provides, thus fracturing the unifying authority of the MSPB, and undermining the consistency of interpretation by the Federal Circuit envisioned by the Act.” Id. at 68-69 (internal quotations, brackets, ellipses, and citations omitted). Not all APA district court actions involving the CSRA are prohibited, but those that are allowed involve limited challenges, for example, to systemwide rulemaking. See, e.g., Nat’l Treasury Employees Union v. Whipple, 636 F. Supp. 2d 63, 69 (D.D.C. 2009). Like the challenge to OPM’s actions under the CSRA in Fornaro, allowing Microsoft’s challenge to proceed would upset a carefully crafted statutory mechanism that provides an adequate and exclusive remedy for parties like Microsoft. Such a result is impermissible. As demonstrated above, all questions related to the implementation and scope of ITC exclusion orders are ultimately reviewable by the Federal Circuit alone. If the Court considers Microsoft’s

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challenge, the Court would be forced to review CBP’s interpretation of the ITC’s exclusion order and to construe what that order means, even though the ITC already has a process in place for such determinations. Review of this Court would be in the District of Columbia Circuit, when it would otherwise occur in the Federal Circuit, which, as noted above, is vested by Congress with exclusive jurisdiction over appeals involving ITC final determinations under section 337 and appeals of all civil actions arising under any Act of Congress relating to patents. Such a splitting of review between the regional circuits and the Federal Circuit similarly ignores the Supreme Court’s teaching regarding the APA. See Bowen v. Massachusetts, 487 U.S. 879, 908 (1988) (declining to split the review of 5 U.S.C. § 704 final agency actions regarding Medicaid between the courts). Microsoft cannot involve this Court and suddenly create a right of access to judicial review where none before existed. Allowing Microsoft to do so would circumvent the longstanding process by which parties return to the ITC and seek clarification, modification, and enforcement of exclusion orders. This right of access would mean a right to injunctive relief and declaratory judgments that before were the sole province of the ITC and CBP. The ITC can clarify and enforce its own rulings, and that power, coupled with available review in the Federal Circuit, deprives this Court of jurisdiction. In contrast, Microsoft has elected to ignore the readily available procedures at the appropriate forum of the ITC in favor of its contrived effort to obtain relief here. Moreover, even if Microsoft believes that a remedy before the ITC might inconvenience it because it might obtain injunctive relief more quickly here (which is questionable in light of the ITC’s ability to grant emergency relief), this concern is of no moment. See Town of Sanford v. United States, 140 F.3d 20, 23 (1st Cir. 1998) (explaining that “[a] legal remedy is not inadequate for purposes of the APA because it is procedurally

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inconvenient for a given plaintiff, or because plaintiffs have inadvertently deprived themselves of the opportunity to pursue that remedy.”); First Nat. Bank of Chicago v. Steinbrink, 812 F. Supp. 849, 854 (N.D. Ill. 1993) (“Not only is an administrative proceeding pending which addresses the very same issues . . . , but a viable opportunity for review exists in the appellate courts once a final enforcement order is issued. The only inadequacy with this remedy is that the Bank must endure the added expense and inconvenience of final adjudication in the administrative proceedings and subsequent review in the Seventh Circuit.”). Nor is pursuit of the correct judicial remedy merely theoretical. Indeed, Fuji pursued Microsoft’s correct judicial remedy in the disposable camera cases. Fuji, like Microsoft, filed a complaint at the ITC against importers (including Jazz Photo) that Fuji claimed were infringing its patents. Jazz Photo, 439 F.3d at 1346-47. Just as the ITC did here for Microsoft, the ITC agreed with Fuji and issued an exclusion order. Id. at 1347. Two years later, Fuji returned to the ITC “seeking institution of a formal enforcement proceeding to enforce the Exclusion Order” against Jazz Photo and others. Id. The ITC agreed with Fuji that Jazz Photo had violated the exclusion order. Id.; see also VastFame, 386 F.3d at 1110 (discussing ITC post-exclusion order proceedings). Many other complainants have resorted to this well-known mechanism for enforcement of ITC exclusion orders. See, e.g., Ninestar v. Int’l Trade Comm’n, 667 F.3d 1373 (Fed. Cir. 2012); Funai v. Vizio, 2010 ITC LEXIS 2811 (2010) (In the Matter of Certain Digital Television Products, Inv. No. 337-TA-617, Enforcement Proceeding); Apple v. HTC, 2013 ITC LEXIS 19 (2013) (In the Matter of Certain Personal Data and Mobile Communications Devices and Related Software, Inv. No. 337-TA-710, Enforcement Proceeding).

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In sum, Microsoft’s remedies before the ITC and the Court of Appeals for the Federal Circuit are adequate and have been pursued before. This Court accordingly lacks jurisdiction to entertain this case pursuant to the APA. 2. The Patent Laws Preclude APA Jurisdiction

The patent laws also provide Microsoft with an adequate remedy – one that Microsoft is already pursuing in its lawsuit against Motorola. 35 U.S.C. § 281 et seq. As a result, section 702 precludes jurisdiction under the APA. Patent holders may initiate infringement actions for which they are entitled to seek damages. 35 U.S.C. § 284; Fuji Photo Film Co., Ltd. v. Jazz Photo Corp., 394 F.3d 1368 (Fed. Cir. 2005) (patent remedies sought concurrently with section 337 ITC proceeding). Microsoft already sued Motorola in the United States District Court for the Western District of Washington, alleging that Motorola was “infringing the ’566 patent by, among other things, making, using, offering to sell or selling in the United States, or importing into the United States, products and/or services that are covered by one or more claims of the ’566 patent . . .” Microsoft v. Motorola, No. 2:10-cv-1577-RSM (W.D. Wash.), Dckt. No. 18 (Am. Cmpl. at ¶ 36) (emphasis added), Attachment D. Like Microsoft’s available remedies before the ITC and the Federal Circuit, Microsoft’s pursuit in district court of a case for patent infringement concerning the very devices at issue here demonstrates that Microsoft possesses adequate remedies sufficient to deprive this Court of jurisdiction. 3. Alternatively, This Case Should Be Rejected Because It Falls Within The ITC’s Primary Jurisdiction_______________________________

The Court should also decline to exercise jurisdiction because the case’s subject matter falls within the ITC’s primary jurisdiction. The primary jurisdiction doctrine promotes “proper relationships between the courts and administrative agencies charged with particular regulatory duties.” United States v. Western Pac. R. Co., 352 U.S. 59, 63-64 (1956). No fixed formula 13

