By Eric Schweibenz
On June 23, 2010, ALJ Theodore R. Essex issued the public version of Order No. 12 (dated November 12, 2009) denying Respondent Emcore Corporation’s (“Emcore”) motion for reconsideration of Order No. 9, which denied Emcore’s request to supplement its Notice of Prior Art in Certain Optoelectronic Devices, Components Thereof, and Products Containing Same (Inv. No. 337-TA-669).

According to the Order, Emcore argued that its failure to include the Masahiro application in the Notice of Prior Art was “unintentional and inadvertent” because the omission stemmed from a clerical error in recording the application number for the Masahiro application, which ultimately lead to Emcore's failure to include it in its Notice of Prior Art.  Emcore further argued that since the Masahiro application was cited in the prosecution history of asserted U.S. Patent No. 5,761,229 (the ‘229 patent), there was no prejudice to the Complainants, who have been on notice of Emcore's intent since the filing of the original motion to supplement and the use of the prior art during inventor depositions.

ALJ Essex determined that in its original motion Emcore argued it could not make a timely determination as to whether it should include the Masahiro application in its Notice of Prior Art because it did not have a certified translation at that time, while in its instant motion, Emcore argued that its failure was due to a clerical error -- an incorrect application number for a different application -- which led Emcore's attorneys to deem that reference irrelevant.  ALJ Essex determined that these two arguments were irreconcilable, indicated that the failure was due to carelessness rather than inadvertency, and “significantly undercuts Emcore's credibility before the ALJ on this matter.”

ALJ Essex also determined that the circumstances presented in Emcore’s instant motion could have been presented in its original motion and were not “new circumstances” or “new evidence.”  Finally, ALJ Essex determined that Emcore’s arguments as to lack of prejudice made “Emcore’s conduct even less excusable,” because Emcore was well aware from the institution of this investigation that the Masahiro application was a prior art reference in the prosecution history of the ‘229 patent.

For the above reasons, ALJ denied Emcore’s request for reconsideration.