Apple, Inc. v. Motorola, Inc. et al

Filing 12

Joint Motion to Stay Apple Inc.'s Claims and Motorola, Inc. and Motorola Mobility, Inc.'s Counterclaims Pursuant to 28 U.S.C. § 1659(a). Response due 12/7/2010. (Attachments: # 1 Exhibit 1 - Apple's ITC Complaint, # 2 Exhibit 2 - 337-TA-750 Federal Register Notice of Institution, # 3 Exhibit 3 - Mobility's ITC Complaint, # 4 Exhibit 4 - 337-TA-745 Federal Register Notice of Institution) (Peterson, James) Modified text on 12/1/2010 (llj/p).

Apple, Inc. v. Motorola, Inc. et al

Doc. 12 Att. 3

EXHIBIT 3

Dockets.Justia.com

STEPT0E JOHNSONLLP
ATTORNEYS
AT

LAW

Charles

F.

Schill

1330 Connecticut

Avenue

NW

202.429.8162 [e-mail]

Washington

DC

20036-1795

Tel

202.429.3000

Fax [phone] steptoe.com

NUMBER

October

2010

VIA HAND DELIVERY
The Honorable
Secretary

Marilyn R.

Office

Abbott
Intl Trade

of the

Secretary

U.

Commission

S.

International Street

Trade Commission

500

S.W.

Washington

DC

20436

Re

mv. No.

337-TA-

In the Matter

of Certain Wireless

Communication
Devices

Devices

Portable Music and Data Processing Thereof

Computers and Components

Dear

Secretary

Abbott

Pursuant

to

U.S.

International

Trade Commission

210.08

and

in

accordance Mobility
that

with Commission Rule 210.12
Inc.

Commission Rule 210.8 19 19 C.F.R. 210.12 enclosed
find the following

C.F.R.
for filing

on

behalf of Motorola Complainants Act of 1930
as

Complainant 1337

please

documents

in

support

of

request

the

Commission commence

an investigation

under Section

337 of the Tariff

amended

19

U.S.C.

1.

An

original and twelve

12

copies

of Complainants

Confidential without

Verified

Complaint

original

and one and

copy unbound

tabs Rules Twelve

201.6c
copies

210.4f3i

10.08a
Verified

2.

12

of Complainants and one

Non-Confidential without

Complaint

original

copy unbound and

tabs

Rules 201.6c
3.

210.4f3i
copies

210.08a
to

An

original and six Exhibits

of the exhibits
public

the Complaint

with

Confidential segregated

A-PP and
without

versions

thereof
original

from Non-Confidential Exhibits tabs Rules

1-53

and

one

copy unbound and

201.6c

210.4f3i

10.08a

WASHINGTON

NEW

YORK

CHICAGO

PHOENIX

LOS

ANGELES

CENTURY

CITY

LONDON

BRUSSELS

BEIJING

STEPTOE JOHNSONii
The Honorable Marilyn Abbott
October Page 2010

One

additional

copy

of the Confidential Complaint

Verified

Complaint

Non-Confidential
Confidential

Verified

and accompanying
for

and Non-Confidential

Exhibits

service

upon the and

Proposed

Respondent

Rules

210.4t3i 210.8a1iii

210.11a
One
Certified

Copy of U.S

Patent

No.6272333
thereof

the 333
corresponding

patent
to

and twelve

12

additional

copies

each required
at

copy of the Complaint
Exhibit 210.1

with

copy also being copy and one

provided
additional

Non-Confidential

certified

copy unbound

Rule

2a9i
Patent copies

One

Original

Certified

Copy of U.S
additional

No

6246862

862 patent
corresponding

and twelve
to

12

the
copy copy

thereof with

each required
at

copy of the Complaint
Exhibit 210.1

also being provided

Non-Confidential

certified

and one additional

copy unbound
Certified

Rule

2a9i
thereof

Onel

Original

Copy of U.S
additional

Patent copies

697 patent
corresponding

and twelve
to

12

No 6246697 the
with copy copy

each required copy
at

of the Complaint

also being provided

Non-Confidential Exhibit

certified

and one additional

copy

unbound

Rule

210.1

2a9i
thereof with

One

Original

Certified

Copy of U.S
additional

Patent copies

317 patent
corresponding

and twelve
to

12

No 5359317 the
copy copy

each required copy
at

of the Complaint

also being provided

Non-Confidential Exhibit

certified

and one additional

copy unbound

Rule

210.1

2a9i
No
5636223
with
thereof

One

Original

Certified

Copy of U.S
additional

Patent copies

223 patent
corresponding

and twelve
to

12

the
copy copy

each required
at

copy

of the Complaint
Exhibit

also being provided

Non-Confidential

certified

and one additional

copy unbound

Rule

2lO.12a9i

Ci.mplainant

has

requested

but

has

not

yet received

an original

certified

patent

file history

and assignment record

copy of the of these

for the

333

patent

However
Office

certified

documents
copies

have been submitted

copies
as

Complainant

will

submit original

certified

copies

soon as such

are received

from the United

States Patent

and Trademark

STEPT0E
The Honorable Marilyn Abbott
October 2010

JOHNSONw

Page3

10.

One

Original

Certified

Copy of

U.S.

Patent copies

No.

7751826 the
with copy copy

826 patent
corresponding

and twelve
to

12

additional

thereof

each required copy of the Complaint
at

also being provided

Non-Confidential Exhibit

certified

and one additional

copy unbound

Rule

210.

12a9i
for the

11.

One
patent

Certified

Copy of Assignment Documents

333
to

and twelve

12

additional

copies

thereof corresponding

each required copy provided
additional
at

of the Complaint
Exhibit 210.1

with

copy also being copy and one

Non-Confidential

certified

copy unbound

Rule

2a9ii
for

12.

One

Original patent

Certified

Copy of Assignment Documents
additional copies thereof

the

862

and twelve
to

12

corresponding

each required copy of the Complaint
at

with

copy copy

also being provided

Non-Confidential Exhibit

certified

and one additional

copy unbound

Rule

210.

12a9ii
Documents
for the

13.

One1
697

Original

Certified

Copy of Assignment
additional copies

patent

and twelve
to

12

thereof

corresponding

each required copy of the Complaint
at

with

copy copy

also being provided

Non-Confidential Exhibit

certified

and one additional

copy

unbound

Rule

210.12a9ii
Documents
for the

14.

One

Original patent

Certified

Copy of Assignment
additional copies

317

and twelve
to

12

thereof

corresponding

each required copy
at

of the Complaint
10

with

copy copy

also being provided

Non-Confidential Exhibit

certified

and one additional

copy

unbound

Rule

210.12a9ii
Documents
for the

15.

One

Original patent

Certified

Copy of Assignment
additional copies

223

and twelve
to

12

thereof

corresponding

each required
at

copy of the Complaint
Exhibit
11

with

copy copy

also being provided

Non-Confidential

certified

and one additional

copy

unbound

Rule

210.12a9ii
for the

16.

One

Original patent

Certified

Copy of Assignment Documents
additional copies thereof

826

and twelve
to

12

corresponding

each required
at

copy of the Complaint
Exhibit 12

with

copy copy

also being provided

Non-Confidential

certified

and one additional

copy unbound

Rule

210.12a9ii

STEPTOE
The Honorable Marilyn Abbott
October 2010

JOHNSONL

Page4

17

Identification included
at

of each licensee

under each involved and copies
patent
at

U.S

Patent

Confidential

Exhibit

of each license
Exhibits

agreement for each involved

U.S

Confidential

G-NN
18 One
patent

and PP Rules

2l0.l2a9iii
the Prosecution copies

iv
History for the

Certified

Copy of

333
at

and three

additional

thereof

are included

Appendix

Rule

210.12c1
Copy of
the Prosecution copies History
for the at

19

One

Original patent

Certified

862

and three

additional

thereof are included

Appendix

Rule

210.1

2c
Copy of
the Prosecution copies History
for

20

One

Original patent

Certified

the
at

697

and three

additional

thereof are included

Appendix

Rule

210.12c1
Copy

21

One
History

Original for the
at

Certified

on CD-ROM
and

of the Prosecution
copies thereof

317

patent

and three

additional

are included contain

Appendices
Histories

the

latter

two of which Request

Prosecution

for related

Reexamination

Nos 90/010332

and 90/010455

respectively

Rule

210.12cl
22
One
History Original for the
at

Certified

Copy

on CD-ROM
the
latter

of the Prosecution
copies thereof

223

patent

and three and

additional

are included

Appendices
History

of which

contains

the Prosecution

for related Reexamination

Request

No

90/010802

Rule

210.12c1
Copy

23

One
History

Original for the
at

Certified patent

on CD-ROM

of the Prosecution
copies thereof

826

and three

additional

are included

Appendix

Rule 210

12c1
pages of each
history are

24

Four
technical included

copies

of the 333

patent

and the applicable
prosecution

reference
at

mentioned

in the

Appendix

Rule 210

12c2
pages of each
prosecution history are

25

Four
technical included

copies

of the

862

patent

and the applicable

reference
at

mentioned

in the

Appendix

Rule

210.12c2

STEPTOEJOHNSONLLP
The Honorable Marilyn Abbott
October 2010

Page5

26.