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exists for applying the doctrine. Id. at 64. Instead, the doctrine “rests both on a concern for uniform outcomes (which may be defeated if disparate courts resolve regulatory issues inconsistently) . . . and on the advantages of allowing an agency to apply its expert judgment.” Allnet Communication Serv., Inc. v. Nat’l Exchange Carrier Ass’n, 965 F.2d 1118, 1120 (D.C. Cir. 1992). Although the doctrine of primary jurisdiction need not deprive the Court of jurisdiction, this Court may, if the parties would not be unfairly disadvantaged, dismiss a case without prejudice pursuant to the doctrine. Reiter v. Cooper, 507 U.S. 258, 268-69 (1993). As explained above, the ITC is charged in section 337 with directing exclusion of articles that infringe valid patents. The ITC, therefore, has exclusive jurisdiction, subject only to Federal Circuit review, to determine whether a violation of section 337 has occurred, including infringement of asserted patents, and to issue exclusion orders upon finding a violation of section 337. Under both section 337 and its implementing regulations, the ITC also has jurisdiction to enforce compliance with its orders. 19 U.S.C. § 1337(b), (d)-(f); 19 C.F.R. § 210.75 et seq. Moreover, the Federal Circuit has recognized the ITC’s technical expertise. See, e.g., Enercon GmbH v. Int’l Trade Comm’n, 151 F.3d 1376, 1382 (Fed. Cir. 1998). Given the clear route of review before the ITC that Microsoft resisted by filing suit here, the Court should decline to entertain this suit and instead allow the ITC to interpret and enforce its own order. If the Court creates an avenue for review of CBP rulings on ITC matters, a split of authority – with no uniform mechanism for review in a single court of appeals – will emerge, depending on where a party elects to seek relief. Further, and as in Allnet, the posture of Microsoft’s suit as “a declaratory judgment action strengthens the case for primary jurisdiction” because “Federal declaratory judgments are available as a matter of judicial discretion, not as of right . . . and are not to be used to pre-empt

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and prejudge issues that are committed for initial decision to an administrative body or special tribunal.” 965 F. 2d at 1121 (internal citations omitted). B. Count III Of The Complaint Is Moot

In addition to the other bases for dismissal, count III of the complaint should be dismissed as moot. Microsoft contends that CBP violated the exclusion order by granting Motorola’s request for a “transition period” before ceasing importation of certain smartphones that had previously been imported under license. Cmpl. at ¶ 5. That period ended June 1, 2013, id., and thus, the parties all agree no such smartphones may be imported by Motorola today. “[A] case is moot ‘when the issues presented are no longer live or the parties lack a legally cognizable interest in the outcome.’” Larsen v. Navy, 525 F.3d 1, 3-4 (D.C. Cir. 2008) (quoting County of Los Angeles v. Davis, 440 U.S. 625, 631 (1979); Powell v. McCormack, 395 U.S. 486, 496 (1969)). In this case, any outcome regarding the “transition period” will not affect any interest of any party because the transition period is over and Motorola may not import any additional smartphones under the now-revoked license. “The ‘judicial Power is one to render dispositive judgments,’ not advisory opinions,” Camreta v. Greene, 131 S. Ct. 2020, 2037 (2011) (quoting Plaut v. Spendthrift Farm, Inc., 514 U.S. 211, 219 (1995)), and thus, no justiciable controversy remains. Moreover, Microsoft can obtain redress for all infringing imports at the Western District of Washington, where it has sought damages from Motorola stemming from imports of allegedly infringing smartphones. II. Microsoft Fails To State A Claim For Which Relief May Be Granted Even assuming that the Court possesses jurisdiction to entertain Microsoft’s complaint, Microsoft fails to state a claim for which relief may be granted because CBP’s decision to

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decline to deny entry to certain post-exclusion order redesigned Motorola smartphones was committed to agency discretion. Microsoft misstates the governing standard in its complaint by attempting to apply the standard of review for final agency actions to what is in fact an attempt to “compel agency action [allegedly] unlawfully withheld.” 5 U.S.C. § 706(1). Microsoft thus fails to state a claim pursuant to Fed. R. Civ. P. 12(b)(6), because CBP’s decision not to exclude redesigned smartphones was discretionary and cannot be compelled pursuant to section 706(1). Sierra Club v. Jackson, 648 F.3d 848, 853-55 (D.C. Cir. 2011) (citing 5 U.S.C. § 701(a)(2) “committed to agency discretion” exemption from APA review). Because CBP was required to exercise judgment to determine whether the redesigned smartphones fell within the scope of the exclusion order, CBP’s ruling falls outside the limited class of ministerial actions that can be compelled pursuant to APA sections 701(a)(2) and 706(1). Microsoft “seeks injunctive and declaratory relief requiring [CBP] to comply with a mandatory Limited Exclusion Order.” Cmpl. at ¶ 2 (emphasis added). Microsoft then treats CBP’s purported non-enforcement of the ITC’s exclusion order as a final agency action under the APA, 5 U.S.C. § 702. Microsoft asserts that it may seek to compel enforcement by way of a Court decision holding CBP’s alleged non-enforcement “arbitrary and capricious” under 5 U.S.C. § 706(2)(A), see Cmpl. at ¶¶ 71-78 (argument pursuant to section 706(a)(A)), instead of the correct provision, under which Courts may “compel agency action unlawfully withheld” only under very limited circumstances. 5 U.S.C. § 706(1). Contrary to the premise of Microsoft’s suit, and as the unanimous Supreme Court recognized, “the only agency action that can be compelled under the APA is action legally required. This limitation appears in § 706(1)’s authorization for courts to ‘compel agency action

16

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unlawfully withheld.’” Norton v. Southern Utah Wilderness Alliance, 542 U.S. 55, 63 (2004) (SUWA) (quoting 5 U.S.C. § 706(1)) (emphasis by Court). “A claim under § 706(1) can proceed only where a plaintiff asserts that an agency failed to take a discrete agency action that it is required to take.” Id. (emphasis by Court). Indeed, section “706(1) empowers a court only to compel an agency ‘to perform a ministerial or non-discretionary act,’ or ‘to take action upon a matter, without directing how it shall act.’” Id. (quoting Attorney General’s Manual on the Administrative Procedure Act 108 (1947) (emphasis by Court); see also Heckler v. Chaney, 470 U.S. 821, 831 (1985) (decisions not to enforce are unreviewable under APA because they are “committed to agency discretion by law” under 5 U.S.C. § 701(a)(2)); Salmon Spawning Recovery Alliance v. United States, 532 F. 3d 1338, 1345 (Fed. Cir. 2008) (rejecting attempt to compel CBP to enforce Endangered Species Act (ESA) against alleged importers of ESA-listed salmon). To be sure, we do not contend that CBP possesses unbounded discretion to ignore ITC exclusion orders. Rather, when faced with containers of redesigned merchandise at the border, some level of discretion necessarily inures to CBP regarding whether to deny entry by determining whether those imports fall within or outside the scope of the ITC’s exclusion. CBP necessarily must “go beyond the mechanical application of [an exclusion order].” Corning Gilbert Inc. v. United States, 896 F. Supp. 2d 1281, 1289 (Ct. Int’l Trade 2013) (asserting jurisdiction for protest by importer of merchandise denied entry by CBP). That is all that happened here. Microsoft implicitly recognizes this practical reality by not contending that exclusion of redesigned products is a “ministerial” or “discrete agency action that [CBP] is required to take,” SUWA, 542 U.S. at 63 (emphasis by Court), whenever CBP implements an exclusion order. Nor can it, because this is not the case in which an importer attempts to enter

