On October 19, 2012, ALJ E. James Gildea issued the public versions of Order No. 58 and Order No. 59 (both dated October 11, 2012) in Certain Devices for Mobile Data Communication (Inv. No. 337-TA-809).

According to Order No. 58, the respondents sought to preclude complainant Unwired Planet (formerly Openwave Systems Inc.) from proffering unreliable or undisclosed testimony in support of its allegation that it satisfied the economic prong of the domestic industry requirement.  Specifically, the respondents sought to preclude testimony regarding Unwired Planet’s pre-suit license negotiations with 724 Solutions, which the respondents argued is comprised of “layers upon layers of hearsay” from Unwired Planet’s former employee, Sean MacNeil, that is uncorroborated by any documents or testimony.  The respondents also sought to preclude testimony regarding certain investments by OM 1 on the grounds that Unwired Planet never disclosed its intent to rely on OM 1 to satisfy the domestic industry requirement, did not include such information in the complaint, did not provide such information in response to discovery requests, and did not include such information in its pre-hearing brief.  Further, the respondents sought to preclude the declaration of David Cordeiro as unreliable hearsay since it was created especially for litigation, it was offered by the party that employed Mr. Cordeiro, its assertions are contradicted by other evidence from Unwired Planet, and its conclusions are not the sort of hearsay that can stand on its own.  Unwired Planet responded that (1) Mr. MacNeil’s testimony was reliable hearsay because he was included in discussions on the status of negotiations with 724 Solutions, and because his testimony was consistent with evidence of post-suit negotiations with 724 Solutions; (2) Unwired Planet stated in interrogatory responses that it would be relying on OM 1’s license and investments, respondents had the opportunity to take discovery from OM 1, and any lack of evidence regarding OM 1’s investments is the respondents’ own fault; and (3) Mr. Cordeiro’s sworn statement has inherent indicia of reliability and is wholly corroborated by evidence in the record.  The Commission Investigative Staff (“OUII”) supported the motion in part, agreeing with the respondents that the Cordeiro declaration should be stricken.

ALJ Gildea agreed with Unwired Planet that Mr. MacNeil’s testimony was reliable hearsay that was corroborated by evidence of post-suit negotiations with 724 Solutions.  The ALJ also found that Unwired Planet’s interrogatory responses gave the respondents notice that OM 1’s activities constituted at least part of Unwired Planet’s alleged domestic industry, and that the respondents were obligated to affirmatively discover or compel more information if they had concerns about the extent of Unwired Planet’s disclosure.  However, ALJ Gildea agreed with the respondents and OUII that the Cordeiro declaration should be stricken, noting that Mr. Cordeiro was not deposed and Unwired Planet had agreed that he would not be called to testify at the hearing, and thus the respondents would not have the opportunity to question him regarding the accuracy or reliability of his statements.  Accordingly, the motion was granted-in-part.

According to Order No. 59, the respondents sought to preclude Unwired Planet from asserting that the ‘409 and ‘447 patents were conceived before January 17, 1995, and to preclude Unwired Planet from relying upon the “AirNet document” as corroborating evidence of who conceived various elements in the asserted claims.  The respondents argued that Unwired Planet identified October 31, 1994 as the alleged date of conception – and the “AirNet document” as corroboration thereof – for the first time in its pre-hearing brief due to the respondents’ allegations of incorrect inventorship.  The respondents contended that the Ground Rules and the ALJ’s previous orders require Unwired Planet to be bound by the conception dates identified in its supplemental interrogatory responses.  Unwired Planet countered that it does not allege an earlier date of conception for the ‘409 and ‘447 patents, and that it only intends to show that certain elements of the asserted claims were conceived prior to January 17, 1995 in response to the respondents’ allegations in their motion for summary determination that certain elements of the asserted claims were conceived by someone other than the named inventor.  Unwired Planet further argued that the “AirNet document” was not identified in connection with conception of the ‘409 and ‘447 patents because the respondents never sought the identification of documents “merely relevant to conception generally,” and because it was not clear that the document provided corroborating evidence of the complete conception of the asserted claims.  OUII supported the motion.  ALJ Gildea denied the motion, finding that it was clear that Unwired Planet is not attempting to argue an earlier date of conception for the ‘409 and ‘447 patents in its pre-hearing brief.