ALJ Rogers Rules On Motions To Strike Discovery Responses In Certain Projectors With Controlled-Angle Optical Retarders (337-TA-815)

On December 21, 2012, ALJ Robert K. Rogers, Jr. issued the public versions of Order No. 22 and Order No. 23 (both dated October 15, 2012) in Certain Projectors with Controlled-Angle Optical Retarders, Components Thereof, and Products Containing Same (Inv. No. 337-TA-815).

Order No. 22

According to Order No. 22, Respondents Sony Corporation, Sony Corporation of America, and Sony Electronics Inc. (collectively, “Sony”) sought to strike Complainant Compound Photonics Ltd. and Compound Photonics U.S. Corporation’s (collectively, “CP”) supplemental responses to certain contention interrogatories and to preclude CP from relying on certain documents that it produced during discovery.  Specifically, Sony requested that CP’s July 27, 2012 supplemental response to Interrogatory No. 2 addressing conception and reduction to practice be stricken, and that CP be precluded from relying on any evidence referenced therein or offering evidence or argument at trial to establish a priority date earlier than May 3, 2000 on the grounds that CP improperly served supplemental responses and produced documents cited therein on the last day of discovery.  Sony also requested that CP’s supplemental interrogatory responses addressing the domestic industry requirement be stricken on similar grounds.

In opposition, CP contended that conception and reduction to practice are relevant only to a properly raised invalidity defense, and the burden was therefore on Sony to come forward with timely invalidity contentions that made the conception date an issue.  According to CP, Sony failed to do so because it waited until July 16, 2012 — over three months after contention interrogatories were due — to produce 900 pages of additional invalidity claim charts that identified specific obviousness combinations, as well as four references for which no invalidity contentions had been made.  CP alleged that this July 16, 2012 supplementation by Sony first raised the issue of conception date.  CP also argued that a typographical error in the patent number of one of the four allegedly undisclosed references (“Hayashi”) in Sony’s previous claim charts served on May 14, 2012 did not provide adequate notice of that reference.  CP further argued that its production on the last day of discovery included new documents it acquired from prosecution counsel (which never represented CP since the patent issued before CP acquired it) for the purpose of antedating prior art references disclosed in Sony’s invalidity contentions.  Regarding domestic industry contentions, CP contended that Sony failed to identify a single fact with respect to the economic prong that was not disclosed at least six weeks before the close of fact discovery, and that its repeated supplemental responses regarding the technical prong simply reflect the “natural evolution of procedures, materials, components, and performance that occurs during product development.”

The Commission Investigative Staff (“OUII”) supported Sony’s motion, arguing that CP’s supplemental interrogatory responses were submitted after the deadline for responding to contention interrogatories and involve issues for which CP bears the burden of proof, i.e., whether a domestic industry exists and whether certain prior art can be antedated based on pre-filing conception and reduction to practice.

ALJ Rogers agreed with Sony and OUII and granted the motion.  In particular, the ALJ considered CP’s argument regarding a typographical error in the Hayashi patent number “frivolous” since the body of the interrogatory response included the correct patent number and the claim chart cited items that appeared only in the correct Hayashi patent.  ALJ Rogers also found that CP had conception materials in its possession after Sony’s May 14, 2012 supplementation (such as the prosecution file for the patent-in-suit) but waited until after July 16, 2012 to search them or contact prosecution counsel regarding additional materials relevant to conception and reduction to practice to attempt to antedate Hayashi.  The ALJ was likewise not persuaded by CP’s explanations for its supplemental responses on domestic industry, finding “conclusory” statements that the information therein was acquired after CP’s prior responses to be insufficient.  ALJ Rogers noted that CP’s supplemental responses regarding the economic prong included information contained in demonstrations that occurred after April 6, 2012; however, the ALJ concluded that delaying the supplementation for over six weeks until the final day of discovery was not “seasonable” under Commission Rule 210.27(c).

Order No. 23

According to Order No. 23, CP sought to strike Sony’s invalidity contentions served on April 9, April 23, May 14, July 16 and July 27, 2012.  In particular, CP argued that (1) Sony’s invalidity contentions were served after the 7pm EST deadline on April 6, 2012, making them effectively served on April 9, 2012; (2) Sony’s response to Interrogatory No. 39 was deficient in that it listed 80 references that “may contain responsive information” but did not identify or explain which references anticipated the claims or which combinations rendered the claims obvious, and did not include claim charts; (3) Sony’s supplemental responses to Interrogatory Nos. 38 and 39 on April 23, 2012 included inadequate claim charts with string citations to various exemplary prior art references without further explanation; (4) Sony’s Notice of Prior Art served on April 30, 2012 listed 140 references without further explanation, including references that were not previously discussed in response to Interrogatory Nos. 38 and 39; (5) Sony’s 900 pages of additional claim charts served on July 16, 2012 improperly asserted four prior art references for the first time and effectively precluded CP from engaging in further fact discovery regarding the invalidity contentions therein; and (6) Sony’s July 27, 2012 supplemental interrogatory responses relied on deposition testimony taken two months before the close of fact discovery and asserted for the first time that CP engaged in spoliation of evidence, which does not constitute newly acquired information under Commission Rule 210.27(c).

In opposition, Sony argued that its supplemental invalidity contentions were proper and timely.  In particular, Sony maintained that (1) it emailed its invalidity contentions 16 minutes after the parties’ self-imposed 7pm EST deadline for electronic service, but that both sides agreed to waive any objection based on their mutual inadvertent delays; (2) its supplemental responses to Interrogatory Nos. 38 and 38 on April 23, 2012 contained detailed claim charts and a lengthy explanation of the motivation to combine references, and were timely since they were served before the deadline for the Notice of Prior Art and in response to meet and confer efforts; (3) its Notice of Prior Art was timely served, and although it identified two new references, Sony supplemented its responses on May 14, 2012 to address those references and others in detail; (4) its July 16, 2012 supplementation “to a large extent” merely replaced the string pin cites in prior claim charts with full quotations; (5) CP confirmed during the parties’ final meeting during fact discovery that there were no remaining issues regarding Sony’s responses to Interrogatory Nos. 38 and 39; and (6) it no longer intended to purse a spoliation of evidence defense.  OUII opposed the motion.

ALJ Rogers found that Sony’s invalidity contentions served at 7:16pm on April 6, 2012 were not untimely.  The ALJ observed that the parties agreed to a deadline of 7pm EST, and the time stamp of the email indicated 7:16 EDT.  Because the email was transmitted on April 6, 2012 (after clocks were adjusted for daylight savings time on March 11, 2012), 7:16pm EDT is 6:16pm EST, and thus Sony’s contention interrogatories were timely under the letter of the parties’ agreement.  Alternatively, ALJ Rogers found no Commission precedent for authorizing CP’s requested sanction as a result of a violation of a private party agreement regarding electronic service.  The ALJ also found Sony’s April 23 and May 14, 2012 supplementations to be timely since they were made one week before and two weeks after the deadline for Sony’s Notice of Prior Art, and occurred well before the close of fact discovery on July 27, 2012.  However, ALJ Rogers struck Sony’s July 16, 2012 supplementation as redundant of its May 14, 2012 responses, and to the extent the July 16 responses included new contentions, Sony failed to show that they were based on newly acquired information and were provided seasonably (two months after the deadline for the Notice of Prior Art and less than two weeks before the close of fact discovery) under Commission Rule 210.27(c).  Finally, since Sony stated it would not pursue a spoliation defense, the ALJ found the portion of the motion seeking to strike Sony’s July 27, 2012 supplementation moot.  Accordingly, the motion was granted-in-part and denied-in-part.

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