By John Presper
On November 21, 2012, ALJ Theodore R. Essex issued Order No. 30 (dated November 20, 2012) in Certain Computers and Computer Peripheral Devices and Components Thereof and Products Containing the Same (Inv. No. 337-TA-841).

According to the Order, on October 19, 2012, Respondents served two “voluminous” expert invalidity reports that were designated in their entirety as Confidential Business Information (“CBI”).  In an October 25, 2012 discovery committee call, Complainant Technology Properties Limited, LLC (“TPL”) asked Respondents to de-designate non-CBI portions of the reports.  Respondents Dell, Inc., Seiko Epson Corporation, Hewlett-Packard Company, Canon, Inc., and HiTi Digital, Inc. promptly responded, informing TPL that the reports did not contain any of their CBI.  Respondents Fujitsu Limited (“Fujitsu”) and Brother Industries, Ltd. (“Brother”) indicated that the reports did contain their CBI but failed to identify particular portions of the report.  As such, on October 29, 2012, TPL filed a motion to compel Respondents to de-designate the reports and requested the opportunity for TPL to file a supplemental responsive report.

Fujitsu and Brother complied two days later, identifying CBI for redaction.  TPL maintained that it should be allowed to submit a supplemental report, however, arguing that TPL previously assisted its counsel in preparing the validity case, but as it was unable to see the reports at issue until after de-designation and redaction, there was not sufficient time for TPL to provide input regarding the November 5, 2012 rebuttal report.  TPL added that Respondents also failed to produce all documents cited in their reports until October 26, 2012.  Respondents opposed the motion, asking that it be denied as moot and arguing that TPL had not shown good cause for an extension of time on their report.

ALJ Essex agreed with Respondents as to the de-designation and denied the motion as moot.  The ALJ also denied TPL’s request to file a supplemental report, noting that TPL delayed for four days before requesting that Respondents de-designate the reports.  As to TPL’s argument regarding their direct input into the report, the ALJ determined that TPL had not shown why such input was essential or warranted further extension.

ALJ Essex was not without reproach for Brother and Fujitsu, however, describing their conduct as unacceptable for having waited five days to identify the CBI portions of their reports and failing to come to a solution without Commission intervention.  The ALJ stated that Brother and Fujitsu “should have realized the unreasonableness of their actions when they saw that every other respondent to this investigation had responded in short order to TPL’s request.”  ALJ Essex added that he could not imagine why it took almost a week to produce the documents cited in their reports.

Accordingly, although the ALJ denied TPL’s request to file a supplemental report, he determined to allow TPL’s expert lee-way in testifying about: (1) the references that were contained in the non-confidential sections of Respondents’ improperly withheld expert reports; and (2) the late-produced documents.  ALJ Essex cautioned that TPL should act reasonably -- that this lee-way would not allow TPL’s expert to change or substantially alter his opinions or theories, but rather would allow for limited additional analysis on those references and documents.  The ALJ further cautioned that, should abuse of this accommodation occur, TPL’s expert opinions may be stricken in their entirety.