By Eric Schweibenz
On November 19, 2013, ALJ David P. Shaw issued Order No. 28 denying Complainant Black Hills Media, LLC’s (“BHM”) motion to exclude prior art, compel (or strike) interrogatory responses, and compel submission of an amended notice of prior art by Respondents Panasonic Corporation, Panasonic Corporation of North America, Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC, LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Electronics MobileComm U.S.A., Inc., Toshiba Corporation, and Toshiba America Information Systems, Inc. (collectively, “Respondents”), and Intervenor Google Inc. (“Google”) in Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software (Inv. No. 337-TA-882).

According to the Order, BHM argued that Respondents and Google obstructed BHM’s ability to investigate the asserted prior art by (1) improperly objecting to discovery relating to prior art that Respondents intended to use to support their invalidity contentions; (2) failing to timely produce documents or respond meaningfully to interrogatories relating to same; and (3) serving an “overly-inclusive” notice of prior art.  BHM thus requested that the ALJ order Respondents and Google to (1) withdraw reliance on any prior art they were not aware of more than 15 days prior to its production; (2) amend their joint notice of prior art and invalidity contentions to identify only those references on which they reasonably intend to rely at the hearing, limited to five references and three prior art combinations per patent; and (3) preclude any combinations not specifically described in detail in Respondents’ initial invalidity contentions.  Respondents and Google countered that they complied with every deadline regarding prior art and their invalidity positions.  The Commission Investigative Staff (“OUII”) also opposed the motion for the same reasons, adding that the volume of prior art asserted by Respondents and Google “is not disproportionate to the number of asserted claims,” which came to 137 references and 80 asserted claims.

Having reviewed the arguments of the parties, ALJ Shaw denied the motion, noting that precluding Respondents and Google from asserting prior art they were aware of more than 15 days prior to its production was “impracticable and unwarranted,” and that BHM failed to demonstrate that the arbitrary limits it requested on the volume of asserted prior art references are justified given that BHM continues to assert 70 claims from 6 patents against Respondents’ products.