On May 10, 2011, ALJ Charles E. Bullock issued the public version of Order No. 48 (dated April 26, 2011) in Certain Portable Electronic Devices and Related Software (Inv. No. 337-TA-721), granting-in-part and denying-in-part Respondent Apple, Inc.’s (“Apple”) motion to submit a supplemental Notice of Prior Art.

According to the Order, Apple moved to (1) add two prior art references with respect to two asserted patents designated as the “Power Management Patents” (i.e., U.S. Patent Nos. 6,999,800 and 7,716,505), and (2) add three prior art references with respect to two additional asserted patents designated as the “Dialer Patents” (i.e., U.S. Patent Nos. 5,541,988 and 6,320,957).

Regarding the Power Management Patents, Apple first intended to clarify on its Notice that the Siemens SX56 prior art reference listed on its original Notice was the commercial version of what Complainant HTC Corp. (“HTC”) internally called the “Wallaby,” and that Apple was not trying to introduce the “Wallaby” as a new separate prior art reference.   According to the Order, HTC opposed the request, but acknowledged that the Siemens SX56 reference was indeed disclosed on Apple’s original Notice, and ALJ Bullock therefore granted Apple’s request to clarify its original Notice regarding the “Wallaby” reference.  Apple also moved to supplement its Notice with new references referring to Intel’s Bulverde and XScale family of processors, on the grounds that on August 18, 2010 it served a subpoena on Intel, which produced documents to Apple in late October/early November 2010, which in turn was after the September 28 deadline for the Notice of Prior Art.   According to the Order, HTC opposed Apple’s request on the grounds that Apple waited nearly three months after Intel’s October 2010 production to file its motion, and Apple failed to indicate how Intel’s October and November productions were necessary for Apple to assess the viability of Intel’s prior art.  ALJ Bullock denied Apple’s request as untimely, determining it was “especially troubling that Apple waited until the fact discovery deadline to provide HTC and Staff with any notice of its intention to supplement,” and that “[i]n so doing, Apple purposely deprived HTC and Staff the ability to seek any discovery regarding this prior art reference.”

With respect to the Dialer Patents, Apple moved to add an IBM User Manual that it received from IBM on November 24, 2010, in response to a subpoena Apple served on October 18, 2010.  HTC opposed, arguing that Apple first asserted the IBM manual against the Dialer Patents on September 15, 2010, which is prior to the September 28 deadline for the Notice of Prior Art, and that Apple could have obtained the manual without waiting to subpoena it from IBM.  ALJ Bullock agreed with HTC and denied Apple’s request, finding that Apple’s delay was not “timely” under the Ground Rules, because, “[a]t the very least, Apple should have provided notice… immediately after the User Manual was produced by IBM on November 24, 2010, but Apple instead waited another three weeks to alert HTC and Staff of its intention to assert this reference as prior art and then another twelve days to file its motion.”   Apple also requested to amend its Notice by adding an additional prior art manual for the Nortel Meridian Telecenter system.  The Nortel system itself was identified on Apple’s original Notice, and the manual was identified through a third party document production that occurred on October 22, 2010.  However, ALJ Bullock rejected Apple’s request as untimely, determining that Apple failed to provide any explanation for its two month delay and that Apple again withheld a document from HTC and Staff until after discovery closed.  Apple’s final request to supplement new prior art related to a PSION Series 3 user guide that Apple received through a document production on October 6, 2010.   ALJ Bullock determined that delaying seeking leave to amend until three months after receipt of the reference “negates the good cause necessary for supplementation,” and therefore denied Apple’s request.