17

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the same product subject to an ITC exclusion order. Rather, Motorola redesigned its smartphones, creating a new class of product that did not exist at the time of the ITC’s decision. CBP thus had no choice but to exercise discretion at the border. Accordingly, Microsoft’s claim fails to state a claim for which relief may be granted for that reason alone. Finally, the recent decision in Cook v. FDA, --- F. 3d ----, 2013 WL 3799987 (D.C. Cir. July 23, 2013) does not compel the outcome that Microsoft seeks. In that case, death row inmates sued the Food and Drug Administration (FDA) contending that it must detain and inspect a drug used for lethal injections (thiopental) because it was “‘manufactured, prepared, propagated, compounded, or processed in an establishment not duly registered’” with the FDA. Cook, 2013 WL 3799987 at *1 (quoting 21 U.S.C. § 352(o)). The FDA’s statute further mandated that “‘such article [as described in section 352(o)] shall be refused admission.” Id. (quoting 21 U.S.C. § 381(a)). Despite its statutes’ mandatory nature, FDA elected not to inspect and instead to allow admission of imported thiopental destined for correctional facilities regardless of whether it originated from “an establishment not duly registered,” 21 U.S.C. § 352(o), with the FDA. Cook, 2013 WL 3799987 at *4. FDA explained that its decision was “in deference to law enforcement.” Id. at *2. In granting an affirmative injunction compelling examination and denial of entry, the Court reasoned that these statutes were “mandatory” and “unambiguous” and, thus, there was no discretion committed to the FDA under the APA: The FDA must request samples of all drugs offered for import that have been made in an unregistered establishment, must examine those samples for a violation of the FDCA, and must refuse admission to any drug that appears, through the sampling process or otherwise, to violate the FDCA. Id. at *5.

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In contrast to Cook, in which the statute “unambiguously impose[d] mandatory duties upon the FDA,” id. at *3, CBP was faced with importations of new merchandise that did not exist at the time of the ITC’s exclusion order. As a result, CBP was required to exercise its discretion to determine whether it should deny entry to redesigned smartphones. And unlike Cook, this case lacks the “‘legislative direction in the statutory scheme’” necessary to rebut the presumption of unreviewability of enforcement decisions in Heckler v. Chaney. Cook, 2013 WL 3799987 at *5 (quoting Heckler v. Chaney, 470 U.S. at 833). In sum, this matter stands far outside the extremely limited class of mandatory agency action that the Courts may compel. CONCLUSION For these reasons, we respectfully request that the Court dismiss this action for lack of jurisdiction or in the alternative, because Microsoft failed to state a claim for which relief may be granted. Respectfully submitted, STUART F. DELERY Assistant Attorney General RONALD C. MACHEN JR. United States Attorney for the District of Columbia BRYANT G. SNEE Deputy Director /s/ Claudia Burke for PATRICIA M. McCARTHY Assistant Director

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/s/ STEPHEN C. TOSINI (DC Bar No. 470415) SEAN B. McNAMARA Senior Trial Counsels Department of Justice Civil Division Commercial Litigation Branch PO Box 480, Ben Franklin Station Washington, D.C., 20044 Tel: (202) 616-5196 Email: stephen.tosini@usdoj.gov September 13, 2013 Attorneys for Defendant

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA MICROSOFT CORPORATION, Plaintiff, v. UNITED STATES, ET AL., Defendants, and MOTOROLA MOBILITY, INC. Defendant-intervenor. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ORDER On consideration of the motion to dismiss filed by the United States, and all other pertinent papers, it is hereby ORDERED that the motion is granted, and it is further ORDERED that this action is dismissed pursuant to Red. R. Civ. P. 12(b)(1).

No. 13-1063 (RWR)

______________________ CHIEF JUDGE Dated: ____________________ Washington, DC

Case 1:13-cv-01063-RWR Document 53-4 Filed 09/13/13 Page 1 of 11
1300 Pennsylvania Avenue NW Washington, DC 20229

U.S. Customs and Border Protection

HQ H242025

OT:RR:BSTC:IPR H242025 DAX CATEGORY:

19 U.S.C. § 1337; Unfair Competition

Richard Belanger Sidley Austin LLP 1501 K Street, N.W. Washington, D.C. 20005
RE:

U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-744; Certain Mobile Devices, Associated Software, and Components Thereof

Dear Mr. Belanger: This is in response to your submission, dated May 10, 2013, on behalf of your client, Microsoft Corporation ("Microsoft"), requesting revocation , pursuant to 19 C.F.R. Part 177.12(b), of Headquarters Ruling Letter H226615 ("HQ H226615"), dated April 25, 2013. The ruling letter in question determined that certain mobile devices manufactured by or on behalf of Motorola Mobility, Inc. ("Motorola"), having been modified to remove particular functionality contained therein that was found at the U.S. International Trade Commission ("ITC" or "Commission") to infringe claims 1, 2, 5, and 6 of U.S. Patent No. 6,370,566 ("the ' 566 patent"), were no longer covered by those patent claims and, therefore, not subject to exclusion from entry. Microsoft seeks revocation of HQ H226615 on two separate grounds. First, Microsoft claims that the ruling letter fails to consider the infringement that results when the Android Calendar application on the device is set up using means other than Corporate Sync and is configured for a server other than the Exchange server. In essence, Microsoft challenges the entry of the redesigned Motorola devices based on their ability to use Google's servers and Google's synchronization protocol to synchronize calendar objects, an ability that was present on the legacy mobile devices

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2
accused at the ITC. Microsoft claims that this ability was specifically accused of infringement and formed part of the ITC's infringement finding , such that the devices at issue in the ruling letter must be refused entry. Second , Microsoft claims that, even absent any consideration as to the use of Google's servers and synchronization protocol, the redesigned mobile devices, as modified , have not successfully avoided the relevant claims of the · 566 patent and therefore are still subject to exclusion. This ruling letter addresses the first of Microsoft's two grounds for revocation. However, since HQ H226615, for which Microsoft seeks revocation , did not address the use of Google's servers and synchronization protocol and whether this functionality was specifically accused and formed part of the infringement finding at the ITC, the portion of Microsoft's submission involving this claim is being treated as a new ruling request concerning the admissibility of the modified Motorola mobile devices. Microsoft, as the ITC complainant and owner of the · 566 patent and thereby an importer, exporter, or other party with a direct and demonstrable interest in the question presented , qualifies as a person that may request such a ruling . See 19 C.F.R. Part 177.1(c). Microsoft's second ground for revocation-concerning the nature of the modifications in Motorola's redesigned mobile devices- is addressed in a separate issuance (Headquarters Ruling Letter H242026).
FACTS:

The ITC instituted the above-referenced investigation on November 5, 2010, based on a complaint filed by Microsoft. 77 Fed . Reg. 35,427 (2012). The complaint alleged a violation of section 337 of the Tariff Act of 1930, as amended , 19 U.S.C. § 1337, in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain Motorola mobile devices, associated software, and components thereof by reason of infringement of U.S. Patent Nos. 5,579,517; 5,78.352 ; 6.621 .746: 6.826,762; 6,909,91 O; 7,644,376 ; 5,664,133; 6,578,054; and 6,370,566. !Q. With respect to the latter, the complaint indicated that the ' 566 patent "relates to mobile devices, and more particularly, to generating meeting requests and group scheduling from a mobile device." See Complaint at 19, 1l 74. The complaint also provided that prior to the claimed invention "[s]cheduling meeting requests had been supported by desktop computers or laptop computers which had a hard disk drive or other high capacity memory mechanisms [but]. ..allowing a mobile device to also generate a meeting request is desirable." !Q. at 1l 75. The ·555 patent, accordingly, "discloses and claims a mobile device which provides the user with the ability to schedule a meeting request from the mobile device itself." !Q. at 1i 76. Among the exhibits accompanying the complaint was Exhibit 59, which contained a claim chart for the · 566 patent that listed the various claim limitations and identified the features in the accused Motorola mobile devices purported to satisfy those limitations. The chart for claim 1 of the ' 566 patent from Exhibit 59 is depicted below.

