On April 24, 2012, ALJ Thomas B. Pender issued Order No. 34 assessing sanctions against Respondent Apple, Inc. (“Apple”) in Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers, and Components Thereof (337-TA-745).

By way of background, the investigation is based on a complaint filed by Motorola Mobility, Inc. (“MMI”) alleging violation of Section 337 by Apple in the importation into the U.S. and sale of certain wireless communications devices, portable music and data processing devices, computers, and components thereof that infringe U.S. Patent Nos. 6,272,333, 6,246,862, 6,246,697, 5,359,317, 5,636,223, and 7,751,826.  See our October 8, 2010 post for more details.

On December 15, 2011, ALJ Pender issued Order No. 32 ordering Apple to show cause why it should not be sanctioned pursuant to 19 C.F.R. § 210.4 for statements made during its Opening Statement and [mis]representations made in its Pre-Trial Brief because “it was obvious…that matters had been represented to [him] that were not true.”  The issue involves construction of the claimed phrase “maintain an application registry comprising a list of all software applications that are currently accessible to the subscriber unit” and whether or not the accused Apple products infringe through Apple’s App Store.  Specifically, ALJ Pender found that Apple’s counsel’s opening statement “misrepresented the evidence [Apple] proffered and contradicted its own Pre-Hearing Brief” in a manner so apparent that the ALJ “immediately recognized what had occurred.”

In assessing whether sanctions were warranted, ALJ Pender had to determine whether counsel’s mistake was “excusable or even reasonable.”  Finding it to be neither, the ALJ noted the “very important policies involved in insisting that Pre-Hearing Briefs be accurate” and that it is “imperative that counsel be held accountable for making accurate opening statements to the presiding judge.”  ALJ Pender disagreed with MMI’s suggested remedy of deeming infringement admitted for the claimed phrase, pointing out that “thanks to [MMI’s] adroit questioning of Dr. Noble and Dr. Noble’s honesty, the matter was clarified and harm to [MMI] was limited.  However, the ALJ did agree that MMI had to expend additional effort and expense because of Apple’s failure to correct its misrepresentation and fix its position immediately.  Thus, ALJ Pender ordered Apple to reimburse MMI for the effort and reasonable costs spent in responding to Apple’s erroneous position and in responding to Order No. 32.