UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`
`In the Matter of
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`Investigation No. 337-TA-882
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`CERTAIN DIGITAL MEDIA DEVICES,
`INCLUDING TELEVISIONS, BLU-RAY
`DISC PLAYERS, HOME THEATER
`SYSTEMS, TABLETS AND MOBILE
`PHONES, COMPONENTS THEREOF
`AND ASSOCIATED SOFTWARE
`
`INTERVENOR GOOGLE INC.’S RULE 210.50(a)(4)
`SUBMISSION ON THE PUBLIC INTEREST
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`

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`The ALJ’s Initial Determination properly found no violation of Section 337. Should the
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`Commission disagree, reverse, and find a violation, the Commission should nonetheless decline to
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`issue relief in view of the detrimental effect relief would have on the public interest. At the very
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`least, the Commission should tailor any relief to avoid significant expected harm to competitive
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`conditions in the U.S. economy, to U.S. consumers, and to the public health and welfare.
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`A.
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`An Exclusion Order Would Adversely Impact Competitive Conditions in the
`U.S. Economy, U.S. Consumers, and the Public Health and Welfare
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`First, the accused products comprise a significant share of the mobile device market. For
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`example, BHM accused Respondents’mobile devices associated with the DIAL-enabled YouTube
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`mobile application of infringing the ’873 patent. This potentially implicates over 30% of U.S.
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`smartphone subscribers in the U.S. and the majority of Android shipments.1 Relief of this
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`magnitude would significantly reduce consumer choice and severely affect competitive conditions.
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`Put simply, these devices are critical to U.S. consumers and competitive conditions. The threatened
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`harm to the public interest of exclusion, particularly in light of the following considerations, far
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`outweighs any need for relief. BHM’s licensees cannot meet the shortfall in demand.
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`Second, the patented inventions are exceedingly narrow as compared to the complex
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`products that are accused in this investigation. Accordingly, the requested relief would
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`unnecessarily have an exaggerated detrimental impact on competitive conditions in the U.S.
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`economy, U.S. consumers, and the public health and welfare, relative to the alleged infringement it
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`would address. The exclusion of a significant share of a crucial industry on the basis of narrow
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`1 See comScore Reports May 2014 U.S. Smartphone Subscriber Market Share, available at
`http://www.comscore.com/Insights/Market-Rankings/comScore-Reports-May-2014-U.S.-
`Smartphone-Subscriber-Market-Share (July 3, 2014) (listing share of smartphone subscribers at
`27.8% and 6.5% for Samsung and LG, respectively). Respondents’tablets comprise a similar share
`of the U.S. market. See Tablets: A multi-platform Device Landscape, available at http://etc-
`digital.org/digital-trends/mobile-devices/tablets/regional-overview/north-america/ (noting Android
`tablets comprise 59% of U.S. tablet owners in 2013).
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`innovations disproportionately harms competition and consumers in comparison to the marginal
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`contribution of the narrow innovation.
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`The Commission is charged with considering effects on competition and consumers as it
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`evaluates the effects of its remedies on the public interest. Justice Kennedy’s reasoning is
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`instructive: “When the patented invention is but a small component of the product the companies
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`seek to produce and the threat of an injunction is employed simply for undue leverage in
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`negotiations, an injunction may not serve the public interest.” eBay v. MercExchange, L.L.C., 547
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`U.S. 388, 396-97 (2006) (Kennedy, J., concurring).2 Even though the foregoing wisdom addressed
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`the propriety of injunctions in district court under eBay, it is instructive as Section 337 also
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`considers what is in the public interest, and Justice Kennedy confirms that the public interest is
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`harmed by excluding entire products on the basis of narrow innovation.
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`The FTC has similarly noted the potential for hold-up by patent assertion entities like BHM
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`who pursue an exclusion order when they would not be permitted to obtain an injunction in district
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`court. “[T]his outcome”it notes “could generate hold-up and harm innovation and competition.”3
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`This threat is even higher because BHM’s licensing is “solely focused on extracting rents from
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`manufacturers based on marketed products.”4 As the FTC notes, the statutory public interest factors
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`“should allow consideration of whether an exclusion order based on a minor patented component of
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`a complex product can unduly harm consumers by causing hold-up, distorting competition, raising
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`2 See also Apple v. Samsung, 11-CV-01814-LHK, Order Denying Motion for Permanent
`Injunction, at 22 (Dec. 7, 2012) (“The phones at issue in this case contain a broad range of features,
`only a small fraction of which are covered by Apple’s patents. Though Apple does have some
`interest in retaining certain features as exclusive to Apple, it does not follow that entire products
`must be forever banned from the market because they incorporate, among their myriad features, a
`few narrow protected functions.”).
`3 FTC, The Evolving IP Marketplace: Aligning Patent Notice and Remedies with Competition,
`at 29-30 (2011).
`4 Id.
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`-2-
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`prices and deterring innovation.”5
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`Here, with respect to the ’873 patent, BHM accused mobile devices associated with the
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`DIAL-enabled YouTube mobile application. BHM accused only a rare use case in which the video
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`is already playing on the mobile application at the time the user selects the class of media player
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`device on which to play the video. No other use of the DIAL-enabled You-Tube mobile application
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`is accused, including use of the YouTube application when a video is not already playing on the
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`mobile device, use of the YouTube application without engaging DIAL at all, or use of the myriad
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`of other YouTube mobile application features. Further, the hundreds of critical and significant uses
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`to which the accused mobile devices are put, including emergency, health, educational, connectivity,
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`and other entertainment uses, are in no way implicated. BHM’s requested relief, however, would
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`exclude all mobile devices associated with the DIAL-enabled YouTube mobile application,
