On April 6, 2009, ALJ Carl C. Charneski issued Order No. 63 granting a motion to compel filed by Complainants Agere Systems Inc. and LSI Corporation (“Agere”) related to the identification of prior art.

Agere moved to compel the respondents to comply with the procedural schedule (Order No. 10) and amend their Joint Notice of Prior Art (“Notice”) to identify “the prior art upon which Respondents realistically intend to rely.”  According to the Order, Respondents had identified 478 prior art references in the Notice.  The Staff supported Agere’s motion to compel.

Respondents argued that the motion was mooted by soon-to-be-filed expert reports which would provide detailed invalidity positions, and that Respondents would suffer prejudice if forced to limit their Notice to a smaller set of references.

ALJ Charneski granted the motion and ordered Respondents to comply no later than April 9 (only three days after the order was issued).