26
Apr
By Eric Schweibenz
On April 16, 2010, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 20 (dated March 31, 2010) in Certain Printing and Imaging Devices and Components Thereof (Inv. No. 337-TA-690) granting-in-part Respondents Oki Data Corporation and Oki Data Americas, Inc.’s (collectively “Oki Data”) motions to preclude Complainants Ricoh Company, Ltd., Ricoh Americas Corporation, and Ricoh Electronics, Inc. (collectively, “Ricoh”) from relying on certain evidence related to earlier invention dates and evidence of licensing in support of a domestic industry (Motion No. 690-009) and contentions about conception and reduction to practice (Motion No. 690-010).

Oki Data’s Motion No. 690-009 addressed two separate issues of invention dates and licensing issues.

Regarding the issue of invention dates, Oki Data sought to preclude Ricoh from relying on its later disclosure of earlier invention dates for the patents-in-issue because Oki Data’s experts relied on Ricoh’s earlier disclosure of later invention dates, and because Oki Data could not schedule depositions of the Japanese inventors in Japan before the discovery cutoff date.  Ricoh opposed the motion arguing that Oki Data unnecessarily delayed seeking the depositions of the inventors.  Further, Ricoh asserted that the motion was moot in light of Ricoh’s stipulation that it would rely on its earlier disclosure of later dates for four of the patents-in-suit, while offering the inventor of the remaining patent-in-suit for deposition in the U.S.  In its reply brief, Oki Data asserted that any delay was attributable to Ricoh’s disclosure of the invention dates after the Notice of Prior Art deadline.  The Commission Investigative Staff (“OUII”) filed a response in support of the motion to preclude with respect to the issue of invention dates.

With respect to the issue of licensing, Oki Data sought to preclude Ricoh from relying on its licensing activities to prove domestic industry or alternatively, an order requiring depositions of the Japanese witnesses in the U.S.  In support of its motion, Oki Data asserted that Ricoh’s refusal to make the witnesses available for depositions in the U.S. effectively prohibited Oki Data from obtaining relevant discovery related to licensing.  In opposition, Ricoh asserted that Oki Data unnecessarily delayed seeking depositions and that the motion was moot because (i) Oki Data withdrew its patent misuse defense related to licensing, and (ii) Ricoh no longer relied on licensing as a basis for domestic industry.  OUII filed a response in opposition of the motion with respect to the licensing issues.

Oki Data’s Motion No. 690-010 addressed the issue of conception and reduction to practice dates.

In support of its motion, Oki Data sought to preclude Ricoh from relying on later disclosed earlier conception and reduction to practice dates because Oki Data relied on earlier disclosed later conception and reduction to practice dates to compile its Notice of Prior Art and expert reports.  Ricoh opposed the motion arguing that Oki Data’s motion was moot because Ricoh would rely on the earlier disclosed later conception and reduction dates for all but one of the patents-in-suit.  As for the remaining patent-in-suit, Ricoh asserted that Oki Data suffered no prejudice because “all documents related to conception and reduction to practice” were produced during discovery, Ricoh supplemented its interrogatory responses soon after realizing its previous response was incomplete or incorrect, Oki Data had ample opportunity to depose experts on this issue, and Oki Data listed prior art references that pre-date the earlier conception and reduction to practice dates.  OUII filed a response in opposition of the motion except with respect to the one patent-in-suit.

According to the Order, ALJ Rogers granted Oki Data’s motions with respect to the issue of conception and reduction to practice dates on the ground that Ricoh’s supplementation of the dates were “not proper under Commission Rule 210.27(c)(1).”  In this regard, ALJ Rogers determined that Ricoh sought to supplement its responses with information already in its possession and not “thereafter acquired” as required under Rule 210.27(c)(1).  ALJ Rogers otherwise denied Oki Data’s motions finding that the motions were moot in light of Ricoh’s stipulation to rely on its earlier disclosure of later conception and reduction to practice dates and Ricoh’s non-reliance on licensing as a basis for domestic industry.  Further, ALJ Rogers denied Oki Data’s motions with respect to its requests to depose the Japanese witnesses in the U.S. finding that Oki Data failed to demonstrate (i) “hardship or unusual circumstance that justifies deviating from the normal practice in 337 investigations” to depose witnesses where the deponent works or resides, (ii) any justification for its substantial delay in serving its deposition notices, and (iii) that the high-level employees noticed for depositions possessed information unobtainable through less intrusive means.