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`depriving the public of hundreds of critical non-infringing uses.
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`The Commission’s analysis should mirror the apt reasoning of the Supreme Court and
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`Federal Circuit: “We see no problem … in determining whether an injunction would disserve the
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`public interest, to consider the scope of [the]requested injunction relative to the scope of the
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`patented features and the prospect that an injunction would have the effect of depriving the public
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`of access to a large number of non-infringing features.” Apple v. Samsung, 735 F.3d 1352 (Fed. Cir.
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`2013) (addressing the “overarching concern… that entire products would be enjoined based on
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`‘limited non-core features”’). The potential scope of BHM’s requested relief unduly harms U.S.
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`consumers and competitive conditions in the U.S. economy. BHM’s effort to leverage narrow
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`patents with the threat of enjoining complex and multi-component devices critical to consumers, the
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`public health and welfare, and the U.S. economy should not be countenanced by the Commission.
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`5 Id. at 30.
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`-3-
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`Third, this is particularly true here because BHM’s allegations are directed not to the
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`physical components or core functions of the accused devices or any Respondent technology but to
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`third-party software used on the accused devices. The accused software is not developed by
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`Respondents but by non-parties and Intervenor Google, all of which are U.S. companies.
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`Brazenly, BHM relied on the very same third party software for violation as for domestic
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`industry. At the same time, BHM argues that the domestic industry articles requiring protection are
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`protected by the patents because, for example, they are associated with Google’s DIAL-enabled
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`YouTube mobile application and that the accused products threaten this industry because they are
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`associated with the very same DIAL-enabled YouTube mobile application. None of the purported
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`domestic industry activities even relate to the application or practice of the claims, thus any relief
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`does not vindicate BHM’s patent rights or protect any hard-earned domestic innovation.6 BHM’s
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`identical allegations for violation and domestic industry highlight that BHM sought nothing more
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`from this Investigation than to exert the leverage of a potential exclusion order on Respondent
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`devices. BHM is a non-practicing entity whose patent-related activities are purely revenue driven.
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`It produces no products, nor does its licensing relate to production of products practicing the
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`asserted patents. BHM’s sole claim to a domestic industry was the tenuous reliance on cursory
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`information regarding its licensee that performs no activities related to the patents. This is not the
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`industry Section 337 was intended to serve.
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`B.
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`Any Exclusion Order Should be Tailored to Reduce Harm to the Public Interest
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`For the foregoing reasons, BHM’s effort to use Section 337 not to protect its own (or any
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`other domestic industry) but to extort settlement under the threat of an exclusion order should be
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`rejected. Should the Commission decide that a remedy is appropriate, it should be properly tailored.
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`6 See Male Prophylactic Devices, Inv. No. 337-TA-546, Comm’n Op. at 42-43 (whether
`domestic activities are related to practice of the patent claims is relevant to the domestic industry
`analysis).
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`-4-
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`First, any exclusion order should include an appropriate transition period of at least six
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`months to permit carriers and retailers to find replacements, to permit redesign to avoid
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`infringement, and to clear such redesigned products through Customs or the Commission. BHM
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`has identified no non-respondent entity, including its licensees, which could meet even a portion of
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`the demand lost as a result of the exclusion of the accused mobile devices. Exclusion would,
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`therefore, directly and immediately impact competition and U.S. consumers. A transition period is
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`necessary to permit carriers, vendors, consumers, Customs, and Respondents to mitigate this impact.
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`Second, any exclusion order should be limited to the infringing functionalities as
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`recommended by the ALJ in the Recommended Determination on remedy (RD). The ALJ
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`recommended that if the Commission determines that a violation has occurred and the statutory
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`public interest factors do not require that a remedy be set aside, “the Commission should issue a
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`limited exclusion order covering specific combinations of accused products and software
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`functionality found to infringe the asserted patents.” (RD at 3.) The ALJ correctly noted that “the
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`accused products standing along cannot infringe the asserted patents; it is only when the accused
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`products are combined with certain software programs and/or functionalities that a colorable
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`allegation of infringement can be made.” The ALJ also recommended that any exclusion order
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`include a certification provision, something with which Google also agrees.
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`C.
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`Conclusion
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`Google respectfully submits that the Commission should decline to issue an exclusion order
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`altogether. Should it decide to issue an exclusion order, however, that order should at least take
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`measures to avoid detrimental effects on legitimate trade, competitive conditions, and consumers.
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`At a minimum, the Commission should incorporate a transition period of an appropriate amount,
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`include language limiting the exclusion order strictly to infringing functionalities present on the
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`devices at the time of importation, and include a certification provision.
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`-5-
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`

