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UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON_ D.C. In

VIEWS: 9 PAGES: 39

									      • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


          UNITED STATES INTERNATIONAL TRADE COMMISSION
                          WASHINGTON, D.C.

                                          )
In the Matter of                          )
                                          )      Investigation No. 337-TA- _ _
CERTAIN WIRELESS                          )
COMMUNICATION SYSTEM                      )
SERVER SOFTWARE, WIRELESS                 )
HANDHELD DEVICES AND                      )
BATTERY PACKS                             )


            VERIFIED COMPLAINT UNDER SECTION 337 OF THE
                   TARIFF ACT OF 1930, AS AMENDED

Complainant                                   Respondents

Motorola, Inc.                                Research In Motion Ltd.
1303 East Algonquin Road                      295 Phillip Street
Schaumburg, IL 60196                          Waterloo, Ontario
Phone No. (847) 576-5000                      Canada N2L 3W8
                                              Phone No. (519) 888-7465

                                              Research In Motion Corp.
                                              122 West John Carpenter Parkway
                                              Suite 430
                                              Irving, TX 75039
                                              Phone No. (972) 650-6126

                                Counsel for Complainant

Jesse 1. Jenner                               Norman H. Beamer
Steven Pepe                                   Joshua V. Van Hoven
Ropes & Gray LLP                              Jane H. Bu
1211 Avenue of the Americas                   Ropes & Gray LLP
New York, NY 10020                            1900 University Avenue, 6th Floor
Phone No. (212) 596-9000                      East Palo Alto, CA 94303
                                              Phone No. (650) 617-4000
Nicole M. Jantzi

Kevin 1. Post                                 John Kinton
Ropes & Gray LLP                              DLA Piper LLP
700 12th Street NW, Suite 900                 401 B Street, Suite 1700
Washington, DC 20005                          San Diego, CA 92101
Phone No. (202) 508-4600                      Phone No. (619) 699-2700
        • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED) •



I.     INTRODUCTION ................................................................................................... 1

II.    PARTIES ................................................................................................................. 3
       A.       Complainant. .................................................................................................. 3
       B.       The Respondents ............................................................................................ 4

III.   PRODUCTS AT ISSUE .......................................................................................... 5
       A.      Accused Products ........................................................................................... 5
       B.      Domestic Industry Products ........................................................................... 7

IV.    THE ASSERTED PATENTS AND NON-TECHNICAL DESCRIPTION
       OF THE ASSERTED PATENTS ........................................................................... 7
       A.      The '712 Patent .............................................................................................. 7
                1.      Identification of the '712 Patent and Ownership by Motorola ............ 7
               2.       Foreign Counterparts to the '712 Patent .............................................. 8
               3.       Non-Technical Description of the Patent.. ........................................... 8
       B.      The '317 Patent. ............................................................................................. 9
                1.      Identification of the '317 Patent and Ownership by Motorola ............ 9
               2.       Foreign Counterparts to the '317 Patent .............................................. 9
               3.       Non-Technical Description of the Patent.. ........................................ .lO
       C.      The '550 Patent ............................................................................................ 10
               1.       Identification of the '550 Patent and Ownership by Motorola .......... 10
               2.       Foreign Counterparts to the '550 Patent ............................................ 10
               3.       Non-Technical Description of the Patent.. ........................................ .ll
       D.      The '970 Patent ............................................................................................ 11
               1.       Identification of the '970 Patent and Ownership by Motorola .......... 11
               2.       Foreign Counterpart to the '970 Patent.. ............................................ l1
               3.       Non-Technical Description of the Patent.. ......................................... 12
       E.      The '333 Patent ............................................................................................ 12
               1.       Identification of the '333 Patent and Ownership by Motorola .......... 12


               3.       Non-Technical Description of the Patent.. ......................................... 13
       F.      Licenses Relating to the Asserted Patents ................................................... 13




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V.      UNLAWFUL AND UNFAIR ACTS OF RESPONDENTS -- PATENT
        INFRINGEMENT ................................................................................................. 13

VI.     SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND SALE ................ 17

VII. CLASSIFICATION OF THE INFRINGING PRODUCTS UNDER THE
     HARMONIZED TARIFF SCHEDULE ............................................................... 18

VIII. THE DOMESTIC INDUSTRY RELATING TO THE ASSERTED
      PATENTS ............................................................................................................. 19
        A.       Domestic Industry -- Motorola Maintains A Domestic Industry
                 Under 19 U.S.C. § 1337(a)(3)(C) Through Its Licensing Activities .......... .19
        B.       Economic Domestic Industry -- Significant Investment in Plant,
                 Labor and Equipment .................................................................................. 20
        C.       Economic Domestic Industry -- Substantial Investment In Its
                 Exploitation, Including Engineering, Research And Development.. ........... 21
        D.       Technical Domestic Industry -- Application of the Asserted Patents
                 to Motorola's Products ................................................................................ 24

IX.     RELA TED PROCEEDINGS ................................................................................ 25

X.      RELIEF REQUESTED ......................................................................................... 27




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                       EXHIBIT AND APPENDIX LIST




Exhibit 12

Exhibit 13


Exhibit 15   "Making History: Developing the Portable Cellular System," available at
             http://www.motorola.com/staticfiles/Business/CorporateIUS-
             EN/hi
Exhibit 16   "About Motorola," available at http://www.motorola.com/staticfiles/
             Business/C                                               .ew.html
Exhibit 17




Exhibit 21   Preliminary Infringement Analysis of Independent Claims 6 and 17 of
             United States Patent No.5    712
Exhibit 22   Preliminary Infringement Analysis of Independent Claims 9 and 17 of
             United States Patent No.5      17
Exhibit 23   Preliminary Infringement Analysis ofIndependent Claims 1 and 12 of
             United States Patent No.5

             States
Exhibit 25   Preliminary Infringement Analysis ofIndependent Claims 1, 7 and 12 of
             United States Patent No.6       333
Exhibit 26   "Wi-Fi® enabled BlackBerry® smartphones," available at
             http://na.blackberry .comleng/ataglance/networksl
             WiFiCellul


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             "Wi-Fi Implementation Supplement," available at
             http://docs.blackberry.com/en/admin/deliverables/7359/
             Wi-Fi                  .
Exhibit 30   BlackBerry Bold 9000 Smartphone Safety and Product Information,
             available at http://docs.blackberry .com/en/smartphone_ users/
             deliverables/3429/SIB 9000 series 378456 11
Exhibit 31   BlackBerry Bold 9000 Smartphone Getting Started Guide, available at
             http://docs.blackberry.com/en/smartphone_ users/deliverables/2650/
             GSG 9000 Precision Zen              .
Exhibit 32   BlackBerry Bold 9000 Smartphone (Version: 4.6) User Guide, available
             at http://docs.blackberry.com/en/smartphone_ users/deliverables/2970/
                          bb9000 umts.
Exhibit 33   "RIM Testing Services Internal Photos" for FCC ID: L6ARBT70UW,
             available at       ://www                  .
Exhibit 34   Press Release dated May 12, 2008, titled "RIM Introduces the
             BlackBerry Bold Smartphone," available at
                        ss.rim.com/          ?id= 1562
Exhibit 35   BlackBerry Curve 8320 Smartphone Getting Started Guide, available at
             http://docs.blackberry .com/en/smartphone_ users/deliverables/153 7/
             GSG 8320 B
Exhibit 36   BlackBerry 8320 Smartphone User Guide, available at
             http://docs.blackberry .com/en/smartphone_ users/ deliverab les/703 3/
                     ide bb8320
Exhibit 37   BlackBerry Curve 8320 Smartphone Safety and Product Information,
             available at http://docs.blackberry .com/en/smartphone_ users/
             deliverables/5281               Curve 8320                US
Exhibit 38   "MD160 Series Specification," available at http://www.hitachi-
             ul                                                      .html
Exhibit 39   BlackBerry Enterprise Server for Microsoft Exchange (Version: 5.0 I
             Service Pack: 1) Feature and Technical Overview, available at
             http://docs.blackberry.com/en/admin/deliverables/12077/BlackBerry_ Ent
             erprise_Server_for_ Microsoft_Exchange-Feature_and_ Technical_
             Overview-T305802-817456-1102035401-001-5.0.1-US
Exhibit 40   BlackBerry Enterprise Server (Version: 5.0 I Service Pack: 1) Policy
             Reference Guide, available at http://docs.blackberry.com/en/admin/
             deliverables/12063/BlackBerry_Enterprise_Server-Policy_
                                                           01-001-5.0.l-US.
Exhibit 41   BlackBerry Enterprise Server for Microsoft Exchange (Vers : 5.
             Service Pack: 1) Administration Guide, available at
             http://docs.blackberry.com/en/admin/deliverables/12109/BlackBerry_Ent
             erprise_ Server_for_Microsoft_Exchange-Administration_ Guide-
             T487521-813841-1026035749-001-5.0.1-US



