On September 15, 2011, ALJ E. James Gildea issued the public version of Order No. 19 (dated September 6, 2011), denying Complainant Schweitzer-Mauduit International, Inc.’s (“SWM”) motion to strike portions of Respondents’ expert reports, and granting certain Respondents’ motion to supplement their notice of prior art and contention interrogatory responses in Certain Reduced Ignition Proclivity Cigarette Paper Wrappers and Products Containing Same (Inv. No. 337-TA-756).

According to the Order, SWM filed a motion to strike portions of Respondents’ experts reports for including opinions on prior art purportedly not within Respondents’ notice of prior art or contention interrogatory responses.  The disputed prior art included U.S. Patent No. 3,667,479 (the ‘479 patent), a Delfort gravure cylinder, Philip Morris Merit cigarettes with PaperSelect cigarette wrappers, and Lorillard cigarette paper.  The Respondents, supported by the Commission Staff, opposed SWM’s motion, countering that they sufficiently disclosed the ‘479 patent in their pleadings, and the Delfort gravure cylinder and Lorillard cigarette paper were not offered as prior art.  With respect to the PaperSelect cigarette wrappers, Respondents argued that Philip Morris Merit cigarettes include PaperSelect cigarette wrappers manufactured by SWM, and the Respondents had identified SWM and Philip Morris as sources of information about prior art cigarette wrappers in their notice of prior art.  In their interrogatory responses Respondents had listed and analyzed “relevant Philip Morris patents that describe the PaperSelect wrappers, their method of manufacture and their use to make cigarettes.”

Furthermore, Respondents separately moved to supplement their notice of prior art and contention interrogatory responses to provide additional detail on SWM's own sales of PaperSelect cigarette wrappers to Philip Morris and Philip Morris’ incorporation of that paper into Merit-brand cigarettes.  Respondents argued that these details were based on documents requested near the commencement of the Investigation, but produced by SWM only after the
deadline for submitting the notice of prior art had passed.

ALJ Gildea first addressed Respondents’ motion to supplement their notice of prior art and discovery responses.  He determined that Respondents had placed SWM on notice that Respondents intended to rely upon allegations relating to SWM and Philip Morris when Respondents listed both entities in the prior art notice and stated they may relied upon as a prior inventor or having knowledge of prior use or offers for sale that would render the asserted patents invalid. ALJ Gildea further determined that Respondents indeed received information relating to the sale of PaperSelect cigarette paper and Merit cigarettes through depositions and document productions that occurred after the deadline for the prior art notice.  ALJ Gildea also determined that SWM would not be prejudiced by the ALJ granting Respondents’ motion due to (1) Respondents’ original notice, (2) this additional information related to SWM’s own products, and (3) the specific products and sales relied upon by Respondents were known by SWM at least one month before the close of discovery.  For at least these reasons, ALJ Gildea granted Respondents’ motion to supplement their notice of prior art, which in turn mooted SWM’s motion to strike with respect to the Merit cigarettes and PaperSelect wrappers.

Regarding SWM’s motion to strike sections of an expert report discussing Lorillard cigarette paper, ALJ Gildea determined that the relevant expert report did not rely upon the Lorillard cigarette paper as a separate item of prior art, but rather merely as background and an illustration of the knowledge within one of ordinary skill.  ALJ Gildea noted that the sections of the expert report on invalidity did not include any reference to the Lorillard cigarette paper.  Similarly, with regard to the Delfort gravure cylinder, ALJ Gildea determined that this was not relied upon as invalidating prior art, but instead served to illustrate that given the similarities between the Delfort and other standard gravure cylinders that were “used for decades,” if Delfort’s cylinder were found to infringe SWM’s asserted claims, then those standard cylinders known in the prior art would invalidate those claims as well.

Finally, with respect to Respondents’ expert reports relying upon the ‘479 patent, ALJ Gildea determined the ‘479 patent was sufficiently disclosed, because Respondents stated in their notice of prior art that they will rely upon prior art contained in the prosecution histories of the patents-in-suit or in any of their foreign counterparts.  The ‘479 patent was cited in the prosecution history of the European equivalent to one of the patents-in-suit, and was relied upon to reject two independent claims in the European equivalent.  ALJ Gildea also noted that Respondents specifically referred to the ‘479 patent in response to SWM’s contention interrogatories. 

Based on the above, ALJ Gildea denied SWM’s motion to exclude in its entirety.