By Eric Schweibenz
On March 15, 2012, ALJ Theodore R. Essex issued Order No. 29 in Certain Protective Cases and Components Thereof  (Inv. No. 337-TA-780) granting Complainant Otter Products, LLC’s (“Otter”) motion for summary determination on Respondent Griffin Technology, Inc’s (“Griffin”) affirmative defense of invalidity with respect to U.S. Patent No. 7,933,122 (“the ‘122 patent”).

By way of background, Otter filed its complaint in this investigation on May 25, 2011 alleging that Griffin (among others) unlawfully imported, sold for importation, and sold after importation certain protective cases and components thereof that infringe the ‘122 patent.  The Commission instituted this investigation on June 24, 2011.  See our June 27, 2011 post for more details.

According to the Order, Otter argued that Griffin neither explained its invalidity arguments in any contention interrogatory nor submitted an expert report on invalidity, meaning that Griffin cannot overcome the presumption of validity and prove by clear and convincing evidence that the ‘122 patent is invalid.  Griffin countered that the motion is premature because fact discovery had not yet closed, and that an expert is not absolutely necessary to prove invalidity, particularly in cases involving relatively simple technology.  The Commission Investigative Staff, while noting that Griffin faced “a decidedly uphill battle” in maintaining invalidity, asserted that the motion should be held in abeyance until after the close of fact discovery, but added that if Griffin failed to submit a supplemental opposition to Otter’s motion on the merits shortly after the close of fact discovery, then the motion should be granted.

ALJ Essex found that Otter carried its initial burden of persuasion on the defense given the presumption of validity, and that the undisputed facts – Griffin did not provide an expert report, invalidity contentions, or evidence or even arguments regarding invalidity in response to Otter’s motion or in its pre-hearing brief, and did not supplement its response to Otter’s motion – showed that Griffin would be unable to prove that the ‘122 patent is invalid by clear and convincing evidence.