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Exhibit 48   Features, Specifications and Purchase Instructions for the BlackBerry
             Bold 9000
Exhibit 49   United States Purchase Receipt of BlackBerry Enterprise Server 4.1
             Software




Exhibit 53   "Big marketing budget drives Moto Droid sales," dated November 30,
             2009, available at http://news.cnet.com/8301-30686_3-10406417-
             266.html
Exhibit 54   "Motorola Limited Warranty for the United States and Canada,"
             available at http://www.motorola.com/staticfiles/Support/US-
             ENI_ Static%20Files/Motorola%20Limited%20Warranty%20for%20the
             %20United%20States%20and%20Canada 04 15 08
Exhibit 55   Motorola Rival A455 User's Guide, available at
             http://www.motorola.com/staticfiles/SupportIUS-EN/
             Mobile%20PhoneslA455IUS-ENI Documents/Static-filesl
             A455 Ver UG US-EN 68000201953
Exhibit 56   Motorola Cliq User's Guide, available at
             http://www.motorola.com/staticfiles/S upportlUS-ENI
             Mobile%20PhoneslMOTOROLA_ CLIQ_MOTOBLURlUS-
             ENI Documents/Static File            UG TMO final
Exhibit 57   Motorola Droid User's Guide, available at
             http://www.motorola.com/staticfiles/SupportIUS-EN/
             Mobile%20Phones/DROID-by-Motorola/US-EN/Documents/Static-

Exhibit 58   Domestic Industry Analysis of Representative Claim 17 of        States
             Patent No.5     712
Exhibit 59   Domestic Industry Analysis of Representative Claim 17 of United States
             Patent No.5       17
Exhibit 60   Domestic Industry Analysis of Representative Claim 10 of United States
             Patent No.


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Exhibit 61     Domestic Industry Analysis of Representative Claim 12 of United States
               Patent No.6       333
Exhibit 62     Motorola Droid Technical Specifications, available at
               http://www.motorola.com/Consumers/US-EN/Consumer-Product-and-
               ServiceslMobile-Phones/ci.Motorola-DROID-US-EN.alt
Exhibit 63     Motorola Rival A455 Internal Photographs for FCC ID: IHDT56KGl,
               available at    :llwww                   .
Exhibit 64     Motorola Cliq Technical Specifications, available at
               http://www.motorola.com/Consumers/US-EN/Consumer-Product-and-
               ServiceslMobile-Phones/ci.                   S-EN.alt
Exhibit 65     Motorola Cliq Internal Photographs for FCC ID: IHDT56KVl, available
               at     :llwww.fcc       etlea/fccidl
Exhibit 66     Complaint, Research In Motion Ltd. v. Motorola, Inc., No. 3:08-cv-0284
                  D. Tex. Feb. 1 200
Exhibit 67

Exhibit 68     Order Granting Unopposed Motion to Apply June 15,2009 Stay Order to
               Additional Motorola Patent Claims That Have Been Placed Into
               Reexamination, Research In Motion Ltd. v. Motorola, Inc., No.3 :08-cv-
               0284    D. Tex. Nov. 9



Confidential   Expired License Between Motorola, Inc. and Research In Motion Ltd.
Exhibit A
Confidential   Identification of Licenses Relating to the Asserted Patents
Exhibit B
Confidential   Motorola Licensing Group Data
Exhibit C
Confidential   United States Personnel Data for Motorola's Mobile Devices Segment
ExhibitD
Confidential   United States Facilities Data for Motorola's Mobile Devices Segment
Exhibit E
Confidential   United States Sales Data for Representative Domestic Industry Products
Exhibit F
Confidential   United States Sales Data for all Mobile Devices Segment Products
Exhibit G
Confidential   Domestic Industry Analysis of Representative Claim 1 of United States

Confidential   License Between Motorola, Inc. and {--CBI--}
Exhibit I
Confidential   License Between Motorola, Inc. and {--CBI--}
Exhibit J
Confidential   License Between Motorola, Inc. and {--CBI--}
Exhibit K


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Confidential
Exhibit L
Confidential
                         -
               License Between Motorola, Inc. and {--CBI--}

               License Between Motorola, Inc. and {--CBI--}
                                                                        !!llW


Exhibit M
Confidential   License Between Motorola, Inc. and {--CBI--}
Exhibit N
Confidential   License Between Motorola, Inc. and {--CBI--}
Exhibit 0
Confidential   License Between Motorola, Inc. and {--CBI--}
Exhibit P
Confidential   License Between Motorola, Inc., {--CBI--}
Exhibit Q
Confidential   First Amendment to License Between Motorola, Inc., {--CBI--}
Exhibit R
Confidential   Second Amendment to License Between Motorola, Inc., {--CBI--}
Exhibit S
Confidential   License Between Motorola, Inc. and {--CBI--}
Exhibit T
Confidential   License Between Motorola, Inc. and {--CBI--}
Exhibit U
Confidential   License Between Motorola, Inc. and {--CBI --}
Exhibit V
Confidential   Settlement and License Agreement Between Motorola, Inc., {--CBI--}
Exhibit W
Confidential   License Between Motorola, Inc. and {--CBI --}
Exhibit X




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                              er for U.S. Patent No. 5,319,712
A          Certified File Wra er for U.S. Patent No. 5,359,317
A          Certified File Wra er for U.S. Patent No. 5,569,550
A          Certified File Wra er for U.S. Patent No. 6,232,970 (Parts 1-3)
A          Certified File Wra er for U.S. Patent No. 6,272,333
A          Technical References Cited in U.S. Patent No. 5,319,712
A          Technical References Cited in U.S. Patent No. 5,359,317
A          Technical References Cited in U.S. Patent No. 5,569,550
A          Technical References Cited in U.S. Patent No. 6,232,970
A          Technical References Cited in U.S. Patent No. 6,272,333
A          Reexamination File Wra er for Control No. 90/010,332
A          Reexamination File Wra er for Control No. 90/010,455




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I.     INTRODUCTION

        1.      Motorola, Inc. ("Motorola" or "Complainant") 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 337").

       2.       Research In Motion Ltd. and Research In Motion Corp. (collectively

"RIM" or "Respondents") have engaged in unfair acts in violation 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

Communication System Server Software, Wireless Handheld Devices and Battery Packs

(hereinafter "Accused Products"). Upon information and belief, RIM infringes one or

more claims of United States Patent Nos. 5,319,712 ("the '712 Patent"); 5,359,317 ("the

'317 Patent"); 5,569,550 ("the '550 Patent"); 6,232,970 ("the '970 Patent"); and

6,272,333 ("the '333 Patent") (collectively the "Asserted Patents"). See Exhs. 1-5.

