By Eric Schweibenz
On October 28, 2010, ALJ Charles E. Bullock issued Order No. 60, and on October 29, 2010, issued the public versions of Order No. 54 (dated October 19, 2010) and Order No. 55 (dated October 21, 2010) in Certain Mobile Communications and Computer Devices and Components Thereof (Inv. No. 337-TA-704).

In Order No. 54, ALJ Bullock granted-in-part and denied-in-part Respondents Nokia Corporation and Nokia Inc.’s (collectively, “Nokia”) motion in limine seeking to preclude Complainant Apple Inc. (“Apple”) from relying on its purported licensing activities to establish the domestic industry requirement.  In support of the motion, Nokia asserted that Apple should be precluded from submitting evidence of its purported licensing activities because “Apple has neither pled a licensing-based domestic industry nor sought leave to amend its Complaint to do so.”  Further, Nokia asserted that Apple should be precluded from offering any evidence not timely disclosed.  Alternatively, Nokia moved to compel Apple “to update its domestic industry contentions and provide complete responses to Nokia’s request for 30(b)(6) deposition testimony and documents related to its alleged licensing activities.”  In opposition, Apple asserted that (i) it did allege a domestic industry requirement in its Complaint, (ii) “it unambiguously disclosed its intention to rely on licensing activities in response to Nokia’s interrogatories,” and (iii) “Nokia has taken substantial discovery on these same contentions.”  Regarding Nokia’s motion to compel, Apple asserted that (i) Nokia failed to show good cause, (ii) Nokia “had multiple opportunities to take discovery on Apple’s exploitation of the patents at issue”, (iii) Apple “produced all the documents on which it intends to rely for its domestic industry theory”, and (iv) Nokia seeks documents allegedly “protected from discovery.”  The Commission Investigative Staff (“OUII”) filed a response to the motion.  In particular, OUII asserted that because Nokia had notice of Apple’s intent, Apple “should be allowed to raise a licensing-based domestic industry” but “should not be allowed to rely on evidence it failed to timely disclose.”  In granting-in-part and denying-in-part the motion in limine, ALJ Bullock found that Nokia had “notice of Apple’s intention to rely on its licensing activities as a basis for establishing domestic industry” and that Apple “proffer[ed] no explanation as to why [it] could not and did not [timely] supplement its discovery responses.”  Accordingly, ALJ Bullock ordered that “Apple is hereby limited to the licenses and licensing activities specifically disclosed in the Complaint and in its [timely served interrogatory responses].”

In Order No. 55, ALJ Bullock granted-in-part and denied-in-part Apple’s motion to strike certain of Nokia’s supplemental expert reports.  In support of the motion, Apple asserted, inter alia, that these reports (i) “extend far beyond anything permitted by Order Nos. 30 and 38”, (ii) were untimely and improper sur-rebuttal reports as not being related to Apple’s August 4th supplemental reports, and (iii) raised new arguments regarding infringement, validity and obviousness combinations.  In opposition, Nokia “assert[ed] that each of its supplemental expert reports [were] responsive to Apple’s August 4th supplemental reports and Order No. 30.”  Further, Nokia asserted that its experts were required to revisit issues in their invalidity reports due to “Apple’s broad changes to its claim scope positions” and “that its supplementation will not prejudice Apple since they only add minor changes and Apple has had the opportunity to depose Nokia’s experts on these opinions.”  OUII filed a response in support of Apple’s motion as to all but one of the reports.  As to this one report, OUII asserted that Apple failed to comply with Ground Rule 3.2 which requires a meet and confer at least two days prior to filing a motion.  In denying-in-part and granting-in-part Apple’s motion, ALJ Bullock found that the reports at issue “do not appear to respond to Apple’s August 4th supplemental reports nor do they appear to relate to any new discovery obtained pursuant to Order Nos. 29, 30, and 32.”  ALJ Bullock also found that Nokia’s reports were untimely.  In this regard, ALJ Bullock noted that “[i]f Nokia wanted to ‘clarify’ or supplement its validity arguments, it should have done so on August 4th.”  Further, ALJ Bullock noted that Nokia mistakenly decided to “forgo serving widespread supplemental expert reports on August 4, 2010 . . . in favor of serving more limited supplemental expert reports and filing a motion to strike.”  Accordingly, ALJ Bullock granted Apple’s motion to strike as to all the reports at issue, except for one, finding that Apple failed to comply with Ground Rule 3.2.

In Order No. 60, ALJ Bullock provided the parties guidance as to his policy regarding to Ground Rule 10.5.6.  In particular, ALJ Bullock advised that “[i]f the subject matter of the expert witness’s testimony is mentioned in that witness’s expert report, then this is deemed to be sufficient and thus, in compliance with Ground Rule 10.5.6.”  ALJ Bullock further noted that this policy applies to all pending motions involving Ground Rule 10.5.6.