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3

'566 Patent
1. A mobile device, compnsmg:

Exemplary Motorola Devices
To the extent the preamble is construed to be limiting, the Motorola Droid 2 is a mobile device, as depicted below in Figure 1-1. See Ex. A, "Droid 2 by Motorola A955," http://developer.motorola.com/products/droid2 (visited Sept. 9, 2010).

Figure 1-1

an object store;

The Droid 2 includes an object store. By way of example, the Droid 2 includes 8 GB of microSD memory and 512 MB of RAM. See Ex. B, "Droid 2 by Motorola Technical Specifications," http://www.motorola.com/Consumers/US-EN/ConsumerProduct-and-Services/Mobile-Phones/ci.Motorola-DROID2-US-EN.alt (visited Sept. 9, 201 O); Ex. A.

an application program configured to maintain objects on the object store;

The Droid 2 includes an application program configured to maintain objects on the object store. By way of example, the Droid 2 includes a Calendar application configured to maintain event objects on the object store. The Droid 2 includes a user input mechanism configured to receive user input information. By way of example, the Droid 2 includes an on-screen touch ke board and a h sical "slide side" keyboard. See Ex. A. The Droid 2 includes a synchronization com onent

a user input mechanism configured to receive user input information;

a s nchronization com onent

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4

'566 Patent configured to synchronize individual objects stored on the object store with remote objects stored on a remote object store; a communications component configured to communicate with a remote device containing the remote object store;

Exemplary Motorola Devices configured to synchronize individual objects stored on the object store with remote objects stored on a remote object store. See generally Ex. B ("Synchronization Support for Corporate calendar, email and contacts (Exchange 2003 and 2007), Google contacts, calendar and Gmail contacts."). The Droid 2 includes a communications component configured to communicate with a remote device containing the remote object store. By way of example, the Droid 2 includes EVDO Rev.A wireless capability for data and 802.11 x Wireless LAN capability. See Ex. A. The Droid 2's calendar application program is further configured to generate a meeting object and an electronic mail scheduling request obj ect based on the user input information. See Ex. C, "Droid 2 - Calendar," https://motorola-globalportal .custhelp.corn/app/answers/detail/a_ id/5163 3/-/droid2---calendar (visited Sept. 9, 2010) ("Add details about the event. Tap in a text box for the keyboard to enter a name, time, and optional additional details about the event .... Any contacts from your established Gmail, Enterprise and Social Networking accounts can be searched to contact for an event.").

wherein the application program is further configured to generate a meeting object and an electronic mail scheduling request object based on the user input information.

Figure 1-2: User input generating a meeting object For instance, as seen in Figure 1-2, the Calendar application program generates meeting objects called "Events" based on the user in ut information.

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5

'566 Patent

Exemplary Motorola Devices

i. 3~
Create event

ol

9:15AM

learn Meeung
Who

Required:

Start

M§l.FJ.frl•

Figure 1-3: User input adding contact information for attendee As seen in Figure 1-3, the Calendar application program allows users to input contact information for meeting attendees in order to generate electronic mail scheduling requests.
MIME-Version 1 0 Recer.ed by • • • • • • • • • • • • • • • • • • • • Wed 08 Sep 2010 07 16 ~8 -0700 (PDT! Reply To _ Sender Google Calendar <calendar-notmcat1on@gooale com > Auto-Submrtted auto-generated Message-ID • > Date Wed 08 Sep 2010 1~ 16 ~ 8 •0000 Subj....,;, 111i lrM1 iiiiiia ii tii "'ii " 11i T jea ii rn iiii M ii eii eti1 111Q ili @ iii Frl1Se ii o il 10 2om - 3om l1ohn sm1th@a unrverslly edu) From • To "1ohn sm1th@a unr."ers1ty edU"-<1ohn sm1th@a univers11V aju> Content-Type mutt1part· mixed boundary=OO 16e68ee2e 7092f58Q.l8fc02abd You ha-.-e been 111\•led to the follo.v1ng e-.ent Tiiie Team Meeting When Fn Sep 10 2pm - 3pm Central Time Calendar 1ohn smllh@a unoyersrty edu Who • wuser08 wuser • organizer • 1ohn sm1th@a unrvers1ty edu E\'ent details

Figure 1-4: Electronic mail scheduling request received by attendee As seen in Figure 1-4, the Calendar application program generates electronic mail scheduling request objects based on the user input information.

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6 The chart above from Exhibit 59 includes the claim limitations requiring "an application program configured to maintain objects on the object store" and "a synchronization component configured to synchronize individual objects stored on the object store with remote objects stored on a remote object store" wherein "the application program is further configured to generate a meeting object and an electronic mail scheduling request object based on the user input information." Significantly, the claim chart shows the features of the accused devices believed to satisfy each of the claim limitations. In particular, Microsoft alleged that the "application program" was satisfied by the device's "Calendar application" and that the "synchronization component" was supplied by the "Synchronization Support for Corporate calendar, email and contacts (Exchange 2003 and 2007), Google contacts, calendar and Gmail contacts," according to the accompanying materials from Exhibit B to Exhibit 59. Motorola was notified of the complaint and the matter was assigned to an Administrative Law Judge ("ALJ"), who presided over the next stage of the investigation. On December 17, 2010, the ALJ set a target date for completion of the investigation and issuance of his final initial determination ("FID"), and also directed the parties to submit a proposed procedural schedule. See Order No. 3. On January 10, 2011, the ALJ confirmed that the joint procedural schedule submitted by the parties would control the investigation. See Order 4. The joint procedural schedule, inter a/ia, provided for the filing of preliminary infringement and non-infringement contentions, the identification of claim terms in dispute, the taking of depositions, and the exchange of expert reports. On November 22, 2010, Motorola responded to the complaint and its various allegations. Afterward , the parties began exchanging briefs and submitting motions related to various aspects of the investigation , such as their respective proposed constructions for the disputed claim terms. Significantly, during this period, the parties also engaged in other aspects of discovery, such as deposing expert witnesses, in
preparation for the investigation hearing before the ALJ . This portion of the

investigation , particularly that involving expert discovery, developed the administrative record at the ITC. During this period , Microsoft deposed Peter John Cockerell , one of Motorola's witnesses, on May 3, 2011. See Microsoft Ruling Request (May 10, 2013) at Exhibit D. Cockerell's testimony was later incorporated into Microsoft's direct trial exhibit CX1081 C (an updated claim chart for the '566 patent) that Motorola was served with at least by June 28, 2011. .!Q. at Exhibit A ; see also Motorola Mobility, Inc. Objections to Complainant Microsoft Corporation's Direct Exhibits at 1 (August 4, 2011 ). As with Exhibit 59 to Microsoft's complaint, the "application program" limitation is allegedly met by the accused device's calendar application. However, unlike Exhibit 59, the "synchronization component" limitation does not expressly reference any Google programs, but does refer at least to the Motorola ActiveSync system as described by Cockerell in his testimony and in the Exchange Protocol. On the other side, Motorola deposed Hugh M. Smith , Microsoft's expert witness, on July 8, 2011 . During the deposition, Smith's testimony referenced , inter alia, the testimony of Cockerell.