Motorola owns by assignment the entire right, title and interest in and to the Asserted

Patents. See Exhs. 6-10.

       3.       Motorola's operations in the United States qualify as a domestic industry

relating to the articles protected by the Asserted Patents, within the meaning of 19 U.S.C.

§ 1337(a)(2).

       4.       Motorola's business operations divide into three primary segments: (1) its

Enterprise Mobility Solutions segment, which designs, manufactures, installs, and

services analog and digital two-way radios, voice and data communication products and

systems for private networks, Electronic Digital Assistants (EDAs), bar code scanners,



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RFID readers, wireless LAN infrastructure as well as end-to-end enterprise mobility

solutions; (2) its Home & Networks Mobility segment, which designs, manufactures,

installs, and services digital and Internet Protocol (IP) video and broadcast network

interactive set-tops, end-to-end video delivery solutions, broadband access infrastructure

systems, and associated data and voice customer premise equipment; and (3) its Mobile

Devices segment ("MDS"), which designs, manufactures, sells and services wireless

handsets with integrated software and accessory products. Motorola actively licenses its

intellectual property relating to each of its business segments.

        5.     Motorola's MDS designs, develops, markets, and sells in the United States

products that practice one or more claims of the Asserted Patents. The intellectual

property relating to Motorola's MDS is an integral part of Motorola's extensive domestic

licensing program, which includes licenses to each of the Asserted Patents. Until

December 31,2007, RIM was licensed to a number of Motorola's MDS United States

patents. See Conf. Exh. A.

       6.      Motorola seeks relief from the Commission in the form of a permanent

limited exclusion order prohibiting entry into the United States of the Accused Products

that infringe one or more claims of the Asserted Patents. Motorola further seeks a cease

and desist order prohibiting Respondents from engaging in the importation, sale for

importation, marketing, distribution, offering for sale, sale or other transfers within the

United States after importation of the Accused Products.




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II.    PARTIES

       A.      Complainant

       7.      Motorola is a corporation organized and existing under the laws of the

State of Delaware and having a principal place of business at 1303 East Algonquin Road,

Schaumburg, Illinois 60196. Relevant excerpts of Motorola's Form 1O-Q's for the period

ended April 4, 2009; July 4, 2009; and October 3,2009; and its 2008 Annual Report are

attached as Exhibits 11, 12, 13, and 14, respectively.

       8.      Motorola is a leading innovator in the communications and electronics

industry. From the introduction of its first commercially successful car radio in 1930 to

the inception of the world's first commercial portable cellular phone in 1983, Motorola

has developed substantial proprietary and leading technology relating to wireless

communications and electronics. See Exh. 15. Motorola was also the first to bring push-

to-talk over cellular to market. More recently, Motorola demonstrated the world's first

WiMAX 802.16e mobile handoff and the industry's first over-the-air data sessions in the

700 MHz spectrum using the Long Term Evolution standard, which is the next evolution

of mobile broadband. See Exh. 16.

       9.      Among other things, Motorola designs, manufactures, sells, and services

wireless handsets with integrated software and accessory products. In the third quarter of

2009, MDS's net sales were $1.7 billion, representing 31% of the company's

consolidated net sales. See Exh. 13 at 21,26; see also Exh. 11 at 20,25 (Ql 2009); Exh.



        10.    Motorola actively commercializes its patented technologies and licenses

many of its patents, including the Asserted Patents, to other major manufacturers and




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retailers of wireless handheld devices and other communications products. See Conf.

Exh. B (listing active licenses involving the Asserted Patents).

       11.     Motorola's research and development expenditures relating to new

product development or product improvement were $4.1 billion in 2008 and $4.4 billion

in 2007. See Exh. 14 at 16. Motorola continues to believe that a strong commitment to

research and development is required to drive long-term growth. Approximately 27,000

professional employees were engaged in research and development activities during

2008. See id. As of December 31, 2008, Motorola and its wholly-owned subsidiaries

owned approximately 10,000 patents in the United States and nearly 13,000 patents in

foreign countries. See id. Many of the patents owned by Motorola are used in its

operations or licensed for use by others. See id.

       12.     Additionally, Motorola has granted licenses of varying scope under many

of its patents, including all of the Asserted Patents, to various companies. See Conf. Exh.

B. Motorola's licensing activities have yielded substantial revenue to Motorola and its

shareholders. Confidential Exhibit C sets forth the royalty income from certain of

Motorola MDS's patent licenses in the past three fiscal years.


       B.      The Respondents

       13.     Upon information and belief, Respondent Research In Motion Ltd. is a

corporation organized under the laws of Canada and has its principal place of business at

295 Phillip Street, Waterloo, Ontario, Canada N2L 3WB.

       14.     Upon information and belief, Respondent                                 a

corporation organized under the laws of the State of Delaware and has its principal place

of business at 122 West John Carpenter Parkway, Suite 430, Irving, Texas 75039.



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        15.     Upon information and belief, a substantial portion of RIM's operations are

related to the design, manufacture and sale of wireless handheld devices, services and

software. RIM has facilities in Canada, the United States, the United Kingdom, Asia, and

Australia. See Exh. 17. RIM realized $11.07 billion in revenue in fiscal year 2009, of

which approximately 82% was attributable to the sales of communication devices,

primarily of BlackBerry devices. See Exh. 18 at 8-10,18-19,28. Further, approximately

63% of RIM's total revenue ($6.97 billion) was generated in the United States

marketplace. See id. at 86.

        16.    Upon information and belief, RIM's Accused Wireless Communication

System Server Software, Wireless Handheld Devices and Battery Packs (which are both

sold individually and packaged with the Accused Devices) are manufactured outside the

United States, for example, in Canada, Mexico, Japan, and China. See, e.g., Paragraphs

57-59, infra. Thus, upon information and belief, as of the filing of this Complaint, all of

the Accused Products are being imported into the United States.


III.   PRODUCTS AT ISSUE

       A.      Accused Products

        17.    Upon information and belief, the Respondents design, manufacture,

import and/or sell for importation into the United States, and/or sell within the United

States after importation, wireless communication system server software, wireless

handheld devices and battery packs.

       18.     The Accused

Wireless Handheld Devices (such as RIM's BlackBerry devices and supporting software

for the BlackBerry Enterprise Server) utilize various wireless technologies that, for



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                     example, establish data connections with wireless networks, transmit voice and data

                     signals to and from a wireless handheld device, and process and compress data during a

                     wireless communication.

                               19.      The Accused Battery Packs are power sources, such as the lithium-ion

                     battery packs placed inside of the Accused Devices. The Accused Battery Packs utilize a

                     battery protection circuit, which has one-way blocking switches to protect from over-

                     voltage and under-voltage conditions, while still allowing the battery to charge and

                     discharge normally.

