Ericsson overplayed its hand with its attempt to add 15 claims of U.S. Reissue Patent No. RE43,931 to the ongoing investigation of its ITC complaint against Samsung. In an order issued yesterday and published today, Administrative Law Judge (ALJ) David Shaw denied Ericsson's motion for the related amendment. Judge Shaw did not like the notion of 15 additional claims being "added, in lieu of one claim, to an investigation that already includes more than 130 claims". In its original complaint Ericsson had announced its intent to assert the reissue patent, but it asserted only a single claim of the original patent. But even if Judge Shaw had found that good cause exists for the proposed amendment, he agreed with Samsung that it "would be prejudiced if this already broad investigation [which is proceeding under a 15-month target date) were now expanded by the addition of 15 new claims".
Judge Shaw's order does not reach the question of whether Ericsson acted, as Samsung contended, in bad faith by originally asserting a patent that was so weak as to warrant a reissue, an allegation that Ericsson obviously rejected. The ITC staff did not oppose Ericsson's motion but, like Judge Shaw, was concerned about the potential impact of the proposed addition of so many claims on the tight schedule of this investigation.
In the alternative to an outright denial of Ericsson's motion, which is the best news he could have delivered to Samsung in this context, Judge Shaw could have granted the motion but protected Samsung against prejudice by modifying the schedule, resulting in a delay by one or two months. But ITC judges generally want the investigations over which they preside to be narrowed, not broadened.
Judge Shaw's decision in the Ericsson-Samsung case is not binding on Judge Rogers in the latest InterDigital case, where the complainant is presently seeking to assert a continuation patent of a previously-asserted patent against Samsung, Nokia, Huawei and ZTE. Even if it were binding precedent, the fact patterns are somewhat different, but just like Ericsson could have waited until the reissue patent is granted before bringing its ITC complaint against Samsung, InterDigital could have awaited the grant of its continuation patent prior to filing its January 2013 complaint against Samsung, Nokia, Huawei and ZTE. All things considered I believe Ericsson had a more reasonable basis for its rejected amendment than InterDigital has in the other investigation. Samsung has already stated its opposition to another request by InterDigital to amend its complaint.
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