By Eric Schweibenz
On April 30, 2010, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 40 (dated March 2, 2010) in Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire (Inv. No. 337-TA-686), granting in part Respondent Sidergas SpA’s (“Sidergas”) motion to compel Complainants The Lincoln Electric Company and Lincoln Global, Inc. (collectively, “Lincoln”) to respond to Sidergas’ Interrogatories Nos. 23-33, Requests for Production of Documents and Things Nos. 123-124 and 126-213, and Requests for Admission Nos. 323-359.

According to the Order, Sidergas contended that its discovery was relevant to its affirmative defenses alleging patent misuse and lack of domestic industry.  Lincoln and the Commission Investigative Staff (“OUII”) opposed the motion, asserting that Sidergas’ previously served interrogatories 1-22, when considering subparts, exceeded that 175 interrogatory limit outlined in Ground Rule 4.5.  Lincoln and OUII also argued that Sidergas had not properly pled patent misuse, and “that no portion of any patent misuse defense could have survived Order Nos. 21, 34, and 36 in this Investigation, which struck Sidergas' inequitable conduct defense, denied Sidergas' motion to amend its answer regarding inequitable conduct and patent misuse defenses, and denied Sidergas' motion for summary determination of non-infringement, respectively.”

With respect to the number of interrogatories, ALJ Rogers determined after reviewing each of the previously served interrogatories with multiple express subparts, that these interrogatory “Nos. 1-22 consist of 98 separate interrogatories, and thus Sidergas did not exceed its limit of 175 interrogatories established by Ground Rule 4.5 before it served Interrogatories Nos. 23-33.”  ALJ Rogers determined that many of the interrogatories with subparts should constitute “a single inquiry because the subparts are logically or factually subsumed within and necessarily related to the primary question.”  ALJ Rogers also decided that several interrogatories, such as those requesting identities of persons knowledgeable of various topics, should be considered as multiple interrogatories because they could be broken out, “ by subpart because each subpart is wholly separate and distinct from the other subparts.”

ALJ Rogers denied Sidergas’ motion with regard to any discovery requests related solely to patent misuse and/or antitrust, because “Sidergas has not properly pled a patent misuse affirmative defense in this Investigation.”  Paragraphs from Sidergas’ pleadings that arguably referred to patent misuse “lacked substantive allegations,” or “refer only to patents that are no longer at issue in this Investigation.”  ALJ Rogers decided that although other paragraphs refer to the unenforceability of the remaining patent in this investigation, none pleads “patent misuse, the Sherman Act, sham litigation, or antitrust concerns.”  ALJ Rogers further determined that Sidergas’ pleadings neither explicitly nor implicitly alleged that “Lincoln has somehow impermissibly broadened the scope of the ‘864 patent grant with anticompetitive effect, which is the cornerstone of patent misuse,” or that “Lincoln is using the ‘864 patent to obtain a market benefit beyond that which inures in the statutory patent right.”

ALJ Rogers held that certain discovery requests relate “to the economic prong of domestic industry and are thus reasonably calculated to lead to discovery of admissible evidence in this Investigation,” and therefore Lincoln was compelled to provide Sidergas with responses to such discovery requests.

Finally, ALJ Rogers decided that Sidergas failed to include the pertinent parts of certain underlying discovery requests and all objections and responses thereto as required by Ground Rule 3.5(b).  Thus, Lincoln was not compelled to provide Sidergas with responses to those document requests.