                              20.       Upon information and belief, each of the Accused Products meets each

                     and every limitation of at least one claim of the Asserted Patents. The Accused

                     Communication System Server Software includes, but is not limited to, all versions 4.0 or

                     later of BlackBerry Enterprise Server ("BES"). The Accused Wireless Handheld Devices

                     include, but are not limited to, the BlackBerry Pearl 8100, Pearl 8110, Pearl 8120, Pearl

                     8130, Pearl Flip 8220, Pearl Flip 8230, Curve 8300, Curve 8310, Curve 8320, Curve

                     8330, Curve 8350i, Curve 8520, Curve 8530, Curve 8900, 8800, 8820, 8830, Bold 9000,

                     Bold 9700, Storm 9530, Storm2 9550, and Tour 9630. The Accused Battery Packs

                     include, but are not limited to, the lithium-ion battery packs utilized by the BlackBerry

                     Pearl 8100, Pearl 8110, Pearl 8120, Pearl 8130, Pearl Flip 8220, Pearl Flip 8230, Curve

                     8300, Curve 8310, Curve 8320, Curve 8330, Curve 8350i, Curve 8520, Curve 8530,

                     Curve 8900, 8800, 8820, 8830, Bold 9000, Bold 9700, Storm 9530, Storm2 9550, and

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                                                                                                                                                  ••




                     reserves the right to identify additional products during this investigation and/or as new




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infringing devices are introduced by RIM into the United States market, and to amend the

list of Accused Products accordingly.

       21.     Upon information and belief, the demand for RIM's BlackBerry devices

has resulted in annual revenue of approximately $9.09 billion in fiscal year 2009. See

Exh. 18 at 28,86. At of the end of fiscal year 2009, the total BlackBerry subscriber unit

base was approximately 25 million. See Exh. 19 at 1.


       B.      Domestic Industry Products

       22.     Motorola domestically designs and develops wireless handheld devices

including battery packs and communication system supporting software that integrate

both cellular telephone and data communication functionality. These devices include, but

are not limited to, the Motorola Rival A455, Cliq and Droid, and their associated battery

packs, including the BP6X (hereinafter "Representative Domestic Industry Products").

These Representative Domestic Industry Products are capable of data handling, including

establishing data connections with wireless communication systems, and identifying,

retrieving, categorizing, and pushing to handheld devices customized data from a data

source. See Section VIII.D, infra.


IV.    THE ASSERTED PATENTS AND NON-TECHNICAL DESCRIPTION OF
       THE ASSERTED PATENTS

       A.     The '712 Patent

              1.      Identification of the '712 Patent and Ownership by Motorola



States Patent No. 5,319,712, titled "Methods and Apparatus for Providing Cryptographic

Protection of a Data Stream in a Communication System," which issued on June 7, 1994,




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naming Louis D. Finkelstein, James 1. Kosmach and Jeffrey C. Smolinske as inventors.

A certified copy of the' 712 Patent is attached as Exhibit 1; a certified copy of the

recorded assignment is attached as Exhibit 6.

       24.     Pursuant to Commission Rule 210.12, a certified copy and three additional

copies of the prosecution history of the '712 Patent, as well as four copies of each

technical reference mentioned in the prosecution history of the '712 Patent are submitted

concurrently herewith as Appendices 1 and 6, respectively.


               2.      Foreign Counterparts to the '712 Patent

       25.     Pursuant to Commission Rule 21O.l2(a)(9)(v), Exhibit 20 lists foreign

counterparts that generally correspond to the '712 Patent, including an indication of

status. No other foreign patents or patent applications corresponding to the '712 Patent

have been issued, abandoned, rejected, or remain pending.


               3.      Non-Technical Description of the Patent

       26.     The '712 Patent discloses, inter alia, cryptographic protection of a data

stream in the Open Systems Interconnection ("OSI") network architecture. OSI is an

abstract reference model for how messages should be transmitted between any two points

in a layered telecommunication network. In its most fundamental form, it defines seven

layers of functions that take place at each end of a communication. From top to bottom,

the layers consist of the Application, Presentation, Session, Transport, Network, Data-



accomplished on the transmitting side, particularly by assigning a packet sequence

number and a transmit overflow sequence number to a data packet received at a data link

layer from a network layer. The transmit overflow sequence number is a function of the


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packet sequence number. The packet sequence number and transmit overflow sequence

number values are then used to encrypt the packet, which is then transmitted over the

physical layer.


       B.         The '317 Patent

                  1.     Identification of the '317 Patent and Ownership by Motorola

       27.        Motorola owns by assignment the entire right, title and interest in United

States Patent No. 5,359,317, titled "Method and Apparatus for Selectively Storing a

Portion of a Received Message in a Selective Call Receiver," which issued on October

25, 1994, naming Fernando A. Gomez and Mark T. Stair as inventors. A certified copy

of the' 317 Patent is attached as Exhibit 2; certified copies of the recorded assignments

are attached as Exhibit 7.

       28.        Pursuant to Commission Rule 210.12, a certified copy and three additional

copies of the prosecution history of the' 317 Patent, as well as four copies of each

technical reference mentioned in the prosecution history of the '317 Patent are submitted

concurrently herewith as Appendices 2 and 7, respectively.


                  2.     Foreign Counterparts to the '317 Patent

       29.        Pursuant to Commission Rule 21 0.12(a)(9)(v), Exhibit 20 lists foreign

counterparts that generally correspond to the '317 Patent, including an indication of

status. No other foreign patents or patent applications corresponding to the' 317 Patent




                                              -9-
       • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


                3.      Non-Technical Description of the Patent

        30.     The' 317 Patent invention generally relates to selective call receivers. The

patent discloses, inter alia, a method and apparatus for selectively storing a portion of a

received message by a user in one of the many memory partitions that corresponds to a

particular file type.


        C.      The '550 Patent

                1.      Identification of the '550 Patent and Ownership by Motorola

        31.     Motorola owns by assignment the entire right, title and interest in United

States Patent No. 5,569,550, titled "Battery Pack Having Under-Voltage and Over-

Voltage Protection," which issued on October 29, 1996, naming Scott M. Garrett and

Dipti V. Vashi as inventors. A certified copy of the '550 Patent is attached as Exhibit 3;

a certified copy of the recorded assignment is attached as Exhibit 8.

        32.     Pursuant to Commission Rule 210.12, a certified copy and three additional

copies of the prosecution history of the '550 Patent, as well as four copies of each

technical reference mentioned in the prosecution history of the '550 Patent are submitted

concurrently herewith as Appendices 3 and 8, respectively.


                2.      Foreign Counterparts to the '550 Patent

        33.     Pursuant to Commission Rule 21O.l2(a)(9)(v), Exhibit 20 lists foreign

counterparts that generally correspond to the '550 Patent, including an indication of

status. No other foreign patents or patent applications corresponding to the '550 Patent

have been issued, abandoned, rejected, or remain pending.




                                            -10-
       • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED) •


               3.      Non-Technical Description of the Patent

       34.     The '550 Patent discloses, inter alia, protecting batteries against over-

charging and over-discharging. Over-charging a battery can lead to a build-up of harmful

metals, and over-discharging shortens the battery's life and can lead to complete battery

failure. The '550 Patent discloses a battery protection circuit, which uses one-way

blocking switches to protect from over-voltage and under-voltage conditions, while still

allowing the battery to charge and discharge normally.


       D.      The '970 Patent

               1.      Identification of the '970 Patent and Ownership by Motorola

       35.     Motorola owns by assignment the entire right, title and interest, including

the right to sue for past infringement, in United States Patent No. 6,232,970, titled "User

Interface Methodology Supporting Light Data Entry for Microprocessor Device Having

Limited User Input," which issued on May 15,2001, naming Eric O. Bodnar, Jennifer J.

Lee, Philippe R. Kahn, Roy W. Feague, David E. Jorgensen, and Gwoho H. Liu as

inventors. A certified copy of the '970 Patent is attached as Exhibit 4; certified copies of

the recorded assignments are attached as Exhibits 9A and 9B.

       36.     Pursuant to Commission Rule 210.12, a certified copy and three additional

copies of the prosecution history of the '970 Patent, as well as four copies of each

technical reference mentioned in the prosecution history of the '970 Patent are submitted

concurrently herewith as Appendices 4 and 9, respectively.


