In a suit filed by SightSound Technologies, a General Electric affiliate, alleging patent infringement by Apple, a federal judge in the Western District of Pennsylvania clamped down on what evidence Apple would be able to add to support its noninfringement and invalidity defenses after the deadline for entering exhibits passed.
U.S. District Judge Donetta Ambrose of the Western District of Pennsylvania let some of Apple’s evidence trickle in after the deadline, but enforced the deadline on exhibits that the computer giant tried to add months after it had passed.
Referring to several examples that dated from 1988 and earlier that Apple had asked to include four months after the deadline had passed, Ambrose said, "I do not doubt that defendant proffered these items soon after they came to light, but there remains no explanation for the delay in unearthing the items."
"While I appreciate the obstacles universally imposed by the combination of time limits and large quantities of information, those obstacles, without more, cannot vindicate serial, tardy identifications of prior art," Ambrose said in SightSound Technologies v. Apple.
SightSound filed the patent-infringement suit in the fall of 2011, citing patents that it holds for digital video and audio systems that sound similar to Apple’s iTunes.
The 1993 patent describes the invention as "providing a new and improved methodology/system of electronic sales, distribution, storage, manipulation, retrieval, playback, and copyright protection of digital audio music."
The late-coming addition sought by Apple included an article written by Frank Zappa, an article by Perry Leopold, a book called Start Me Up!, two articles from Billboard magazine, and a system called CompuSonics, according to the opinion. All of them are from 1988 or earlier.
Ambrose decided to enforce the deadline articulated in the Local Patent Rules that would bar their entry, in part, to maintain the integrity of clearly stated deadlines.
"A party might well come across decades-old publications at any point during a pending patent suit," she said. "Honestly happening across a piece of information that has been publicly available for years, if that happenstance occurs well past a court-scheduled deadline, however, does not inevitably support use of that information at trial. Otherwise, parties would be free to peruse volumes of potential prior art at their leisure, and amend required disclosures at their leisure; judicially and rule-imposed schedules would become meaningless."
Ambrose quoted from an opinion issued by her court last year in Copper Innovations Group v. Nintendo, concluding, "This result is plainly undesirable, as ‘the liberalization of local patent rules was not intended to displace the very purposes for having such rules.’"
However, Ambrose was lenient with respect to amendments Apple asked to make shortly after the deadline had passed. The company had explained that it had inadvertently omitted the items, according to the opinion, and Ambrose was convinced that Apple had acted in good faith.
"Although the case has reached a relatively late stage, we are not at the point that renders any and all amendments untenable," she said, allowing them to proceed.
The issue that SightSound raised regarding Apple’s late disclosure of witnesses, Ambrose referred to the special master assigned to handle discovery matters, David R. Cohen of Reed Smith.
Last September, Apple had objected to Cohen’s continued role in the case after it came to light that his firm represents General Electric in completely unrelated matters.
However, Ambrose held that Cohen need not be removed from the case because the federal rule governing disqualification doesn’t require it for a relationship as tenuous as Cohen’s to GE. Reed Smith hasn’t represented any party in the current matter and Cohen hasn’t worked on any of the firm’s matters that involve GE, Ambrose said in her opinion last fall.
Also, she noted, the firm has instituted an "ethical screen" between anyone working on this case and anyone working on matters for GE.
Referring to Cohen’s contention that he could continue unbiased in the case, Ambrose said, "I, too, am confident that Mr. Cohen’s performance in his limited, non-factfinding role as e-discovery special master will not be affected by the newly disclosed information."
Neither Nicholas Bell of Meyer, Unkovic & Scott in Pittsburgh, who is representing SightSound, nor Danny Cerrone of Thorp Reed & Armstrong in Pittsburgh, who is representing Apple, could be reached for comment.
Apple has been embroiled in several patent disputes recently, including the high-profile case it brought against rival tablet-maker Samsung and a lesser-watched suit over technology it used in its FaceTime system that ended with a $368 million loss for Apple.
(Copies of the seven-page opinion in SightSound Technologies v. Apple, PICS No. 13-0864, are available from The Legal Intelligencer. Please call the Pennsylvania Instant Case Service at 800-276-PICS to order or for information.) •