By Eric Schweibenz
On April 28, 2010, ALJ Robert K. Rogers, Jr. issued Order No. 7 in Certain Notebook Computer Products and Components Thereof (Inv. No. 337-TA-705).  In the Order, ALJ Rogers denied Complainant Toshiba Corporation’s (“Toshiba”) motion to compel Respondents Wistron Corporation, Wistron InfoComm (Texas) Corporation, and Wistron InfoComm Technology (America) Corporation (collectively, “Wistron”) to respond to Toshiba’s Interrogatory Nos. 47 and 48.  ALJ Rogers also amended the procedural schedule in the investigation.

Interrogatory Nos. 47 and 48 are both directed to Wistron’s invalidity contentions in the investigation.  Specifically, Interrogatory No. 47 seeks Wistron’s contentions regarding invalidity of the asserted patents under 35 U.S.C. § 102, and Interrogatory No. 48 seeks Wistron’s contentions regarding invalidity of the asserted patents under 35 U.S.C. § 103.  According to Toshiba, Wistron responded to the interrogatories by objecting to them as premature, and stating that it will supplement its responses at a later time.  In its motion, Toshiba argued that that the interrogatories are not premature, and that Wistron should be compelled to answer the interrogatories immediately.

According to the Order, Wistron opposed the motion on a number of grounds.  Wistron argued that Toshiba bore the burden of demonstrating why it needs contention interrogatory responses at an early stage of the discovery period, and that it had failed to meet that burden.  Additionally, Wistron argued that Toshiba was seeking Wistron’s invalidity contentions so that Toshiba could construct claim construction positions that would avoid the prior art.  Wistron also argued that the preliminary invalidity analysis in Wistron’s response to the complaint was sufficient.  Finally, Wistron argued that it was still searching for and uncovering prior art, and that it needed additional time to search for prior art without being burdened with having to produce detailed invalidity contentions.  According to Wistron, Toshiba was seeking information that is more properly the subject of the expert reports, and Wistron should be allowed to answer the contention interrogatories on June 29, 2010, which is the deadline to serve initial expert reports.

The Commission Investigative Staff (“OUII”) filed a response stating that it supports Toshiba’s motion to the extent that all parties should be required to respond to outstanding contention interrogatories by a fixed date.  OUII noted that it is a common practice for procedural schedules in Section 337 investigations to set out a specific deadline for answering contention interrogatories, and that such a deadline would avoid further disputes and prevent piecemeal answering of interrogatories in the investigation.

After reviewing the parties’ briefs, ALJ Rogers agreed with OUII’s position that the best solution to the dispute would be to impose a separate deadline for answers to contention interrogatories.  Accordingly, ALJ Rogers denied Toshiba’s motion to compel but amended the procedural schedule in the investigation to include deadlines for responses to contention interrogatories.