ALJ Gildea Rules On Motion To Strike Notice Of Prior Art And Motion For Leave To File Amended Notice Of Prior Art In Certain Electronic Devices With Graphics Data Processing Systems (337-TA-813)

On June 27, 2012, ALJ E. James Gildea issued the public version of Order No. 18 (dated May 23, 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 granted Complainants S3 Graphics Co., Ltd. and S3 Graphics, Inc.’s (collectively, “S3G”) motion to strike Respondent Apple Inc.’s (“Apple”) Notice of Prior Art and granted-in-part Apple’s motion for leave to file an Amended Notice of Prior Art.

According to the Order, S3G stated that on February 13, 2012, Apple filed a Notice of Prior Art that contained a list of over 1,800 references.  After S3G objected to this Notice, Apple served a First Amended Notice of Prior Art that still listed over 1,000 references.  S3G argued that these Notices did not perform the function of notifying S3G or the Commission Investigative Staff (“OUII”) of Apple’s prior art invalidity positions because they hid the relevant references that Apple reasonably believed it would raise at the evidentiary hearing.  S3G therefore requested that ALJ Gildea strike Apple’s Notice of Prior Art and compel Apple to file an amended notice identifying, for each asserted patent, no more than 30 patents, publications, or products that Apple reasonably intended to rely upon at the evidentiary hearing.  S3G also requested that Apple’s amended notice not identify any references or individuals that had not been listed in Apple’s First Amended Notice of Prior Art.

Apple opposed S3G’s motion to strike, arguing that the list of prior art in its original Notice of Prior Art was reasonable because Apple could not reduce the number of prior art references.  In particular, Apple argued that each of the four asserted patents relates to a different type of image processing technology in extremely crowded fields; that this investigation is unique because Apple believes that the asserted patents are invalid in view of not only printed publications, but also in light of prior art products that disappeared from the market years ago; that S3G refused to respond to discovery regarding the dates of conception and reduction to practice of the asserted patents; and that Apple’s Notice had caused no prejudice to S3G.

OUII supported S3G’s motion in part.  OUII asserted that Apple’s Notice of Prior Art had failed to provide adequate notice and that it would be unreasonable for S3G and OUII to conduct a thorough review of more than 1,000 references.  However, OUII asserted that S3G’s requested relief was unreasonable because of the complexity of the technology, the number of patents at issue, and the relatively crowded field of prior art.  Accordingly, rather than imposing a strict numerical limit on the number of references, OUII requested that the ALJ strike Apple’s Notice of Prior Art and order Apple to file a new Notice that includes only references that appeared in the previously filed Notice, only references or witness names that Apple genuinely intends to rely on at the evidentiary hearing, and only references specifically disclosed in response to requests for discovery or in Apple’s response to the Complaint and Notice of Investigation.

After the completion of briefing on S3G’s motion to strike, Apple filed a motion for leave to file an Amended Notice of Prior Art.  Specifically, Apple sought leave to file an Amended Notice that listed fewer than 500 references.  Apple requested that its motion for leave be considered in connection with S3G’s motion to strike.  Apple asserted that its Amended Notice did not include any new patents, publications, or products that had not been identified in its original Notice but did include the identities of six recently discovered individuals with knowledge regarding prior art products listed in the original Notice.  Apple argued that it had good cause to add these new witnesses because the witnesses had been identified through discovery that occurred after Apple had filed its original Notice.

S3G opposed Apple’s motion for leave, arguing that Apple’s Amended Notice was still over-inclusive and failed to satisfy the required notice functions.  S3G also asserted that the Amended Notice included language that “leaves the door open to include an infinite and undefined number of references in the future.”  S3G further argued that Apple had not shown good cause to add new information to its Notice because Apple had unjustifiably delayed seeking the information that led to the identification of the new witnesses.

After considering the arguments, ALJ Gildea determined to grant S3G’s motion to strike and grant-in-part Apple’s motion for leave to file an Amended Notice of Prior Art.  Accordingly, the ALJ struck Apple’s Notice of Prior Art.  However, the ALJ declined to adopt S3G’s request that Apple be limited to identifying 30 references per asserted patent because he found that a reasonable number of references was likely to vary with respect to each asserted patent.  With respect to Apple’s motion for leave, ALJ Gildea found that Apple had demonstrated good cause to add the new witnesses.  However, the ALJ found that Apple should be ordered to further limit its Notice of Prior Art, and noted that he expected Apple’s re-filed Amended Notice to include significantly fewer references.  While the ALJ declined to impose strict numerical limits on the number of references, he did order that Apple’s Amended Notice should (i) only include references listed in Apple’s Amended Notice attached to its motion to amend, and (ii) only include those references that Apple reasonably, and practicably, intends to rely upon at the evidentiary hearing.  The ALJ further ordered that Apple’s Amended Notice should conform to the requirements of Ground Rule 4.  Lastly, the ALJ stated that Apple would not be permitted to make any further changes to the Notice after filing.

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