On January 10, 2017, Judge McNamara issued the public version of Order No. 22 in Certain Composite Aerogel Insulation Materials and Methods for Manufacturing the Same, Inv. 337-TA-1003, striking Respondents’ late disclosed prior art and invalidity contentions.

Pursuant to Commission Rule 210.15, Complainant Aspen Aerogels, Inc. moved to strike, and preclude the use of, information that it alleges was untimely disclosed by Respondents Guangdong Alison Hi-Tech Co., Ltd. and Nano Tech Co., Ltd. Specifically at issue were physical samples of glass fiber that Respondents contend are embodiments of prior art references disclosed in their Notice of Prior Art, as well as Respondents’ supplemental invalidity contentions that contained new combinations of previously disclosed prior art. In its motion, Complainant argued that, because the Notice of Prior Art was due on August 12, 2016, and final invalidity contentions were due on September 26, 2016, that both the physical samples and supplemental contentions should be stricken as they were not provided by Respondents until November 2, 2016, and October 31, 2016, respectively.

Judge McNamara granted the motion first stating that Complainants were not afforded an opportunity to confirm whether Respondents’ assertion that the physical samples are embodiments of previously-disclosed prior art is accurate. She explained that if Respondents wish to tie the physical samples to the Notice of Prior Art or invalidity contentions, that they should have been timely disclosed pursuant to the procedural schedule. Judge McNamara further noted that the supplemental contentions were new, and therefore late, as they contained combinations of prior art that were not previously disclosed by the due date for final invalidity contentions. She reasoned that because Respondents had failed to move for leave to provide the late-disclosed prior art and supplemental invalidity contentions that they violated the Ground Rules. Accordingly, the ALJ struck the late disclosures and precluded their entry into evidence at trial.

Takeaway

Section 337 investigations are fast-paced and usually go to trial within nine months. In this case, the Notice of Prior Art was due only about two months after the institution of the investigation. Because of this fast pace and usually tight schedule, respondents should utilize the time before institution of the investigation to work with attorneys and experts to develop a comprehensive litigation strategy including non-infringement and invalidity defenses as well as potential design-arounds. It is more difficult to begin developing these strategies after the investigation starts and the parties’ resources get mired in discovery.