Complainant, Samsung, filed a motion to strike certain paragraphs of Apple's expert's, Dr. James Davis, report regarding non-infringement and lack of a domestic industry. Samsung asserted that the Davis Report contained arguments that Apple failed to disclose in response to interrogatories and, as a result, Samsung was prejudiced because the untimely arguments prevented Samsung's infringement and domestic industry expert from addressing them. Samsung explained that after late discovery from a non-party, Qualcomm, Apple should have supplemented its contentions and instead waited until the rebuttal report to assert for the first time that Samsung had not shown sufficient evidence to establish the domestic industry requirement.
Apple responded by arguing that Dr. Davis's opinion was not new because Apple's interrogatory responses expressly identified that Samsung failed to put forth evidence that the domestic industry products input the specific information needed for the patent-in-suit. Apple also asserted that Samsung was engaging in discovery gamesmanship in that the Qualcomm deposition occurred after Samsung's initial report was submitted and that the Administrative Law Judge had approve the late deposition.
After reviewing the discovery responses and the Davis Report, the Administrative Law Judge concluded that Apple did not disclose the theory in its discovery responses and the Davis Report was not an elaboration of what was previous disclosed, as Apple termed it. The Administrative Law Judge also noted that the parties had jointly represented that the Qualcomm deposition would not affect any deadlines. The Administrative Law Judge stated that this was apparently a "half-truth, because this discovery directly impacted the expert reports and was poorly timed, as outlined in their respective papers." The Administrative Law Judge also stated that: "The Administrative Law Judge is not persuaded that Respondent could not have disclosed more detailed contentions with respect to domestic industry related to claim 75 of the '348 patent prior to Dr. Min's initial expert report on the topic. By waiting until Dr. Davis' rebuttal report to fully disclose this contention, Complainants could do little more than speculate based on the questions Respondent was asking at the pertinent Qualcomm deposition. (Opp. At 6.) Consequently, the administrative Law Judge finds that a grant of some relief is appropriate here. See e.g. Certain Electronic Devices With Image Processing Systems, Components Thereof, and Associated Software, Inv. No. 337-TA-724, Order No. 24 (U.S.I.T.C., 2011)."
Nonetheless, the Administrative Law Judge found that Samsung sought to strike more than what was necessary to remedy the situation. Indeed, certain of the paragraphs Samsung requested to be stricken did not contain the undisclosed argument and with respect to those paragraphs, the Administrative Law Judge denied Samsung's motion to strike.
In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers, Inv. No. 337-TA-794 (May 11, 2012 (Administrative Law Judge E. James Gildea)