• ALJ Charneski Denies Motion to Amend Response to Complaint in Certain Personal Data and Mobile Communications Devices (337-TA-710)
  • March 30, 2011 | Authors: John F. Presper; Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On March 22, 2011, ALJ Carl C. Charneski issued the public version of Order No. 91 (dated February 17, 2011) denying Respondents HTC Corp, HTC America, Inc., and Exedea, Inc.’s (collectively, “HTC”) motion for leave to amend their response to the complaint filed by Apple Inc. and NeXT Software Inc. (collectively, “Apple”) to assert the affirmative defense of inequitable conduct with respect to the ‘647 and ‘721 patents in Certain Personal Data and Mobile Communications Devices and Related Software (Inv. No. 337-TA-710).

    HTC’s motion with respect to the ‘647 patent was based on emails previously redacted by Apple that the ALJ ordered produced in unredacted form which, according to HTC, shows that material references were withheld from the PTO during prosecution.  First, ALJ Charneski rejected HTC’s argument as untimely, observing that HTC was in possession of one of the “critical” unredacted emails during the pendency of its first motion to amend its response to the complaint, and did not bring the document to the ALJ’s attention until after that motion was denied.  Second, the ALJ rejected HTC’s motion on the grounds that HTC did not identify exactly what portion of the withheld references were material or withheld from the PTO with deceptive intent, nor did HTC refer to a single asserted claim or limitation therein which the withheld references were relevant to, in violation of the heightened pleading standard for inequitable conduct articulated in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009).

    HTC’s motion with respect to the ‘721 patent was based on newly-produced source code and testimony regarding same.  ALJ Charneski rejected this argument as well, noting that HTC’s motion to supplement its Notice of Prior Art by adding the source code files was denied while the present motion was pending on the grounds that the source code was cumulative of public material, and that given the previous adverse ruling, HTC’s attempt to amend its response to the complaint to add an inequitable conduct defense based upon that source code must fail.