Compared to other countries, the scope of discovery in the United States is broad and not limited to information admissible at trial. Particularly at the International Trade Commission (ITC), where jurisdiction stems from imported articles, such broad discovery will likely include often-overlooked, non-documentary evidence, such as sample/prototype products. In Certain Windshield Wiper Devices and Components Thereof (Windshield Wipers), Inv. No. 337-TA-881, the Administrative Law Judge (ALJ) recently weighed-in on this issue and granted the respondents’ motion to compel the complainants to produce relevant sample products, including prior art products.

The ITC Rules allow a party to obtain broad discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party. ITC Rule 210.27(b). Both complainants and respondents at the ITC can expect to produce sample products relevant to several issues in a patent-based investigation, including infringement and patentability. Moreover, the recent Commission Opinion in Certain Computers and Computer Peripheral Devices, and Components Thereof, and Products Containing the Same (Inv. No. 337-TA-841) confirmed that complainants must satisfy the technical prong of the domestic industry requirement if relying on licensing activities under Section 337(a)(3)(C). In order to affirmatively demonstrate the existence of a domestic industry under Section 337(a)(3)(C), complainants should be prepared to seek or provide samples of their licensees’ products that practice the asserted patents. If parties at the ITC fail to produce relevant samples when requested to do so, they will likely be subject to a motion to compel and, potentially, a motion for sanctions. Ultimately, failure to produce physical samples can mean failure to meet a party’s burden of proof.

The discovery period in ITC investigations is short compared to that in district court and is typically concluded in four to six months. Thus, it becomes crucial for parties at the ITC to anticipate discovery requests seeking materials that may be time-consuming and expensive to compile, such as sample or prototype products. As shown in Windshield Wipers, producing fewer samples than were requested and arguing that such samples are representative or cumulative of other relevant products or versions may not be a successful strategy, particularly for a complainant.

In Windshield Wipers, 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, Federal-Mogul) to produce sample wiper blades, including prior art blades, responsive to certain of Trico’s requests for production. Trico argued that it was entitled to discovery of the prior art wiper blades because Federal-Mogul admitted in discovery responses that it created, manufactured, and sold wipers with detachable spoilers before the claimed priority date of the patent-in-suit.

Federal-Mogul opposed the motion and argued that Trico already had samples of the X6, X5, X3, and J family blades, or that samples of the blades were made available for inspection. Additionally, Federal-Mogul contended that earlier versions of the wiper blades were not relevant to the investigation.

Chief ALJ Bullock granted Trico’s motion to compel and found Trico’s arguments regarding the sample wiper blades persuasive. The ALJ’s Order is available online. ALJ Bullock specifically pointed to Federal-Mogul’s statement in its discovery responses that “[t]o the extent Trico wants earlier versions of these blades, such samples are irrelevant because the features of the blades that are relevant to this matter, i.e. blades with spoilers, have not changed. What Trico has is representative of what exists today and what existed historically with respect to Federal-Mogul’s blades with spoilers.” The ALJ concluded that Federal-Mogul could not hide behind a unilateral determination that the blades were “representative” to avoid producing samples of blades that were relevant and responsive to Trico’s discovery requests.

PRACTICE TIPS:

  • A party should be prepared to produce sample or prototype products identified in response to discovery requests. If a party admits that relevant sample products exist and then refuses to produce such samples under its control, the party’s own statement can be used against it in a likely motion to compel.
  • Counsel and clients should work together to utilize both traditional discovery tools, such as document requests, interrogatories, depositions, subpoenas, and expert disclosures, as well as informal sources, such as public libraries, the Internet, and government sources, to identify sample products that may be relevant to an investigation, including sample products from third parties.
  • For complainants, the pre-suit investigation should include a thorough review and understanding of the patents-at-issue, prosecution history, and prior art cited during the patent application process to anticipate what sample products will need to be produced or requested.
  • Parties should request all documentation relating to any sample products provided during discovery to ensure, for example, that they were manufactured in the ordinary course and not simply for purposes of an investigation.

OTHER EXAMPLES OF DECISIONS CONCERNING PRODUCTION OF SAMPLE PRODUCTS ISSUED IN SECTION 337 PROCEEDINGS:

  • Inv. No. 337-TA-831Certain Electronic Devices for Capturing and Transmitting Images and Components Thereof, Order No. 42 – Complainant filed a motion to compel respondents to provide samples of four specific accused products. Respondents opposed the motion, noting they had already made 28 devices available for inspection. The ALJ granted the motion and ordered respondents to make samples available or provide a sworn affidavit that samples of the accused products were outside of their control.

The ALJ’s Order is available online.

  • Inv. No. 337-TA-799Certain Computer Forensic Devices and Products Containing Same, Order No. 46 – The ALJ previously issued an order granting complainant’s motion to compel respondent to produce product samples. Complainant sought non-monetary sanctions against respondent for its failure to comply with that order. Respondent opposed the motion and argued that it was in the process of negotiating an agreement with complainant regarding the accused products subject to the order and therefore believed that it did not have to produce all products and, further, that it had produced additional samples. The ITC Staff partially supported the motion but believed that the non-monetary sanctions sought by complainant were too severe. The Staff asserted that complainant should be awarded the costs for preparing and filing its motion. The ALJ agreed that respondent failed to comply with the order. Citing Commission Rule 210.33, the ALJ agreed with the Staff that monetary sanctions were appropriate and ordered respondent to pay complainant “a sum equal to the attorneys’ fees that complainant spent on filing the motion and reply,” and further noted that complainant may seek its fees relating to any supplemental expert reports that were necessitated by respondent’s delayed productions.

The ALJ’s Order is available online.