Four
technical included

copies

of the

697

patent
in

and the applicable pages of each
the prosecution history are

reference
at

mentioned

Appendix

Rule

210.12c2
and the applicable pages of each

27.

Four
technical included

copies

of the

317

patent

reference
at

mentioned

in the

Appendix

Rule

210.1

2c2

prosecution

history are

28.

Four
technical included

copies

of the 223

patent

and the applicable pages of each
prosecution history are

reference
at

mentioned

in the

Appendix

Rule

210.

12c2
prosecution history are

29.

Four
technical included

copies

of the

826

patent

and the applicable pages of each

reference
at

mentioned

in the

Appendix

Rule

210.12c2
to

30.

letter

and

certification

pursuant

Commission Rules 201.6b
treatment

and

210.5d

requesting
in the

confidential

of the bracketed and

information Confidential

Confidential

Verified

Complaint

Exhibits

A-PP.

Please

contact
to

the undersigned
this matter.

if

you have any questions

relating to

this

filing.

your kind

Thank you

for

attention

Respectfully

submitted

Charles

F.

Schill

Jamie B. Beaber Counsel for Motorola Mobility
Inc.

Enclosures

STE PTOE

JOH
AT

SON
LAW

LLP

ATTORNEYS

Jamie

Beaber
1330

Connecticut

Avenue

NW

202.429.6286

Washington
[e-mail]

DC

20036-1795

Tel

202.4293000

Fax [phone] steptoe.com

October

20j0

VIA

HAND DELIVERY
Abbott

The Honorable Marilyn
Secretary International

Trade Commission

500

Street

S.W

Washington

DC

20436

Re

mv No
Devices

337-TA-_

In the Matter

of Certain

Wireless

Communication

Devices

Portable Music and Data Processing Thereof

Computers and Components

Dear

Secretary

Abbott

In accordance

with

U.S
Inc

International

Trade Commission
requests within
that

Commission
Commission
in the

Rules 201.6

and

210.5

Motorola
to

Mobility

Complainant
information business

the

grant confidential Verified Exhibits requests

treatment

the confidential as well

business

brackets

Confidential

Complaint
filed

as the confidential

information

contained

in Confidential

A-PP
that

concurrently

herewith in the above-referenced
contained
in

matter
Verified
to

Accordingly Complaint
persons

Complainant
as well the
as

the

bracketed contained

information

the Confidential

the information other

in Confidential

Exhibits

A-PP
except

not be disclosed pursuant
to

outside

Commission or

necessary government

personnel

protective

order

The
information Confidential
relates to

information not otherwise Verified

for which publicly

confidential available as well

treatment Specifically

is

requested

is

proprietary within

commercial
brackets in the

the information contained
in

Complaint

as the information

Confidential sales and/or

Exhibits

A-PP

detailed confidential

business

records employee

data revenue

other financial to Complainant

information
that

and data licenses
to

expenditures

and other information

of commercial

value

has been submitted

support among other things

Complainants

domestic industry allegations

WASHINGTON

NEW

YORK

CHICAGO

PHOENIX

LOS

ANGELES

CENTURY

CITY

LONDON

BRUSSELS

BEIJING

STEPTOE JOHNSONLLP
The Honorable October6
Page 2010 Marilyn Abbott

The
201.6
in

information

described

above

qualifies

as confidential

information

that

the information

pursuant

to

19

C.F.R

concerns

or relates

to or would otherwise
result in

commercial
position types

information the disclosure of which would and would also impair performance of
its

disclose

confidential
to

substantial
ability that

of Complainant
in

harm

the competitive obtain
identical

the

Commissions
function

of information
is

in the

future to

these

statutory the public

information

certify

not reasonably

substantially

available

to

Beaber Counsel for Motorola Mobility Inc

District

of Columbia

SUBSCRIBED

and sworn

to

before

me

this

6th

day of October 2010

Notary

Public

My

Commission Expires

My

Commission

Expires August

14 2011

PTJBLIC VERSION

UNITED STATES INTERNATIONAL

TRADE COMMISSION
D.C.

WASHINGTON
In the Matter
of

CERTAIN WIRELESS

Investigation

No. 337-TA-

COMMUNICATION DEVICES PORTABLE MUSIC and DATA PROCESSING DEVICES COMPUTERS AND COMPONENTS THEREOF

_____

VERIFIED

TARIFF
Complainant

COMPLAINT UNDER SECTION 337 OF THE ACT OF 1930 AS AMENDED
Respondent

Motorola 600 North

Mobility

Inc.

Apple 45

Inc.

US Highway
Illinois

Infinite

Loop

Libertyville

60048

Cupertino California 95014 Phone No.

Phone No.

847

523-5000

408

996-1010

Counsel

for

Complainant

Charles

K.

Verhoeven
Sullivan

Charles

F.

Schill

Quirm Emanuel Urquhart 50 California Street San Francisco Phone No.

LLP

22 Floor

Steptoe

Johnson

LLP
Avenue

1330 Connecticut Washington Phone No.

NW

CA 94111 415 875-6600

DC 20036 202 429-8162

Edward

J.

DeFranco
Sullivan Floor

David

A. Nelson
Sullivan
Ste.

Quinn Emanuel Urquhart
51

LLP

Madison Avenue
10010

22

Quinn Emanuel Urquhart 500 West Madison Chicago IL 60661 705-7400
Street

LLP

2450

New York NY
Phone No.

212

849-7000

Phone No.

312

PUBLIC VERSION

TABLE OF CONTENTS
Page

I.

INTRODUCTION
PARTIES
A. Complainant

II.

B.

The

Respondent

III.

ACCUSED PRODUCTS AT ISSUE THE ASSERTED PATENTS AND NON-TECHNICAL THE ASSERTED PATENTS
A. The

IV.

DESCRIPTION

OF

333

Patent

1.

Identification

of the 333

Patent

and Ownership

2.

Foreign Counterparts

to

the

333

Patent

3.

Non-Technical

Description

of the 333 Patent

4.

Prior Litigation

Involving

the

333

Patent

B.

The 862

Patent

1.

Identification

of the

862
to

Patent

and Ownership

2.

Foreign Counterparts

the

862
of the

Patent

3.

Non-Technical

Description

862

Patent

10

4.

Prior Litigation

Involving

the

862

Patent

10

C.

The697Patent
Identification

10

1.

of the

697
to

Patent

and Ownership

10

2.

Foreign Counterparts

the

697
of the

Patent

11

3.

Non-Technical

Description

697

Patent

11

4.

Prior Litigation Involving

the

697

Patent

12

P.

The 317

Patent

12

PUELIC VERSION

1.

Identification

of the

317
to

Patent

and Ownership

12

2.

Foreign Counterparts

the

317
of the

Patent

13

3.

Non-Technical

Description

317

Patent

14

4.

Prior Litigation Involving

the

317

Patent

14

B.

The223
1.

Patent

15

Identification

of the 223

Patent

and Ownership

15

2.

Foreign Counterparts

to

the

223

Patent

16

3.

Non-Technical

Description

of the 223

Patent

16

4.

