On October 18, 2012, ALJ E. James Gildea issued the public version of Order No. 49 (dated October 2, 2012) denying Respondents Research In Motion Ltd. and Research In Motion Corp.’s (“RIM”) motion to strike an untimely infringement contention in Certain Devices for Mobile Data Communication (Inv. No. 337-TA-809).  On October 19, ALJ Gildea issued the public version of Order No. 56 (dated October 10, 2012) denying RIM’s motion to strike a supplemental expert report in the same investigation.

By way of background, the investigation is based on a complaint filed by Openwave Systems, Inc. (now Unwired Planet, Inc., “Unwired”) 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 September 1, 2011 post for more details.

Although recently issued, please note that, as reported in our October 18, 2012 post, ALJ Gildea subsequently granted Complainant’s unopposed motion to terminate the Investigation based on the withdrawal of its complaint.

According to Order No. 49, RIM filed a motion to strike Complainant Unwired’s “untimely contention” accusing RIM’s “Administration Interface for Wireless Service Providers” function as infringing one of the patents in suit.  RIM argued that as this contention was first made in Unwired’s initial expert report, and that this function was not accused in the complaint or in any of Unwired’s initial or supplemental responses to contention interrogatories, it is improper.  RIM further asserted that there is no justification for this late accusation, and that the new contention is prejudicial to RIM.

Unwired opposed the motion, asserting that testimony only available after the close of fact discovery was the first indication of this infringing function, and that this testimony was not cumulative of any previously disclosed documents.  Thus, Unwired asserted that the new contention was justified, and that RIM would not be prejudiced as it had an adequate opportunity to review and respond to this contention.

ALJ Gildea agreed with Unwired, noting that, although the procedural schedule and Ground Rules are “designed to prevent a ‘shifting sands’ approach” in investigations, situations may arise where a party is justified in a delayed allegation.  The ALJ also found that RIM was given a fair opportunity to respond to these new allegations in its rebuttal expert report, and did so.  Thus, RIM was not prejudiced by this addition, and the motion to strike was denied.

According to Order No. 56, Respondents RIM and Apple filed a motion to strike Complainant’s supplemental expert report regarding infringement and validity of two of the asserted patents because it violated the limit on supplemental expert reports to addressing only claim constructions that differ substantively from those proposed by any party.  However, the report in question addressed terms for which the ALJ adopted constructions identical to those proposed by Respondents and the Commission Investigative Staff (“OUII”).  OUII filed a response supporting the motion to strike. 

Complainant Unwired asserted that the report was filed based on a lack of clarity in the claim construction order and the potential different scope encompassed by the terms, but once the claim construction was confirmed, the report became moot.  Thus, Unwired says it intended to file a motion to have the report included as part of the summary determination record and as an offer of proof. 

As the ALJ’s previous order explicitly limited supplemental expert reports in the manner set forth by Respondents, ALJ Gildea granted the motion to strike, and noted that he will separately address the merit’s of Unwired’s motion to supplement the summary determination record at a later date.