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`Dated: August 18, 2014
`
`/s/ Stefani E. Shanberg
`Stefani E. Shanberg
`Jennifer J. Schmidt
`Eugene Marder
`Michael J. Guo
`Wilson Sonsini Goodrich & Rosati
`Professional Corporation
`One Market Plaza
`Spear Tower, Suite 3300
`San Francisco, California 94105
`Telephone: (415) 947-2000
`E-Mail: Google-bhm@ wsgr.com
`
`Veronica S. Ascarrunz
`Shaun R. Snader
`Wilson Sonsini Goodrich & Rosati
`Professional Corporation
`1700 K Street, N.W., Fifth Floor
`Washington, D.C. 20006
`Telephone: (202) 973-8800
`E-Mail: Google-bhm@ wsgr.com
`
`Counsel for Intervenor Google Inc.
`
`-6-
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`

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`Certain Digital Media Devices, Including Televisions,
`Blu-Ray Disc Players, Home Theater Systems, Tablets and
`Mobile Phones, Components Thereof and Associated Software
`Investigation No. 337-TA-882
`
`CERTIFICATE OF SERVICE
`
`I, Stefani E. Shanberg, hereby certify that on August 18, 2014, the foregoing
`
`INTERVENOR GOOGLE INC.’S RULE 210.50(a)(4)
`SUBMISSION ON THE PUBLIC INTEREST
`
`was filed with the Secretary and copies were served upon the following parties:
`
`For the U.S. International Trade Commission:
`The Honorable Lisa Barton
`Via HAND DELIVERY (8copies)
`Acting Secretary to the Commission
`Via EDIS E-Filing
`U.S. International Trade Commission
`500 E Street, S.W.
`Washington, D.C. 20436
`The Honorable David P. Shaw
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, S.W.
`Washington, D.C. 20436
`Monisha Deka
`Investigative Attorney
`Office of Unfair Imports Investigations
`U.S. International Trade Commission
`500 E Street, S.W.
`Washington, D.C. 20436
`For Complainant Black Hills Media, LLC:
`H. Joseph Hameline
`Matthew D. Durell
`Mintz, Levin, Cohn, Ferris,
`Glovsky and Popeo, P.C.
`One Financial Center
`Boston, Massachusetts 02111
`
`Via HAND DELIVERY
`Via Electronic Mail
`patricia.chow@ usitc.gov
`
`Via Electronic Mail
`monisha.deka@ usitc.gov
`
`Via Electronic Mail
`BHM-ITC@ mintz.com
`
`- 1 -
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`

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`Certain Digital Media Devices, Including Televisions,
`Blu-Ray Disc Players, Home Theater Systems, Tablets and
`Mobile Phones, Components Thereof and Associated Software
`Investigation No. 337-TA-882
`
`Via Electronic Mail
`BHM-ITC@ mintz.com
`
`For Complainant Black Hills Media, LLC (continued):
`Howard Wisnia
`Via Electronic Mail
`BHM-ITC@ mintz.com
`James Conley
`John Giust
`Mintz, Levin, Cohn, Ferris,
`Glovsky and Popeo, P.C.
`3580 Carmel Mountain Road
`Suite 300
`San Diego, California 92130
`Peter F. Snell
`Mintz, Levin, Cohn, Ferris,
`Glovsky and Popeo, P.C.
`Chrysler Center
`666Third Avenue
`New York, New York 10017
`For Respondents Samsung Electronics Co. Ltd.; Samsung Electronics
`America, Inc.; and Samsung Telecommunications America, LLC:
`Alexander D. Chinoy
`Via Electronic Mail
`Samsung-Blackhills@ cov.com
`Covington & Burling LLP
`1201 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`For Respondents LG Electronics, Inc.; LG Electronics U.S.A., Inc.;
`and LG Electronics MobileComm U.S.A., Inc.:
`Elizabeth A. Niemeyer
`Via Electronic Mail
`LG-882@ finnegan.com
`Doris Johnson Hines
`Houtan K. Esfanani
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001
`
`- 2 -
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`

`
`Certain Digital Media Devices, Including Televisions,
`Blu-Ray Disc Players, Home Theater Systems, Tablets and
`Mobile Phones, Components Thereof and Associated Software
`Investigation No. 337-TA-882
`
`For Respondents LG Electronics, Inc.; LG Electronics U.S.A., Inc.;
`and LG Electronics MobileComm U.S.A., Inc. (continued):
`Andrew C. Sonu
`Via Electronic Mail
`LG-882@ finnegan.com
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`Two Freedom Square
`11955 Freedom Drive
`Reston, Virginia 20190
`For Respondents Toshiba Corporation and Toshiba America Information
`Systems, Inc.:
`Paul F. Brinkman
`Quinn Emanuel Urquhart &
`Sullivan LLP
`1299Pennsylvania Avenue, N.W.
`Suite 825
`Washington, D.C. 20004
`
`Via Electronic Mail
`Toshiba882@ quinnemanuel.com
`
`/s/ Stefani E. Shanberg
`Stefani E. Shanberg
`
`- 3-