29
Apr
By Eric Schweibenz
On April 27, 2010, ALJ Charles E. Bullock issued Order No. 59:  Denying Respondents’ Motion to Amend Notice of Prior Art in Certain Flash Memory Chips and Products Containing Same (Inv. No. 337-TA-664).

According to the Order, on April 2, 2010, Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung International, Inc., Samsung Semiconductor, Inc., Samsung Telecommunications America, LLC, Shanghai Lenovo Electronic Co., Ltd., Apple Inc., AsusTek Computer, Inc., Asus Computer International, Inc., Transcend Information, Inc., Transcend Information, Inc. (USA), Transcend Information Inc. (Shanghai Factory), Kingston Technology Co., Inc., Kingston Technology (Shanghai) Co., Ltd., Kingston Technology Far East Co., Kingston Technology Far East (Malaysia) Sdn. Bdh., PNY Technologies, Inc., Sony Corporation, Sony Corporation of America, Sony Ericsson Mobile Communications AB, Sony Ericsson Mobile Communications (USA) Inc., Beijing SE Putian Mobile Communications Co., Ltd., Hon Hai Precision Industry Co., Ltd., Verbatim Americas LLC, and Verbatim Corporation (collectively, the “K&E Respondents”) filed a motion seeking leave to amend their notice of prior art, by adding U.S. Patent Nos. 6,682,978 (the ‘978 patent) and 6,576,949 (the ‘949 patent) as prior art to asserted U.S. Patent No. 6,376,877.  Complainants Spansion, Inc. and Spansion LLC (collectively, “Spansion”) opposed the motion.

The K&E Respondents argued that good cause existed to grant their motion because they were not aware of Spansion’s infringement contentions until Spansion submitted an expert report from its infringement expert on January 13, 2010, after the K&E Respondents filed their original notice of prior art on December 18, 2009.  The K&E Respondents asserted that the receipt of the expert report prompted the K&E Respondents to revisit “their invalidity position and prior art search, locating additional prior art references including the ‘978 and ‘949 patents.”  The K&E Respondents also argued that ALJ Bullock’s construction of certain claim terms in Order No. 34 constitutes good cause to amend their notice of prior art, in particular, because one of ALJ Bullock’s constructions “differed from any of the constructions offered by the parties.”

ALJ Bullock determined that the K&E Respondents failed “to set forth any argument explaining how Spansion's infringement contentions in Dr. Souri's expert report differ from those previously disclosed by Spansion,” particularly those in Spansion’s Complaint dated November 17, 2008, or Spansion’s initial Markman brief filed on October 8, 2009, and rebuttal brief filed on October 23, 2009.  ALJ Bullock further determined that his claim construction “is functionally no different from the parties' proposed constructions,” and the K&E Respondents never explained “why the undersigned's construction prompted an updated prior art search.”

ALJ Bullock also determined that the K&E Respondents knew of the ‘978 and ‘949 patents as early as February 26, 2010, when the K&E Respondents disclosed those patents in a supplemental invalidity expert report, and that the K&E Respondents “did not file their present motion to amend until April 2, 2010, over a month later.”  ALJ Bullock found the “delay in filing the present motion and with only a month prior to the hearing… unjustifiable.”