UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before The Honorable Theodore R. Essex
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
`
`Investigation No. 337-TA-750
`
`RESPONDENT MOTOROLA MOBILITY, INC.'S UNOPPOSED
`MOTION FOR LEAVE TO FILE AN AMENDED NOTICE OF PRIOR ART
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`Pursuant to Commission Rule of Practice and Procedure 210.15 and 210.27(19 C.F.R.
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`§ 210.15 & 210.27) and the Ground Rules in the above-captioned Investigation, Respondent
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`Motorola Mobility, Inc. ("Motorola") hereby moves to amend its Notice of Prior Art, filed June
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`10, 2011, to add several prior art references and witnesses. Pursuant to Ground Rule 3.2,
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`Motorola has made reasonable, good faith efforts to contact and resolve the matters addressed in
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`this Motion with the parties to this InveStigation at least two business days prior to the filing of
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`this Motion. Apple has stated that it will not oppose Motorola's Proposed Amended Notice of
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`Pfior Art ("Proposed Amended Notice"), attached hereto as Exhibit A. The Office of Unfair
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`Import Investigations has also stated that it will not oppose this motion.
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`As set forth in the accompanying memorandum supporting this motion, good cause exists
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`for Motorola's Proposed Amended Notice because the additional prior art was identified through
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`documents produced and depositions taken after the filing of Motorola's Original Notice. Apple
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`will not be prejudiced by the ganting of this Motion because Apple and Staff have knowledge of
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`and were informed of this additional prior art as it was discovered and analyzed by Motorola.
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`02426.51764/4275693.4
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`

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`Dated: September 12, 2011 (cid:9)
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`Respectfully submitted,
`
`B :
`
`Charles F. Schill
`oe & Johnson LLP
`1330 Connecticut Avenue, N.W.
`Washington, DC 20036
`Phone No. (202) 429-8162
`
`Charles K. Verhoeven
`David Eiseman
`Quinn Emanuel Urquhart & Sullivan LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Phone No. (415) 875-6600
`
`Edward J. DeFranco
`Stephen T. Straub
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Phone No. (212) 849-7000
`
`David A. Nelson
`Quinn Emanuel Urquhart & Sullivan LLP
`500 West Madison Street, Ste. 2450
`Chicago, IL 60661
`Phone No. (312) 705-7400
`
`Attorneys for Respondent Motorola Mobility,
`Inc.
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`02426.51764/4275693.4 (cid:9)
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`2
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`

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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION SUBJECT TO PROTECTIVE ORDER
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before The Honorable Theodore R. Essex
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
`
`Investigation No. 337-TA-750
`
`MEMORANDUM IN SUPPORT OF RESPONDENT MOTOROLA
`MOBILITY, INC.'S UNOPPOSED MOTION FOR LEAVE TO FILE
`AN AMENDED NOTICE OF PRIOR ART
`
`I. (cid:9)
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`INTRODUCTION
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`Respondent Motorola hereby moves to amend its Notice of Prior Art to add several prior
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`art references and witnesses that were identified through documents produced and depositions
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`taken after the filing of Motorola's Notice of Prior Art. Both Apple and the OUII Staff have
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`stated that they will not oppose Motorola's motion.
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`Pursuant to the Procedural Schedule in this Investigation, Motorola filed its Notice of
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`Prior Art ("Original Notice") on June 10, 2011. Fact and expert discovery continued subsequent
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`to the submission of Motorola's Original Notice. Based on that discovery, Motorola identified
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`several additional prior art references and witnesses and promptly informed Apple and Staff of
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`its intention to rely on these materials at the Hearing. Motorola's Proposed Amended Notice of
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`Prior Art ("Proposed Amended Notice"), attached hereto as Exhibit A, contains three new prior
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`art references for U.S. Patent No. 7,663,607 ("the '607 patent") and four new references for U.S.
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`Patent No. 5,379,430 ("the '430 patent"). Motorola's Proposed Amended Notice also contains a
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`

