By John Presper
On May 9, 2013, ALJ Robert K. Rogers, Jr. Issued Order No. 19 granting Respondents LSI Corporation and Seagate Technology’s (collectively, “Respondents”) motion to strike Complainant Realtek Semiconductor Corporation’s (“Realtek”) supplemental interrogatory response while denying Realtek’s motion to file a response to the Respondents’ motion one day out of time in Certain Integrated Circuit Chips and Products Containing the Same (Inv. No. 337-TA-859).

By way of background, the investigation is based on a complaint filed by Realtek alleging violation of Section 337 in the importation into the U.S. and sale of certain integrated circuit chips that include bond pad structures or level shifter circuitry and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,787,928 (“the ‘928 patent”) and 6,963,226 (“the ‘226 patent”).  See our September 20, 2012 post for more details.

According to the Order, Respondents filed a motion to strike Realtek’s supplemental response to Interrogatory No. 25 which sought information about conception and reduction to practice of the invention in the ‘928 patent.  Respondents argued that Realtek’s original response was merely boilerplate objections and a statement that it would provide information at a later date.  In its first supplemental response, Realtek asserted that it was not aware of any documents indicating conception or reduction to practice prior to the filing date of the Taiwanese counterpart application.  After the discovery deadline, Realtek attempted to supplement its response again, asserting a new conception date three years earlier and subsequent reduction to practice.  Respondents assert that these new contentions are based on information that was in Realtek’s possession and accessible before the deadline for serving responses to contention interrogatories had passed, and that supplemental responses are only allowed when new information is learned after that date.

Realtek filed a motion seeking permission to submit its opposition to Respondents’ motion one day after the deadline, arguing that although it started filing before the 5:00 pm deadline, due to electronic filing problems, it was unable to upload its papers.  Realtek emphasized that all parties were timely served.  In substantive response to Respondents, Realtek asserted that the restoration and review process of the original test chips was time-intensive and the restored information supporting its revised contentions was not available until the time it filed its supplemental response.

ALJ Rogers denied Realtek’s motion to file its response one day late, noting that he emphasized in the initial prehearing conference that Ground Rule 1.8 requires that any request for an extension be made in writing no later than the day before the due date, and that good cause must be established, specifically noting that filing problems are not good cause.  As such, ALJ Rogers found Realtek’s “technical error” to be unpersuasive, and that Realtek had therefore “waived its arguments opposing Respondents’ motion.”

Regarding the motion to strike, ALJ Rogers began by noting that an attorney of record is required to sign responses averring that the rules have been followed, and that only information thereafter acquired can be the basis of a supplement.  However, the ALJ stated that “Realtek’s supplementations were either not based on information thereafter acquired, or were not made seasonably after the information was acquired.”  ALJ Rogers determined that Realtek should have performed its restoration and review of archived data before the deadline for responses was due, and that lengthy processing time does not affect the conclusion that the information ultimately discovered was in Realtek’s possession all along.  As such, the ALJ determined that Realtek is “barred from asserting that conception and reduction to practice occurred any earlier” than the filing date of the Taiwanese counterpart application.