On February 4, 2014, ALJ Theodore R. Essex issued the public version of Order No. 85 (dated December 23, 2013) in Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof (Inv. No 337-TA-868).

According to the Order, Complainants InterDigital Communications, Inc.; InterDigital Technology Corporation; IPR Licensing, Inc.; and InterDigital Holdings, Inc. (collectively, “InterDigital”) filed a motion to strike portions of the expert reports of Dr. James Olivier regarding assertions made relating to U.S. Patent No. 7,502,406 (the ‘406 patent). InterDigital argued that Respondents Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; and Samsung Telecommunications America, LLC’s (“Samsung”) contention interrogatories did not support assertions made in Dr. Olivier’s report relating to the ‘406 patent’s priority date. Specifically, Dr. Olivier’s report asserted that the ‘406 patent is not entitled to a priority date based on U.S. Provisional Application No. 60/000,775 (“the ‘775 provisional”) because the ‘775 provisional does not support certain claim terms. Additionally, InterDigital argued that Samsung’s non-infringement contentions did not support certain non-infringement contentions contained in Dr. Olivier’s rebuttal report.

In opposition, Samsung asserted that its contention interrogatory responses supported contentions made in Dr. Olivier’s report that the ‘775 provisional does not support certain claim terms; however, Samsung admitted that its interrogatory responses did not include one of the claim terms at issue and, therefore, withdrew its contentions regarding that term. Samsung also argued that the non-infringement contentions in Dr. Olivier’s rebuttal report are “logical implications of the argument Dr. Prucnal, InterDigital’s expert, makes in his opening report.”

ALJ Essex found that Samsung failed to disclose the alleged missing claim terms in its contentions. Specifically, the ALJ determined that “an explicit reference to the term in a different interrogatory wasn’t enough disclosure” and “uncited statements buried in a European Patent prosecution history that was mentioned in a different interrogatory response discussing a different claim term, certainly isn’t enough.” Furthermore, ALJ Essex disagreed with Samsung’s characterization of the non-infringement contentions in Dr. Olivier’s rebuttal report, finding that they were not simple rebuttals to opinions offered in InterDigital’s expert report, but were in fact new non-infringement contentions. Accordingly, the ALJ granted InterDigital’s motion to strike and precluded Samsung from offering any evidence at the hearing regarding the stricken contentions.