By Eric Schweibenz
On January 4, 2010, ALJ Robert K. Rogers, Jr. issued Order No. 26 in Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire (Inv. No. 337-TA-686).  In the Order, ALJ Rogers denied Complainants The Lincoln Electric Company and Lincoln Global, Inc.’s (collectively, “Lincoln”) motion to preclude Respondents The ESAB Group, Inc. (“ESAB”), and Sidergas SpA (“Sidergas”) (collectively, “Respondents”) from relying on any prior art that has not been produced, or alternatively, to compel Respondents to produce prior art.

In support of the motion, Lincoln asserted that Respondents “failed to timely produce all relevant documents related to the prior art that [Respondents] seek to rely on in this investigation.”  In particular, Lincoln noted that Sidergas failed to make its prior art bulk welding wire containers, that are available for inspection in Italy, also available for inspection in Washington, D.C., and that ESAB failed to timely provide discovery responses on December 7, 2009.

Both Sidergas and ESAB filed responses opposing Lincoln’s motion.  Sidergas asserted that it fully produced all discovery regarding prior art and raised objections to producing publicly available prior art patents.  ESAB asserted that “Lincoln’s motion to preclude is procedurally deficient because discovery sanctions can only be awarded based on failure to comply with an order to produce discovery.”  ESAB also asserted that Lincoln’s motion was moot, because ESAB produced the requested documents on December 11, 2009.  Further, both Sidergas and ESAB asserted that Lincoln’s motion should be denied as violating Ground Rule 4.1.1., which provides that “[n]o motion to compel discovery may be filed unless the subject matter of the motion has first been brought to the Discovery Committee and the Committee has reached an impasse in resolving the matter.”  The Commission Investigative Staff (“Staff”), also opposed Lincoln’s motion to preclude on the procedural grounds set forth by ESAB, but otherwise stated that “to the extent that [Respondents] have not yet produced the prior art upon which they intend to rely, they should be compelled to produce such information.”

According to the Order, ALJ Rogers denied Lincoln’s motion to preclude on the ground that it was procedurally deficient pursuant to Commission Rule 210.33(b), since no order compelling Respondents to produce prior art discovery had been issued.  ALJ Rogers also denied Lincoln’s motion to compel on the grounds that it violated Ground Rule 4.1.1.  In denying Lincoln’s motion, ALJ Rogers found that both Respondents’ representations and Lincoln’s own description concerning the Discovery Committee meeting showed a lack of “(1) any mention of whether Lincoln raised the issues addressed in its motion; (2) facts demonstrating that Lincoln engaged in intensive good faith efforts to resolve the dispute; or (3) a showing that an impasse was declared in resolving the matter.”  ALJ Rogers also found that the “facts supported the assertion that Lincoln did not make intensive good faith efforts to resolve the dispute before filing its motion as required by Ground Rule 3.5.”