Tuesday, May 8, 2012

ITC judge throws out 3,000+ pages of attachments filed by Apple to challenge Samsung's patents

While the ITC is slow compared to German courts, it adjudicates patent infringement complaints faster than most U.S. district courts, and in order to be able to do so, it has strict timelines and page limits. Not only does it have those limits but its Administrative Law Judges (ALJs) tend to enforce them rigidly. For example, ALJ Essex ruled against some of Microsoft's allegations against Motorola (even such infringement contentions that Motorola didn't even dispute) only because he felt that Microsoft's lawyers were somehow trying to circumvent the trade agency's page limits.

Given the enormous impact of the only remedy the ITC can impose, which is an import ban (possibly coupled with a cease-and-desist order), those page limits can ultimately result in decisions that defendants could have avoided if only they had had more of an opportunity to make their case. The consequences of an import ban are particularly grave when standard-essential patents are in play. Samsung is asserting such patents against Apple, and I've repeatedly said that I believe the ITC should make it a general rule to deny import bans based on standard-essential patents.

In an effort to challenge the validity of Samsung's patents with maximum firepower, Apple filed, according to an order by ALJ E. James Gildea, "over 3,000 pages of attachments with its limitation by limitation [in this context, a "limitation" is an element of a patent claim] invalidity analyses", which the judge deems "unacceptable" because such analysis "belongs in the pre-hearing brief" itself. The ITC has a rule that explicitly says the page limit of a pre-hearing brief must not be bypassed with attachments.

Therefore, the judge decided to throw out these attachments (imagine how much money Apple probably spent on the creation of that material), saying that "[Apple's] Rule 7.1 submission, including all attachments[,], should be stricken". He ordered Apple to submit by close of buiness today (Tuesday) a one-page table of its invalidity contentions of the kind shown in the following sample:

You can click on that image to enlarge it. The bold-face, underscored headline of each column lists the names of one or more prior art references (typically the name of an inventor or author, and if a patent claim is allegedly obvious over a combination of two or more prior art references, all of those names are listed). Below the names of those prior art references, a defendant then lists the asserted patent claims against which it holds the relevant prior art reference (or combination of prior art references).

That sample table is actually contained in the ITC rules, and ALJ Gildea notes that "[o]ther parties in other investigations have not had any trouble understanding the requirements", and that Samsung also submitted a one-page chart that it was required to submit in accordance with the same rule. Under that rule, complainants have to list the accused products and product families, as well as the representative products based on which they produced their infringement claim charts, for each of the asserted patent claims.

Apple's efforts to prove Samsung's asserted patents may still succeed, but it will have to focus on its strongest points because the ITC is unwilling to accept and evaluate thousands of pages that attack Samsung's patent claims element by element.

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