12
Nov
By Eric Schweibenz
On November 9, 2010, ALJ Carl C. Charneski issued Order No. 40 granting-in-part Respondents High Tech Computer Corp., HTC America, Inc. and Exedia, Inc.’s (collectively, “HTC”) motion for leave to file a Supplemental Notice of Prior Art in Certain Personal Data and Mobile Communications Devices and Related Software (Inv. No. 337-TA-710).

According to the order, HTC sought to supplement its initial Notice of Prior Art with four categories of prior art: “(1) prior art references . . . that were previously identified in the Initial Notice of Prior Art for which additional documentation and/or source code were obtained following the initial Notice; (2) prior art references . . . that were identified through other sources after the initial Notice of Prior Art; (3) prior art references . . . that were identified and/or produced by third parties following the initial Notice of Prior Art; and (4) prior art references . . . ‘that were otherwise identified and determined to be material based on HTC’s diligent investigation following the initial Notice of Prior Art.’”  Complainant Apple Inc. and the Commission Investigative Staff opposed the motion.

In considering HTC’s motion, ALJ Charneski noted that HTC “offered only a very general explanation to support its request to supplement.”  Thus, ALJ Charneski considered only those prior art references that HTC’s specifically addressed in its reply.  In granting-in-part HTC’s motion, ALJ Charneski found that HTC had established good cause to supplement its Notice of Prior Art as to materials that were received pursuant to third party subpoenas issued before the due date for submitting its Notice of Prior Art, and portions of materials unintentionally omitted from the original Notice of Prior Art.  In contrast, ALJ Charneski did not find that HTC had demonstrated good cause to supplement its notice for materials that were received pursuant to cooperative third party discovery, but apparently were found only after HTC’s alleged “continuous and diligent” search for prior art, or for materials included in HTC’s claim-by-claim invalidity chart served after the Notice of Prior Art due date.  Regarding the latter, ALJ Charneski noted that “HTC has offered no explanation as to why these references could not have been [timely] cited.”