By Eric Schweibenz
On December 22, 2010, ALJ Carl C. Charneski issued Order No. 69, denying Respondents HTC Corp., HTC America, Inc. and Exedia, Inc.’s (collectively, “HTC”) and Respondents Nokia Corp. and Nokia, Inc.’s (collectively, "Nokia") motion to preclude Complainants Apple Inc. and NeXT Software Inc. (collectively, “Apple”) from asserting infringement under the doctrine of equivalents in Certain Personal Data and Mobile Communications Devices and Related Software (Inv. No. 337-TA-710).

According to the Order, HTC and Nokia argued that Apple failed to articulate a sufficient basis for infringement under the doctrine of equivalents when, in response to contention interrogatories, Apple recited for each asserted claim that “each [claim] element is also met by the Accused HTC Android Products and the Accused HTC DSP Products under the doctrine of equivalents.”  Apple’s responses further stated that, “the differences, if any, between the claim elements and Accused HTC Android Products and the Accused HTC DSP Products are insubstantial, and the application performs substantially the same function in substantially the same way with substantially the same result as the claim elements.”  Respondents argued that Apple had no excuse for failing to articulate the contentions in greater detail, and that this failure prejudiced Respondents’ preparation of expert reports and the ability to fully participate in discovery.

Apple responded that it could not provide the level of detail requested by Respondents until after the exchange of proposed claim constructions and expert discovery, neither of which occurred prior to Apple’s deadline for responding to the contention interrogatories.

ALJ Charneski agreed with Apple that Respondents’ motion was premature.  First, ALJ Charneski determined that Apple put Respondents on notice that infringement under the doctrine of equivalents was an issue in the investigation.  Second, ALJ Charneski determined that the prehearing record was not yet sufficiently developed for Apple to provide the requested detail based on Apple’s own claim construction, and Apple was unable to provide greater detail based on Respondents’ claim constructions, because the exchange of proposed constructions did not take place prior to Apple’s contention responses.  ALJ Charneski further determined that several discovery disputes slowed the exchange of data and other information, making it unreasonable for Apple to be more forthcoming in responding to the contention interrogatories.  Although the Commission Investigative Staff (OUII) opposed the motion, it alternatively suggested that Apple be required to provide more detailed responses.  ALJ Charneski did not adopt OUII’s suggestion and determined it was unnecessary for Apple to comply with OUII’s suggestion to provide more detailed responses.

Finally, ALJ Charneski acknowledged that although the ITC bar appears to believe that contention interrogatories are better served earlier rather than later in a proceeding, one drawback is there is less of a chance that a Complainant will have sufficient information to provide detailed responses regarding the doctrine of equivalents.