On March 2, 2012, ALJ Robert K. Rogers, Jr. issued Order No. 36 denying Respondents SKC, Inc. and SKC Kolon PI, Inc.’s (collectively, “SKC”) motion for sanctions against Complainant Kaneka Corporation (“Kaneka”) in Certain Polyimide Films, Products Containing Same, and Related Methods (Inv. No. 337-TA-772).
According to the Order, SKC requested sanctions based on Kaneka’s failure to produce documents on or before February 8, 2012 that SKC sought in order to prove a prior use invalidity defense as required by Order No. 29. Kaneka produced over 60,000 pages of documents on February 13, 2012, and according to SKC, Kaneka failed to produce technical standards or operating procedures from its U.S. subsidiary’s manufacturing processes before the critical date for U.S. Patent No. 6,264,866 (the ‘866 patent). SKC sought an order prohibiting Kaneka from opposing SKC’s invalidity defense against at least the ‘866 patent, or alternatively, the imposition of adverse inferences that the subsidiary’s manufacturing processes employed more than one year before the priority date of the asserted patents (1) included at least two temperature increases in the belt dryer, and (2) included adjusting the imidation ratio, organic solvent and/or volatile constituent during the production of an adhesive polyimide film. Kaneka countered that the deadline to comply with Order No. 29 was February 9 and that it received a two-day extension of time from SKC, meaning that the February 13 document production was timely. Further, Kaneka asserted that its subsidiary conducted a diligent search and found no earlier documents pre-dating the filing of the ‘866 patent (and offered a signed declaration to that effect), and that SKC did not demonstrate how it is prejudiced by Kaneka’s alleged violation in any event.
ALJ Rogers determined that Kaneka’s document production was untimely even though SKC informed Kaneka that it would not oppose a motion for an additional two days to comply with Order No. 29 because Kaneka never in fact filed such a motion, and rejected Kaneka’s argument that Ground Rules 4.2 (parties may agree to certain discovery procedures by stipulation) and 13 (counsel must attempt to resolve procedural problems relating to discovery) allowed the parties to agree to an extension of the Order No. 29 deadline without his approval. However, the ALJ concluded that the sanctions requested by SKC were too severe and denied the motion.