On September 27, 2013, ALJ E. James Gildea issued the public version of Order No. 28 (dated September 12, 2013) in Certain Integrated Circuit Devices and Products Containing the Same (Inv. No. 337-TA-873).

According to the Order, Respondents filed a motion to supplement their invalidity contentions in response to discovery that Intel Corporation (“Intel”), a nonparty, provided related to Intel prior art products and inventive activities (collectively, the “Intel Prior Art”). 

Complainant Tela Innovations Inc. (“Complainant”) opposed the motion alleging that Respondents did not give proper notice with respect to the prior art, that Respondents had documents publicly available to them which made it possible to assert the contentions sooner, and that Complainant would be prejudiced because it had no opportunity for discovery related to the Intel Prior Art. 

ALJ Gildea found that the Respondents demonstrated good cause for amending their invalidity contentions.  ALJ Gildea found that Respondents documented their efforts to both obtain discovery from Intel, and prod Intel when there were unexpected delays.  Additionally, Respondents named the Intel Prior Art in their Notice of Prior Art and were consistent in keeping Complainant aware of their intentions regarding this prior art.  Therefore, ALJ Gildea found that Complainant had fair opportunity to conduct its own discovery related to the Intel Prior Art, and that any prejudice was minimal.  ALJ Gildea also rejected Complainant’s arguments that the public documents meant that Respondents’ contentions should have been made sooner, because the contentions could not be solidified until Respondents had reviewed the Intel Prior Art.