By Eric Schweibenz
On June 3, 2014, ALJ Theodore R. Essex issued the public version of Order No. 9 (dated May 5, 2014) granting-in-part Complainant Trico Products Corp.’s (“Trico”) motion to strike the invalidity contentions of Respondents Federal-Mogul Corp. and Federal-Mogul S.A. (collectively, “Federal-Mogul”) in Certain Windshield Wipers and Components Thereof (Inv. No. 337-TA-902).

By way of background, this investigation is based on an October 21, 2013 complaint filed by Trico alleging violation of Section 337 in the importation into the U.S. and sale of certain windshield wipers and components thereof that infringe one or more claims of U.S. Patent Nos. 6,836,925 and 6,799,348.  See our October 22, 2013 and November 25, 2013 posts for more details on the complaint and the Notice of Investigation, respectively.

According to the Order, Trico argued that Federal-Mogul withheld invalidity contentions until after the close of fact discovery on the grounds that it could not provide invalidity claim charts until Trico provided its infringement claim charts.  Trico alleged that it was prejudiced by Federal-Mogul’s untimely disclosure because Trico was deprived of the full time to review and address the invalidity contentions and unable to conduct any fact discovery on the prior art disclosed therein.  The Commission Investigative Staff found Federal-Mogul’s rationale for untimely disclosure unpersuasive and ALJ Essex agreed.  The ALJ explained that even assuming a “tenuous relationship” exists between infringement and invalidity contentions (e.g., to the extent that infringement contentions may implicate claim construction), Federal-Mogul could have set forth its invalidity contentions based on its own claim construction and provided supplemental claim charts to the extent that Trico’s infringement contentions impacted and/or changed Federal-Mogul’s invalidity contentions (and further noting that parties in Section 337 investigations routinely produce invalidity and infringement contentions simultaneously).  In addition, ALJ Essex observed that none of the prior art cited by Federal-Mogul were “newly discovered” references warranting a late production, and in fact several were cited during prosecution of the patents at issue.

ALJ Essex noted, however, that Federal-Mogul had timely responded to contention interrogatories by referring Trico to the Federal-Mogul complaint filed in a parallel district court action in the Eastern District of Michigan.  Thus, the ALJ allowed the untimely invalidity contentions to the extent that they relate specifically to any references set forth in Federal-Mogul’s district court complaint.