               2.     Foreign Counterpart to the '970 Patent

       37.     Pursuant to Commission Rule 210.12(a)(9)(v), Exhibit 20 lists the foreign

counterpart that generally correspond to the '970 Patent, including an indication of status.


                                            -11-
                                                              • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED) •


                                                     No other foreign patents or patent applications corresponding to the '970 Patent have

                                                     been issued, abandoned, rejected, or remain pending.


                                                                       3.      Non-Technical Description of the Patent

                                                               38.     The '970 Patent invention generally relates to devices for processing

                                                     information. The '970 Patent discloses, inter alia, a method for alerting the user to

                                                     availability of information in a separately maintained data set that relates to information

                                                     being input in a form by a user.


                                                               E.      The '333 Patent

                                                                       1.      Identification of the '333 Patent and Ownership by Motorola

                                                               39.     Motorola owns by assignment the entire right, title and interest in United

                                                     States Patent No. 6,272,333, titled "Method and Apparatus in a Wireless Communication

                                                     System for Controlling a Delivery of Data," which issued on August 7,2001, naming

                                                    Dwight Randall Smith as inventor. A certified copy of the '333 Patent is attached as

                                                    Exhibit 5; a certified copy of the recorded assignment is attached as Exhibit 10.

                                                               40.     Pursuant to Commission Rule 210.12, a certified copy and three additional

                                                    copies of the prosecution history of the '333 Patent, as well as four copies of each

                                                    technical reference mentioned in the prosecution history of the '333 Patent are submitted

                                                    concurrently herewith as Appendices 5 and 10, respectively.


                                                                       2.      Foreign Counterparts to the '333 Patent

~,   kd __ ..d # C " = & _ I @ . , _   .~ • •' » k h "   '-'-"4"l';""M''Put stlatft1ff€umrnissiun··RuiC"'2»HH·zta}t9Jtv';"'ttnd"aS'wtticMe6,lrrE*h1bit~'··Mk~" ....   =&&.




                                                    20, no foreign patents or patent applications corresponding to the '333 Patent have been

                                                    issued, abandoned, rejected, or remain pending.




                                                                                                     -12-
       • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


               3.      Non-Technical Description of the Patent

        42.    The '333 Patent generally relates to controlling of data in wireless

communication systems. Particularly, in a wireless device, such as a smartphone, the

invention allows the device to maintain an application registry for applications accessible

to the device; and in response to a change in the accessibility of a particular application,

to update the registry and communicate the change to the wireless communication

system. Further, a fixed portion of the wireless communication system keeps a copy of

the current application registry. The fixed portion will send the data only when it

determines that an application compatible with the data is assessable to the device.


       F.      Licenses Relating to the Asserted Patents

       43.     Motorola actively licenses many of its patents, including the Asserted

Patents, to Third Parties, including other wireless product manufactures and retailers.

Pursuant to Commission Rule 21 0.12(a)(9)(iii), a list of entities licensed under each of

the Asserted Patents is attached as Confidential Exhibit B. Pursuant to Commission Rule

210.l2(a)(9)(iv), copies of the relevant licenses are attached as Confidential Exhibits I-X.


v.     UNLAWFUL AND UNFAIR ACTS OF RESPONDENTS -- PATENT
       INFRINGEMENT

       44.     Upon information and belief, RIM unlawfully sells for importation,

imports, and/or sells within the United States after importation the Accused Products,

thereby infringing at least independent claims 6 and 17 and associated dependent claims



claims 10, 13-16, 18, 19, 21, and 22 of the' 317 Patent; at least independent claims 1 and

12 and associated dependent claims 3-5, 7, 9, 10, and 13-15 of the '550 Patent; at least




                                            -13-
            • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED)·


     independent claim 10 and associated dependent claims 11-20 of the '970 Patent; and at

    least independent claims 1, 7 and 12 and associated dependent claims 2-6, 8-11 and 13 of

    the '333 Patent.

             45.      Upon information and belief, RlM has directly infringed and continues to

    directly infringe certain 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. RlM also directly infringes the Asserted Patents by having its employees or

    agents operate, test, and/or demonstrate the Accused Products in the United States, and

    through that operation infringe certain claims of the Asserted Patents.

             46.      Upon information and belief, RlM indirectly infringes the Asserted

    Patents by inducing and/or contributing to infringement of the Asserted Patents. For

    example, RlM induces infringement and/or contributorily infringes when consumers

    and/or RlM employees operate the Accused Products in the United States.

             47.      Upon information and belief, RlM induces infringement because: (i) RlM

    has knowledge of the Asserted Patents; (ii) RlM intends to induce direct infringement of

    the Asserted Patents; (iii) RIM actively induces direct infringement by knowingly aiding

    and abetting that infringement; and/or (iv) RlM has actual or constructive knowledge that

    its actions would induce infringement. For example, RlM induces infringement by,

    among other things, providing and selling the Accused Products, creating and distributing

    user manuals and marketing materials, providing warranty and repair services in the

~C"'c~t1ntre'ltX~TeS";arret'byuttter actscandeOli ill i ullit<ftit1frs1:trdti1fstrtret"tfflers'+reYwt~attlC"'   ' " ' , M , c c " " k " , 2 , A c " w ' .. '   .~"


    the Accused Products and otherwise cause others to use the Accused Products, and

    thereby practice the claimed inventions of the Asserted Patents.




                                                       -14-
      • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


       48.     Upon information and belief, RIM further contributes to infringement

because there is a lack of substantial non-infringing uses for the Accused Products. Upon

information and belief, RIM 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.

       49.     Upon information and belief, the Accused Wireless Handheld Devices that

infringe the '712 Patent include at least the BlackBerry Pearl 8120, Pearl Flip 8220,

Curve 8320, Curve 8350i, Curve 8520, Curve 8530, Curve 8900, 8820, Bold 9000, Bold

9700, and Storm2 9550. Exhibit 21 is a claim chart that compares asserted independent

claims 6 and 17 of the '712 Patent to these Accused Devices, relying primarily on the

IEEE 802.11 ™ Standard, with which they are stated to be compliant. Documents

referenced in this claim chart are attached as Exhibits 26-29.

       50.     Upon information and belief, the Accused Wireless Handheld Devices that

infringe the '317 Patent include at least the BlackBerry Pearl 8100, Pearl 8110, Pearl

8120, Pearl 8130, Pearl Flip 8220, Pearl Flip 8230, Curve 8300, Curve 8310, Curve 8320,

Curve 8330, Curve 8350i, Curve 8520, Curve 8530, Curve 8900, 8800, 8820, 8830, Bold

9000, Bold 9700, Storm 9530, Storm2 9550, and Tour 9630. Exhibit 22 is a claim chart

that compares asserted independent claims 9 and 17 of the' 317 Patent to a representative

product, the BlackBerry Bold 9000. Documents referenced in this claim chart are



       51.     Upon information and belief, the Accused Wireless Handheld Devices and

Battery Packs that infringe the '550 Patent include at least the BlackBerry Pearl 8100,




                                               -15-
                                                   • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


                                       Pearl 8110, Pearl 8120, Pearl 8130, Pearl Flip 8220, Pearl Flip 8230, Curve 8300, Curve

                                       8310, Curve 8320, Curve 8330, Curve 8350i, Curve 8900, 8800, 8820, 8830, Bold 9000,

                                       Bold 9700, Storm 9530, Storm2 9550, and Tour 9630; and the Accused Battery Packs for

                                       each Accused Device, including at least the C-M2, C-S2, C-X2, D-X1, and M-Sl.

