By Eric Schweibenz
On April 10, 2009, ALJ Carl C. Charneski issued Order No. 10 in Certain Voltage Regulators, Components Thereof and Products Containing Same (337-TA-564).  In the Order, ALJ Charneski granted, in part, Complainant Linear Technology Corporation’s (“Linear”) motion to strike certain affirmative defenses of respondent Advanced Analogic Technologies, Inc. (“AATI”).  Specifically, ALJ Charneski granted Linear’s motion to strike a number of AATI’s affirmative defenses, but denied Linear’s motion to strike AATI’s patent invalidity defense as premature. 

By way of background, on September 24, 2007, the Commission issued its Final Determination on the question of violation finding that certain AATI products infringed claims 2, 3, and 34 of U.S. Patent No. 6,580,258.  The Commission also issued a limited exclusion order directed toward AATI.  Linear thereafter filed a complaint requesting that the Commission institute a formal enforcement proceeding against AATI for alleged violation of the limited exclusion order.  On October 1, 2008, the Commission issued its Notice of Institution of Formal Enforcement Proceeding against AATI “to determine whether AATI is in violation of the Commission’s limited exclusion order issued in the investigation, and what, if any, enforcement measures are appropriate.”

Through its motion, Linear sought an order striking several affirmative defenses set forth in AATI’s response to Linear’s second amended enforcement complaint, including patent invalidity; prosecution laches; double patenting; unenforceability due to inequitable conduct; equitable estoppel or implied license; invalidity due to non-joinder or mis-joinder of inventor; and unclean hands.  Linear argued that such defenses were “barred by the doctrines of the law of the case, issue preclusion and claim preclusion.”  In its response, AATI did not oppose Linear’s motion with respect to all of its defenses except for patent invalidity.  Specifically, AATI argued that “because the validity of the asserted claims has never been determined under Linear’s newly broadened claim constructions” to cover AATI’s accused products with substantially different designs, any law of the case, issue preclusion and/or claim preclusion arguments are inapplicable.  The Commission Investigative Staff supported Linear’s motion to strike.

In reaching his decision, ALJ Charneski explained the Federal Circuit’s 2004 ruling in VastFame Camera, Ltd. v. Int’l Trade Comm’n and pointed to its holding which vacated the Commission’s determination in that case to preclude VastFame from raising its invalidity defense in an enforcement proceeding.  ALJ Charneski thus determined that “the VastFame decision holds that because enforcement proceedings are investigations pursuant to 19 U.S.C. § 1337(b), participants must be permitted, in accordance with 19 U.S.C. § 1337(c), to raise all defenses, including patent invalidity.”  ALJ Charneski also noted, however, that the VastFame decision does not preclude application of “traditional principles of res judicata or collateral estoppel” and, in fact, the Commission’s formal notice of institution provides “[a]ll defenses not barred by claim preclusion may be raised in this [enforcement] proceeding.”

Although ALJ Charneski recognized that Linear’s and the Staff’s doctrine of the case and res judicata arguments “have considerable appeal,” the sparse pre-hearing development of the proceeding did not permit him to find that the invalidity defense respondent sought to raise here is the same invalidity defense previously raised and rejected during the investigatory phase.  Thus, ALJ Charneski denied Linear’s motion to strike AATI’s patent invalidity defense as premature but reminded AATI that “it is not the intention of this court to retry the merits of an already concluded investigation.”