On July 22, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 24C in Certain Electronic Devices, Including Handheld Wireless Communications Devices (Inv. Nos. 337-TA-673 and 337-TA-667).  In the Order, ALJ Rogers granted-in-part and denied-in-part a motion for leave to submit a supplemental notice of prior art filed by respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLP’s (collectively “Samsung”).

Samsung filed its motion for leave on July 9, 2009, seeking to add eight prior art references relating to complainant Saxon Innovations, LLC’s (“Saxon”) U.S. Patent No. 5,530,597 and two prior art references relating to Saxon’s U.S. Patent No. 5,608,873.  Samsung argued that Saxon had supplemented its contention interrogatory responses at a late date and that, in light of Saxon’s new contentions, Samsung had discovered the ten new prior art references.  Further, Samsung asserted that it acted promptly by providing notice of the new references to the parties, supplementing its own invalidity contention interrogatory responses, and filing the instant motion for leave.

Saxon did not oppose Samsung’s motion.  The Commission Investigative Staff (the “Staff”), however, filed a response supporting the motion as to the two references related to the ‘873 patent but opposing it as to the eight references related to the ‘597 patent.  According to the Staff, Saxon had only made substantive additions to its contention interrogatory responses relating to the ‘873 patent.  The changes to the contention interrogatory responses relating to the ‘597 patent were not substantive, and merely consisted of some minor corrections to citations.  Thus, the Staff argued that Samsung should only be allowed to file a supplemental notice of prior art containing the two references relating to the ‘873 patent.

ALJ Rogers agreed with the Staff’s position and granted Samsung’s motion only insofar as “[t]he supplemental notice of prior art shall be limited to the ‘873 patent and shall include only the two [references] identified in Samsung’s motion.”  The motion was denied as to the ‘597 patent.