On November 25, 2013, ALJ Dee Lord issued the public version of Order No. 21 (dated November 4, 2013) in Certain Two-Way Global Satellite Communication Devices, System and Components Thereof (Inv. No. 337-TA-854).
By way of background, ALJ Lord issued Order No. 17 denying Complainant BriarTek IP, Inc.’s (“BriarTek”) Motion for Leave to Amend Infringement Contentions because of concerns raised by Respondents DeLorme Publishing Company, Inc. and DeLorme InReach LLC (“DeLorme”) that the motion violated the protective order in the co-pending district court litigation. Order No. 17 stated that BriarTek was free to re-file its motion after obtaining leave from the district court to use confidential material produced in the district court proceeding.
According to Order No. 21, BriarTek filed a motion to renew its Motion to Amend Infringement Contentions after seeking the district court’s permission to use confidential material produced during the litigation. The district court refused to address the issue because the court determined that BriarTek’s request was asking for an advisory opinion, which the court refused to provide. Despite this refusal, ALJ Lord granted BriarTek’s Motion to Renew because BriarTek did request permission from the district court, as required by Order No. 17. Additionally, ALJ Lord noted that DeLorme did not seek sanctions in the district court.
Regarding the merits of BriarTek’s Motion to Amend Infringement Contentions, BriarTek argued that it should be permitted to amend its Infringement Contentions to add the InReach SE product as an accused product because, until recently, DeLorme led BriarTek to believe that the plastics for the InReach SE product were manufactured domestically. BriarTek asserted that recent depositions and document productions by DeLorme in the co-pending district court proceeding disclosed that the InReach SE plastics are imported into the United States. BriarTek further argued that DeLorme would not be prejudiced by the amended infringe contentions because DeLorme’s expert’s witness statements addressed the InReach SE product.
In opposition, DeLorme argued that BriarTek failed to demonstrate good cause to amend its infringement contentions because BriarTek could have asked questions regarding the source of the plastics for the InReach SE products during fact discovery. Additionally, DeLorme asserted that their expert’s witness statement disclosed the source of the InReach SE plastic.
ALJ Lord determined that DeLorme failed to produce several responsive documents, which disclosed the source of the plastics used in the InReach SE products. ALJ Lord noted that these same documents were produced in the co-pending district court proceeding. ALJ Lord held that DeLorme’s failure to produce these documents until after the close of fact discovery justified permitting BriarTek to amend its infringement contentions. ALJ Lord further determined that permitting BriarTek to amend its infringement contentions would not prejudice DeLorme because DeLorme possessed the underlying information and, therefore, was aware (or should have been aware) of the information. Accordingly, ALJ Lord granted BriarTek’s Motion to Amend Infringement Contentions.