By Eric Schweibenz
On March 20, 2014, ALJ Thomas B. Pender issued the public version of Order No. 13 (dated March 14, 2014) in Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof (Inv. No. 337-TA-890).

According to the Order, Respondents BMC Medical Co., Ltd.; 3B Medical, Inc.; and 3B Products, LLC (collectively “Respondents”) moved to strike the reliance of Complainant ResMed Corp., ResMed Inc., and ResMed Ltd. (collectively “ResMed”) on certain documents, portions of ResMed’s expert’s report, and ResMed’s amended notice of priority dates regarding U.S. Patent No. RE 44,453 (the ‘453 patent).  Respondents argued that ResMed’s amended notice of priority dates after the close of discovery and the submission of expert reports was highly prejudicial.  Respondents further asserted that ResMed’s production of certain documents failed to comply with Ground Rule 7.1.2 because they cited more than 43,000 pages of documents without separately identifying which documents related to which patent and, more specifically, which documents related to conception, diligence, or reduction to practice.  Lastly, Respondents argued that ALJ Pender should strike the testimony of Mr. Virr because he lacked personal knowledge regarding the conception of the ‘453 patented invention in January 2000.

In opposition, ResMed argued that its amended notice of priority dates should not be stricken because relying on a later date for reduction to practice does not violate the Ground Rules.  ResMed further asserted that they properly disclosed their earliest constructive reduction to practice date and, therefore, its later actual reduction to practice disclosure is not prejudicial to Respondents.  As to the document production at issue, ResMed argued that their production of certain documents literally complied with Ground Rule 7.1.2.  Regarding Mr. Virr’s testimony, ResMed asserted that Mr. Virr does in fact have the requisite personal knowledge regarding conception of the ‘453 patented invention in January 2000.

ALJ Pender agreed with Respondents that ResMed’s amended notice of priority dates failed to comply with Ground Rule 7.1.1, was prejudicial to Respondents, and should be stricken.  ALJ Pender noted that “[a]mending priority dates at the end of discovery, after Respondents have set forth their invalidity contentions and deposed the inventors, is prima facie prejudicial to Respondents.”  Although ALJ Pender did not condone ResMed’s bulk identification of documents, he found that the production complied with Ground Rule 7.1.2. and, therefore, would not be stricken.  As to Mr. Virr’s testimony, ALJ Pender held that Respondents did not provide enough information to rule on the exclusion of his testimony.  Accordingly, ALJ Pender granted-in-part and denied-in-part Respondents’ motion.