By Eric Schweibenz
On December 27, 2013, ALJ Theodore R. Essex issued the public versions of Order Nos. 82-84  in Certain Wireless Devices With 3G And/Or 4G Capabilities and Components Thereof (Inv. No. 337-TA-868). 

According to Order No. 82 (dated December 16, 2013), Respondents Nokia Corporation and Nokia, Inc. (collectively, “Nokia”) filed a motion to modify the order of issues presented at the hearing such that testimony relating to U.S. Patent No. 7,941,151 (the ‘151 patent) would be offered first.  The ‘151 patent is the only patent asserted against Nokia.  Complainants InterDigital Communications, Inc., InterDigital Technology Corporation, IPR Licensing, Inc., and InterDigital Holdings, Inc. (collectively, “InterDigital”) opposed Nokia’s motion 

Nokia argued that because of its limited role at the hearing compared to the other parties the issues related to the infringement, validity, and enforceability of the ‘151 patent should be presented first.  Nokia contended that without such a modification its trial team, including its fact and expert witnesses, would need to attend the entire hearing due to not knowing when testimony related to the ‘151 patent would be presented.  InterDigital opposed the motion, contending that altering the order of examination at the hearing was contrary to the Ground Rules and norms of ITC trial procedures, was not supported by precedent, and was prejudicial to InterDigital.  InterDigital also offered to present its infringement case relating to the ‘151 patent last in its case-in-chief.  ALJ Essex denied Nokia’s motion determining, inter alia, that Nokia’s proposed procedure would substantially modify the norms of ITC trial practice.  However, ALJ Essex urged the parties to work together to adopt a proposal like the "gracious" one offered by InterDigital to conclude its case-in-chief with the '151 patent.   

According to Order No. 83, InterDigital filed a motion to strike portions of the expert report of Steven W. McLaughlin (“the McLaughlin Report”) regarding the validity of U.S. Patent No. 7,616,970 (the ‘970 patent) based on new contentions, and to preclude any evidence supporting the new contentions.  InterDigital argued that the McLaughlin Report contained new contentions regarding the invalidity of the ‘970 patent and that these contentions were not disclosed by Samsung Electronics Co. Ltd and Samsung Telecommunications America, LLC (collectively, “Samsung”) in its responses to InterDigital’s contention interrogatories.  InterDigital also noted that Samsung did not identify the ‘625 patent in its Notice of Prior Art, or attempt to add it to the Notice of Prior Art. 

Samsung opposed the motion and argued that its Notice of Prior Art disclosed both references.  Samsung noted that the Notice of Prior Art explicitly disclosed the ‘092 patent, and that while it did not explicitly list the ‘625 patent with reference to the ‘970 patent it did disclose the ‘625 patent with respect to some of the other asserted patents and incorporated by reference those disclosures into the ‘970 patent.  Samsung also argued that the ‘092 patent was not cited to invalidate the ‘970 patent, only to establish a well-known fact.  With respect to the ‘625 patent, Samsung argued that the contention did not prejudice InterDigital because it was not a new theory, InterDigital had known about the ‘625 patent since 2009, and InterDigital’s expert had addressed the patent in his report and at his deposition.

ALJ Essex granted-in-part InterDigital’s motion.  With respect to the ‘625 patent, ALJ Essex noted that while the contentions regarding the ‘625 patent may not express a new theory, they did express a new contention regarding invalidity.  Additionally, ALJ Essex stated that "there is no 'no prejudice' exception to the requirement that a party disclose its contentions in its contention interrogatories."  Therefore, there was no good cause for allowing the new contentions with respect to the ‘625 patent.  As for the ‘092 patent, however, the ALJ agreed with Samsung that the discussion of the ‘092 patent was not a new condition, but just additional background provided by the expert to explain his testimony.  Because it was not a new contention, ALJ Essex considered the prejudice to InterDigital and found none and thus allowed the disputed section of the McLaughlin Report. 

According to Order No. 84, InterDigital filed a motion to strike the expert report of Robert L. Stoll (“the Stoll Report”) in its entirety as not related or limited to the statutory public interest factor, or alternatively, in part as not related to any of Nokia’s claims or defenses in the investigation.  InterDigital argued that Mr. Stoll was identified as “an expert in the field of intellectual property and legislation and policy of patents,” and not as an expert who would testify on the statutory public interest factors.  InterDigital also noted that the Stoll Report was overwhelmingly devoted to a prosecution laches affirmative defense instead of the statutory public interest factors.  Additionally, InterDigital argued that large portions of the Stoll Report were dedicated to patents that were not asserted against Nokia.  Finally, InterDigital noted that the Stoll Report ignored the Final Initial Determination in the 613 Investigation that rejected prosecution laches as a defense for the patents at issue. 

Nokia filed an opposition to the motion, arguing that the Stoll Report did not support a prosecution laches defense, and instead supported its contention that InterDigital’s practice of keeping patent families pending for over 15 years in order to “late claim” subsequently developed technology harms the public interest.  Additionally, Nokia noted that the 613 Investigation was not a basis to strike the report because InterDigital’s practices had continued since the end of that investigation.  Nokia also contended that the Stoll Report’s discussion of patents not asserted against Nokia served to illustrate why InterDigital’s overall course of conduct is harmful to the public interest, and that InterDigital’s objections went to the weight of the testimony not the admissibility.

ALJ Essex granted InterDigital’s motion, finding that Mr. Stoll’s testimony was irrelevant to the public interest inquiry under the statutory public interest factors.  First, ALJ Essex found that, to the extent the Stoll Report discussed patents other than the ‘151 patent, the Stoll Report was irrelevant to Nokia’s claims that a remedy related to the ‘151 patent was not in the public interest.  Second, ALJ Essex found that the testimony relating to the ‘151 patent was merely repackaging a prosecution laches defense that had already been rejected in the 613 Investigation.  Finally, ALJ Essex found that the Stoll Report lacked any substantive analysis linking InterDigital’s conduct to any of the four public interest factors or Commission precedent.  Therefore, ALJ Essex granted InterDigital’s motion to strike the Stoll Report.