Prior Litigation Involving

the

223

Patent

16.

F.

The 826

Patent

17

1.

Identification of the

826
to

Patent

and Ownership

17

2.

Foreign Counterparts

the

826
of the

Patent

18

3.

Non-Technical

Description

826

Patent

18

4.

Prior Litigation Involving

the

826

Patent

18

V.

UNLAWFUL AND UNFAIR ACTS OF RESPONDENT
INFRINGEMENT

PATENT
19

VI.

SPECIFIC INSTANCES

OF UNFAIR IMPORTATION

AND SALE UNDER THE

21

VII.

CLASSIFICATION

HARMONIZED
VIII.

OF THE INFRINGiNG PRODUCTS TARIFF SCHEDULE

22

THE DOMESTIC INDUSTRY RELATING TO THE ASSERTED PATENTS
23

Overview

23

B.

Significant

Investment

in Plant

and Equipment Significant

Employment
of the 23

of Labor and Capital
Including Asserted

and Substantial Investment Research

in Exploitation

Engineering
Patents

and Development

and Licensing
Patents

and Articles Protected

by

the Asserted

1.

Economic

Prong

23

2.

Technical

Prong

28

11

PIJBLIC VERSION

Domestic

hidustry

Exists

.29

IX

RELIEF

REQUESTED

29

111

PUIBLIC VERSION

EXHIBIT

AND APPENDIX

LIST

Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit 10 11 12 13 14 15

Certified Certified Certified Certified Certified Certified Certified Certified Certified Certified Certified Certified

Copy of United Copy of United Copy of United Copy of United Copy of United Copy of United

States States States States States States

Patent No. Patent No. Patent No. Patent No. Patent No. Patent No.

6272333

6246862
6246697 5359317 5636223 7751826
States States States States States States Patent No. Patent No. Patent No. Patent No. Patnt

Copy of the Assignment of United Copy of the Assignment of United Copy of the Assignment Copy of the Assignment Copy of the Assignment
of United of United of United

6272333 6246862 6246697 5359317

No. 5636223

Copy of the Assignment of United Form 10-Q

Patent No.

7751826
2010

Relevant Pages of Motorolas Relevant Pages of Motorolas

for the

Period

Ended July

2009 Annual Report
the Portable Cellular

Making
http

History Developing

System

available

at

//www.motorola.comlstaticflles/Business/Corporate/IJS

EN/history/featurece11-phone-development.html Exhibit 16

Motorola Timeline
http

available

at

//www.motorola.comlstaticfiles/Business/Corporate/US

EN/history/timeline.html Exhibit 17

Apple Facility Information
http

available

at

//www.apple.comlretaillstorelist/
to

Exhibit Exhibit

18 19

Foreign Counterparts Claim Chart No. 6272333

the Asserted

Patents

for Representative

Independent

Claim of United

States Patent

Exhibit

20

Claim Chart No.

for Representative

Independent

Claim of United

States Patent

6246862
for Representative

Exhibit

21

Claim Chart No.

Independent

Claim of United

States Patent

6246697
for Representative

Exhibit

22

Claim Chart No.

Independent

Claim of United

States Patent

5359317
for Representative

Exhibit

23

Claim Chart No. 5636223

Independent

Claim of United

States Patent

Exhibit

24

Claim Chart No.

for Representative

Independent

Claim of United

States Patent

7751826
for

Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit

25 26 27 28 29 30

iPhone User Guide

iPhone OS

3.1

Software

UlKit Framework Reference Excerpt from Apple website Excerpt from

FCC

website

iPhone Application iPhone

Programming

Guide

3G Main

Circuit Board

iv

PUBLIC VERSION

Exhibit Exhibit Exhibit Exhibit

31

iPhone iPhone
Infineon

Technical

Specifications

32
33

Teardown

from www.tgdaily.com 616 Technical
Specification

X-GOLD

34

3GPP

Technical

Specification Release

25.213 V3.8.0 1999 selected

2002-06

Spreading

and

modulation
Exhibit Exhibit Exhibit

FDD

portions

35 36 37

Motorola iPhone

Droid

User Guide
IM

Wi-Fi Certified Interoperability Certificate
802.11

IEEE Standard 11
Wireless

2007 Revision

of IEEE Std 802.11-1999

Part

LAN

Medium Access
selected

Control

MAC

and Physical

Layer

PHY
Exhibit Exhibit Exhibit Exhibit

Specifications

portions Droid
technical specifications

38 39 40
41

Excerpt from Motorola Excerpt from Motorola Excerpt from Motorola Domestic
Patent Industry

web

site regarding

customer help website
website regarding android

development Claim of United
States

Claim Chart for Representative

No 5359317
Industry

Exhibit

42

Domestic
Patent

Claim Chart

for

Representative

Claim of United

States

No

5636223
Technical

Exhibit Exhibit Exhibit Exhibit Exhibit

43 44 45 46 47

CLIQ XT
Motorola Excerpt

Specs
Certificate

Droid

Wi-Fi Certified Interoperability
website regarding

from Motorola of Andrew

Droid

GPS
2010

Declaration

Curran
for

Form

10

General Form

Registration

of Securities

filed

on July

by Motorola
Exhibit Exhibit

Spinco Holdings

Corporation

48 49

Excerpts

from Apples 10-K
for the United States

Motorola Limited Warranty
at http

and

Canada

available

//www.motorola.com/staticfiles/Support/IJS-EN/

Static%2OFiles/Motorola%2OLimited%2OWarranty%2Ofor%2Othe

%20United%20States%20and%2OCanadaO4l
Exhibit

508 .pdf
Claim of United
States

50

Domestic
Patent

Industry

Claim Chart

for

Representative

No 7751826
Industry

Exhibit

51

Domestic
Patent

Claim Chart

for Representative

Claim of United

States

No

6272333
Industry

Exhibit

52

Domestic
Patent

Claim Chart

for Representative

Claim of United

States

No 6246862
Industry

Exhibit

53

Domestic
Patent

Claim Chart

for Representative

Claim of United

States

No 6246697

PUBLIC VERSION

Confidential Exhibit Confidential Exhibit Confidential Exhibit Confidential Exhibit Confidential

Identification

of Licenses

Relating

to

the Asserted

Patents

Motorola

Licensing

Group

Data

Amended
between United

and Restated Motorola
Inc.

Intellectual

Property

Assignment Agreement
Inc.

and Motorola

Mobility

States Personnel

Data for Motorolas

Mobile

Devices Segment

United

States Facilities

Data

for

Motorolas

Mobile

Devices Segment

ExhibitE
Confidential Exhibit Confidential Exhibit Confidential Exhibit Confidential Exhibit Confidential

United

States

Sales Data

for Representative

Domestic

Industry

Products

and Mobile
License

Devices Segment Motorola
Inc.

Between

and Licensee

Confidential

License Between

Motorola

Inc.

and Licensee

Confidential

License Between

Motorola

Inc.

and Licensee

Confidential

License Between

Motorola

Inc.

and Licensee

Confidential

ExhibitJ
Confidential Exhibit Confidential Exhibit Confidential Exhibit Confidential Exhibit Confidential Exhibit Confidential Exhibit
First

License Between

Motorola

Inc.

and Licensee

Confidential

License Between

Motorola

Inc.

and Licensee

Confidential

License Between

Motorola

Inc.

and Licensee

Confidential

License Between

Motorola

Inc.

and Licensee Confidential

License Between Motorola

Inc.

and Licensee

Confidential

Amendment

to

License

Between Motorola

Inc.

and Licensees

Confidential

Confidential Exhibit

Second

Amendment

to

License

Between Motorola

Inc.

and Licensees

Confidential

Confidential Exhibit Confidential Exhibit Confidential Exhibit Confidential

License Between

Motorola

Inc.

and Licensee Confidential

License Between Motorola

Inc.

and Licensee Confidential

License Between Motorola

Inc.

and Licensee

Confidential

License Between Motorola

Inc.

and Licensee

Confidential

ExhibitU

vi

PUIBLIC VERSION

Confidential Exhibit Confidential

License

Between
J.

