By Eric Schweibenz
On June 24, 2010, ALJ Robert K. Rogers, Jr. issued the public versions of Order No. 22 (dated April 12, 2010), Order No. 26 (dated April 22, 2010); Order No. 27 (dated April 22, 2010) and Order No. 28 (dated April 28, 2010) in Certain Printing and Imaging Devices and Components Thereof (Inv. No. 337-TA-690).

In Order No. 22, ALJ Rogers denied Respondents Oki Data Corporation and Oki Data Americas, Inc.’s (collectively “Oki Data”) motion for summary determination of non-infringement of certain claims of U.S. Patent No. 5,863,690.  In its motion Oki Data asserted that its accused products did not meet “the thermofusible toner has softening point of less than [a]bout 80ºC” limitation, under any proposed construction, because the thermofusible toner of its accused products has a softening point that exceeds about 80ºC.  In its opposition, Respondents Ricoh Company, Ltd., Ricoh Americas Corporation, and Ricoh Electronics, Inc. (collectively “Ricoh”) asserted that Oki Data’s testing of its toner was flawed and when properly measured “the softening point of the accused toner [meets the limitation].”  The Commission Investigative Staff (“OUII”) supported the motion asserting that “Ricoh’s construction of the term ‘softening point’ . . . should be rejected because it would result in a lack of utility.”  In denying the motion, ALJ Rogers found that disagreement existed between the parties on the proper method for determining the softening point of the accused toners and therefore summary determination was inappropriate.

In Order No. 26, ALJ Rogers denied Oki Data’s motion for summary determination of failure to establish a domestic industry for U.S. Patent Nos. 5,764,866, 6,388,771, and 6,209,048.  In its motion Oki Data asserted that “Ricoh has failed to establish the economic prong of the domestic industry requirement for the [patents-in-suit], and that Ricoh’s experts failed . . . to provide analysis of the product on which Ricoh bases its economic allocations.”  In particular, Oki Data alleged that while “Ricoh relied on the Ricoh Aficio MP 4000 MFP (the “MP 4000”) to establish the economic prong for the [patents-in-suit],” Ricoh’s experts analyzed the Ricoh Aficio MP 8001 MFP without seeking to prove that it is representative of the MP 4000.  In its opposition, Ricoh disagreed with Oki Data’s assertions and in that regard referenced, among other things, the declaration of its expert and its interrogatory responses that allegedly refute Oki Data’s assertions.  OUII opposed the motion contending that the premise of Oki Data’s motion was not valid.  ALJ Rogers denied the motion on the ground that he previously determined that genuine issues of material facts were in dispute on this same issue in Order No. 24 (see our June 29, 2010 post for more details) and that nothing in the moving or responding papers of this motion altered his previous findings.

In Order No. 27, ALJ Rogers denied Ricoh’s motion for reconsideration in part of Order No. 20 (see our April 26, 2010 post for more details), which precluded Ricoh from relying on its supplemental responses regarding earlier invention dates that were not based on “information thereafter required” as provided in Commission Rule 210.27(c).  In its motion, Ricoh asserted that (i) the rule “does not apply in this instance because the rule only requires supplementation when ‘the addition or corrective information has not otherwise been made know to the other parties during the discovery process or in writing;’” (ii) “allowing Order No. 20 to stand would result in manifest injustice;” and (iii) “Oki Data had the opportunity to conduct complete discovery regarding the conception of [the subject patent-in-suit].”  OUII opposed the motion “assert[ing] that reconsideration is not proper” under the Commission’s rules.  In denying the motion, ALJ Rogers rejected all of Ricoh’s arguments as unpersuasive and reiterated that “this is a situation in which Ricoh was in possession of information that it did not reveal in its original interrogatory response, and Ricoh now seeks to use that information to its own advantage by establishing earlier conception and reduction to practice dates. Such a result is contrary to Commission Rule 210.27(c)(1) and to both the letter and spirit of the rules of discovery in general.”

In Order No. 28, ALJ Rogers denied Oki Data’s motion for summary determination of non-infringement of certain claims of U.S. Patent No. 6,212,343.  In its motion Oki Data asserted that there is no factual dispute that its accused products “do not have a blade ‘configured . . . to seal a gap between an upper edge of the toner exit and an upper outer circumferential surface of the roller part of the developing roller” and that Ricoh has provided “no expert analysis as to this claim limitation regarding infringement under the doctrine of equivalents.”  In its opposition, Ricoh disagreed stating that the parties “do dispute the meaning of the term ‘upper edge of the toner exit’” and that “arguments regarding the doctrine of equivalents need not be addressed” because there was clear evidence of literal infringement.  OUII supported the motion.  ALJ Rogers denied the motion finding that “Ricoh has raised a genuine issue of material facts in dispute.”  In that regard, ALJ Rogers determined that the language of the asserted claims “[did] not specify that the blade alone seals a gap . . . [or] that the blade be in contact with the upper edge of the toner exit” as argued by Oki Data and OUII.  ALJ Rogers further determined that with regard to the doctrine of equivalents, “case law does not foreclose reliance on the testimony of a non-expert witness that is one of ordinary skill in the art.”