By Eric Schweibenz and Kate Cappaert
On January 15, 2015, ALJ Shaw issued the public version of Order No. 21 in Certain Toner Cartridges and Components Thereof (Inv. No. 337-TA-918).

By way of background, this investigation is based on a May 7, 2014 complaint filed by Canon Inc.; Canon U.S.A., Inc.; and Canon Virginia, Inc. (collectively, "Canon") alleging violation of Section 337 in the importation into the U.S. and sale of certain toner cartridges and components thereof, namely photosensitive drum units, that infringe one or more claims of U.S. Patent Nos. 8,280,278; 8,630,564; 8,682,215; 8,676,090; 8,369,744; 8,565,640; 8,676,085; 8,135,304; and 8,688,008.  See our May 8, 2014 and June 11, 2014 posts for more details on the complaint and the notice of investigation, respectively.

According to the Order, Respondents International Laser Group, Inc. ("ILG"); Ninestar Image Tech. Ltd.; Zhuhai Seine Image (USA) Co., Ltd.; Ninestar Technology Co., Ltd.; Seine Tech (USA) Co., Ltd.; Seine Image (USA) Co., Ltd.; Nano Pacific Corp.; Ink Technologies Printer Supplies, LLC; Linkyo Corp. and Katun Corporation (collectively, "Respondents") filed a Motion to Strike Canon's Untimely Validity Contentions.

At issue in the motion were Canon's responses to Respondents' contention interrogatories on the alleged invalidity of the asserted patent claims upon which Canon did not bear the burden.  The procedural schedule provided that the deadline for an initial responses to contention interrogatories for which a party did not bear the burden was September 26, 2014 and the deadline for supplemental responses was October 17, 2014.  Additionally, the parties were to file and exchange initial expert reports for issues on which each party bears the burden on October 21, 2014.

On September 26, 2014, Canon provided a 36-page set of responses to certain interrogatories stating it had not completed its analysis of Respondents' invalidity contentions and would supplement its responses later.  On October 17, 2014, Canon served a 171-page supplement to its earlier responses.  Respondents allege that 60 pages of the supplemental responses contain new contentions and new arguments, detailing for the first time why Canon will oppose Respondents' invalidity defenses in the investigation.

Canon argued that there were good reasons why it could not provide the contested information by September 26, 2014.  While ALJ Shaw found that there may be merit in Canon's argument, Canon did not seek an extension of time to serve part of its responses and instead was late in its presentation of certain responses to Respondents' invalidity contentions.  Accordingly, ALJ Shaw determined whether all or only part of the relief sought in the pending motion should be granted.

Respondents requested three things – (1) a determination that Canon's supplemental validity contention interrogatory responses were untimely; (2) that the responses and test results contained in the supplemental responses be stricken from the record; and (3) an order barring Canon from advancing the modified or late infringement contentions contained in any testimony, briefing, argument or other matter in the investigation.

ALJ Shaw granted Respondents first request.  Regarding the second request, ALJ Shaw granted it in part stating that because Canon did not seek leave for its late responses they were not "stricken" instead they were simply not recognized as interrogatory responses.  With respect to the third request, ALJ Shaw found that Respondents did not seek relief for their experts as they prepared their reports, or seek any other remedies.  Accordingly, ALJ Shaw found that the remedy sought was too broad and was not appropriate in this instance.