On April 16, 2012, ALJ E. James Gildea issued Order No. 56 granting Complainants Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC’s (collectively, “Samsung”) motion to strike Respondent Apple Inc.’s (“Apple”) notice of prior art 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 March 12, 2012, ALJ Gildea issued Order No. 40 granting-in-part Samsung’s motion to strike Apple’s notice of prior art as failing to (i) comply with Ground Rule 4, and (ii) provide Samsung and the Commission Investigative Staff (“OUII”) notice as to the prior art on which Apple intended to rely in the investigation.  ALJ Gildea ultimately permitted  Apple to re-file its notice subject to the following:  (1) only references that appeared in the original prior art notice may be included; (2) only references that were specifically disclosed in Apple’s discovery responses and its response to the complaint may be included; (3) only references or witness names that Apple intends to rely on at the hearing may be included; and (4) all entries must conform to Ground Rule 4.  See March 21, 2012 post for more details.

After Apple re-filed its notice of prior art, Samsung filed a second motion to strike arguing that Apple’s amended notice violated the criteria set forth in Order No. 40.  OUII responded and argued that while Apple’s “behavior has not been exemplary,” it should be allowed to rely on a limited subset of prior art.  In the Order, ALJ Gildea determined that Apple’s amended notice failed to meet the requirements of Order No. 40, prejudiced Samsung and OUII, and should be stricken in its entirety.  Lastly, ALJ Gildea indicated that he “carefully considered [OUII’s] suggestion, but note[d] that this was essentially the relief that was provided in Order No. 40, which [Apple] disregarded.”