Motorola

Inc.

and Licensee

Confidential

License

Between

Motorola

Inc.

and Licensee

Confidential

ExhibitW
Confidential Exhibit Confidential Exhibit Confidential Exhibit Confidential Exhibit License License License License

Between

Motorola

Inc.

and Licensee

Confidential

Between

Motorola

Inc.

and Licensee

Confidential

Between

Motorola

Inc.

and Licensee

Confidential

Between

Motorola

Inc.

and Licensee Confidential

AA
License

Confidential Exhibit

Between

Motorola

Inc.

and Licensee

Confidential

BB
License

Confidential Exhibit

Between

Motorola

Inc.

and Licensee

Confidential

CC
License

Confidential Exhibit

Between

Motorola

Inc.

and Licensee

Confidential

DD
License

Confidential Exhibit

Between

Motorola

Inc.

and Licensee

Confidential

EE
License

Confidential Exhibit

Between

Motorola

Inc.

and Licensee

Confidential

FE
License

Confidential Exhibit

Between

Motorola

Inc.

and Licensee

Confidential

IG
License and Amendment
Confidential License

Confidential Exhibit

Between

Motorola

Inc.

and Licensee

HH
II

Confidential Exhibit

Between

Motorola

Inc.

and Licensee

Confidential

Confidential Exhibit JJ

License

Between

Motorola

Inc.

and Licensee

Confidential

Confidential Exhibit

License

Between

Motorola

Inc.

and Licensee Confidential

KK
License Between Motorola
Inc.

Confidential Exhibit

and Licensee

Confidential

LL
License Between Motorola
Inc.

Confidential Exhibit

and Licensee Confidential

MM
License Between Motorola
Inc.

Confidential Exhibit

and Licensee Confidential

NN
Contribution Assignment and Assumption Agreement
dated July 31. 2010

Confidential Exhibit

00
License

Confidential Exhibit

Between

Motorola

Inc.

and Licensee

Confidential

PP

vii

PIJBLIC VERSION

Appendix Appendix Appendix Appendix Appendix Appendix Appendix Appendix Appendix Appendix Appendix Appendix Appendix

Certified File History Certified File History Certified File History Certified File History Certified File History Certified File History Technical Technical Technical Technical Technical Technical References References References References References References

of United of United of United of United of United of United

States Patent States Patent

No. 6272333 No. 6246862

States Patent No. States Patent No. States Patent No. States Patent No. Patent Patent Patent Patent Patent Patent

6246697 5537317 5636223 7751826

Cited in U.S. Cited in U.S. Cited in U.S. Cited in U.S. Cited in U.S. Cited in U.S.

No. 6272333 No. 6246862 No. 6246697 No. 5359317 No. 5636223 No. 7751826
for

File History

of Reexamination

No. 90/0 10332

U.S.

Patent No.

5359317
Appendix
File History

of Reexamination

No. 90/0 10445

for

U.S.

Patent No.

5359317
Appendix
File History

of Reexamination

No. 90/0 10802

for

U.S.

Patent No.

5636223

viii

PUBLIC VERSION

INTRODUCTION
Motorola Mobility Inc

Mobility

respectfully

requests

that

the United

States

International

Trade Commission

Commission

institute

an investigation

into

violations

of

Section

337 of the Tariff Act of 1930 as amended

19

U.S.C

1337 Section

3371
in violation

Apple Inc

Apple

or

Respondent

has

engaged

in unfair acts

of

Section

337 through unlawful and unauthorized

importation

and/or

sale

for

importation

into

the

United

States

and/or

the

sale

within

the United

States

after

importation

of certain wireless

communications

devices

portable

music and data processing

devices

computers and

components

thereof hereinafter

collectively

Accused

Products

The Accused

Products

infringe one or

more

claims

of United

States Patent

Nos 6272333

the 333 Patent the 317 Patent
the Asserted

6246862

the 862 Patent 6246697 the 223 Patent
their

the 697 Patent 5359317 the 826 Patent
importation use
after

5636223

and 7751826

collectively

Patents through

importation

sale

for

importation

and

sale

after

importation See Exhs 19-24

As of

the filing

of

this

Complaint

Mobility

owns by assignment

the entire

right

title

and

interest

in and to the Asserted

Patents

See Exhs 7-12 assignments

of each

Asserted

Patent

from the named inventors

to

Motorola

Conf Exh

July

31
10

2010 assignment of the

Asserted

Patents

from Motorola

to

Mobility.2

Pursuant

to

Form

filed

with the Securities

As
July

discussed

below Motorola
Motorola
also

Inc

Motorola
the Asserted
this

assigned

the Asserted

Patents business

to to

Mobility

on

31 2010
As

has

transferred

the relevant mobile devices Patents

Mobility

Prior to July

31 2010
result

Motorola where

owned

and the relevant mobile device
to

business
business

appropriate

Complaint

will refer

the past and present

activities

of Complainant

and Motorola

At the
Asserted

earliest

practicable

time following
to

recordation

by

the

USPTO
of
certified

of the assignments
copies thereof

of the

Patents

from Motorola
the

Mobility

and the issuance
certified

Complainant

will provide

Commission with

copies

of the relevant assignments

PUBLIC VERSION

and Exchange

Commission on

July

2010 Motorola

transferred

its

mobile devices

and home

business

units

to

Mobility

and assigned

the Asserted

Patents

to

Mobility.

In the

first

quarter of

2011

Mobility

will be acquired

by Motorola

SpinCo

Holdings

Corp.

SpinCo.

Complainant

will

provide

the

Commission with

appropriate

documentation

as soon as practicable

following

the transfer of Mobility

to

SpinCo.

4.

Motorolas

and Mobilitys

historic

and current operations

in

the United

States

qualif as

domestic industry

relating

to

the Asserted

Patents

and

articles

protected

by

the

Asserted

Patents

within

the meaning

of 19 U.S.C.

1337a2
previously

3.
owned by Motorola
and development
include

5.

Mobilitys

current business

operations

the Mobile

Devices segment

MDS
sells

which conducts

research

to

develop

new technology
and designs

related to wireless handsets

with integrated software

and accessory

products

manufact

res

and services

wireless handsets

with integrated software

and

accessory

products.

Motorola

and Mobility

also have

licensed

and continue

to

actively

license

the intellectual

property

relating to the

MDS

segment

including

the Asserted

Patents.3

6.

MDS

designs

develops

markets

sells

and services

in the

United

States

products

that

practice

one or more claims

of the Asserted

Patents.

Research

and development of

intellectual

property

relating to

MDS
is

was

and

is

an

integral

part of Motorolas

extensive

domestic licensing

program and

an

integral

part of Mobilitys

extensive

domestic licensing

program which includes

licenses to

the Asserted

Patents.

Indeed

research

and development of

intellectual

property

relating to

MDS

resulted in each of the Asserted

Patents.

Pursuant

to

Contribution

Assignment
Mobility Patents

and Assumption
acquired

Agreement and

dated
interest

July 31. 2010
in certain

the

Contribution

Agreement

the right title
identified in

licenses related to the Asserted Contribution
identified in

which are

Schedule
to

1.1a of the
the Asserted Patents

Agreement. Schedule
1.1

See Conf.

Exh. 00.

Other licenses related Agreement

eii

of the Contribution

were retained by Motorola.

PUBLIC VERSION

7.

Complainant

seeks

relief

from the Commission

in the

form of

permanent

exclusion

order prohibiting

entry into

the United

States of the Accused

Products

that

infringe

one or more claims

of the Asserted

Patents.

Complainant

further seeks

cease

and

desist

order

prohibiting

Respondent

its

subsidiaries

related companies

and agents from engaging

in the

importation

sale

for

importation marketing

and/or

advertising

distribution

offering

for

sale

sale sale

after

importation

or other transfers

within

the United

States

after

importation

of the

Accused

Products

that

infringe one or

more

claims

of the Asserted

Patents.

II.

PARTIES
A.

Complainant
Mobility
is

8.

corporation

organized

and existing under the laws of the State of

Delaware

and having

principal place

of business

at

600 North

US Highway 45
Relevant

Libertyville

Illinois

60048.

