By Eric Schweibenz and Michael West
On October 5, 2018, ALJ MaryJoan McNamara issued the public version of Order No. 34 (dated August 29, 2018) in Certain Digital Video Receivers and Related Hardware and Software Components (Inv. No. 337-TA-1103)

By way of background, this investigation is based on a February 8, 2018 complaint filed by Rovi Corporation, Rovi Guides, Inc., Rovi Technologies Corporation, and Veveo, Inc. (collectively “Rovi” or “Complainants”) of San Carlos, California alleging violation of Section 337 by way of unlawful importation into the U.S., selling for importation, and/or selling within the U.S. after importation of certain digital video receivers and related hardware and software components that infringe one or more claims of U.S. Patent Nos. 7,779,011; 7,937,394; 7,827,585; 9,294,799; 9,369,741; 9,578,363; 9,621,956; and 9,668,014 (collectively, the “asserted patents”).

According to the Order, the Comcast Respondents filed a motion to enforce Order No. 13. Order No. 13 denied the Complainants motion to amend its list of expert witnesses to add an additional witness. Complainants’ motion was filed more than a month after the deadline for identifying expert witnesses. Respondents argue that Complainants intended to circumvent Order No. 13 by incorporating the additional expert witness’s expert report and analysis into the testimony of their testifying experts’ reports. Respondents further argued that they had been “severely prejudiced” by the delay in disclosing the additional expert and this additional expert analyses.

In response, Complainants opposed the motion. Complainants pointed out that the parties’ procedural stipulation distinguishes testifying experts from non-testifying experts and permits a non-testifying expert (i.e., the additional expert) to provide “information, opinions, or other materials to a testifying expert, who relies upon such information, opinions, or other materials in forming his or her final report, or any opinion in th[e] investigation.” Complainants argued that the information provided by the additional expert that was relied upon by the testifying experts was timely disclosed. Further, Complainants also asserted that they offered the additional expert twice for deposition to Respondents as a non-testifying expert, and Respondents did not refute this assertion.

Accordingly, ALJ McNamara did not find Respondents arguments compelling. ALJ McNamara determined that Respondents had adequate notice of Complainants allegations of infringement through customer usage from the Complainant, discovery responses, and depositions. Further, ALJ McNamara reasoned that long before discovery ended, and as soon as Respondents were aware of Complainants’ contentions, Respondents could have commissioned their own survey in opposition to the survey produced by the additional expert and relied on by the testifying experts. Further, ALJ McNamara stated that there were other proactive discovery measures Respondents could have taken. Thus, ALJ McNamara determined that the inclusion of the additional expert’s analyses and/or opinions in the Expert Reports of Complainants other testifying experts does not violate Order No. 13.

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