On May 15, 2012, ALJ E. James Gildea issued Order No. 68 granting-in-part Respondent Apple Inc.’s (“Apple”) motion to amend its Notice of Prior Art and ordering Apple to revise its Rule 7.1 claim chart in Certain Electronic Devices, Including Wireless Communication Devices, Portable Music And Data Processing Devices, And Tablet Computers (Inv. No. 337-TA-794).
By way of background, on October 14, 2011, Complainants Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC (collectively, “Samsung”) filed a motion to strike Apple’s 380-page Notice of Prior Art “on the basis that it failed to comply with Ground Rule 4 and failed to provide Complainants and the Commission Investigative Staff [‘OUII’] with effective notice as to the prior art upon which Respondent intends to rely in this investigation.” Samsung’s motion was granted and Apple filed an amended Notice of Prior Art on March 19, 2012 (“Amended Notice”). However, because Apple’s Amended Notice did not meet the requirements set forth by the ALJ in Order No. 40, it was similarly struck from the record. See our April 30, 2012 post for more details. On April 18, 2012, Apple sought leave to file a corrected Notice of Prior Art (“Corrected Notice”), arguing that the Corrected Notice complies with the requirements of Order No. 40 and that Apple’s due process rights would be violated if the ALJ were to bar Apple from presenting its invalidity defenses.
Samsung opposed Apple’s motion, arguing that Apple failed to show compelling circumstances sufficient to justify the amendment, that Samsung has been “prejudiced by Respondent’s decision ‘to grant itself a greater than six-month extension to put the parties and [OUII] on notice of Apple’s prior art,’” and that Apple’s Corrected Notice still violates Order No. 40. OUII filed a response in support of Apple’s motion, arguing that although Apple’s behavior “has not been exemplary,” Apple has “belatedly complied with Order No. 40 and should be permitted to rely on its Corrected Notice.”
After considering the arguments, ALJ Gildea determined to grant-in-part Apple’s motion. At the outset, the ALJ noted that Apple’s due process rights would not be violated if its motion was denied. Specifically, the ALJ noted that “[i]t is not uncommon for administrative law judges to strike documents or deny motions for failing to follow the ground rules or an order” particularly in situations where, as here, the party was “repeatedly warned and repeatedly acted in disregard of the warnings … that it was in danger of having its Prior Art Notice stricken… .” Next, the ALJ found Apple’s Corrected Notice to “essentially meet the requirements set forth in Order 40, but for four contested entries.” As to the first entry, ALJ Gildea denied Apple’s request to include in its Corrected Notice specific prior art references from a previously cited general document collection because the ALJ determined that this would be tantamount to adding new prior art entries without sufficient justification. As to the remaining categories of contested entries, the ALJ determined that each concerned non-substantive matters of form and, thus, did not provide a basis for denying Apple’s motion.
Lastly, Apple was ordered to provide ALJ Gildea with a revised Rule 7.1 claim chart that “realistically reflect[s]” the invalidity contentions set forth in Apple’s Pre-Hearing Brief and provides a separate key to clearly identify the cited references.