On October 2, 2015, ALJ Thomas B. Pender issued the public version of Order No. 22 (dated September 24, 2015) in Certain Lithium Metal Oxide Cathode Materials, Lithium-Ion Batteries for Power Tool Products Containing Same, and Power Tool Products with Lithium-Ion Batteries Containing Same (Inv. No. 337-TA-951).

By way of background, this investigation is based on a February 20, 2015 complaint filed by BASF Corp. and UChicago Argonne LLC (collectively, the "Complainants") alleging violation of Section 337 in the importation into the U.S., sale for importation, and/or sale within the U.S. after importation of certain lithium metal oxide cathode materials, lithium-ion batteries containing same, and products with lithium-ion batteries containing same that infringe one or more claims of U.S. Patent Nos. 6,677,082 and 6,680,143.  See our February 23, 2015 and April 1, 2015 posts for more details on the complaint and notice of investigation, respectively.

Complainants had filed a motion to strike the expert report of Respondents' witness on the basis that the report included opinions related to non-infringement contentions and test data that were not disclosed in response to Complainants' interrogatories.

In Order No. 22, ALJ Pender denied this motion, holding that "Complainants' predicament was caused by their own lack of diligence," noting also that Complainants bear the burden of proof on infringement. The ALJ found no evidence that the Respondents withheld non-privileged information during fact discovery or that Complainants were unfairly surprised by the expert witness's opinions because Complainants own testing suggested the expert witness's opinions and Complainants could have pursued third-party discovery based on the information Respondents had provided. Furthermore, the test data at issue was mostly generated after the close of fact discovery and received protection under the work-product privilege doctrine as the testing was done in the context of litigation. Additionally, ALJ Pender found that the Respondents had timely and properly disclosed the testing during the expert discovery phase of this investigation as well as the expert opinions interpreting such testing, even offering that Complainants could depose the relevant parties if needed.

However, ALJ Pender found the test reports, created by a third-party, to be problematic as the expert witness could not be properly challenged on his opinions derived from those test results. As this would obstruct a determination of the witness's credibility, ALJ Pender allowed Complainants to conduct a deposition towards this end despite the fact that the deadline had passed for this kind of discovery. Further, ALJ Pender remarked, "I view the question of the validity of these tests to be potentially critical under the unique facts of this investigation and thus to my role as a finder of fact and thus grant this exception."