On June 12, 2013 ALJ Theodore R. Essex issued the public versions of Order No. 13 (dated April 23, 2013), Order No. 14 (dated May 29, 2013), and Order No. 15 (dated May 29, 2013) in Certain Optoelectronic Devices for Fiber Optic Communications, Components Thereof, and Products Containing Same (Inv. No. 337-TA-860).

By way of background, the investigation is based on a complaint and letters supplementing the complaint filed by Avago Technologies Fiber IP (Singapore) Pte. Ltd., Avago Technologies General IP (Singapore) Pte. Ltd., and Avago Technologies U.S. Inc. (collectively, “Avago”) alleging violation of Section 337 in the importation into the U.S. and sale of certain optoelectronic devices for fiber optic communications, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,947,456 (“the ‘456 patent”) and 5,596,595 (“the ‘595 patent”).  See our September 26, 2012 post for more details.

According to Order No. 13, the procedural schedule set March 15, 2013 as the deadline for providing contentions in response to interrogatories.  On March 14, 2013, Avago filed a motion for an extension of time in relation to its infringement contentions, alleging that Respondents’ late production of product samples made it impossible for Avago to analyze the products and complete its responses in a timely manner.  This motion was granted.  Although Avago had also filed incomplete answers in response to domestic industry and conception/reduction to practice contentions, these topics were not specifically addressed in Avago’s motion.  Therefore, when Avago filed supplemental responses to contentions based on infringement, domestic industry, and conception/reduction to practice, Respondents filed a joint motion to strike the supplemental responses related to domestic industry and conception/reduction to practice. 

ALJ Essex began by noting that Avago’s supplements are “wholesale additions of new theories” rather than simple supplementation of the evidence, and that Avago’s good cause arguments are “frivolous” because Avago “does not provide any connection between Respondents’ production or alleged discovery failures and conception and reduction to practice and the ALJ cannot even imagine one.”  The ALJ also agreed that Respondents were prejudiced by Avago’s abuse of the procedural schedule and “disingenuous conduct” in attempting to broaden their request from an extension in relation to infringement contention responses to an extension for all responses.  ALJ Essex also emphasized that Avago’s domestic industry and conception/reduction to practice documents “rest entirely on information within Avago’s control,” and “[i]f Avago cannot determine how its own products read on the claims of its own patents, then the ALJ is unsure how any amount of time can cure that problem.”  As such, ALJ Essex granted Respondents’ motion in its entirety.

According to Order No. 14, Respondents filed a joint motion to strike certain infringement contentions and claim construction opinions in Avago’s report filed by expert Dr. Dennis Deppe.  Although Respondents argue that these contentions are untimely and include new claim constructions, the ALJ agreed with Avago that Respondents’ concerns are more properly addressed by cross-examination of Dr. Deppe than by striking portions of his report.  ALJ Essex specifically noted that he “will be interested in Dr. Deppe’s explanation of his altered infringement theory.”

According to Order No. 15, Respondents filed a joint motion to strike portions of Avago’s experts’ rebuttal expert reports, characterized by the ALJ as “the latest chapter in the drama arising from Avago’s contention interrogatory responses and its untimely efforts to supplement those responses.”  Specifically, Respondents argue that Avago was improperly attempting to use domestic industry evidence ordered stricken in Order No. 13 as evidence of commercial success supporting secondary considerations of nonobviousness, and that this information was never identified in Avago’s validity contention interrogatory responses.  Although Avago argued that it identified the documents relied on by the experts in its responses, ALJ Essex was not persuaded, noting “a laundry list of Bates numbers is insufficient.”  However, rather than granting the motion in its entirety, the ALJ allowed Avago to rely on sales data and claims incorporated by reference into its timely-filed validity contentions.  All supplemental information filed after the March 15, 2013 cut-off date was ordered to be excluded, and thus the motion was granted-in-part.