On January 20, 2015, in the matter of Certain Vision-Based Driver Assistance System Cameras and Components Thereof, ITC Inv. No. 337-TA-899, the ITC’s Chief Administrative Law Judge, Charles Bullock, issued an order granting Respondent Magma Electronics Inc.’s motion to strike portions of Complainant TRW Automotive U.S. LLC’s expert report on infringement, and barred TRW from relying on a newly-asserted infringement theory under the doctrine of equivalents or an infringement testing report produced after the close of discovery.

With respect to the doctrine of equivalents theory, Magma argued that TRW’s reservation of rights to rely on the doctrine of equivalents was insufficient notice of the theory.  In particular, TRW’s supplemental response to Magma’s infringement contention interrogatory indicated that TRW “reserves the right to revise this response as necessary to assert infringement through the doctrine of equivalents.”  TRW argued that Judge Bullock’s claim construction order, which followed the close of fact discovery, provided good cause to assert this theory, and if Magma was dissatisfied with TRW’s fact discovery responses, then it could have moved to compel a more complete response.  Further, TRW argued that Magma failed to identify any discovery that it would need to respond to the new theory, and thus Magma failed to prove that it suffered prejudice.  The ITC Staff sided with Magma, and argued that Judge Bullock’s claim constructions largely adopted the proposed constructions of the parties.  Thus, the Staff argued, Magma could have formulated its infringement contentions based on the proposed constructions.  Alternatively, the Staff argued, Magma could have sought leave to supplement its contentions after the claim construction order issued.  The Judge sided with Magma and the Staff, and found that the mere reservation of rights is not enough.  (Order No. 17 at 2-3 (citing Certain Point-to-Point Network Commc’n Devices, Inv. No. 337-TA-892, Order No. 29, at 2 (U.S.I.T.C. Apr. 15, 2014)).)  The Judge also found that the delay was not justified, noting that TRW was aware of its doctrine of equivalents theory, as well as the claim construction, and thus the issuance of a claim construction order does not provide good cause for the belated assertion of a new infringement theory.  Moreover, the Judge found that Magma would be prejudiced by the expert report’s assertion of this new theory after the close of fact discovery, because it would not permit Magma to take discovery on the theory.

With respect to the infringement testing report, Magma argued that the TRW cannot rely on an infringement report that it did not produce during fact discovery.  During fact discovery, Magma served discovery requests seeking documents related to the testing, but TRW withheld the report based on privilege.  TRW’s counsel also did not permit a deposition witness to testify about the report during a deposition on the second-to-last day of the discovery period.  After the close of fact discovery, TRW produced a redacted version of the report, and offered to allow Magma to depose the fact witness about the report.  Magma did not depose the fact witness, arguing that the late production of the document was improper and that TRW could not rely on it.  TRW argued that, although it did not produce the report until after the close of fact discovery, Magma was aware of the report since the filing of the complaint, which included a declaration detailing the expert’s testing activities.  The Staff sided with Magma, and argued that TRW should have sought permission to rely on the testing report in light of the procedural posture.  Judge Bullock again sided with Magma, and held that the expert report’s reliance on the testing report should be struck and that TRW should have produced the report during discovery.  The Judge noted that the report was not protected by the work product doctrine, because any such privilege was waived when TRW submitted the expert’s declaration with the complaint, relying on the testing.  (Order No. 17 at 5-6 (citing Certain Network Controller and Prods. Containing Same, Inf. No. 337-TA-531, Order No. 15, at 6 (U.S.I.T.C. July 19, 2005)).)  Judge Bullock further referred to the notice entered in the case, which indicates that “[a]ny information received after the close of fact discovery will not be admissible at the evidentiary hearing,” and noted that “TRW should not be rewarded for improperly withholding a document until after fact discovery and producing it only upon threat of a motion to compel.”

Therefore, Judge Bullock granted Magma’s motion, and prohibited TRW from introducing testimony related to the doctrine of equivalents and the testing report, as well as the testing report itself.  The Judge further ordered TRW, within three days, to submit revised witness statements of any witnesses that testify regarding these subjects.  Finally, he struck the portions of TRW’s pre-hearing brief that related to these subjects.

The pace of discovery in the ITC is very fast, and discovery deadlines are often strictly enforced.  Moreover, because of the pace, tasks that often proceed serially in district court litigation, such as fact discovery and expert testing, must by necessity proceed in parallel.  It is, therefore, essential that parties and practitioners be prepared to produce relevant documents and information (including contentions) promptly.  Although the parties may desire to shield certain documents and information for legitimate purposes (such as a claim of privilege), the consequences of withholding information should also be carefully considered.  As seen in this case, those consequences may include having substantial parts of a party’s case precluded.