On September 16, 2013, Chief ALJ Charles E. Bullock issued Order No. 9 in Certain Windshield Wiper Devices and Components Thereof (Inv. No. 337-TA-881).
According to the Order, Respondents Trico Products Corporation and Trico Componentes SA de CV (collectively, “Trico”) filed a motion to compel Complainants Federal-Mogul Corporation and Federal-Mogul SA (collectively, “FM”) to produce documents responsive to certain document requests relating to the conception and reduction to practice of the claimed invention. In support of the motion, Trico argued that the bulk of the documents produced by FM thus far related to the prosecution of the asserted patent and its foreign counterparts, but additional documents relating to the conception and reduction to practice of the claim invention exist because FM has produced documents surrounding the claimed priority date that are part of a larger series of reports. Trico further argued that (1) it has not yet received documents relating to communications between the three named inventors, drawings, design specifications, notes and tests; and (2) FM has taken inconsistent positions regarding its production, asserting that production was both complete and will be supplemented. FM opposed the motion and argued, among other things, that it conducted a reasonable and diligent search for responsive documents. The Commission Investigative Staff (“OUII”) noted that the documents sought by Trico are relevant and within the scope of discovery because they relate to Trico’s affirmative defenses of invalidity and unenforceability. OUII further noted that FM has only produced a single email from one of the three inventors and that it was “unusual for a multinational corporation to have such a dearth of documents relating to the invention, conception, and reduction to practice of the claimed invention.”
In the Order, ALJ Bullock granted Trico’s motion to compel FM to produce documents responsive to certain document requests relating to the conception and reduction to practice of the claimed invention. Specifically, ALJ Bullock determined that FM’s “opposition consists entirely of attorney argument” and that “[n]o declarations were submitted to detail the search [FM] has undertaken or to describe the document retention policy allegedly responsible for the dearth of conception-related documents.” ALJ Bullock further determined that “there is evidence which suggests that additional documents related to the conception and reduction to practice of the claimed invention exist.” Accordingly, ALJ Bullock granted Trico’s motion.