Mobilify

is

wholly-owned

subsidiary

of Motorola.

excerpts

of

Motorolas

Form l0-Qs

for

the period

ended July

2010 and

its

2009 Annual Report

which

describe

MDS now
9.

operated

by Mobility

are attached

as

Exhibits

13

and 14 respectively.

On

July

2010

SpinCo

filed

Form

10

General

Form

for

the Registration

of

Securities which

is

attached

as Exhibit

47.

As

noted

in the

Form 10 Motorola

intends

to

transfer

its

mobile devices

and home businesses

to

SpinCo

in

the

first

quarter of 2011.

In

furtherance

of the planned transfer

Motorola

assigned

all

its

right title

and

interest

in the

Asserted

Patents

to

Mobility on July

31 2010
related to

and also transferred

MDS

to

Mobility.

Mobility

also acquired

all

licensing

operations

the Asserted

Patents.

Moreover

Mobility

acquired

several

licenses related to the Asserted

Patents

while

other licenses related to

the

Asserted Patents

were retained by Motorola.

See Confi Exh.

00

Schedule

1.1a

licenses

transferred

to

Mobility Schedule

1.1

eii licenses

retained

by Motorola.

In the

first

quarter

PUBLIC VERSION

of 2011

Mobility

will be acquired

by SpinCo and

Mobility

will continue

to

operate

MDS

and

own

the Asserted

Patents

10

As

result

of long-term

domestic

activities

including

those undertaken

by

the

MDS

Motorola

and Mobility

are leading

innovators

in

the communications

and electronics

industry

From the

introduction

of

its

first

commercially successful

car radio in 1930 to the

inception

of the worlds

first

commercial

portable

cellular

phone

in

1983 Motorola

and

Mobility

have developed substantial proprietary

and leading

technology

relating

to

wireless

communications

and electronics

See

Exh
over

15

excerpt from Motorolas

website

Motorola

was

also the

first

to

bring push-to-talk

cellular

to

market

More

recently

Motorola

demonstrated the worlds

first

WiMAX MHz

802.16e mobile handoff

and the industrys

first

over-

the-air

data sessions

in the 700

spectrum using

the

Long Term

Evolution

standard

which

is

the next

evolution

ofmobile

broadband

See

Exh

16

excerpt from Motorolas

website

11

Among

other things

MDS

designs manufactures

sells and services

wireless

handsets

with

integrated

sofiware

and accessory

products

In

2009

MDSs

net sales

were

$7.1

billion

representing

approximately

32%
in

of the companys

consolidated

net sales

for

2009

The

net sales

for

MDS

were

$12.1

billion

2008

See

Exh

14

at

36

12

Motorola

and Mobility

have commercialized

and continue

to

actively

commercialize the patented

technologies

and license these patents

including

the Asserted

Patents

to

other major manufacturers

and

retailers

of wireless handheld devices

and other

communications

products

See Conf

Exh

listing

licenses involving

the Asserted

Patents

13

Motorolas

research

and development

expenditures

in the United

States relating

to

technology

advancement

new

product

development

and product

improvement

which

include

domestic research

and development

expenditures

by

MDS

were

$3.2 billion

in

2009

PUBLIC VERSION

$4.1 billion

in

2008 and $4.4

billion

in 2007.

See Exh.

14

at

15.

Motorola

and Mobility

continue

to

believe

that

strong

domestic commitment

to

research

and development

is

required

to

drive

long-term

growth of the companies.

Approximately 22000

professional

employees

were

engaged

in research

and development

activities

during

2009.

See

id.

As of December 31 10000
in the

2009

Motorola

and

its

wholly-owned

subsidiaries

owned

approximately

patents

United

States and over

13000

patents

in

foreign

countries.

See

id.

Many
for

of the patents

owned

by Motorola

and Mobility

are used in their operations

or licensed

use

by

others.

See

id.

14.

Motorola

has

granted

licenses of varying

scope

under many of

its

patents

including

the Asserted

Patents

to

various

companies

See Conf.

Exh.

A.

Motorolas

licensing

activities

have yielded substantial

revenue

to

the

company and

its

shareholders.

Confidential

Exhibit

sets

forth the royalty income

from certain of

MDS

patent

licenses in the past three

fiscal

years.

Mobility

actively

continues

Motorolas

extensive

domestic licensing

activities.

B.

The Respondent
Respondent Apple
Inc.
is

15.

corporation

organized

under the laws of California

and has

its

principal place

of business

at

Infinite

Loop

Cupertino California 95014.

16.

Respondent

imports

and/or

sells for

importation

into

the United

States

and/or

sells within

the United

States

after

importation

certain wireless communications

devices

portable

music and data processing

devices

computers

and components

thereof without

the

authorization

of Motorola

or Mobility.

Respondent

has

facilities

around the world including

ietail

stores

in the

United

States to

directly

sell the

Accused

Products

to

end

users.

See Exh.

17.

III.

ACCUSED PRODUCTS AT ISSUE
17.

Respondent

designs

imports

sells

for importation

into

the United

States

and/or

sells within

the United

States

after

importation

certain wireless communication

devices

portable music and data processing

devices

computers

and components

thereof.

PUBLIC VERSION

18

The accused

wireless communication

devices

include but are not limited to the

Apple

iPhone

3G

the Apple

iPhone 3GS and the Apple iPhone

These devices

utilize

various

wireless

technologies

that

for

example

establish data connections

with wireless networks

transmit

voice

and data signals

to

wireless networks

receive

voice

and data

signals

from

wireless

network

download

and execute

user applications

and process

and encrypt

data during

wireless

communication

session

19

The

accused

portable music and data processing

devices

include

but

are not

limited to the iPod touch

which

utilizes

wireless communication

technologies

to

communicate

with wireless network access

points

and other wireless devices

20

The accused computers include Pro MacBook

but

are not limited to the

AppleTV Mac Pro

iMac Mac mini MacBook

MacBook

Air iPad and

iPad

3G

which

utilize

wireless

communication

technologies

to

communicate

with wireless network

access

points

and

other wireless devices

The iPad 3G

also uses

authentication

protocols

encryption

techniques

and other wireless transmission

technologies

to

communicate

with

third

generation

wireless

communication

networks

21
claim

Each

of the Accused

Products

meets each and every limitation of

at least

one

of one or more of the Asserted

Patents

The Accused

Products

include but are not

limited to

all

versions

of the above-referenced

products

as well

as

certain software

and services

that

are distributed

as

components

of these devices

These products

however

are merely

illustrative

of the types

and classes of infringing products

that

Respondent

manufactures and

imports

into

the United

States

sells for in-iportation

into

the United

States

andlor

sells within

the United

States after

importation

in violation

of Section

337

PIJBLIC VERSION

IV.

THE ASSERTED PATENTS AND NON-TECHNICAL
ASSERTED PATENTS
A.

DESCRIPTION OF THE

The 333 Patent
Identification of the

1.

333

Patent

and Ownership
title

22.

Mobility

owns by assignment

the entire

right

and

interest

in United

States

Patent

No.

6272333
Delivery

titled

Method

and Apparatus

in

Wireless

Communication

System

for

Controlling

of

Data

which issued on August

2001 naming

Dwight

Randall

Smith

as inventor.

certified

copy of the 333

Patent

is

attached

as Exhibit

certified

copy

of the recorded

assignment from the named inventors

to

Motorola

is

attached

as Exhibit

7.

copy of the July

31

2010

assignment of the 333

Patent

from Motorola

to

Mobility

is

attached

as

Confidential

Exhibit

and Complainant

will submit

certified

copy

of this assignment once

it is

recorded

at

the United

States Patent

and Trademark

Office.

23.

Pursuant

to

Commission Rule 210.12 333 Patent

certified

copy

and three additional

copies

of the prosecution

history of the

as

well

as

four copies

of the 333

Patent

and each technical reference

mentioned

in the prosecution

history of the

333 Patent

are

submitted

concurrently

herewith as Appendices

and

respectively.

2.

Foreign Counterparts

to the

333

Patent

24.

Pursuant

to

Commission Rule

210.12a9v
to

and as indicated in Exhibit

18 no

foreign

patents

or patent

applications

corresponding

the

333

Patent

have been issued

abandoned

rejected

or remain pending.

