On May 31, 2012, ALJ Thomas B. Pender issued the public version of Order No. 31 (dated May 16, 2012) in Certain Light-Emitting Diodes and Products Containing the Same (Inv. No. 337-TA-785). At issue in the Order was the propriety of complainant OSRAM AG’s (“OSRAM”) contention interrogatory responses served after February 24, 2012.
On March 8, 2012, OSRAM served supplemental responses to certain contention interrogatories (including infringement contentions and domestic industry contentions) on respondents LG Electronics, Inc., LG Innotek Co., Ltd., LG Electronics U.S.A., Inc., and LG Innotek U.S.A., Inc. (collectively, “LG”) and respondents Samsung Electronics, Co., Ltd., Samsung Electronics America, Inc., Samsung LED Co., Ltd., and Samsung LED America, Inc. (collectively, “Samsung”). According to the Order, these supplemental responses violated a February 24, 2012 deadline, previously agreed upon by the parties. On March 20, ALJ Pender ordered OSRAM to show cause as to why it should not be sanctioned. On March 26, 2012, OSRAM responded to the order by filing its showing of cause as to why it should not be bound by its earlier-served contentions and served additional supplemental responses to contention interrogatories related to priority. On April 2, 2012, LG and Samsung filed a submission stating that OSRAM should be bound by its earlier-served contentions.
In determining whether to sanction OSRAM, ALJ Pender found that OSRAM had a duty to supplement its responses no later than February 24, including responses regarding infringement, domestic industry, and priority.
Regarding infringement contentions, ALJ Pender determined that, as of February 24, OSRAM’s responses regarding infringement allegations and claim charts merely reproduced what had been set forth in the complaint. The ALJ noted that this was true even though OSRAM had since received sufficient discovery from LG and Samsung. If OSRAM were having difficulty meeting the February 24 deadline, according to the Order, OSRAM should have requested an extension of time or otherwise informed LG and Samsung of its difficulty. ALJ Pender found that OSRAM had failed to offer any legitimate explanation for its failure to request an extension. Moreover, the ALJ determined that OSRAM had the capability and the information required to supplement its responses on the February 24 deadline. Rather, the ALJ determined, OSRAM knowingly did not begin preparing its supplemental responses until February 23 and served “less than complete” responses on February 24. According to the Order, OSRAM failed to offer any logical reason why it could not have started preparing its supplementation earlier and incorporated additional discovery as it became available.
With regard to domestic industry contentions, despite a previous admonition for delays in responding to domestic industry discovery requests (see our November 8, 2011 post), OSRAM’s February 24 response included only representative domestic industry claim charts. Such charts, ALJ Pender determined, failed to fully state OSRAM’s domestic industry contentions. As the facts proving domestic industry were in OSRAM’s sole control and possession, ALJ Pender determined that OSRAM had “no rational excuse” for not meeting the deadline.
As to OSRAM’s priority contentions, the ALJ determined that OSRAM’s March 26 supplemental responses were improper and that OSRAM failed to explain why it could not have provided this supplement by the deadline.
Ultimately, ALJ Pender determined that OSRAM had a duty to supplement its contention interrogatory responses on February 24. OSRAM’s failure to do so, the ALJ determined, was not substantially justified and was not harmless. Accordingly, ALJ Pender found that OSRAM had failed to provide certain information and should not be allowed to use such information at the hearing. Thus, the ALJ sanctioned OSRAM, limiting its infringement contentions to the claims and products for which it provided claim charts in its February 24 response (with an exception for products whose entire technical documentation was produced to OSRAM after February 24 or for which OSRAM can show it had no basis to allege infringement before February 24), limiting it to the assertions of literal infringement set forth in its February 24 response, limiting its domestic industry contentions to the evidence and claims identified in its February 24 response (and specifically the claims and domestic industry products for which it submitted claim charts and the evidence and documentation identified in those charts), and limiting OSRAM’s priority contentions regarding conception, reduction to practice, and priority to those in OSRAM’s January 21 response.