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7
Both Microsoft and Motorola submitted their Pre-Hearing Briefs on August 8, 2011 , incorporating their various arguments regarding all issues in light of the testimony up to this point. The investigation hearing commenced on August 23, 2011 . However, on August 24, 2011 , counsel for Motorola notified Microsoft's counsel that Motorola withdrew its contentions and responses with respect to Microsoft's assertion of the ' 566 patent and thereby would not dispute infringement. See ALJ FID at 65 (citing Hearing Transcript 1438:7-24); see also Microsoft Ruling Request (May 10, 2013) at Exhibit F. After the hearing concluded, the parties submitted their Post-Hearing Briefs addressing various issues. Based on the administrative recorded developed , including Motorola's concession, the ALJ on December 20, 2011, found that Microsoft established by a preponderance of the evidence that the accused devices infringe claims 1, 2, 5, and 6 of the '566 patent. See ALJ FID at 65. Microsoft and Motorola both filed Petitions for Commission Review on January 5, 2012 , and then filed responses on January 13, 2012, to their respective Petitions for Commission Review. The Commission provided notice of the issues under review on March 2, 2012. The parties then submitted their Opening Briefs on Commission Review on March 19, 2012, and filed their responses thereto on March 27, 2012. In its responsive brief, Motorola raised the issue that any exclusion order that may issue with respect to the ' 566 patent should not extend to the ability of the Motorola devices to use Google's servers and synchronization protocols to synchronize calendar objects. See Motorola Mobility lnc. 's Response to Complainant Microsoft Corporation's Opening Brief on Commission Review at 45 . Motorola explained that the mobile devices accused at the ITC, in two ways, can synchronize calendar objects generated on the device. First, the device can utilize a Microsoft Exchange server and the Microsoft Exchange ActiveSync protocol to synchronize calendar objects. !Q. Motorola referred to this implementation as "corporate sync." !Q. The second way is that the device can utilize Google's server and Google's synchronization protocol to synchronize calendar objects. Motorola argued that Microsoft abandoned its claim to the latter and presented no evidence regarding infringement based on this functionality. !Q. at 46. According to Motorola, in addition to the lack of evidence presented , the second way of synchronization does not satisfy the electronic mail scheduling request object and therefore cannot be found to infringe. !Q. The ITC did not make a finding on this issue and instead took no position, noting that "Motorola .. .argues that any exclusion order should not extend to the accused products' use of Google's servers and Google's synchronization protocol to synchronize calendar objects. RespResp at 46 (citing MSFT PHB at 79-114; CX-974C at 089-155) . We decline to consider this issue because it was raised by Motorola for the first time in a responsive brief." Ultimately, the ITC, in affirming , modifying , and reversing aspects of the ALJ 's FID, determined that the appropriate form of relief was a limited exclusion order prohibiting , with limited exception , the unlicensed entry for consumption of mobile devices, associated software, and components thereof covered by claims 1, 2, 5, or 6 of the · 566 patent that are manufactured abroad by or on behalf of, or imported by or on behalf of, Motorola.

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8

ISSUE:

The issue presented is whether the record supports a finding that Microsoft specifically alleged and established that the use of Google's servers and Google's synchronization protocol by the legacy Motorola mobile devices satisfies particular claim limitations of the ' 566 patent and , as such , formed part of the ITC's infringement finding.
LAW AND ANALYSIS:

Section 337, as amended , 19 U.S.C. § 1337, makes unlawful the importation of articles that infringe a valid and enforceable United States patent and authorizes the ITC, upon finding a violation, to direct that those articles be excluded from entry. 19 U.S.C. § 1337(a)(1 )(B), (b)(1 ), (d); see also John Mezzalingua Associates. Inc. v. U.S. lnt'I Trade Comm'n, 660 F.3d 1322, 1324 (Fed. Cir. 2011 ). The ITC, therefore, must find that patent infringement has occurred for there to be a violation this section . Patent infringement determinations entail two steps. The first step is to interpret the meaning and scope of the patent claims asserted to be infringed. The second step is to compare the properly construed claims to the accused device. See Markman v. Westview Instruments. Inc. , 52 F.3d 967 (Fed . Cir. 1995) (en bane), aff'd , 517 U.S. 370 (1996). The first step is a question of law; the second step is a question of fact. See Freedman Seating Co. v. American Seating Company, 420 F.3d 1350, 1357 (Fed . Cir. 2005). In patent law, there are two types of infringement: direct and indirect infringement. One variety of direct infringement in patent law is literal infringement. "To show literal infringement of a patent, a patentee must supply sufficient evidence to prove that the accused product or process meets every element or limitation of a claim." Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed . Cir. 1997). It, therefore, is "well settled" that each element of a claim is material and essential and, for a court or the ITC to find infringement, the patentee must show the presence of every element in the accused device by a preponderance of the evidence. Id . As the complainant asserting infringement, Microsoft bore the burden of proof to accuse and establish which specific features satisfied the various claim limitations. See Symbol Technologies. Inc. v. Opticon. Inc., 935 F.2d 1569, 1574 (Fed . Cir. 1991) (recognizing that beyond the claim chart prepared by patentee's expert witness, no detailed analysis occurred linking the particular parts of the accused device with the claimed elements and finding infringement limited to that which was contained in the claim chart); see also Rohm & Haas, 127 F.3d at 1091-1093. When a violation is found , 19 U.S.C. § 1337(d) provides that the ITC shall notify the Secretary of the Treasury of its finding and the Secretary, through CBP, shall refuse entry to the articles in question. The ITC provides notification by issuing exclusion orders, of which there are two types: limited exclusion orders and general exclusion orders. See Fuji Photo Film Co .. Ltd. v. U.S. lnt'I Trade Comm'n, 474 F.3d 1281 , 1286 (Fed. Cir. 2007). Regardless of the remedy imposed, both types of exclusion orders direct CBP to bar the infringing products from entering the country. Yingbin-Nature

