By Eric Schweibenz and Tom Yebernetsky
On June 11, 2015, ALJ Thomas B. Pender issued the public version of Order No. 23 (dated June 3, 2015) in Certain Windshield Wipers and Components Thereof (Inv. No. 337-TA/928/937).  Please note that Oblon represents Complainants in this matter.

By way of background, the investigation is based on July 25, 2014 and October 15, 2014 complaints filed by Valeo North America, Inc. of Troy, Michigan and Delmex de Juarez S. de R.L. de C.V. of Mexico alleging violation of Section 337 in the importation into the U.S. and sale of certain windshield wipers and components thereof.  See our August 1, 2014, August 28, 2014, October 16, 2014, and November 19, 2014 posts for more details on the complaints and Notices of Investigation in the 928 and 937 investigations.  On December 9, 2014, ALJ Pender consolidated the 928 and 937 investigations.  See our December 15, 2014 post for more details.

According to Order No. 23, Valeo filed a motion to strike portions of the initial expert report of Gregory Davis ("Davis Report").  Specifically, Valeo sought to strike invalidity opinions "that were not previously disclosed in Trico's invalidity contentions, relating to: (1) new matter; (2) indefiniteness; (3) lack of written description; and (4) motivation to combine prior art references."  Furthermore, Valeo asserted that the Davis Report contained "improper legal conclusions relating to public use and sale of the claimed invention."  In opposition, Trico argued "that the invalidity arguments at issue were disclosed in its initial invalidity contentions and/or pursuant to Order No. 16 granting Trico's motion to supplement its invalidity contentions."

ALJ Pender ruled that certain paragraphs of the Davis Report should be stricken, but denied Valeo's motion with respect to other paragraphs.  Regarding Valeo's argument against new matter, ALJ Pender held that ¶ 60 of the Davis Report should be stricken, "but only with respect to the portion which discusses intervening prior art..." because the intervening prior art was never disclosed in Trico's invalidity contentions.  As to Valeo's argument against Trico's indefiniteness position, ALJ Pender determined that ¶¶ 324, 376, 419 of the Davis Report should be stricken because they relate to a new indefiniteness argument with respect to "blade support element" that was not disclosed in Trico's invalidity contentions.  Regarding Valeo's argument against Trico's lack of written description position, ALJ Pender agreed that the ¶¶ 4, 48, 60, 102, 111, 266, 290 of the Davis Report included improper statements relating to written description; however, ALJ Pender did not strike these paragraphs to the extent that are being used to support lack of enablement positions.  With respect to Valeo's arguments against Trico's motivation to combine prior art references, ALJ Pender held that Trico invalidity contentions provide sufficient notice to Valeo because "[p]arties are not expected to disclose a full explanation of the motivation to combine prior art references in their invalidity contentions."  Lastly, as to Valeo's arguments against Trico's use of the Davis Report to support Trico's public use and on-sale defenses, ALJ Pender determined that such opinions are permissible and that Valeo's "arguments go to the weight of the opinions rather than their admissibility."  Accordingly, ALJ Pender granted-in-part Valeo's motion.