On May 22, 2012, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 14 (dated May 10, 2012) in Certain Light-Emitting Diodes and Products Containing Same (Inv. No. 337-TA-802). In the Order, ALJ Rogers granted Respondents OSRAM AG, OSRAM Opto Semiconductors GmbH, and OSRAM Sylvania, Inc.’s (collectively, “OSRAM”) motion to exclude certain domestic industry products that Complainants LG Electronics, Inc. and LG Innotek Co. Ltd. (collectively, “LG”) had belatedly identified in a supplemental response to a contention interrogatory.
According to the Order, OSRAM argued that LG’s supplemental response identifying the new domestic industry products was improper and should be stricken. In particular, OSRAM stated that on March 23, 2012, LG responded to OSRAM’s contention interrogatory concerning domestic industry by identifying a particular light-emitting diode (LED) as the product that practices U.S. Patent Nos. 6,841,802 (the ‘802 patent), 7,649,210 (the ‘210 patent), and 7,956,364 (the ‘364 patent). On April 11, 2012, LG supplemented its interrogatory response and identified three new LEDs as products that practice the ‘802, ‘210, and ‘364 patents. On April 16, 2012, LG notified OSRAM that it was no longer relying on the LED that it had originally identified on March 23, 2012. OSRAM stated that LG offered no sufficient justification for why it had waited until April 11, 2012 to identify the new products, and that OSRAM would be prejudiced if LG were allowed to rely on the new products.
LG opposed the motion, claiming that it had properly amended its domestic industry contention interrogatory response. LG argued that its original March 23, 2012 response was preliminary, and that it was wholly appropriate for it to serve the April 11, 2012 supplemental response. LG noted that the parties had expressly agreed that they could submit final contentions after the March 23, 2012 deadline. LG explained that, on March 23, 2012, OSRAM, for the first time, had stated that it intended to rely on LG’s initially-identified domestic industry LED to support OSRAM’s invalidity defenses. In particular, LG stated that OSRAM argued that if this LED were found to practice the ‘802, ‘210, and ‘364 patents, then products “like” this LED would constitute invalidating prior art. Thus, according to the Order, LG offered a list of different products that allegedly practice these three patents, and dropped its reliance on the original LED, in an attempt to avoid the prior art. LG argued that OSRAM would not be prejudiced by allowing LG to supplement its response. Lastly, LG argued that OSRAM had failed to adequately meet and confer as required by the ground rules because OSRAM had declared an impasse after the parties’ first discussion of the issue.
After considering the arguments, ALJ Rogers determined to grant OSRAM’s motion. ALJ Rogers noted that the procedural schedule in the investigation set March 23, 2012 as the deadline for the parties to serve responses to contention interrogatories on issues for which the party bears the burden of proof. The ALJ then found that while Commission Rule 210.27(c)(1) allows for supplementation under some circumstances, LG’s April 11, 2012 supplemental response was improper under the Rule. In particular, ALJ Rogers found that LG’s supplementation was not based on “information thereafter acquired” because there was no allegation that LG did not know of the additional domestic industry products prior to the March 23, 2012 deadline. OSRAM’s intention to assert an invalidity argument based on the originally-identified LED did not constitute “information thereafter acquired” under the Rule. Moreover, the parties’ agreement that they could submit final contentions after the deadline did not abrogate the requirements of the Rule. ALJ Rogers therefore determined that LG’s supplementation was improper, and that it should be stricken. ALJ Rogers also found that OSRAM’s declaration of an impasse after LG refused to withdraw its supplemental response during the parties’ meet-and-confer was not a violation of the ground rules. Accordingly, ALJ Rogers granted OSRAM’s motion to exclude.