On June 27, 2012, ALJ E. James Gildea issued the public version of Order No. 27 (dated May 16, 2012) denying Respondents’ motion to preclude Complainant Openwave Systems, Inc. (“Openwave”) from changing its position on the dates of conception and reduction to practice for the asserted patents in Certain Devices for Mobile Data Communication (Inv. No. 337-TA-809).
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. See our September 1, 2011 post for more details.
According to the Order, Respondents Research In Motion Ltd. and Research In Motion Corporation (collectively, “RIM”) 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). RIM asserted that Openwave did not refer to any allegedly new information and cannot rely on “belatedly gathered information already in its possession which would have been collected in a related litigation occurring in 2009 and 2010.” RIM also alleged it has devoted substantial time and effort in developing its invalidity case “in reliance upon Openwave’s original responses” and would be prejudiced by the change. Respondent Apple Inc. (“Apple”) argued that Openwave should be prevented from changing its position regarding conception and reduction to practice in interrogatories served by Apple for the same reasons set forth by RIM.
Openwave opposed the motion, arguing that its repeated efforts to contact a key inventor have been thwarted, that it has diligently searched for relevant documents, and that the few located documents support the revised date. Openwave also argued that Respondents “have not shown and cannot show any prejudice,” particularly as “the majority of the asserted prior art predates the revised conception dates.”
ALJ Gildea began by noting that information regarding priority of invention “is usually within the control of a complainant, and is likely to have been collected and reviewed…in advance of filing a complaint.” The ALJ also expressed some concerns regarding Openwave’s diligence, noting that Openwave “had similar difficulties” with inventor cooperation in the related litigation, and therefore “it is peculiar that Openwave did not act to uncover these documents at an earlier date in anticipation of [the inventor’s] reluctance to cooperate.” Regardless, the ALJ determined that Respondents are not prejudiced by the supplemental responses changing the dates of conception and reduction to practice because, in light of the timing in the procedural schedule, he concluded “this does not appear to be a situation where Openwave has withheld information to gain a tactical advantage.” 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.