On November 16, 2011, ALJ E. James Gildea issued the public version of Order No. 27 (dated October 28, 2011) in Certain Reduced Ignition Proclivity Cigarette Paper Wrappers and Products Containing Same (Inv. No. 337-TA-756).

By way of background, the investigation is based on a December 17, 2010 complaint and supplemental filings by Schweitzer-Mauduit International, Inc. of Alpharetta, Georgia, alleging violation of Section 337 after importation of certain reduced ignition proclivity cigarette paper wrappers and products containing same by reason of infringement of U.S. Patent Nos. 6,725,867 and 5,878,753.  The ITC identified Astra Tobacco Corporation of Chapel Hill, North Carolina; delfortgroup AG of Austria; LIPtec GMBH of Germany; and Julius Glatz GmbH of Germany as respondents in this investigation.

On October 6, 2011, the delfortgroup AG and Julius Glatz GmbH (collectively “Respondents”) moved in limine to preclude Complainant Schweitzer-Mauduit International, Inc. (“Schweitzer”) from presenting any evidence or argument regarding any theories of infringement or domestic industry based on the doctrine of equivalents.  More particularly, Respondents argued that (1) Schweitzer never property disclosed these theories during discovery or in its pleadings, and (2) the only mention of doctrine of equivalents is through “boilerplate” language used by Schweitzer’s expert in his report.  In response, Schweitzer argued that the motion should be denied because Respondents were adequately put on notice in its interrogatory responses that it may pursue doctrine of equivalents theories for infringement and domestic industry.  Schweitzer also argues that its expert opined on this issue and Respondents had opportunity to question him on this issue at his disposition.  As such, Respondents could not have been surprised or prejudiced by these arguments.  The Commission Investigative Staff (“OUII”) argued that Schweitzer’s interrogatories were sufficient to place the Respondents on notice and that Schweitzer may assert doctrine of equivalents theories for infringement and domestic industry.  However, OUII argued that the opinions in the expert report lacked factual basis and should not be relied upon.

According to the Order, ALJ Gildea noted that Schweitzer responded to Respondents’ contention interrogatories by asserting that “it reserved the right to allege doctrine of equivalents because discovery was ongoing.”  ALJ Gildea also observed that Schweitzer’s expert provided testimony in his report on the doctrine of equivalents for both infringement and domestic industry.  This was held to be sufficient to preserve Schweitzer’s doctrine of equivalents arguments, and ALJ Gildea distinguished the cases cited by Respondents by noting that, in those cases, the complainant/plaintiff had made an affirmative statement that it was not relying on the doctrine of equivalents, precluding later arguments, contrary to the record in this case.   ALJ Gildea also held that Schweitzer had not waived its arguments in any way, and that Respondents “have failed to show that they will be prejudiced by permitting Schweitzer to argue doctrine of equivalents at the hearing and in post-hearing briefs.”  Accordingly, ALJ Gildea denied Respondents’ motion in limine.