By Eric Schweibenz
On December 28, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 25 in Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire (Inv. No. 337-TA-686).  In the Order, ALJ Rogers denied Complainants The Lincoln Electric Company and Lincoln Global, Inc.’s (collectively, “Lincoln”) motion to preclude Respondents Kiswel Co., Ltd. (“Kiswel”), Atlantic China Welding Consumables, Inc. (“Atlantic”), The ESAB Group, Inc. (“ESAB”), and Sidergas SpA (“Sidergas”) from relying on prior art not specified in their prior art notices.

While Kiswel and Atlantic were included in the motion, Lincoln’s argument in its accompanying memorandum focused solely on ESAB and Sidergas.  Specifically, Lincoln argued that the prior art notices filed by ESAB and Sidergas were deficient under the Ground Rules for the investigation because they did not include sufficient detail about alleged invalidating prior use of the claimed invention by ESAB and Sidergas.

ESAB, Sindergas, and the Commission Investigative Staff (“Staff”) each filed responses opposing Lincoln’s motion.  ESAB argued that it had fully complied with the requirements of the Ground Rules by identifying the prior user of the claimed invention (ESAB itself) and the specific individuals having knowledge of its use.  Sidergas stated that it had served a timely prior art notice that included reference to Sidergas’s allegedly invalidating prior sales of the claimed invention, and had supplemented its notice in various responses to Lincoln’s discovery requests.  Additionally, Sidergas argued that Lincoln’s motion was frivolous and that sanctions should be imposed against it.  The Staff argued that ESAB’s and Sidergas’s prior art disclosures were sufficient, and that it was Lincoln’s duty to seek additional information regarding those disclosures through discovery.

ALJ Rogers agreed that ESAB and Sidergas’s prior art disclosures were sufficient under the Ground Rules, and denied Lincoln’s motion.  However, he noted in a footnote that while ESAB had complied with the Ground Rules, “it must provide sufficient responses to any relevant discovery requests” or risk preclusion of its invalidity defense.  ALJ Rogers also declined Sidergas’s request to impose sanctions against Lincoln.