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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION SUBJECT TO PROTECTIVE ORDER
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`small number of additional references that relate to prior art systems and publications already
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`listed on Motorola's Original Notice, as well as information relating to individuals
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`knowledgeable about prior art publications and systems already identified on the Original
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`Notice. Finally, certain edits have been made to Motorola's Original Notice for purposes of
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`clarification; these edits do not add new material.
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`II.
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`LEGAL STANDARD
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`Commission Rule 210.27(c) states, in relevant part, that "[a] party is under a duty
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`seasonably to amend a prior [discovery] response . . . if the party learns that the response is in
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`some material respect incomplete or incorrect and if the additional or corrective information has
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`not otherwise been made known to the other party during the discovery process or in writing."
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`See 19 C.F.R. § 210.27(c); see also Certain MLC Flash Memory Devices and Products
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`Containing Same, Inv. No. 337-TA-689, Order No. 13 (Dec. 15, 2009) (ALJ Essex) (granting
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`unopposed motion for leave to supplement notice of prior art); Certain Buffer Systems and
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`Components Thereof Inv. No. 337-TA-609, Order No. 13 (Jan. 30, 2008) (All Essex) (same).
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`III. MOTOROLA'S PROPOSED AMENDED NOTICE
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`A. (cid:9)
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`Proposed Amendments Related to the '607 and '828 Patents
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`Motorola's Proposed Amended Notice identifies three additional U.S. Patent references
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`for the '607 patent. Motorola's expert, Dr. Andrew Wolfe, identified these references after
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`reviewing deposition transcripts from the named inventors on the '828 and '607 patents, each of
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`which was taken after Motorola filed its Original Notice. Good cause exists for the addition of
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`these references, because the information resulting in their identification was obtained through
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`discovery that occurred after Motorola filed its Original Notice. Apple will not be prejudiced by
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`the addition of these patent references, each of which was promptly produced to Apple and
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`

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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION SUBJECT TO PROTECTIVE ORDER
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`disclosed in the Wolfe Opening Report to allow Apple's experts ample time to analyze and rebut
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`these references in their respective Rebuttal Expert Reports.
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`Also based on information learned after filing its Original Notice, Motorola has provided
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`certain clarifications and additional information relating to prior art references that were already
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`identified in Motorola's Original Notice. Specifically, Motorola obtained certified translations
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`of two Japanese references — JP 2000-16193 and JP 2002-342033A — that are prior art to the
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`'607 patent, and added these certified translations to Motorola's Amended Proposed Notice.
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`Apple will not be prejudiced because the JP 2000-16193 reference was cited in prosecution of
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`the '828 patent and appears on the face of that patent, and the JP 2002-342033A reference was
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`already specifically identified in Motorola's Original Notice. Similarly, third-party depositions
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`of Cirque and Atmel were not conducted until late July and provided Motorola with additional
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`information about prior art systems already identified in Motorola's Original Notice; based on
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`information from these depositions, Motorola has identified with specificity prior art systems
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`from Cirque and Quantum Research Group (predecessor to Atmel) in its Proposed Amended
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`Notice. Lastly, the depositions of Brian Huppi, Steve Hotelling, and Joshua Strickon, taken after
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`Motorola filed its Original Notice, indicate that these individuals — all named inventors for the
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`'607 patent — possess knowledge about capacitive sensing and multitouch prior art. Accordingly,
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`these individuals have been added to Motorola's Proposed Amended Notice.
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`B. (cid:9)
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`Proposed Amendments Related to the '430 Patent
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`Motorola's Proposed Amended Notice also contains three additional publications relating
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`to prior art systems that were already identified in Motorola's Original Notice for the '430
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`patent, including: two references relating to the ToolTalk prior art and one relating to online
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`documentation of NeXTSTEP 2.0. The two ToolTalk references relate to art that was timely
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`