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9
(Guangdong) Wood Indus. Co. v. U.S. lnt'I Trade Comm'n, 535 F.3d 1322, 1330 (Fed Cir. 2008) . Both types of exclusion orders place the burden on the importer to establish an article's admissibility through its modification, authorization, or as otherwise provided by law. Hyundai Electronics Industries Co., Ltd . v. U.S. lnt'I Trade Comm'n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). The ITC generally directs its exclusion orders to articles "covered by" the infringed claims of the relevant patents. In the Matter of Certain Hardware Logic Emulation Systems and Components Thereof, Inv. No. 337-TA-383, Commission Opinion at 16 (Publication 3089, dated March 1998) ("[T]he Commission's long-standing practice is to direct its remedial orders to all products covered by the patent claims as to which a violation has been found , rather than limiting its orders to only those specific models selected for the infringement analysis."). Moreover, "exclusion orders must be read in the context of the investigations in which they were issued and the Commission's findings in that investigation." In the Matter of Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Advisory Opinion at 4 (dated April 20, 2010). Accordingly, it is the ITC that is charged with administering section 337 and determining whether the complainant has met its burden during the investigation to establish infringement with evidence that every limitation from the asserted claim has been satisfied by a feature in the accused device. See Vastfame Camera, Ltd. v. U.S. Int' I Trade Comm'n, 386 F.3d 1108, 1110 (Fed. Cir. 2004); see also Fuji Photo Film Co., Ltd . v. U.S. lnt'I Trade Comm'n, 386 F.3d 1095 (Fed. Cir. 2004) (recognizing the ITC's paramount authority to determine whether section 337 has been violated, the issuance any Customs rulings notwithstanding); see also In the Matter of Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, Consolidated Enforcement and Advisory Opinion (acknowledging the ITC as the arbiter of whether its orders have been violated). CBP's enforcement responsibility in the exclusion order context is to apply the infringement findings from the ITC record to determine whether imported articles exhibit those elements of the adjudged infringing products that the ITC complainant previously contended and proved satisfy the specific limitations of the asserted claims. In light of the above, CBP will not refuse entry on the basis of features that were present on the accused devices at the time of the ITC investigation but were not specifically accused and found to satisfy the limitations in the asserted patent claims identified in the exclusion order. Microsoft contends that Motorola conceded, and that the ITC therefore held, that the Android Calendar application infringes the ' 566 patent regardless of whether the application is configured for Google servers using Google Account or Exchange servers using Corporate Sync. See Microsoft Ruling Request (May 10, 2013) at 2. Microsoft argues that "[w]hen the Calendar application is set up with Google Account it is configured to communicate with Google servers; when configured through Corporate Sync, Calendar communicates instead with Exchange servers." Id. Microsoft concludes that "[r]egardless of which set of servers it is set up to communicate with, the

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10 Calendar application infringes because it provides the same 'electronic mail scheduling request' that formed the basis of the ITC's infringement analysis." Id. While it may be that the "application program" limitation from claim 1 of the · 566 patent is satisfied by the Android Calendar application regardless of the means with wh ich it is set up, this does not indicate where in the record Microsoft actually accused and established that the use of Google's synchronization protocol by the legacy Motorola mobile devices satisfies the "synchronization component" limitation. Microsoft points to the testimony from Cockerell's deposition but that testimony in its entirety seems to counter Microsoft's position more than support its claim that Google's synchronization protocol was specifically accused . See Microsoft Ruling Request (May 10, 2013) at 2 (citing to its Exhibit D (i.e. , Cockerell Deposition) at 20); but compa re at 26:20-27:9; 42:24-43:18. Moreover, the updated claim chart contained in CX-1081C, wh ich incorporates aspects of Cockerell's deposition testimony, focuses on the ActiveSync system and does not refer to Google's synchronization protocol. Microsoft has not identified any portion of its expert reports or witness statements that clarifies where in the record a Google synchronization protocol was claimed to satisfy the "synchronization component. " Moreover, during his deposition, Microsoft's expert witness, Hugh M. Smith, testified that the focus of his infringement analysis was on the ActiveSync protocol alone concerning the limitation in question , which, as CX-1081C reveals, was the "synchronization component. " See Smith Deposition (July 8, 20 11) at 141 :7-143-1 3. Microsoft, likewise, does not point to any support in its Pre- or PostHearing Briefs for its position that Google's synchronization protocol was specifically accused to satisfy this claim limitation. Microsoft does point to the statement in the Commission Opinion that the ITC declined to consider this issue. However, this statement seems to imply that the use of Google's servers and Google's synchronization protocol was not specifically accused,
or a t t he very least that the record was u nclear, because if it had been specifically

accused , the ITC would have expressly denied Motorola's assertion as .having been subject to the concession it made and , consequently, the ALJ 's infringement finding . Nevertheless, since the admissibility question for CBP's purposes depends exclusively on whether Microsoft specifically accused these features in the Motorola mobile devices of satisfying the particular claim limitation from the ' 566 patent, CBP contacted the Office of the General Counsel at the ITC for guidance and clarification of the agency's own record . However, the General Counsel's Office was unable to provide the clarification requested . When asked for confirmation regarding the record it developed and the precise infringement findings that resulted in the exclusion order's issuance, the ITC reiterated that it took no position on the matter and suggested an approach for CBP to resolve the issue that it declined to consider. In light of the above, CBP determines that the record is insufficient to support a find ing that the legacy Motorola devices at the ITC were specifically accused and proven to infringe based on thei r ability to use Google's servers and Google's synchronization protocol and , as noted above, CBP will not refuse entry on the basis of

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11 features that were present on the accused devices at the time of the ITC investigation but were not specifically accused and found to satisfy the limitations of the asserted patent claims in the exclusion order.
HOLDING:

Based on the foregoing , including the determination that the administrative record does not support a finding that Microsoft specifically accused the ability in the legacy Motorola devices of using Google's servers and Google's synchronization protocols to satisfy the limitation from claim 1 of the · 566 patent requiring a "synchronization component," and because there is no dispute that these features were present on the devices before the ITC during the investigation, CBP shall not refuse entry on the basis of these features , absent additional guidance from the ITC. This decision is limited to the specific facts set forth herein. However, as with ruling letters generally, if the imported articles differ from the embodiment described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. § 177.2(b)(1 ), (2) and (4), and § 177.9(b)(1) and (2). Sincerely,

Charles R. Steuart Branch Chief Intellectual Property Rights Branch

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 1. v. Motorola, Inc. and Motorola Mobility, Inc., Defendants. UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE MICROSOFT CORPORATION, a Washington Corporation, Plaintiff, ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No: 2:10-cv-1577-RSM

AMENDED COMPLAINT FOR PATENT INFRINGEMENT JURY DEMAND

Plaintiff Microsoft Corporation (“Microsoft”) for its Complaint for Patent Infringement against Motorola, Inc. and Motorola Mobility, Inc. (collectively “Motorola”) alleges as follows: PARTIES Plaintiff Microsoft is a Washington corporation having its principal place of

business at One Microsoft Way, Redmond, Washington 98052. 2. Upon information and belief, Defendant Motorola, Inc. is a corporation organized

under the laws of Delaware with its principal place of business at 1303 East Algonquin Road, Schaumburg, Illinois 60196. On information and belief, Defendant Motorola Mobility, Inc. is a wholly-owned subsidiary of Motorola, Inc. and is organized under the laws of the Delaware, having a principal place of business at 600 North U.S. Highway 45, Libertyville, Illinois 60048.
AMENDED COMPLAINT – 1 Case No.: 2:10-cv-1577-RSM
SIDLEY AUSTIN LLP One South Dearborn Chicago, IL 60603 TEL, (312) 853-7000 FAX, (312) 853-7036

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On information and belief, Motorola Inc. is organizing its mobile device business under the Motorola Mobility, Inc. entity. Motorola Inc. and Motorola Mobility, Inc. will be referred to collectively herein as “Motorola.” On information and belief, Motorola is engaged in the design, manufacture, importation into the United States, and sale after importation of smartphones and associated software applications and services. Motorola markets and sells these products worldwide through its channel business partners, telecom service providers, and various retail companies, both at retail stores and through company websites. JURISDICTION AND VENUE 3. This is an action for patent infringement arising under the patent laws of the

