On March 28, 2014, ALJ Theodore R. Essex issued the public version of Order No. 111 (dated March 6, 2014) granting Complainants’ Motion to Strike in Certain Wireless Devices With 3G And/Or 4G Capabilities And Components Thereof (Inv. 337-TA-868).

By way of background, the investigation in this matter is based on a January 2, 2013 complaint filed by InterDigital Communications, Inc., InterDigital Technology Corporation, IPR Licensing, Inc., and InterDigital Holdings, Inc. (collectively, “InterDigital”) alleging violation of Section 337 in the importation into the U.S. and sale of certain wireless devices with 3G and/or 4G capabilities and components thereof that infringe one or more claims of U.S. Patent Nos. 7,190,966 (the ‘966 patent); 7,286,847 (the ‘847 patent); 8,009,636; 7,706,830; 7,941,151; 7,616,970 and 7,502,406.  See our January 3, 2013 and February 1, 2013 posts for more details on the complaint and Notice of Investigation, respectively.

According to Order No. 111, InterDigital moved to strike new arguments contained in Respondents’ supplemental pre-hearing brief regarding the ‘966 and ‘847 patents. 

InterDigital argued that Respondents raised a new argument and that Respondents were previously aware of InterDigital’s infringement theory as it was raised in InterDigital’s summary determination motions, pre-hearing brief, and witness statements.  InterDigital further asserted that the limited supplementation allowed by Order No. 109 did not permit a party to “reserve” the right to make unspecified arguments without the requisite particularity.  Respondents asserted that InterDigital’s infringement theory was not raised in its contentions, expert reports, and witness statement, and did not appear in the investigation until the summary determination motions were filed.  Respondents argued that they had already moved to strike the new theory and had provided notice in their pre-hearing brief that they would address the untimely theory if InterDigital asserted it and if Respondents’ motion in limine was denied.  Respondents further argued that InterDigital’s infringement theory was belated and that “it would be contrary to principles of fundamental fairness to prevent respondents from defending against InterDigital’s new theory.”

ALJ Essex stated that Order No. 109 gave the parties a limited opportunity to supplement their pre-hearing briefs regarding how they intended to rely on the 337-TA-613 Remand Opinion, and noted that Order No. 109 was not a “carte blanche” for the parties to include arguments that they knew of but chose not to include in their pre-hearing brief.  ALJ Essex additionally noted that the paragraph InterDigital sought to strike did not contain any references to the 337-TA-613 Remand Opinion, instead it contained citations to Respondents’ expert rebuttal witness statements and responses to the infringement argument InterDigital raised in its pre-hearing brief and motions for summary determination.  ALJ Essex found that this contested paragraph was not proper supplementation under Order No. 109, and that if Respondents wanted to supplement their pre-hearing brief because their motions for summary determination and in limine were denied, they should have sought leave to do so.  Accordingly, ALJ Essex granted the motion to strike.