By Eric Schweibenz
On October 26, 2010, ALJ Charles E. Bullock issued the public version of Order No. 49 (dated October 12, 2010) in Certain Mobile Communications and Computer Devices and Components Thereof (Inv. No. 337-TA-704).  In the order, ALJ Bullock denied Respondents Nokia Corporation and Nokia, Inc.’s (collectively, “Nokia”) motion for leave to supplement their Notice of Prior Art.

According to the order, Nokia argued in its motion that it needed to supplement its Notice of Prior Art to include certain references relating to the sync() software function.  Nokia stated that after the Court issued its Markman order in the case (see our August 9, 2010 post for more details), Apple served a supplemental expert report that allegedly raised new claim construction and infringement issues.  In response to this supplemental expert report, Nokia filed a motion to strike in which it noted that if the supplemental report were allowed, it would seek leave to amend its Notice of Prior Art to include an additional prior art reference.  According to the Order, Nokia stated that after it became “aware of the need to supplement,” it worked diligently to identify relevant prior art related to the sync() function.  Further, Nokia argued that it could not have identified this prior art before filing its Notice of Prior Art, and that it would be “significantly prejudiced if it were not permitted to rely on the prior art nature of the functionality Apple accuses of satisfying a key claim limitation.”

Complainant Apple Inc. (“Apple”) opposed the motion, arguing that “Nokia has failed to offer any legitimate reason why it ‘could not have’ previously uncovered the Linux sync() references it now seeks to add to this Investigation.”  Apple contended that Nokia’s argument that it did not realize that the sync() functionality was relevant was disingenuous, and that Nokia’s delay in filing its motion to supplement was unreasonable and prejudicial to Apple given that the evidentiary hearing was only weeks away.

The Commission Investigative Staff did not file a response to Nokia’s motion.

After considering the parties’ arguments, ALJ Bullock determined that Nokia had failed to demonstrate good cause to allow supplementation of its Notice of Prior Art, and denied Nokia’s motion.  The ALJ found that Nokia’s argument that it could not have identified the prior art relating to the sync() function earlier in the investigation ignored the fact that the Notice of Prior Art was due on May 13, 2010, well before any expert reports (except for claim construction) were served.  Thus, Nokia’s original prior art list was not meant to be dependent on the position of any particular expert witness, and Nokia should not be able to supplement its Notice with new prior art simply because Apple served a supplemental expert report.  Moreover, ALJ Bullock found that even assuming that Nokia could not have identified the prior art until after the May 13, 2010 deadline, Nokia knew of at least one of the references as early as August 6, 2010 — and it had provided no explanation as to why it had waited well over a month after that date to file its motion to supplement.  Accordingly, ALJ Bullock agreed with Apple that Nokia’s delay was unreasonable, and denied Nokia’s motion.