PUBLIC VERSION

3.

Non-Technical

Description of the

333

Patent4

25.

The

333

Patent

generally

relates

to

controlling

applications

and the transmission

of data

in wireless

communication

systems.

Particularly

in

wireless device

such

as

smartphone

the invention

allows

the device

to

maintain

list

of applications

accessible

to

the

device.

When

the accessibility of

particular application

is

changed

such

as

when

user

deletes

an application

from the smartphone

the

list

of applications

accessible

to

the device

is

updated

and the change

is

communicated

from the mobile device

to

the fixed portion

of the

wireless

communication

system.

By

maintaining

list

of applications

presently

available

to

user on the users mobile device

data and software

updates

relevant

to

the user can be

more means

efficiently

provided

to

the user.

The

invention

of the 333

Patent

provides

an

efficient

to

update the applications

available

to

user

of

wireless

communication

device

while

minimizing unnecessafy data

transfers

in

wireless communication

network.

4.

Prior Litigation

Involving

the

333

Patent

26.

On

January

22 2010

Motorola

filed

Complaint

with the U.S.

International

Trade Commission

to

commence

an investigation

based

on

inter

alia

the alleged

infringement

of the 333

Patent

by Respondents

Research

In Motion

Limited and Research

In Motion

Corporation.

Pursuant

to

the Complaint

an investigation

was

instituted

styled as Certain

Wireless

Communications

System Server

Software

Wireless

Handheld Devices and

Batteiy

Packs mv. No. 337-TA-706.
motion

On

June

29 2010

the presiding

Administrative

Law

Judge

granted

joint

to

terminate

the investigation

pursuant

to

settlement

agreement between

the parties.

The

333

Patent

has not been the subject

of any other previous

litigation

in

any

The
this

non-technical

descriptions intended

of the inventions
to

claimed

in the

Asserted

Patents

as set

forth

in

Complaint

are not

construe

either

the specification

or the claims

of the Asserted

Patents.

PUBLIC VERSION

domestic court or agency

In addition

there has

been no foreign

court or agency

litigation

involving

the

333 Patent

27
herewith

The

333 Patent however

is

the subject

of

complaint

filed

concurrently

by Mobility

against

Apple

in the

United

States District

Court

for the

Northern

District

of

Illinois

that

alleges infringement

of among others

the

333 Patent

The 862 Patent
Identification of the

862

Patent

and Ownership
title

28
Patent

Mobility

owns by assignment Sensor

the entire

right

and

interest

in

United

States

No 6246862

titled

Controlled

User Interface

for

Portable

Communication

Device He

which issued on June 12 2001

naming

Chris

Grivas Rachid

Alameh

and Fan

as inventors

certified

copy of the

862

Patent

is

attached

as Exhibit

certified

copy

of

the recorded

assignment from the named inventors

to

Motorola

is

attached

as Exhibit

copy

of the July

31

2010 assignment of the

862

Patent

from Motorola

to

Mobility

is

attached

as

Confidential

Exhibit

and Complainant

will submit

certified

copy

of this assignment

once

it

is

recorded

at

the United

States Patent

and Trademark

Office

29

Pursuant

to

Commission Rule 210.12

certified

copy and three additional

copies

of the prosecution

history of the

862

Patent

as well

as

four copies

of the 862

Patent

and each technical reference

mentioned

in the prosecution

history of the

862

Patent

are

submitted

concurrently

herewith

as

Appendices

and

respectively

Foreign Counterparts

to the

862

Patent

30

Pursuant

to

Commission Rule

210.12a9v
to

Exhibit

18

identifies

the foreign

patents

or patent

applications

corresponding

the

862

Patent

that

have been issued

abandoned

rejected

or remain pending

PUBLIC VERSION

3.

Non-Technical

Description

of the

862

Patent5

31.

The

862

Patent

generally

relates

to

system for controlling

the operation

of

user interface

such

as

touch screen

in

wireless device

such

as

smartphone.

The

invention

provides

sensor in the wireless device

that

senses

the proximity of the device

to

large solid object

like

users head.

When

the sensor

determines

the wireless

device

is

in

close proximity to

such an object

the system inhibits

the operation

of the touch screen so

that

the user does not inadvertently

make

undesired

inputs to

the device

like

hanging up the

call

or

dialing unwanted

numbers.

So

for

example

if the

user

is

on

call

and the touch

screen

is

near

the users

head

the phone

will not

accept

unwanted

inputs

made

as

result

of the users

unintended

contact

with certain inputs on the touch screen during

the

call.

4.

Prior Litigation

Involving

the

862
of

Patent

32.

The

862

Patent

has

not

been the subject

previoi.ls

litigation

in

any domestic

court or agency.

In addition

there has been no foreign

court or agency

litigation

involving

the

862

Patent

or any of

its

counterparts.

33.

The

862

Patent

however

is

the subject

of

complaint

filed

concurrently

herewith

by Mobility

against

Apple

in the

United

States District

Court

for the

Northern

District

of

Illinois

that

alleges infringement

of among

others

the

862

Patent.

C.

The 697 Patent
Identification of the

1.

697

Patent

and Ownership
title

34.

Mobility owns by assignment the

entire

right

and

interest

in

United

States

Patent No.

6246697

titled

Method
Code

and System

for

Generating

Complex Pseudonoise
on June 12

Sequence

for Processing

Division

Multiple

Access

Signal which

issued

The
this

non-technical

descriptions intended

of the inventions
to

claimed

in the Asserted

Patents

as

set

forth

in

Complaint

are not

construe

either

the specification

or the claims

of the Asserted

Patents.

PUIBLIC VERSION

2001

naming

Nicholas

William Whinnett

and Kevin Michael

Laird

as

inventors

certified

copy

of the

697

Patent

is

attached

as Exhibit

certified

copy of the recorded

assignment

from the named inventors

to

Motorola

is

attached

as Exhibit

copy of the July

31

2010

assignment of the

697

Patent

from Motorola

to

Mobility

is

attached

as

Confidential

Exhibit

and Complainant

will submit

certified

copy of

this

assignment once

it

is

recorded

at the

United

States

Patent

and Trademark

Office

35

Pursuant

to

Commission Rule 210.12

certified

copy and three additional

copies

of the prosecution

history of the

697

Patent

as well

as four

copies

of the

697

Patent

and each technical reference

mentioned in the prosecution

history of the

697

Patent are

submitted

concurrently

herewith

as

Appendices

and

respectively

Foreign Counterparts

to the

697

Patent

36

Pursuarft to

Commission Rule

210.12a9v
to

Exhibit

18

identifies

the foreign

patents

or patent

applications

corresponding

the

697

Patent

that

have been issued

abandoned

rejected

or remain

pending

Non-Technical

Description of the

697

Patent6

37
wireless

The 697

Patent

generally

relates

to

transmitting

voice

and data signals in

communication

systems

Particularly

in

wireless device

such

as

smartphone

the

invention

allows

the device

to

transmit

voice

and data signals

to

the fixed portion

of

wireless

communication

system in

way

that

reduces

noise

in the

signal thus

enhancing the

ability

of

the signal to be received

while minimizing interference

with signals from other users mobile

devices

The
this

non-technical

descriptions intended

of the inventions
to

claimed

in the

Asserted

Patents

as

set

forth

in

Complaint

are not

construe

either

the specification

or the claims

of the Asserted

Patents

PUI3LIC VERSION

Prior Litigation

Involving

the

697

Patent

38
court or agency

The 697

Patent

has not

been the subject

of previous

litigation

in

any domestic

In addition

there has

been no foreign

court or agency

litigation

involving

the

697

Patent

or any of

its

counterparts

39
herewith

The 697 Patent however

is

the subject

of

complaint

filed

concurrently

by Mobility

against

Apple

in

the United

States District

Court

for the

Northern

District

of

Illinois

that

alleges infringement

of among

others

the

697

Patent

The 317 Patent
Identification of the

317

Patent

and Ownership
title

40
Patent

Mobility owns by assignment the

entire

right

and

interest

in United

States

No 5359317
Message
in

titled

Method
Call

and Apparatus

for

Selectively

Storing

Portion

of

Received

Selective

Receiver

which issued on October

25 1994

naming

Fernando

Gomez

and Mark

Stair

as inventors

41
the

On November

2008

third

party

filed

request

for

ex parte reexamination

of

317

Patent

which was assigned

Control

No

90/010332
because

On

February

2009

the Patent

Office

denied

the request

for ex parte reexamination

it

found the references

cited

in the

request

did not raise

substantial

new

question

of patentability regarding

the

317

Patent

The

third

party then

filed

petition seeking

review

of the denial of the reexamination

request

On

March 22 2010

the Patent

Office

denied

the petition because

it

found the references

cited in

the request

did not

raise

substantial

new

question

of patentability regarding

the

317

Patent

42

On March 17 2009 317
Patent

third

party filed

second request

for

ex parte

reexamination of the

which was assigned

Control

No

90/010455
which

On

June

2010

the Patent

Office

issued

an ex parte reexamination

certificate

confirmed

the

PTJELIC VERSION

patentability of claims

1-6 9-11 13-19

21

and 22.