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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION SUBJECT TO PROTECTIVE ORDER
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`charted in Motorola's interrogatory responses, and the NeXTSTEP 2.0 documentation clarifies
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`more general descriptions of NeXTSTEP documentation also timely disclosed by Motorola.
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`Motorola's Proposed Amended Notice also contains one additional prior art system for the '430
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`Patent, the SOS system, which was previously disclosed in Motorola's invalidity contentions.
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`Motorola's Proposed Amended Notice also clarifies that a previously identified prior art system
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`is more properly named EMACS VM, rather than just EMACS. For each additional reference,
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`Apple will not be prejudiced because each prior art system was already disclosed to Apple in
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`Motorola's Original Notice.
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`Finally, Motorola's Proposed Amended Notice contains the names of several individuals
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`who have been identified by Motorola as knowledgeable about prior art systems and publications
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`identified in its Original Notice for the '430 Patent. These individuals were identified through
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`discovery in depositions taken after Motorola filed its Original Notice. For example, Frank
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`Nguyen — the sole named inventor on the '430 Patent — revealed in deposition testimony
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`provided after Motorola filed its Original Notice his knowledge of operating system prior art.
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`Blaine Garst was Apple's corporate representative witness regarding NeXTSTEP and his
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`deposition took place after Motorola filed its Original Notice. Keith Stephens was previously
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`designated for the '607 and '828 patents when he should have been designated for the '430
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`Patent. Apple will not be prejudiced by the addition of these individuals, whose areas of
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`knowledge relate to prior art already on Motorola's Original Notice.
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`IV. CONCLUSION
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`In light of the foregoing, good cause exists for all of the additions to Motorola's Proposed
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`Amended Notice of Prior Art, since they are based on documents produced and depositions taken
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`after the filing of Motorola's Original Notice of Prior Art. Apple does not oppose the additions
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`

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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION SUBJECT TO PROTECTIVE ORDER
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`to Motorola's Proposed Amended Notice of Prior Art, and it will not be prejudiced by them for
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`the reasons set forth above.
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`Dated: September 12, 2011 (cid:9)
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`Respectfully submitted,
`
`By:
`
`charles F. Sch*
`Steptoe & Johnson LLP
`1330 Connecticut Avenue, N.W.
`Washington, DC 20036
`Phone No. (202) 429-8162
`
`Charles K. Verhoeven
`David Eiseman
`Quinn Emanuel Urquhart & Sullivan LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Phone No. (415) 875-6600
`
`Edward J. DeFranco
`Stephen T. Straub
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Phone No. (212) 849-7000
`
`David A. Nelson
`Quinn Emanuel Urquhart & Sullivan LLP
`500 West Madison Street, Ste. 2450
`Chicago, IL 60661
`Phone No. (312) 705-7400
`
`Attorneys for Respondent Motorola Mobility,
`Inc.
`
`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`Before The Honorable Theodore R. Essex
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
`
`Investigation No. 337-TA-750
`
`:
`[PROPOSED] ORDER NO. (cid:9)
`GRANTING MOTOROLA'S UNOPPOSED MOTION FOR LEAVE TO FILE AN
`AMENDED NOTICE OF PRIOR ART
`
`Having considered Respondent's Unopposed Motion For Leave To File An Amended
`
`Notice Of Prior Art, and for good cause shown, it is determined that Respondent's motion should
`
`be, and hereby is, GRANTED;
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`Respondent Motorola Mobility, Inc. may file its Amended Notice of Prior Art.
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`SO ORDERED this (cid:9)
`
`day of September, 2011.
`
`Theodore R. Essex
`Administrative Law Judge
`United States International Trade Commission
`
`

`
`Certain Mobile Devices and Related Software
`Investigation No. 337-TA- 750
`
`CERTIFICATE OF SERVICE
`
`I certify that on September 12, 2011, RESPONDENT'S MOTOROLA MOBILITY, INC.'S
`UNOPPOSED MOTION FOR LEAVE TO FILE AN AMENDED NOTICE OF PRIOR
`ART was served on behalf of Motorola Mobility, Inc. upon the following parties as indicated
`below:
`
`The Honorable James Holbein
`Secretary
`U.S. International Trade Commission
`500 E Street, SW
`Washington, DC 20436
`The Honorable Theodore Essex
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, SW
`Washington, DC 20436
`
`Lisa Kattan
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, SW
`Washington, DC 20436
`
`Mark Davis, Esq.
`Weil, Gotshall & Manges LLP
`1300 Eye Street, NW, Suite 900
`Washington, DC 20005
`
`Counsel for Complainant, Apple Inc.
`
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`apple.moto.750@weil.corn
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