Motorola Mobility, Inc. v. Apple, Inc.

Filing 223

REPLY to Response to Motion re 211 MOTION to Amend/Correct the Procedural Schedule to Serve Supplemental Invalidity Contentions and Accompanying Memorandum of Law in Support filed by Motorola Mobility, Inc.. (Attachments: # 1 Affidavit, # 2 Exhibit O, # 3 Exhibit P, # 4 Exhibit Q, # 5 Exhibit R)(Giuliano, Douglas)

EXHIBIT O

UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, D.C.
Before the Honorable Paul J. Luckern
Chief Administrative Law Judge
In the Matter of
CERTAIN WIRELESS COMMUNICATION
DEVICES, PORTABLE MUSIC and DATA
PROCESSING DEVICES, COMPUTERS
AND COMPONENTS THEREOF

Investigation No. 337-TA-745

APPLE’S MOTION TO SUPPLEMENT ITS NOTICE OF PRIOR ART TO ADD AN
OMITTED REFERENCE AGAINST THE ’223 PATENT
Pursuant to Commission Rule 210.15 and the Ground Rules in the above-captioned
Investigation, Respondent Apple Inc. (“Apple”) hereby moves to supplement its notice of prior
art to add a single prior art reference entitled “WBTPE: A Priority Ethernet LAN Protocol”, by
M.S. Obaidat and D.L. Donahue, published in 1993 (“Obaidat”), attached hereto as Exhibit A.
Good cause exists for Apple’s request because at the time Apple submitted its original
prior art list, the existence, and therefore the significance and materiality of Obaidat, was
unknown to Apple. Moreover, Motorola will not be prejudiced because its expert report on
invalidity is not due until May 20, and Motorola thus will have sufficient time to respond to
Apple’s contentions concerning Obaidat.
Pursuant to Ground Rule 3(i), a separate memorandum of points and authorities is
attached hereto. Pursuant to Ground Rule 3(ii), Apple contacted the Office of Unfair Import
Investigations and counsel for Motorola concerning Apple’s motion. Staff stated that it would
take a position after reviewing Apple’s motion. Motorola’s position was unavailable as of the
time of this submission.

Exhibit O
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Exhibit O
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UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, D.C.
Before the Honorable Paul J. Luckern
Chief Administrative Law Judge
In the Matter of
CERTAIN WIRELESS COMMUNICATION
DEVICES, PORTABLE MUSIC and DATA
PROCESSING DEVICES, COMPUTERS
AND COMPONENTS THEREOF

Investigation No. 337-TA-745

MEMORANDUM IN SUPPORT OF
APPLE’S MOTION TO SUPPLEMENT ITS NOTICE OF PRIOR ART TO ADD AN
OMITTED REFERENCE AGAINST THE ’223 PATENT
Respondent Apple Inc. (“Apple”) hereby moves to supplement its notice of prior art to
add a single prior art reference entitled “WBTPE: A Priority Ethernet LAN Protocol”, by M.S.
Obaidat and D.L. Donahue, published in 1993 (“Obaidat”).
Under the Procedural Schedule (Order No. 5), the identification of prior art upon which
the parties will rely at the hearing was due just under three weeks ago on April 15. Since Apple
submitted its notice of prior art, Apple continued to conduct prior art searches and analyze
potential prior art, including up through the April 22 deadline for Motorola to provide its
contention interrogatory responses concerning Apple’s invalidity defenses, and continuing
through the preparation of initial expert reports due on May 6. The Obaidat reference was
identified by prior art searchers after the April 15 deadline for Apple’s notice of prior art. Apple
subsequently and promptly worked to analyze the relevancy of the reference to the asserted
patents. Apple now moves to supplement its notice of prior art to identify a single prior art
reference, Obaidat. Apple has promptly filed this motion upon its realization of the significance
of Obaidat this week.

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Counsel for Respondent
APPLE INC.

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Exhibit A

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