Claims

12

and 20 were not

reexamined.

43.

certified

copy

of the

317

Patent

is

attached

as Exhibit

certified

copy

of

the recorded

assignment from the named inventors

to

Motorola

is

attached

as

Exhibit

10.

copy of the July 3.1 2010

assignment of the

317

Patent

from Motorola

to

Mobility

is

attached

as Confidential

Exhibit

and Complainant

will submit

certified

copy of

this

assignment once

it is

recorded

at the

United

States

Patent

and Trademark

Office.

44.

Pursuant

to

Commission Rule 210.12

certified

copy and three additional

copies

of the prosecution

history of the

317

Patent

as well

as four copies

of the

317

Patent

and each technical reference

mentioned

in the prosecution

history of the

317

Patent

are

submitted

concurrently

herewith

as

Appendices

and

respectively.

copy

and three

additional

copies

of the prosecution

histories

for

Reexamination

Request

Nos. 90/010332

and

90/010455

and each technical

reference

mentioned

therein

are submitted

concurrently

herewith

as

Appendices

and

respectively.7

2.

Foreign Counterparts

to the

317

Patent

45.

Pursuant

to

Commission Rule

210.12a9v
to

Exhibit

18

identifies

the foreign

patents

or patent

applications

corresponding

the

317

Patent

that

have been issued

abandoned

rejected

or remain

pending.

Comp-lainant

has

ordered

certified

copy of the prosecution

histories as

of Reexamination
as possible.

Request

Nos. 90/010332

and 90/010455

and will submit them

soon

PUBLIC VERSION

3.

Non-Technical

Description of the

317
to

Patent8

46.

The 317

Patent

invention

generally relates

selective

call receivers.

The

patent

discloses

inter

alia

method

and apparatus

for selectively

storing

portion

of

received

message by

user in one of the

many memory

partitions

that

corresponds

to

particular file

type.

4.

Prior Litigation

Involving

the

317

Patent

47.

On

January

22 2010

Motorola

filed

aomplaint

with the U.S.

International

Trade Commission

to

commence

an investigation

based

on

inter

alia the alleged

infringement

of the

317

Patent

by Respondents

Research

In Motion

Limited and Research

In Motion

Corporation.

Pursuant

to

the Complaint

an investigation

was

instituted

styled as Certain

Wireless

Communications

System Server

Software

Wireless

Handheld Devices and

Battery

Packs mv. No. 337-TA-706.

On

June

29 2010

the presiding

Administrative

Law

Judge

granted

joint

motion

to

terminate

the investigation

pursuant

to

settlement agreement between

the parties.

48.

On

February

20 2008
Northern

Motorola

filed

an Amended

Complaint

in the

United

States District

Court

for the

District

of Texas which was assigned

Civil Action No.

09-cv-0072-K.

In the

Complaint

Motorola

alleged

inter

alia

infringement

of the

317

Patent

by Research

In Motion

Limited and Research

In Motion

Corporation.

On

June

25 2010

the

District

Court granted

joint motion

to

dismiss the action

pursuant

to

settlement agreement

between

the parties.

The
this

non-technical

-descriptions intended

of the inventions
to

claimed

in the Asserted

Patents

as set

forth

in

Complaint

are not

construe

either

the specification

or the claims

of the Asserted

Patents.

PUBLIC VERSION

49

The

317

Patent

has

not been the subject

of any other previous

litigation

in

any

domestic court or agency

In addition

there has

been no foreign court or agency

litigation

involving

the

317

Patent

or any of

its

counterparts

50
herewith

The 317 Patent however

is

the subject

of

complaint

filed

concurrently

by Mobility
that

against

Apple

in

the United

States District

Court

for the

Northern

District

of

illinois

alleges infringement

of among others

the

317

Patent

The 223 Patent
Identification of the

223

Patent

and Ownership
title

51
Patent

Mobility owns by assignment the

entire

right

and

interest

in

United

States

No 5636223
1997 naming

titled

Methods

of Adaptive

Channel Access

Attempts which

issued

on

June

Karl

Reardon

and Bud Fraser as inventors

52

On Mafth 15 2010

the United

States Patent

and Trademark

Office

granted

request

for

ex parte reexamination of claims

112

of the 223

patent

The

art cited

by the ex

parte requester

is

cumulative

of

that

already

considered

by

the Patent

and Trademark

Office

during

initial

examination

of the 223

patent

Thus no new

issues

regarding

the viability

of the

patent

claims

have been raised

fmal determination

has not

yet been reached

in these

proceedings

53
the recorded

certified

copy

of the 223

Patent

is

attached

as

Exhibit

certified

copy

of

assignment from the named inventors

to

Motorola

is

attached

as Exhibit

11

copy of the July

31

2010-assignment

of the 223

Patent

from Motorola

to

Mobility

is

attached

as Confidential

Exhibit

and Complainant

will submit

certified

copy of

this

assignment once

it

is

recorded

at

the United

States Patent

and fradernark

Office

54

Pursuant

to

Commission Rule 210.12 223 Patent

certified

copy

and three additional

copies

of the prosecution

history of the

as well

as four copies

of the 223 Patent

PTJIBLIC

VERSION

and each technical reference

mentioned

in the prosecution

history of the

223 Patent

are

submitted

concurrently

herewith

as

Appendices

and

respectively.

copy and three

additional

copies

of the prosecution

history for Reexamination

Request

No. 90/010802

and

each technical reference

mentioned therein

is

submitted

concurrently

herewith

as

Appendix

O.

2.

Foreign Counterparts

to the

223

Patent

55.

Pursuant

to

Commission Rule

210.12a9v
to

Exhibit

18

identifies

the foreign

patents

or patent

applications

corresponding

the

223

Patent

that

have been issued

abandoned

rejected

or remain

pending.

3.

Non-Technical

Description of the

223

Patent1

56.

The 223

Patent

generally

relates

to

communication

systems

and methods

of

adaptable

channel

access

in

data communications

systems.

For example the 223 Patent

discloses

method

of adaptable

channel

access

that

is

practiced

at

terminal

where

if

channel

is

busy

the terminal

will wait

priority-based

random amount of

time before

trying

again.

In this

manner

the

223

Patent

enabled

the efficient

utilization

of communication

resources.

4.

Prior Litigation

Involving

the

223

Patent

57.

On

October 14 2009

Motorola

filed

First

Amended

Counterclaims in the United

States

District

Court for the Northern

District

of Texas in Civil Action No. 308-cv-0284-G.

In

the

Amended

Counterclaims Motorola

alleged

inter

alia

infringement

of the 223

Patent

by

Research

In Motion

Limited and Research

In Motion

Corporation.

On

June

25 2010

the

Complainant No. 90/010802
10

has

ordered

certified
it

copy of the prosecution soon
as

history of Reexamination

Request

and will submit

as

possible.

The

non-technical

descriptions are not

of the inventions
to

claimed
either

in the- Asserted

Patents

as

set

forth

in this

Complaint

intended

construe

the specification

or the claims

of the

Asserted

Patents.