United States, Title 35, United States Code. 4. 1338(a). 5. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b), 1391(c), 1391(d), This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and

and 1400(b). On information and belief, the Defendants are subject to this Court’s personal jurisdiction, consistent with the principles of due process and the Washington Long Arm Statute, because Defendants maintain offices and facilities in the Western District of Washington, offer their products for sale in the Western District of Washington, have transacted business in this District, and/or have committed and/or induced acts of patent infringement in this District. PATENT INFRINGEMENT COUNTS 6. Microsoft is the owner of all right, title, and interest in U.S. Patent No. 5,579,517

(“the ’517 patent”), U.S. Patent No. 5,758,352 (“the ’352 patent”), U.S. Patent No. 6,621,746 (“the ’746 patent”), U.S. Patent No. 6,826,762 (“the ’762 patent”), U.S. Patent No. 6,909,910 (“the ’910 patent”), U.S. Patent No. 7,644,376 (“the ’376 patent”), U.S. Patent No. 5,664,133 (“the ’133 patent”), U.S. Patent No. 6,578,054 (“the ’054 patent”), and U.S. Patent No. 6,370,566 (“the ’566 patent”) (collectively, “the Microsoft Patents”), which the Defendants are infringing and/or inducing others to infringe by making, using, offering to sell or selling in the

AMENDED COMPLAINT – 2 Case No.: 2:10-cv-1577-RSM

SIDLEY AUSTIN LLP One South Dearborn Chicago, IL 60603 TEL, (312) 853-7000 FAX, (312) 853-7036

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United States, or importing into the United States, products or processes that practice inventions claimed in the Microsoft Patents. 7. The Defendants have profited through infringement of the Microsoft Patents. As

a result of the Defendants’ unlawful infringement of the Microsoft Patents, Microsoft has suffered and will continue to suffer damage. Microsoft is entitled to recover from the Defendants the damages suffered by Microsoft as a result of the Defendants’ unlawful acts. 8. Upon information and belief, Defendants’ infringement of one or more of the

Microsoft Patents is willful and deliberate, entitling Microsoft to enhanced damages and reasonable attorney fees and costs. 9. Upon information and belief, the Defendants intend to continue their unlawful

infringing activity, and Microsoft continues to and will continue to suffer irreparable harm—for which there is no adequate remedy at law—from such unlawful infringing activity unless the Defendants are enjoined by this Court. COUNT I INFRINGEMENT OF U.S. PATENT NO. 5,579,517 10. Microsoft realleges and incorporates by reference the allegations set forth in

paragraphs 1-9. 11. Microsoft is the owner of all right, title, and interest in U.S. Patent No. 5,579,517

(“the ’517 patent”), entitled “Common Name Space for Long and Short File Names,” duly and properly issued by the U.S. Patent and Trademark Office on November 26, 1996 (a reexamination certificate for the ’517 issued on November 28, 2006). A copy of the ’517 patent is attached as Exhibit A. 12. The Defendants have been and/or are directly infringing and/or inducing

infringement of and/or are contributorily infringing the ’517 patent by, among other things, making, using, offering to sell or selling in the United States, or importing into the United States, products and/or services that are covered by one or more claims of the ’517 patent, including, by way of example and not limitation, the Motorola Droid 2.
AMENDED COMPLAINT – 3 Case No.: 2:10-cv-1577-RSM
SIDLEY AUSTIN LLP One South Dearborn Chicago, IL 60603 TEL, (312) 853-7000 FAX, (312) 853-7036

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 16. 13.

COUNT II INFRINGEMENT OF U.S. PATENT NO. 5,758,352 Microsoft realleges and incorporates by reference the allegations set forth in

paragraphs 1-12. 14. Microsoft is the owner of all right, title, and interest in U.S. Patent No. 5,758,352

(“the ’352 patent”), entitled “Common Name Space for Long and Short File Names,” duly and properly issued by the U.S. Patent and Trademark Office on November 26, 1996 (a reexamination certificate was issued for the ‘352 patent on October 10, 2006). A copy of the ’352 patent is attached as Exhibit B. 15. The Defendants have been and/or are directly infringing and/or inducing

infringement of and/or are contributorily infringing the ’352 patent by, among other things, making, using, offering to sell or selling in the United States, or importing into the United States, products and/or services that are covered by one or more claims of the ’352 patent, including, by way of example and not limitation, the Motorola Droid 2. COUNT III INFRINGEMENT OF U.S. PATENT NO. 6,621,746 Microsoft realleges and incorporates by reference the allegations set forth in

paragraphs 1-15. 17. Microsoft is the owner of all right, title, and interest in U.S. Patent No. 6,621,746

(“the ’746 patent”), entitled “Monitoring Entropic Conditions of a Flash Memory Device as an Indicator for Invoking Erasure Operations,” duly and properly issued by the U.S. Patent and Trademark Office on September 16, 2003. A copy of the ’746 patent is attached as Exhibit C. 18. The Defendants have been and/or are directly infringing and/or inducing

infringement of and/or are contributorily infringing the ’746 patent by, among other things, making, using, offering to sell or selling in the United States, or importing into the United States, products and/or services that are covered by one or more claims of the ’746 patent, including, by way of example and not limitation, the Motorola Charm.
AMENDED COMPLAINT – 4 Case No.: 2:10-cv-1577-RSM
SIDLEY AUSTIN LLP One South Dearborn Chicago, IL 60603 TEL, (312) 853-7000 FAX, (312) 853-7036

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 22. 19.

COUNT IV INFRINGEMENT OF U.S. PATENT NO. 6,826,762 Microsoft realleges and incorporates by reference the allegations set forth in

paragraphs 1-18. 20. Microsoft is the owner of all right, title, and interest in U.S. Patent No. 6,826,762

(“the ’762 patent”), entitled “Radio Interface Layer in a Cell Phone with a Set of APIs Having a Hardware-Independent Proxy Layer and a Hardware-Specific Driver Layer,” duly and properly issued by the U.S. Patent and Trademark Office on November 30, 2004. A copy of the ’762 patent is attached as Exhibit D. 21. The Defendants have been and/or are directly infringing and/or inducing

infringement of and/or are contributorily infringing the ’762 patent by, among other things, making, using, offering to sell or selling in the United States, or importing into the United States, products and/or services that are covered by one or more claims of the ’762 patent, including, by way of example and not limitation, the Motorola Droid 2. COUNT V INFRINGEMENT OF U.S. PATENT NO. 6,909,910 Microsoft realleges and incorporates by reference the allegations set forth in

paragraphs 1-21. 23. Microsoft is the owner of all right, title, and interest in U.S. Patent No. 6,909,910

(“the ’910 patent”), entitled “Method and System for Managing Changes to a Contact Database,” duly and properly issued by the U.S. Patent and Trademark Office on June 21, 2005. A copy of the ’910 patent is attached as Exhibit E. 24. The Defendants have been and/or are directly infringing and/or inducing

infringement of and/or are contributorily infringing the ’910 patent by, among other things, making, using, offering to sell or selling in the United States, or importing into the United States, products and/or services that are covered by one or more claims of the ’910 patent, including, by way of example and not limitation, the Motorola Droid 2.
AMENDED COMPLAINT – 5 Case No.: 2:10-cv-1577-RSM
SIDLEY AUSTIN LLP One South Dearborn Chicago, IL 60603 TEL, (312) 853-7000 FAX, (312) 853-7036

