By Eric Schweibenz
On March 10, 2011, ALJ Charles E. Bullock issued the public version of Order No. 64 (dated February 10, 2011) granting Respondents Nokia Corporation and Nokia Inc.’s (collectively, “Nokia”) motion to reopen the proceedings in Certain Mobile Communications and Computer Devices and Components Thereof (Inv. No. 337-TA-704).  Specifically, ALJ Bullock addressed Nokia’s motion to reopen the proceedings to permit (1) limited discovery pertaining to the production of prior art materials, (2) expert reports analyzing this prior art, and (3) a hearing to evaluate the experts’ testimony relating to this prior art.

According to the Order, Nokia argued that it sought discovery relating to Complainant Apple, Inc.’s (“Apple”) prior art NeXT and Pink systems since Apple produced little more than publicly available articles and marketing materials during the investigation.  Nokia indicated that because it lacked sufficient information about these systems, it focused its invalidity case for U.S. Patent No. 6,424,354 (“the ‘354 patent”) on other prior art references.  Nokia became aware of this prior art during a separate Apple/Nokia Investigation, Certain Personal Data and Mobile Communications Devices and Related Software (Inv. No. 337-TA-710).  After reviewing the prior art references, Nokia determined that the NeXT prior art was “indisputably relevant” and disclosed each element of at least the independent claims of the ‘354 patent.  Thus, Nokia filed its motion to reopen the proceedings.

Both Apple and the Commission Investigative Staff (“OUII”) opposed the motion.  Specifically they argued that Nokia unduly delayed in bringing the motion, that the allegedly invalidating prior art was cumulative, and that Nokia had other NeXT-related materials in its possession prior to the evidentiary hearing in the investigation and thus, could have pursued NeXT as prior art to the ‘354 patent.

ALJ Bullock determined that in order for Nokia to fully and fairly litigate the issue of validity, the proceedings should be reopened.  ALJ Bullock determined that Nokia was deprived of this ability to fully and fairly litigate because Apple failed to produce the prior art materials (including a sizeable portion of relevant source code), despite the materials being responsive to certain discovery requests.  ALJ Bullock also raised concerns about Apple locating its NeXT source code a mere three weeks after the conclusion of the evidentiary hearing in this investigation.  The ALJ also expressed doubt regarding Apple’s claims that it diligently searched for NeXT materials during the investigation.  With regard to timeliness, the ALJ determined that Nokia’s motion was not untimely, as it provided notice as early as Jan. 7, 2011 that it was contemplating moving to reopen the proceedings.  ALJ Bullock thus reopened the proceedings in the current investigation, allowing for limited discovery, limited expert reports, depositions limited to the scope of the expert reports, a hearing limited to the expert testimony, and post-hearing briefing on the new prior art.