By Eric Schweibenz
On September 16, 2010, ALJ Robert K. Rogers, Jr. issued Order No. 18 in Certain Notebook Computer Products and Components Thereof (Inv. No. 337-TA-705).  In the Order, ALJ Rogers denied motions filed by Respondents Wistron Corporation, Wistron InfoComm (Texas) Corporation, and Wistron InfoComm Technology (America) Corporation (collectively, “Wistron”) for reconsideration of Order No. 12, which denied Wistron’s motion for leave to amend its response to add an inequitable conduct defense, and Order No. 13, which denied Wistron’s motion to compel.

According to the Order, Wistron argued that because of the heightened pleading standard for inequitable conduct defenses it needed to depose all individuals involved in the alleged inequitable conduct before asserting the defense, and that Complainant Toshiba Corporation (“Toshiba”) delayed depositions of its employee and U.S. patent counsel, without which Wistron could not have offered a complete inequitable conduct pleading.  Wistron also pointed to a late-produced email from Toshiba that Wistron claimed established the inequitable conduct.  Wistron further argued that Commission Rule 210.14(b)(2) merely requires a showing that the “disposition of the issues in an investigation on the merits will be facilitated” (rather than a showing of good cause) before an amendment to the response will be allowed, and that its proposed inequitable conduct defense will facilitate that disposition – namely resolution of the improperly procured patent-in-suit.  Finally, Wistron argued that because the reasoning in Order No. 13 was based on Order No. 12, it should be reconsidered along with Order No. 12.

Toshiba opposed both motions, arguing that Wistron’s arguments and evidence therein could have been presented previously, that Wistron failed to explain its delay in seeking the deposition of Toshiba’s U.S. patent counsel and was now trying to do so through its motion for reconsideration, that the subject Toshiba email did not explain why Wistron delayed pursuing discovery from Toshiba’s U.S. patent counsel, and that Wistron’s arguments did not provide sufficient explanation for the delay addressed in Order No. 12.  Toshiba further argued that in the event Order No. 13 was reconsidered, Wistron’s motion to compel should be denied for all of the reasons addressed in Toshiba’s response thereto.  The Commission Investigative Staff did not respond to Wistron’s motions.

After reviewing the parties’ briefs, ALJ Rogers agreed with Toshiba that Wistron’s motion – which primarily relied on facts surrounding the delay in seeking the deposition of Toshiba’s U.S. patent counsel that Wistron acknowledged are not new – presented arguments and supporting facts that could have been presented originally.  ALJ Rogers further determined that the Toshiba email was irrelevant to Wistron’s unexplained delay and did nothing to change the findings in Order No. 12.  Finally, ALJ Rogers determined that Wistron was incorrect in asserting that Rule 210.14(b)(2) did not require a showing of good cause.