On December 23, 2016, ALJ David P. Shaw issued Order No. 21 in Certain Magnetic Data Storage Tapes and Cartridges Containing the Same (Inv. No. 337-TA-1012), denying FujiFilm complainants’ motion to strike the Sony respondents’ supplemental responses to its invalidity contention interrogatories and related portions of their expert reports and to preclude Sony from relying on documents produced on the last day of discovery. The Commission Investigative Staff had supported the motion in part.

By way of background, this investigation is based on a May 27, 2016 complaint filed by FujiFilm Corporation of Japan and FujiFilm Recording Media U.S.A., Inc. alleging that Sony Corporation of Japan, Sony Corporation of America, and Sony Electronics Inc. violated Section 337 by way of unlawful importation into the U.S., selling for importation, and/or selling within the U.S. after importation certain magnetic data storage tapes and cartridges containing the same that infringe one or more claims of U.S. Patent Nos. 6,641,891; 6,703,106; 6,703,101; 6,767,612; 8,236,434; and 7,355,805. These asserted patents generally relate to magnetic tape media for data storage. See our May 31, 2016 and July 8, 2016 posts for more details on the complaint and the notice of investigation respectively.

According to the Order, during discovery, the parties had negotiated a private agreement, outside of the procedural schedule, relating to testing of the product prior art at issue in this investigation. The parties had also agreed that the “experts will be allowed to comment on or address new information disclosed for the first time in the other side’s rebuttal reports, including any testing that is disclosed in rebuttal reports.”

In Sony’s earlier responses to Fujifilm’s invalidity contentions, Sony contended that such “[t]esting will show” certain aspects of invalidity and claim interpretation. In its supplemental responses, Sony included claim charts alleging that “[t]esting by an independent expert will show that one or more of the Prior Art Products has . . . [an attribute that satisfies the claim limitation].” These supplemental charts also indicated that Sony would rely on the testing to satisfy multiple (if not all) limitations of multiple asserted claims. A few days before the end of discovery, Sony sent samples of two product-prior-art tapes to Fujifilm’s counsel; and on the last day of discovery, Sony produced many documents, at least some of which related to the prior art products. Sony then served its experts’ reports by the deadline concerning invalidity and relying on the product prior art that Sony supplied two weeks before.

FujiFilm then filed a motion seeking to strike the Sony respondents’ “untimely supplemental responses” to Fujifilm’s invalidity contention interrogatories, to strike portions of Sony’s expert reports relating to the supplemental responses, and to preclude Sony from relying on related documents that Sony produced late during discovery. The Commission Investigative Staff (“OUII”) supported the motion in part.

ALJ Shaw denied Fujifilm’s motion, finding that “Sony’s supplemental contentions have not unduly prejudiced Fujifilm, who agreed to receive testing data beyond the close of fact discovery.” In addition, the ALJ noted that Fujifilm failed to “seek an order compelling Sony to provide more explanatory responses to the interrogatories at issue” and did not show “that Sony produced documents out of time.”