On July 23, 2012, ALJ E. James Gildea issued the public version of Order No. 20 (dated June 29, 2012) in Certain Electronic Devices with Graphics Data Processing Systems, Components Thereof, and Associated Software (Inv. No. 337-TA-813).  In the Order, ALJ Gildea denied Complainants S3 Graphics Co., Ltd. and S3 Graphics, Inc.’s (collectively, “S3G”) motion to strike certain of Respondent Apple Inc.’s (“Apple”) supplemental responses to S3G’s First Set of Interrogatories and to compel Apple to serve revised responses to those interrogatories.

According to the Order, S3G asserted that Apple’s supplemental responses were 515 pages long and included an extremely large number of prior art combinations.  S3G argued that these responses failed to provide notice of which combinations Apple intended to rely upon at the evidentiary hearing.  S3G further argued that Apple’s claim chart citations failed to actually respond to S3G’s interrogatories, and that Apple’s tactics had prejudiced S3G.

Apple opposed the motion, arguing that most of the issues raised in S3G’s motion were moot because Apple had filed a First Amended Notice of Prior Art on June 1, 2012 pursuant to Order No. 18 and then served supplemental responses to the contention interrogatories at issue in S3G’s motion on June 4, 2012.  See our June 29, 2012 post for more details on Order No. 18.  Apple asserted that its supplemental responses had substantially reduced the number of combinations of references that Apple intended to rely upon to show that the asserted claims were obvious.

After considering the arguments, ALJ Gildea determined to deny S3G’s motion.  The ALJ found that Apple’s June 4, 2012 supplemental responses had superseded the responses at issue in S3G’s motion and that it was not readily apparent whether S3G’s complaints regarding Apple’s original responses still applied.  ALJ Gildea therefore denied the motion and questioned why S3G had not supplemented or withdrawn its motion “in order to conserve public and private resources.”  However, the ALJ stated that to the extent that S3G has objections to Apple’s June 4, 2012 supplemental responses, it is not precluded from filing a supported motion regarding the substance of those responses.  The ALJ noted, though, that he “has routinely declined to set numerical limits on the number of prior art references listed by a respondent because a reasonable number of references is likely to vary with respect to each asserted patent.”