CBP Rejects Microsoft Bid to Ban Motorola Imports Under ITC Exclusion Order, Microsoft Sues

At issue is a 2012 International Trade Commission (ITC) limited exclusion order against Motorola Mobility that ordered CBP to stop imports of certain Motorola devices due to an infringement on Microsoft's patent (see 12061304). Motorola's infringement had to do with Microsoft's patent covering a mobile device which provides the user with the ability to schedule a meeting request from the mobile device. Motorola in April successfully sought approval from CBP to import products with a redesigned interface, with CBP finding in HQ H226615 that Motorola's the design-around to be outside of the ITC's exclusion order (here).

Microsoft subsequently asked CBP to rescind its ruling because the redesigned Motorola devices can still infringe by setting them up to use Google servers and not Microsoft's. That ability was included under the ITC's original infringement findings, the company said. CBP disagreed with Microsoft's take after asking for guidance from the ITC Office of the General Counsel, CBP said in HQ H242025 (here). "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," said CBP. Because it is not clear that the ITC's determination had to do with the devices' ability to use Google servers and synchronization, CBP cannot refuse entry to products "on the basis of features that 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," said CBP.

Microsoft also said the April ruling should be pulled back because Motorola didn't successfully avoid the relevant claims of the patent in question. But "Microsoft has not specified which features satisfy each of the claim limitations, [even] assuming they were not present on the legacy devices," said CBP in HQ H242026 (here). Microsoft also did not submit a sample device for CBP examination, leaving the administrative record incomplete, CBP said.

Microsoft Court Challenge Decries Opaque CBP Patent Enforcement Process

In its July 12 complaint at the Court of International Trade, Microsoft disputes not only CBP’s factual determinations in the June 24 ruling, but also the purportedly opaque process CBP used to arrive at its conclusions. Motorola bore the burden of proving its redesigned devices no longer infringed Microsoft patents, but instead CBP shifted the burden to Microsoft to disprove Motorola’s assertions. And CBP didn’t give Microsoft fair notice that it would be required to shoulder this burden. “CBP has repeatedly allowed Motorola to evade the Commission’s exclusion order based on secret presentations that CBP has refused to share with Microsoft,” the complaint said. “Microsoft has repeatedly explained that CBP’s stated reasons for not enforcing the exclusion order are legally mistaken, only to confront new theories and claims that CBP has adopted (apparently after further secret discussions) to justify its continuing refusal to enforce the exclusion order.”

Microsoft’s CIT complaint requests an injunction to compel CBP compliance with the exclusion order, and a declaration that CBP may not grant Motorola a grace period of continued importation of infringing products. It also wants the court to order CBP to mandate redelivery of all Motorola imports that should have been excluded, and an order preventing CBP from allowing imports of redesigned Motorola products.

Email ITTNews@warren-news.com for a copy of Microsoft’s complaint.