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AMENDED COMPLAINT – 6 Case No.: 2:10-cv-1577-RSM

COUNT VI INFRINGEMENT OF U.S. PATENT NO. 7,644,376 25. Microsoft realleges and incorporates by reference the allegations set forth in

paragraphs 1-24. 26. Microsoft is the owner of all right, title, and interest in U.S. Patent No. 7,644,376

(“the ’376 patent”), entitled “Flexible Architecture for Notifying Applications of State Changes,” duly and properly issued by the U.S. Patent and Trademark Office on January 5, 2010. A copy of the ’376 patent is attached as Exhibit F. 27. The Defendants have been and/or are directly infringing and/or inducing

infringement of and/or are contributorily infringing the ’376 patent by, among other things, making, using, offering to sell or selling in the United States, or importing into the United States, products and/or services that are covered by one or more claims of the ’376 patent, including, by way of example and not limitation, the Motorola Droid 2. COUNT VII INFRINGEMENT OF U.S. PATENT NO. 5,664,133 28. Microsoft realleges and incorporates by reference the allegations set forth in

paragraphs 1-27. 29. Microsoft is the owner of all right, title, and interest in U.S. Patent No. 5,664,133

(“the ’133 patent”), entitled “Context Sensitive Menu System/Menu Behavior,” duly and properly issued by the U.S. Patent and Trademark Office on September 2, 1997. A copy of the ’133 patent is attached as Exhibit G. 30. The Defendants have been and/or are directly infringing and/or inducing

infringement of and/or are contributorily infringing the ’133 patent by, among other things, making, using, offering to sell or selling in the United States, or importing into the United States, products and/or services that are covered by one or more claims of the ’133 patent, including, by way of example and not limitation, the Motorola Droid 2.

SIDLEY AUSTIN LLP One South Dearborn Chicago, IL 60603 TEL, (312) 853-7000 FAX, (312) 853-7036

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AMENDED COMPLAINT – 7 Case No.: 2:10-cv-1577-RSM

COUNT VIII INFRINGEMENT OF U.S. PATENT NO. 6,578,054 31. Microsoft realleges and incorporates by reference the allegations set forth in

paragraphs 1-30. 32. Microsoft is the owner of all right, title, and interest in U.S. Patent No. 6,578,054

(“the ’054 patent”), entitled “Method and System for Supporting Off-line Mode of Operation and Synchronization Using Resource State Information,” duly and properly issued by the U.S. Patent and Trademark Office on June 10, 2003. A copy of the ’054 patent is attached as Exhibit H. 33. The Defendants have been and/or are directly infringing and/or inducing

infringement of and/or are contributorily infringing the ’054 patent by, among other things, making, using, offering to sell or selling in the United States, or importing into the United States, products and/or services that are covered by one or more claims of the ’054 patent, including, by way of example and not limitation, the Motorola Droid 2. COUNT IX INFRINGEMENT OF U.S. PATENT NO. 6,370,566 34. Microsoft realleges and incorporates by reference the allegations set forth in

paragraphs 1-33. 35. Microsoft is the owner of all right, title, and interest in U.S. Patent No. 6,370,566

(“the ’566 patent”), entitled “Generating Meeting Requests and Group Scheduling from a Mobile Device,” duly and properly issued by the U.S. Patent and Trademark Office on April 9, 2002. A copy of the ’566 patent is attached as Exhibit I. 36. The Defendants have been and/or are directly infringing and/or inducing

infringement of and/or are contributorily infringing the ’566 patent by, among other things, making, using, offering to sell or selling in the United States, or importing into the United States, products and/or services that are covered by one or more claims of the ’566 patent, including, by way of example and not limitation, the Motorola Droid 2.

SIDLEY AUSTIN LLP One South Dearborn Chicago, IL 60603 TEL, (312) 853-7000 FAX, (312) 853-7036

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AMENDED COMPLAINT – 8 Case No.: 2:10-cv-1577-RSM

DEMAND FOR JURY TRIAL 37. Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Microsoft

respectfully requests a trial by jury on all issues properly triable by jury. PRAYER FOR RELIEF WHEREFORE, Microsoft prays for relief as follows: A. Patents; B. For a judgment awarding Microsoft compensatory damages as a result of For a judgment declaring that Defendants have infringed each of the Microsoft

Defendants’ infringement of the Microsoft Patents, together with interest and costs, and in no event less than a reasonable royalty; C. For a judgment declaring that Defendants’ infringement of Microsoft Patents has

been willful and deliberate; D. For a judgment awarding Microsoft treble damages and pre-judgment interest

under 35 U.S.C. § 284 as a result of Defendants’ willful and deliberate infringement of the Microsoft Patents; E. For a judgment declaring that this case is exceptional and awarding Microsoft its

expenses, costs, and attorneys fees in accordance with 35 U.S.C. §§ 284 and 285 and Rule 54(d) of the Federal Rules of Civil Procedure; F. For a grant of a permanent injunction pursuant to 35 U.S.C. § 283, enjoining

Defendants from further acts of infringement; and G. For such other and further relief as the Court deems just and proper.

Dated: October 6, 2010

SIDLEY AUSTIN LLP

s/ John W. McBride_______ John W. McBride

SIDLEY AUSTIN LLP One South Dearborn Chicago, IL 60603 TEL, (312) 853-7000 FAX, (312) 853-7036

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AMENDED COMPLAINT – 9 Case No.: 2:10-cv-1577-RSM

ARTHUR W. HARRIGAN, JR. (SBN 1751) arthurh@dhlt.com CHRISTOPHER T. WION (SBN 33207) chrisw@dhlt.com DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 999 Third Ave, Suite 4400 Seattle, Washington 98104 Telephone: 206-623-1700 Facsimile: 206-623-8717 T. ANDREW CULBERT (SBN 35925) andycu@microsoft.com DAVID E. KILLOUGH (SBN 40185) davkill@microsoft.com MICROSOFT CORPORATION 1 Microsoft Way Redmond, Washington 98052 Telephone: 425-882-8080 Facsimile: 425-869-1327 Of Counsel: DAVID T. PRITIKIN dpritikin@sidley.com RICHARD A. CEDEROTH rcederoth@sidley.com DOUGLAS I. LEWIS dilewis@sidley.com JOHN W. MCBRIDE jwmcbride@sidley.com SIDLEY AUSTIN LLP One South Dearborn Chicago, IL 60603 Telephone: 312-853-7000 Facsimile: 312-853-7036 BRIAN R. NESTER bnester@sidley.com KEVIN C. WHEELER kwheeler@sidley.com SIDLEY AUSTIN LLP 1501 K Street, NW Washington, DC 20005 Telephone: 202-736-8000 Facsimile: 202-736-8711 Counsel for Plaintiff Microsoft Corp.

SIDLEY AUSTIN LLP One South Dearborn Chicago, IL 60603 TEL, (312) 853-7000 FAX, (312) 853-7036