PUBLIC VERSION

District

Court granted

joint motion

to

dismiss the action

pursuant

to

settlement agreement

between

the parties

58

The

223

Patent

has

not been the subject

of any other previous

litigation

in any

domestic court or agency

In addition

there has

been no foreign

court or agency

litigation

involving

the

223

Patent

or any

of its counterparts

59
herewith

The

223 Patent however

is

the subject

of

complaint

filed

concurrently

by

Mobility

against

Apple

in the

United

States District

Court

for the

Northern

District

of

Illinois

that

alleges infringement

of among others

the

223

Patent

The 826 Patent
Identification of the

826
the

Patent

and Ownership
right
title

60
Patent

Motorola

owns by assignment

entire

and

interest

in

United

States

No 7751826
on July

Titled

System and Method

for E91

Location

Privacy

Protection

which

issued

2010 naming Michael Gardner
of the

Wayne

Ballantyne

and Zaffer Merchant

as

inventors

certified

copy

826

Patent

is

attached

as Exhibit

certified

copy of the

recorded

assignment from the named inventors

to

Motorola

is

attached

as

Exhibit

12

copy of

the July

31

2010 assignment of the

826

Patent

from Motorola

to

Mobility

is

attached

as

Confidential

Exhibit

and Complainant

will submit

certified

copy of

this

assignment once

it

is

recorded

at

the United

States Patent

and Trademark

Office

61

Pursuant

to

Commission Rule 210.12

certified

copy and three additional

copies

of the prosecution

history of the

826

Patent

as well

as four

copies

of the 826

Patent

and each technical reference

mentioned

in the

prosecution

history of the

8-26 Patent

are

submitted

concurrently

herewith

as

Appendices

and

respectively

PUBLIC VERSION

2.

Foreign Counterparts

to the

826

Patent

62.

Pursuant

to

Commission Rule

210.12a9v
to

Exhibit

18

identifies

the foreign

patents

or patent

applications

corresponding

the

826

Patent

that

have been issued

abandoned

rejected

or remain

pending.

3.

Non-Technical

Description of the

826
that

Patent11

63.

The 826

Patent

generally

relates

to

system

enables

the user of

wireless

device

such as

smartphone

to

control

when

the Global

Positioning

System

GPS of the
may

smartphone

is

able to

send location data over the wireless network.

For example the user

turn off the

GPS

system during

normal use

in

order to conserve

battery power

and protect

users privacy.

But even when

the

GPS

system

is

disabled

by

the user the invention

of the

826
e.g.

patent

provides

way

to

automatically

enable the

GPS

system when

an emergency

call

911

is

placedthereby

enabling

the

GPS

system

to

provide

emergency

personnel

with

the specific

location

of the

caller.

4.

Prior Litigation

Involving

the

826

Patent

64.

The 826

Patent

has

not been the subject

of previous

litigation

in

any domestic

court or agency.

In addition

there has been no foreign

court or agency

litigation

involving

the

826

Patent

or any of

its

counterparts.

65.

The 826 Patent however

is

the subject

of

complaint

filed

concurrently

herewith

by Mobility
that

against

Apple in the United

States District

Court

for

the Northern

District

of Illinois

alleges infringement

of

among others

the

826

Patent.

The
forth

non-technical

descriptions are not

of the inventions
to

claimed
either

in

the Asserted

Patents

as

set

in this

Complaint

intended

construe

the specification

or the claims

of the

Asserted

Patents.

PUBLIC VERSION

UNLAWFUL AND UNFAIR ACTS OF RESPONDENT INFRINGEMENT
66
United
States

PATENT

Respondent

unlawfully

sells for

importation imports and/or

sells within

the

after

importation

the Accused

Products

thereby

infringing

claim

12 of the

333

Patent

claim

of the

862

Patent

claims

1-4 of the

697 826

Patent

claims

and 17 of the

317

Patent

claim

of the 223

Patent

and claim

of the

Patent

collectively

the Asserted

Claims
67
Asserted

Respondent

has

directly

infringed

and continues

to

directly

infringe at least the

Claims of the Asserted

Patents

by

inter

alia

its

importation

sale

for importation

and/or

its

sale

in the

United

States

after

importation

of the Accused

Products

Respondent

also

directly

infringes the Asserted

Claims of the Asserted

Patents

by having

its

employees or agents

operate

test

and/or

demonstrate the Accused

Products

in the United

States

and through

those

activities

infringes the Asserted

Claims of the Asserted

Patents

68
Patents

Respondent

indirectly infringes at least the Asserted

Claims of the Asserted

by

inducing

and/or

contributing

to

infringement

of the Asserted

Patents

For example

Respondent

induces

infringement

and/or

contributorily

infringes

when

consumers

and/or

Respondents

employees operate

the Accused

Products

in the

United

States

69
Respondent
has

Upon

information

and belief Respondent

induces

infringement

because

knowledge

of the Asserted

Patents

through

at

minimum

discussions

with

Motorola

ii Respondent
actively

intends

to

induce

direct

infringement

of the Asserted

Patents

iii

Respondent

induces

direct

infringement

by knowingly

aiding

and abetting

that

infringement

and/or

iv

Respondent

has

actual

or constructive

knowledge

that

its

actions

would induce infringement

For example Respondent

induces

infringement

by among

other

things

providing

and

selling

the Accused

Products

creating

and distributing user manuals and

PUBLIC VERSION

marketing

materials

and by other

acts

and communications

that

instruct

users

how

to

operate

the Accused

Products

and otherwise

cause

others

to

use

the Accused

Products

and thereby

practice the claimed inventions

of the Asserted

Patents.

70.

Upon

information

and belief Respondent

further contributes

to

infringement

because there

is

lack

of substantial non-infringing

uses

for the

Accused

Products.

Upon

information

and belief

Respondent

knows

the Accused

Products

are especially

made

or

especially

adapted

for

use

in the

infringement

of the Asserted

Patents

and

that

the infringing

portions

of these products

are not

staple

articles

or commodities

of commerce suitable

for

substantial

non-infringing

use.

71.

The Accused

Products

that

infringe the

333

Patent

include

at least

the iPhone

3G

the iPhone

3GS

the iPhone

iPad

3G

Apple

App

Store.

Exhibit

19

is

claim chart that

compares

representatie

asserted

independent

claim 12 of the 333

Patent

to

these Accused

Products.

Documents

referenced

in this

claim chart are attached

as

Exhibits

25 29

and 30.

72.

The Accused

Products

that

infringe the

862

Patent

include

at

least the

iPhone

3G

the iPhone

3GS

and the iPhone

4.

Exhibit

20

is

claim chart that

compares

representative

asserted

independent claim

of the

862

Patent

to

these Accused

Products.

Documents

referenced

in this claim chart are attached

as

Exhibits

25 26 697

and 27.

73.

The Accused

Products

that

infringe the

Patent

include

at least the

iPhone

3G

the iPhone

3GS

the iPhone

and the iPad3G.

Exhibit

21

is

claim

chart that

compares

representative

asserted

independent claim

of the

697

Patent

to

these Accused

Products.

This

chart relies primarily

on portions

of the

WCDMA

standard

with which the devices

listed

above

are

compliant.

Documents

referenced

in this

claim chart are attached

as Exhibits

31 32 33

and

34.

PUBLIC VERSION

74
Touch iPad

The Accused

Products

that

infringe the

317

Patent

include

at

least the

iPod

iPad

3G

iPhone

3G

iPhone

3G

and iPhone

Exhibit

22

is

claim chart that

compares

representative

asserted

independent

claims

and 17 of the 317

Patent to these

Accused

Products

Documents

referenced

in this

claim

chart are attached

as Exhibit

30
iPhone

75
iPad
iPad with

The

Accused

Products

that

infringe the

223

Patent

include

at

least the

3G

iPod Touch

AppleTV
23

MacBook

MacBook

Pro MacBook

Air

iMac

Mac mini and Mac Pro
independent claim

Exhibit

is

claim chart that

compares

representative

asserted

of the 223

Patent

to

these Accused

Products

Documents

referenced

in

this

claim

chart are attached

as

Exhibits

31 36

and

37 826
Patent include
at least the

76

The

Accused

Products

that

infringe the

iPhone

3G

the iPhone

3GS

and the iPhone

Exhibit

24

is

claim chart that

compar