On October 21, 2014, ALJ Theodore R. Essex issued the public version of Order No. 11 (dated October 9, 2014) in Certain Vision-Based Driver Assistance System Cameras and Components Thereof (Inv. No. 337-TA-907).

By way of background, this investigation is based on a December 23, 2013 complaint filed by Magna Electronics Inc. ("Magna") against TRW Automotive U.S. LLC ("TRW") alleging violations of Section 337 in the importation into the U.S. and sale of certain vision-based driver assistance system cameras that infringe one or more claims of U.S. Patent Nos. 8,116,929 (the '929 patent) and 8,593,521 (the '521 patent).  See our December 30, 2013 and January 24, 2014 posts for more details on the complaint and Notice of Investigation, respectively. 

According to the Order, TRW filed a motion to strike and preclude Magna from relying on late-disclosed testing activities. In its motion, TRW requested the following "(1) strike any references in the expert report of [Magna's expert] Dr. Paul S. Min made with respect to testing activities that Magna failed to disclose during fact discovery; (2) preclude Dr. Min from testifying about such late-disclosed testing at trial; and (3) otherwise preclude Magna from relying on the late-disclosed testing activities at trial."  TRW argued that Magna's disclosure of testing activities after the close of fact discovery was highly prejudicial to TRW because TRW was time-barred from conducting further fact discovery or deposing fact witnesses who were involved in the late-disclosed testing activities.  TRW contended that it was also prevented from effectively challenging the reliability, accuracy, or methodology of the late-disclosed testing activities.  TRW specifically requested that portions of Dr. Min's expert report be stricken because none of the testing activities from the expert report were disclosed during fact discovery, despite TRW's contention that it requested the information relating to such activities.

TRW submitted that in several interrogatories that were served on Magna it requested to disclosure of information related to testing of the accused products and the alleged domestic industry products.  TRW further contended that these interrogatories were not limited to testing that Magna had independently performed, and that Magna did not object to these interrogatories to the extent that they sought information regarding testing performed by any expert in this investigation.  TRW stated that fact discovery closed on August 29, 2014 and that Magna did not disclose any information regarding the testing until September 11, 2014 when it was referenced by Magna's expert.  TRW also argued that Magna's decision to withhold relevant information was highly prejudicial and that Magna should not be allowed to benefit from its failure to comply with discovery deadlines set by the procedural schedule.  TRW further contended that Magna had knowledge of the testing and chose not to disclose the information prior to the close of fact discovery.

Magna contended that the only basis for TRW's motion to strike is that Dr. Min's testing was not disclosed during fact discovery in response to TRW's interrogatories.  Magna argued, however, that the testing was properly disclosed in Dr. Min's expert report on September 11, 2014, which is when the parties were supposed to exchange expert reports and identify tests, surveys, and data.  Magna also stated that TRW presented no legal authority for the assertion to exclude expert opinions that complied with the procedural schedule.  With respect to the interrogatories, Magna argued that the information about Dr. Min's expert testing was not responsive to the TRW interrogatories and that even if it was, TRW suffered no prejudice in waiting for Dr. Min to disclose information about the testing in his expert report.  Magna also contended that TRW had multiple opportunities to depose Magna on testing conducted by Magna and learned that Magna did not independently conduct testing, that to the extent Magna employees were "involved" in Dr. Min's testing, they were acting under his direction and control, and that TRW had an opportunity to depose Dr. Min on all aspects of his testing.  Therefore, Magna argued that TRW had suffered no prejudice.

The Commission Investigative Staff ("OUII") also opposed TRW's motion to strike but argued that Magna should not be allowed to rely on its late-disclosed testing activities unless fact discovery was reopened to allow for additional discovery.  OUII submitted, however, that if fact discovery was not reopened then the relief sought by TRW would be appropriate.  OUII also pointed out that OUII served interrogatories on Magna seeking information regarding the testing of any of the accused products or domestic products performed by Magna or on Magna's behalf and that Magna did not describe any specific testing activities in response to its interrogatories.  OUII further noted that Magna did not disclose any of Dr. Min's testing activities in its interrogatory responses and that when the failure to disclose the information was brought to Magna's attention, Magna did not offer to supplement its responses.  OUII also contended that the testing activities fell within the scope of TRW's and OUII's interrogatories, should have been disclosed to TRW and OUII during discovery, and that Magna's failure to disclose Dr. Min's testing activities should not be without consequence.

ALJ Essex determined that portions of the expert report should be stricken due to Magna's failure to disclose the testing performed, especially the testing performed at Magna's facilities.  ALJ Essex found that the location of the testing was relevant as it triggered Magna's obligation to respond to the interrogatories.  ALJ Essex stated that, based on the evidence, Magna was fully aware that Dr. Min was performing tests on the accused products and domestic industry products using its own facilities and employees and the fact that Magna did not know the specifics of the testing did not absolve it of its responsibility to find out such information and disclose it in response to propounded discovery.  ALJ Essex also declined to accept Magna's conflation of expert and fact discovery.  ALJ Essex noted that Dr. Min's opinions on the testing and results were appropriately reserved for expert discovery, however the fact that Dr. Min performed the tests, the nature of the tests, and the circumstances surrounding the tests were not. Accordingly, ALJ Essex noted that Magna was obligated to timely disclose this information.

ALJ Essex further found that Magna's failure to disclose the testing information was clearly prejudicial because TRW and OUII did not have the opportunity to depose any fact witnesses involved in the testing process or review documents and other materials related to the testing.  ALJ Essex stated that the fact that Magna did not disclose the testing activities, even after the failure to disclose them was brought to Magna's attention, showed that Magna did not intend to properly answer the interrogatories and was a strategic decision on Magna's part.  ALJ Essex found that reopening discovery to allow Magna to correct its strategic decision was not warranted.  Accordingly, ALJ Essex granted TRW's motion.