On October 28, 2014, ALJ Theodore R. Essex issued the public version of Order No. 13 (dated October 23, 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.  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, Magna filed a motion to strike alleged prior art and related documents improperly disclosed by TRW.  On October 16, 2015, Magna submitted a notice to withdraw portions of its motion to strike related to documents concerning the '929 patent because ALJ Essex had terminated the investigation in part with respect to the '929 patent.  Thus, Magna's motion to strike was directed only to U.S. Patent No. 6,445,287 (the '287 patent) which relates to U.S. patent No. 8,692,659 (the '659 patent), which is part of the investigation.

Magna argued that in TRW's Initial Expert Report of Dr. Homayoon Kazerooni (the "Kazerooni Report") regarding the validity of the '659 patent and U.S. Patent No. 8,686,840 (the '840 patent) Dr. Kazerooni opined that multiple claims of the '659 patent were rendered obvious by the '287 patent.  Magna averred that this was the first time that the '287 patent was identified as a 35 U.S.C. § 103 reference against the '659 patent and that TRW did not disclose such a contention in its invalidity contention interrogatory responses.  In its motion, Magna cited to Ground Rule 5.2 which requires that a party alleging that any asserted claim is invalid in view of prior art "must file on or before the date set in the procedural schedule, notices of any prior art" providing detailed information as to each prior art reference.  Magna also noted that Ground Rule 5.2 also provides that "[i]n the absence of such notice, proof of the said matters may not be introduced into evidence at the hearing except upon a timely written motion showing good cause."  Accordingly, Magna requested that Dr. Kazerooni's use of the '287 reference as a 35 U.S.C. § 103 reference against the '659 patent be stricken from his report and that TRW and Dr. Kazerooni be precluded from relying on the '287 patent to challenge the validity of the asserted patents.

In response, TRW noted that the '287 patent is a parent patent to the '659 patent, has the same specification as the '659 patent, and that the '659 patent claims priority to the '287 patent through a direct line of continuation patent applications.  TRW also submitted, however, that due to a break in the continuity of disclosure the '659 patent is not entitled to claim priority to the '287 patent, making the '287 patent prior art to the '659 patent.  TRW also argued that on August 5, 2014 TRW filed a Notice of Prior Art for the '659 patent and that, after filing its Notice, Magna requested that TRW specifically identify the prior art contained within the prosecution histories of the patents-in-suit referenced in the Notice.  TRW stated that it subsequently filed an unopposed motion seeking leave to file a Supplemental Notice of Prior Art, which was granted, and that the Supplemental Notice listed the '287 patent as prior art to the '659 patent.  TRW contended that in response to Magna's Interrogatory No. 98, TRW put Magna on notice to its use of patents and applications to which the '659 patent claims priority.  Additionally, TRW argued that the '287 patent was identified as a 35 U.S.C. § 103 reference because the contention interrogatory responses put Magna on notice that TRW was relying on patents to which the '659 patent claims priority to support its contention that the '659 patent was invalid.  TRW further argued that Dr. Kazerooni's report merely explained the invalidity position contained in TRW's contention interrogatory responses, that Magna failed to cite any evidentiary support for its allegations regarding the '287 patent, and that Magna is not prejudiced by Dr. Kazerooni's opinions regarding the '287 patent as a 35 U.S.C. § 103 reference in his expert report.

ALJ Essex granted-in-part the motion, finding that the contention that the asserted claims of the '659 patent were obvious in light of the '287 patent was raised for the first time in Dr. Kazerooni's expert report, which was after the cut-off date for responses to contention interrogatories for which the party bears the burden of proof.  ALJ Essex found that TRW's arguments were unpersuasive and that although the '287 patent was listed in Appendix F to TRW's Final Notice of Prior Art, it was not one of the eighteen 35 U.S.C. § 103 references asserted against the '659 patent in TRW's final invalidity contention interrogatory response.  ALJ Essex also found that TRW's contention that its response to Interrogatory No. 98 legitimately included the '287 patent was disingenuous because TRW's response did not provide any details with respect to the '287 patent.  ALJ Essex found that TRW was precluded from relying on the portion of Dr. Kazerooni's report based on the '287 patent because TRW did not properly disclose its contention regarding the '287 patent in its contention interrogatory response.  Accordingly, ALJ Essex struck the portion of Dr. Kazerooni's expert report using the '287 patent as a 35 U.S.C. § 103 reference against the '659 patent and precluded TRW and Dr. Kazerooni from relying on the '287 patent to challenge the validity of the '659 patent.  ALJ Essex denied the remaining part of the motion as moot.