On August 13, 2012, ALJ E. James Gildea issued the public version of Order No. 36 (dated July 24, 2012) denying Complainant Openwave Systems, Inc.’s (“Openwave”) motion for leave to supplement its interrogatory responses regarding the priority date of U.S. Patent No. 6,233, 608 in Certain Devices for Mobile Data Communication (Inv. No. 337-TA-809).

By way of background, the investigation is based on a complaint filed by Openwave alleging violation of Section 337 in the importation into the U.S. and sale of certain allegedly infringing devices for mobile data communication by Apple Inc. (“Apple”) and Research In Motion Ltd. and Research In Motion Corp. (collectively, “RIM”).  See our October 10, 2011 post for more details.

As reported in our July 3, 2012 post, RIM previously filed a motion to preclude Openwave from changing its position on the dates of conception and reduction to practice for the asserted patents (as done in its supplemental responses to interrogatories).  Although he noted some concerns with Openwave’s diligence, the ALJ denied the motion.  However, the ALJ also determined that Openwave “will be bound by the dates asserted in its supplemental interrogatory responses” and no more amendment will be allowed without a timely filed motion illustrating good cause.

According to the present order, Openwave alleged its motion shows good cause for seeking to supplement its interrogatory responses again.  Specifically, Openwave claimed that its supplementation would be based on a recently produced document, and that since RIM and Apple each produced the document, the Respondents cannot be surprised or prejudiced by the supplemented response. 

RIM and Apple opposed the motion, noting that Openwave relied on an earlier date of conception and provided corroborating documents to support that contention.  Furthermore, both RIM and Apple pointed out that the new date is based on one of Openwave’s own product user guides, and that it is “an incredible contention” that Openwave did not previously know about this document, “especially in light of the fact that both Apple and RIM were able to find and produce the user guide.”  Thus, Respondents argued that there was no good cause shown to grant the motion.

ALJ Gildea determined that “significant questions exist regarding the timeliness of Complainant’s motion” and that Openwave failed to explain why the public document, independently located by RIM and Apple, could not have been located earlier, “undermin[ing] Complainant’s assertions that it has good cause.”  Thus, the motion was denied.