On October 17, 2011, ALJ E. James Gildea issued the public version of Order No. 10 (dated June 10, 2010) in Certain Wireless Communications System Server Software, Wireless Handheld Devices and Battery Packs (Inv. No. 337-TA-706) granting in part Complainant Motorola, Inc.’s (“Motorola”) motion to strike 79 prior art references in Respondents Research in Motion, Ltd. and Research in Motion Corp.’s (“RIM”) Notice of Prior Art and compel RIM to submit an amended Notice narrowing the number of identified references to those upon which RIM “realistically” expects to rely.

According to the Order, Motorola argued that RIM’s Notice of Prior Art contained at least 79 references “that are so ambiguously described that Motorola cannot identify what they are” (e.g., identifying the company Apple, Inc. as a prior art reference), and that Motorola was prejudiced by RIM’s identification of over 2,800 prior art references because any significant references are buried in an “ocean” of prior art, thus frustrating the purpose of the Notice.  RIM countered that the procedural schedule provided only one month to search for prior art and that it was therefore not in a position to know what it is likely to rely upon at the hearing, and also that Motorola is to blame for failing to narrow the investigation by withdrawing some of its asserted patent claims.  The Commission Investigative Staff supported the motion, arguing that the 79 references identified by Motorola as deficient should be stricken and that RIM should be required to file a revised, condensed Notice.

After reviewing the parties’ submissions, ALJ Gildea rejected RIM’s argument that it had only one month to locate potential prior art, noting that RIM was on notice since the complaint was filed of exactly which patent claims were asserted and did not move to modify the procedural schedule or seek an extension to file its Notice, which the ALJ described as “worthless.”  However, ALJ Gildea observed that some of the prejudice to Motorola may have been attributable to Motorola’s failure to fully comply with Ground Rule 2.7 and the fact that the ALJ is not always able to review every motion within days of its filing.  Thus, ALJ Gildea granted Motorola’s motion to strike the 79 prior art references and ordered RIM to file an amended Notice identifying only those prior art references on which it reasonably intends to rely at the hearing (which the ALJ indicated “should fall well short of the more than 2,800 references currently identified and may not include any references that do not appear in the current Notice”).