                                       Exhibit 23 is a claim chart that compares asserted independent claims 1 and 12 of the

                                       '550 Patent to a representative product, the BlackBerry Curve 8320 and its associated

                                       battery, the C-S2. Documents referenced in this claim chart are attached as Exhibits 35-

                                       38.

                                                    52.          Upon information and belief, the Accused Wireless Handheld Devices that

                                       infringe the '970 Patent include at least the BlackBerry Pearl 8100, Pearl 8110, Pearl

                                       8120, Pearl 8l30, Pearl Flip 8220, Pearl Flip 8230, Curve 8300, Curve 8310, Curve 8320,

                                       Curve 8330, Curve 8350i, Curve 8520, Curve 8530, Curve 8900, 8800, 8820, 8830,

                                       Bold 9000, Bold 9700, Storm 9530, Storm2 9550, and Tour 9630. Exhibit 24 is a claim

                                       chart that compares asserted independent claim 10 of the '970 Patent to a representative

                                      product, the BlackBerry Bold 9000. The document referenced in this claim chart is

                                      attached as Exhibit 32.

                                                   53.          Upon information and belief, the Accused Wireless Handheld Devices and

                                      Wireless Communication Server Software that infringe the '333 Patent include at least

                                      the BlackBerry Pearl 8100, Pearl 8110, Pearl 8120, Pearl 8130, Pearl Flip 8220, Pearl

                                      Flip 8230, Curve 8300, Curve 8310, Curve 8320, Curve 8330, Curve 8350i, Curve 8520,

bd/#"CCh'~' '"iXM4_~_"_~,,,y~"~ r-,~,~~,",n<, o~cd,<,~-c,c~CufVtr'8''53'f1~~eurvt~'~~'~6(t;J8800;e"882tT;n'&8'9   &, ""Btrld'96ett;=Btrkl'~~1@{}t,8tMmc,9§~9;~,.~,-<, ",, , ~"'~_~h4~~M.g_§ d$hN,""~_,_,_ ,.",-,~-o"_-,~~~=-_-'_,~M,

                                      Storm2 9550, and Tour 9630 and all versions 4.0 or later of Blackberry Enterprise Server

                                      ("BES"). Exhibit 25 is a claim chart that compares asserted independent claims 1, 7 and




                                                                                                                  -16-
       • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


12 of the '333 Patent to representative products, including the BlackBerry Bold 9000 and

the BES v.5.0. Documents referenced in this claim chart are attached as Exhibits 30, 32-

34 and 39-42.


VI.    SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND SALE

        54.     Upon information and belief, RIM imports and/or sells for importation the

Accused Products into the United States and/or sells within the United States after

importation the Accused Products.

       55.      The specific instances of importation of infringing Accused Products set

forth below are representative examples of RIM's unlawful importation, sale for

importation, and/or sales within the United States after importation of infringing

products.

       56.      Several of the Accused Products including the BlackBerry Curve 8320 and

Bold 9000; and the 4.x version of the BlackBerry Enterprise Server Software (also

available on CD) were purchased in the United States, either in stores or over the internet.

       57.      The purchase receipt of a representative BlackBerry Curve 8320 is

attached as Exhibit 43. The packaging label identifies "Handheld Made In MEXICO[;]

Accessories Made In Japan, China, Turkey"; the label affixed to the BlackBerry Curve

8320 identifies the device as "Made in MEXICO"; and the label affixed to the C-S2

battery for the device identifies the battery as "Cell made in Japan." Exh. 44. RIM

further markets this device under the product designation of BlackBerry Curve 8320 in

the United States. RIM's website identifies for consumers in the United States several

relevant features of this device and provides instructions for its purchase. See Exh. 45.




                                           -17-
       • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED)·


       58.     The purchase receipt of a representative BlackBerry Bold 9000 is attached

hereto as Exhibit 446. The packaging states "Handheld Made in MEXICO[;] Accessories

Made in China and Turkey"; the label affixed to the BlackBerry Bold 9000 identifies the

device as "Made in MEXICO"; and the label affixed to the M-Sl battery pack for the

device identifies the battery as "Made in China." Exh. 47. RIM further markets this

device under the product designation of BlackBerry Bold 9000 in the United States.

RIM's website identifies for consumers in the United States several relevant features of

this device and provides instructions for its purchase. See Exh. 48.

       59.     The purchase receipt of a representative BlackBerry Enterprise Server

Software package is attached as Exhibit 49. Although the receipt reflects RIM's address

in Irving, Texas, it was mailed from Canada. See Exh. 49. This software is also available

for purchase for shipment to the United States on CD from the BlackBerry Store, which

upon information and belief is located in Canada. See Exh. 50. The BlackBerry

Software License Agreement downloaded from RIM's website during the purchase is

attached as Exhibit 51. The official address in the license agreement provided by RIM is

"295 Phillip Street, Waterloo, Ontario, Canada, N2L 3W8." See Exh. 51 at 11. RIM's

website identifies for consumers in the United States several relevant features of this

software. See Exh. 52.


VII.   CLASSIFICATION OF THE INFRINGING PRODUCTS UNDER THE
       HARMONIZED TARIFF SCHEDULE



classified under at least the following heading and subheading of the Harmonized Tariff

Schedule of the United States ("HTSUS"): 8517.12.0050 and 8525.20.9080, et seq. The




                                            -18-
       • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED) •


exact lO-digit HTSUS Codes (headings/subheadings and suffixes) are dependent upon

the specific capabilities and features of the products.

        61.     These classifications are exemplary in nature and are not intended to

restrict the scope of any exclusion order or other remedy ordered by the Commission.


VIII. THE DOMESTIC INDUSTRY RELATING TO THE ASSERTED
      PATENTS

        A.      Domestic Industry -- Motorola Maintains A Domestic Industry Under
                19 U.S.c. § 1337(a)(3)(C) Through Its Licensing Activities

        62.     A domestic industry for the purposes of 19 U.S.C. § 1337(a)(2), as defined

in 19 U.S.C. § 1337(a)(3)(C), exists with respect to Motorola's wireless technology

because Motorola has an extensive domestic licensing program. This program is

responsible for the active licensing of each of the Asserted Patents. Motorola invests

heavily in the exploitation of its technologies and patents, including the Asserted Patents,

through its extensive licensing activities.

        63.     Motorola's Intellectual Property Licensing Department presently employs

{--CBI --} individuals within the United States (primarily in Motorola's Libertyville,

Illinois, facility). These employees are dedicated to the evaluation of Motorola's patent

portfolio, the identification of potential licensees, the assertion of Motorola's patents, the

negotiation of patent licenses, and the monitoring of compliance with the terms of those

licenses. They also perform important licensing-related functions, including patent

enforcement, patent management, legal analysis, technical analysis, business planning,

and various administrative tasks.

{--------------------------CBI --------------------------} Confidential Exhibit C sets forth




                                              -19-
       • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED)·


details regarding the significant expenditures Motorola incurs related to its licensing

activities.

        64.     Motorola's licensing activities have produced licenses to many of its

patents, inc luding the Asserted Patents, {-------------------------CB I-------------------------}

A list of Motorola's patent licenses that are currently in force, as they relate to some or all

of the Asserted Patents, is attached as Confidential Exhibit B. These licenses are attached

as Confidential Exhibits I-X. Additionally, Motorola's licensing activities resulted in a

license to RIM, which is now expired. See Conf. Exh. A. Confidential Exhibit C sets

forth royalty revenue Motorola has generated from its licenses that include the Asserted

Patents.

        65.     Because Motorola's domestic licensing operations establish a domestic

industry, Motorola is not required to establish that any of its products practice the

Asserted Patents. Nonetheless, Motorola's domestic industry also includes significant

investment in the United States in connection with its domestic industry products, as

discussed below.


