On April 23, 2015, in the matter of Certain Windshield Wipers and Components Thereof, ITC Inv. Nos. 337-TA-928, 337-TA-937, ALJ Thomas B. Pender issued an order granting Respondents’ opposed motion to supplement its notice of prior art and invalidity contentions, noting the primary basis for allowing supplementation was the little prejudice Complainants would suffer because expert discovery had not yet begun and the burden of proving invalidity lays with Respondents.

ALJ Pender also reviewed the facts in view of Ground Rule 7.6, which provides for amendment of mandatory disclosures (e.g., the notice of prior art and invalidity contentions) upon a showing of good cause. First, Ground Rule 7.6 specifically contemplates a good cause showing where the ALJ’s claim construction is different from that proposed by the party seeking amendment. Here, ALJ Pender only recently issued a claim construction order (issued less than two weeks before Respondents moved to amend) and several constructions were different from those proposed by Respondents. Second, Ground Rule 7.6 also contemplates a good cause showing where the moving party recently discovers material prior art despite earlier diligent search. Here, Complainants recently produced documents and made available for deposition certain witnesses. Lastly, ALJ Pender noted the prior art in question appeared relevant to the merits of the investigation, further supporting a finding of good cause.

While ITC deadlines come quickly and can often carry preclusive consequences, ITC investigations are based on the development of a full factual record.  Thus, allowances can be made in cases where good cause exists for a party to supplement the record after a deadline.  However, in investigations with specific provisions for supplementing contentions and similar disclosures, amendment requests must be supported by facts within the circumstances provided under the Ground Rules and should be made as early as possible (preferably before the start of expert discovery).