        B.      Economic Domestic Industry -- Significant Investment in Plant, Labor
                and Equipment

        66.     The existence of a domestic industry pursuant to 19 U.S.C. § 1337(a)(2),

as defined in 19 U.S.C. § 1337(a)(3)(A) & (B), is evidenced by Motorola's significant

investment in the United States in connection with its products that embody the Asserted



        67.     Motorola's MDS employs almost {-CBI-} individuals in several facilities

throughout the United States that comprise approximately {---CBI ---} square feet of

offices, warehouses and work spaces. See Conf. Exh. D & E. The MDS employees'


                                               -20-
       • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


activities include engineering and science, marketing and sales, project management,

business operations and planning, administrative services, quality assurance, reliability

test and inspection, product support, information technology, strategy, publications and

graphic arts, supply chain, customer service, material and distribution, manufacturing,

purchasing, finance, and other functions. See Conf. Exh. D.

        68.     For example, the headquarters of Motorola's MDS operation is located in

Libertyville, Illinois, where almost {-CBI-} employees work in more than {-CBI-} square

feet of space. Motorola's MDS Design Center is located in {-------------CBI-------------},

employing more than {CBI} employees and occupying nearly {CBI} square feet of space.

Motorola's MDS engineering team is located at the {---------------CBI---------------},

campus, which consists of about {CBI} employees occupying more than {-CBI-} square

feet of space. Additional Motorola facilities largely dedicated to MDS are located in

{--------------CBI --------------}. See Conf. Exh. E.

       69.      Motorola's total investment in recent years in personnel, plant and

equipment represented by its MDS facilities is substantial. See Conf. Exhs. D & E; see

also Exh. 14 at 16,61; Exh. 53 at 2.


       C.      Economic Domestic Industry -- Substantial Investment In Its
               Exploitation, Including Engineering, Research And Development

       70.     Through its engineering, research and development, marketing, licensing,

and service activities, Motorola has invested billions of dollars in its MDS technology,



Motorola's United States MDS employees are dedicated to its engineering and science

operations and corresponding supporting activities. Indeed, a significant portion of

Motorola's expenditure can be attributed to its R&D efforts in the United States.


                                             -21-
                                • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


                        Confidential Exhibit D sets out Motorola's MDS employment breakdown in this

                        category. See also Exh. 14 at 16, 61.

                                 71.     For example, Motorola's {-------------CBI-------------} facilities are

                        primarily responsible for researching and developing mobile devices in the United States

                        market. Across its facilities, Motorola has integrated its engineering and science

                        operations (e.g., mechanical, electrical, electronics science; system, production,

                        hardware, and software engineering; package and IC design), technical support

                        operations (e.g., field and software engineering; material and process laboratories; quality

                        reliability and assurance support), warranty and service operations, parts support

                        operations, inspection and customer service operations. Motorola employs, both directly

                        and through contracting with third parties, scientific, technical, administrative and

                        support personnel in its research, product development and engineering of the products

                        covered by the Asserted Patents. See Conf. Exh. D.

                                 72.     In addition to its research and product development activities, Motorola

                        provides significant engineering support services and after-market customer support

                        services. For example, as a part of its research and development investment, Motorola

                        employs approximately {-CBI-} individuals in its United States facilities specifically for

                        quality assurance and inspection of its mobile devices including the Representative

                        Domestic Industry Products. See Conf. Exh. D. The individuals involved in quality

                        assurance have the responsibilities of, including but not limited to, predicting field failure

""'.",',"."""',~~.. "b",,, "~W"l ateS', feviewi~,fa~~Malify,metl'~;~~»gJ4.eW,~l~d~ar.tiGifilatms, in" > , 0 4 " " . , . " , ,.,k•. ,   ' ,'"   .. ",.,m"A




                        solutions findings, tracking software defects, reviewing Motorola prototype certification

                        compliance, and comparing battery life performance to specification. Aesthetic




                                                                         -22-
                                     • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


                             suitability of samples is also part of the inspection and partly reviewed by Motorola's

                            quality and management teams from its distribution center in the United States.

                                      73.       To further ensure quality and performance of Motorola's devices,

                            including the Representative Domestic Industry Products, Motorola employees also

                            perform a variety of tests in the United States. Examples of these tests include

                            assessments of reliability, performance, compatibility, perceived quality, safety and field

                            performance. Components, subsystems, complete product, and accessories are all tested

                            individually and in combination. Finally, packaging activities for United States

                            shipments are carried out at Motorola's distribution center in Texas.

                                      74.      Motorola's MDS service organizations authorize certain outside

                            companies or third parties to service MDS products, including the Representative

                            Domestic Industry Products. In order to ensure adequate support is given to its

                            customers, Motorola provides technical training for the technicians employed by these

                            authorized service centers in the United States. Motorola also provides warranty repair

                            work. There is a toll-free customer service number in the United States: 800-331-6456.

                            Technical assistance is provided both by Motorola employees and by contractors located,

                            among other places, in {-----CBI-----}. See Exh. 54 (Motorola's standard limited

                            warranty); Exh. 55 at 47,59-63 (Rival A455 support and warranty information); Exh. 56

                            at 56-57 (Cliq support information); Exh. 57 at 43, 50-52 (Droid support and warranty

                            information) .

M~~eMOW'WO'O~O'~W~"~."K~.~"e"·'M"'M"b,"'''rS':M0'='Finatly;''Motot   cht mrs'Substantr'Zrl ilfve;;,'fnre~I'1,t'h~'Sales,t)f4~o'}"If.oo~.',e'A" M'"   .M " "   'c.• , .




                            covered by the Asserted Patents. Motorola's United States sales of the Representative

                            Domestic Industry Products identified above totaled ${ --CBI--} (Q2 2009) and ${ -CBI-}




                                                                                    -23-
       • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


(Q3 2009), which account for approximately {--CBI--}% of total MDS sales in the

United States over the same periods. See Conf. Exhs. F & G. Motorola reserves the right

to identify additional Domestic Industry Products for various purposes, including the

establishment of the allocation of domestic industry expenditures.


        D.     Technical Domestic Industry -- Application of the Asserted Patents to
               Motorola's Products

       76.     Through its extensive engineering, research and development efforts,

Motorola has developed many products that practice the Asserted Patents, including, for

example, the Motorola Rival A455, Cliq and Droid products, including their integrated

software and accessory products, such as battery packs.

       77.     Exhibit 58 is a claim chart demonstrating that each and every limitation of

exemplary claim 17 of the '712 Patent is met by a Representative Domestic Industry

Product, the Droid (which supports the TKIP-encrypted transmission of data in

compliance with the IEEE 802.11 ™ Standard). Documents referenced in this claim chart

are attached as Exhibits 27, 28, 62.

       78.     Exhibit 59 is a claim chart demonstrating that each and every limitation of

exemplary claim 17 of the ' 317 Patent is met by a Representative Domestic Industry

Product, the Rival A455. Documents referenced in this claim chart are attached as

Exhibits 55, 63.

       79.     Confidential Exhibit H is a claim chart demonstrating that each and every



Industry Product, the Droid and its BP6X standard battery pack. The document

referenced in this claim chart is attached as Exhibit 57.




                                            -24-
      • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


       80.     Exhibit 60 is a claim chart demonstrating that each and every limitation of

exemplary claim 10 of the' 970 patent is met by a Representative Domestic Industry

Product, the Rival A455. The document referenced in this claim chart is attached as

Exhibit 55.

       81.     Exhibit 61 is a claim chart demonstrating that each and every limitation of

exemplary claim 12 of the '333 Patent is met by a Representative Domestic Industry

Products, the Cliq. Documents referenced in this claim chart are attached as Exhibits 64,

65.


IX.    RELATED PROCEEDINGS

       82.     On February 16,2008, RIM filed an action involving patent infringement,

antitrust and state law claims against Motorola titled Research In Motion Ltd. v.

Motorola, Inc., No 3:08-CV-0284, in the United States District Court for the Northern

District of Texas ("RIM f'). Among other things, RIM sought a declaratory judgment of

invalidity and noninfringement of seven Motorola patents, including the' 317 Patent

asserted in this Complaint. See Exh. 66. RIM I generally relates to the same types of

devices as are at issue in this Complaint.

       83.     On February 16,2008, Motorola filed a patent infringement action against

RIM based on a number of patents, including the' 317 Patent asserted in this Complaint,

titled Motorola, Inc. v. Research In Motion Ltd., No. 2:08-CV-69, in the United States

District Court for the Eastern District of Texas ("RIM If'). See Exh. 67. RIM II

generally relates to the same types of devices as are at issue in this Complaint. On

October 17,2008, the Eastern District of Texas granted RIM's motion to transfer RIM II




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                                            • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


                                     to the Northern District of Texas. The transfer took place on January 12,2009; RIM II

                                     was consolidated with RIM 1.

                                             84.      Since February 2008, two other litigations between Motorola and RIM

                                     were consolidated with RIM 1. They are Motorola, Inc. v. Research In Motion Ltd., No.

                                     1:08-CV-104 (SLR), in the United States District Court for the District of Delaware

                                     ("RIM IIf') and Research In Motion Ltd. v. Motorola, Inc., No.3 :08-CV-00317, in the

                                     United States District Court for the Northern District of Texas ("RIM IP'). These cases

                                     do not involve the Asserted Patents; however, they generally relate to the same types of

                                     devices as are at issue in this Complaint. These cases were consolidated with RIM 1.

                                             85.      The RIM I, RIM II, RIM III, and RIM IV cases have been unconsolidated,

                                     stayed and administratively closed in light of pending patent reexaminations and

                                     mediation proceedings by an order issued by the Northern District of Texas on November

                                     9,2009. See Exh. 68.

                                             86.      On October 10, 2008, Research In Motion UK Limited filed a patent

                                     revocation action against Motorola in the Patents Court, Chancery Division of the High

                                     Court of Justice of England and Wales (Action No. HC 08 C 02841), seeking revocation

                                     of European Patent No. 0 818 009 B 1, the UK equivalent of United States Patent

                                     No. 5,706,211, which is not asserted here. Motorola (and its subsidiary Motorola A/S)

                                     counterclaimed against Research In Motion UK Limited and Research In Motion Ltd.,

                                     alleging infringement of European Patent Nos. 0 818 009 B 1 (Beletic), 0 932 320 B 1

~,,"d,"~' "   •.•k"",."   "'M~~', 'P,~,·#,t*diet7;,~,g.:r8&ff,,"'B+·t~~,,·fttld,~,,~,+,,~S9uB,l,tl4NHgf.... ,~COO80~¥St}tt4'Y.9&,tl:ioo,in,.


                                    two phases in January 2010 and June 2010. This case does not involve the Asserted




                                                                                      -26-
       • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


Patents; however, it generally relates to the same types of devices as those asserted in this

Complaint.

        87.     On November 7,2008, a request for ex parte reexamination was filed with

the United States Patent and Trademark Office ("USPTO") relating to claims 1-6, 9-11,

13-19,21, and 22 of the '317 Patent. This request was rejected by the USPTO. On

March 17,2009, a second request for ex parte reexamination was filed with the USPTO

relating to claims 1, 3, 5, 9, 13-15, 17, 21, and 22 of the' 317 Patent. This request was

granted on May 28, 2009, and proceedings are ongoing. The public records pertaining to

these ex parte reexamination proceedings available from the USPTO at the time of filing

of this Complaint are submitted concurrently herewith as Appendices 11 and 12.

        88.     There has been no other court or agency litigation, foreign or domestic,

involving the unfair acts or the subject matter of this litigation.


X.     RELIEF REQUESTED

        89.     Complainant Motorola respectfully requests that the Commission:

                (a)     Institute an immediate investigation pursuant to Section 337 of the

Tariff Act of 1930, as amended, 19 U.S.c. § 1337, with respect to RlM's violations of

that section arising from the importation into the United States, sale for importation,

and/or the sale within the United States after importation of certain wireless

communication system server software, wireless handheld devices and battery packs that

infringe one or more claims of United States Patent Nos. 5,319,712; 5,359,317;

5,569,550; 6,232,970; and 6,272,333;

       (b)     Set a target date of no more than 15 months;




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       • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


        (c)     Schedule and conduct a hearing pursuant to Section 337(c) for the

purposes of (i) receiving evidence and hearing argument concerning whether there has

been a violation of Section 337, and (ii) following the hearing, determining that there has

been a violation of Section 337;

        (d)     Issue a permanent limited exclusion order directed to RIM, its

subsidiaries, related companies and agents pursuant to 19 U.S.c. § 1337(d) excluding

entry into the United States of certain wireless communication system server software,

wireless handheld devices and battery packs that infringe one or more asserted claims of

United States Patent Nos. 5,319,712; 5,359,317; 5,569,550; 6,232,970; and 6,272,333;

        (e)    Issue a permanent cease and desist order pursuant to 19 U.S.c. § 1337(f)

prohibiting RIM, 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 transfer within the United States, of the wireless

communication system server software, wireless handheld devices and battery packs that

infringe one or more claims of United States Patent Nos. 5,319,712; 5,359,317;

5,569,550; 6,232,970; and 6,272,333;

       (f)     Issue a permanent cease and desist order pursuant to 19 U.S.C. § 1337(f)

prohibiting RIM, its subsidiaries, related companies and agents from engaging in other

unfair methods of competition and unfair acts in the importation of articles, including the

operation, support, service and maintenance of the wireless communication system server



United States Patent Nos. 5,319,712; 5,359,317; 5,569,550; 6,232,970; and 6,272,333;




                                             -28-
      • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED).


       (g)     Impose a bond upon RIM if it continues to import infringing wireless

communication system server software, wireless handheld devices and battery packs

during the 60-day Presidential review period pursuant to 19 U.S.C. § 1337G); and

       (h)     Issue such other and further relief as the Commission deems just and

proper under the law, based on the facts determined by the Investigation and the authority

of the Commission.




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     • PUBLIC VERSION (CONFIDENTIAL BUSINESS INFORMATION REMOVED) •




                                    Respectfully submitted,


January 22,2010
                                         Nicole M.
                                         PaulM. Schoenhard
                                         Kevin J. Post
                                         Ropes & Gray LLP
                                         One Metro Center
                                         700 12th Street NW, Suite 900
                                         Washington, DC 20005
                                         Phone No. (202) 508-4600

                                         Jesse J. Jenner
                                         Steven Pepe
                                         Ropes & Gray LLP
                                         1211 Avenue of the Americas
                                         New York, NY 10020
                                         Phone No. (212) 596-9000

                                         Norman H. Beamer
                                         Joshua V. Van Hoven
                                         Jane H. Bu
                                         Ropes & Gray LLP
                                         1900 University Avenue, 6th Floor
                                         East Palo Alto, CA 94303
                                         Phone No. (650) 617-4000

                                         Sean Cunningham
                                         John Kinton
                                         DLA Piper LLP
                                         401 B Street, Suite 1700
                                         San Diego, CA 92101
                                         Phone No. (619) 699-2700

                                         Attorneys for Complainant,
                                         Motorola, Inc.




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