On October 7, 2014, ALJ Dee Lord issued the public version of Order No. 92 (dated June 20, 2014) in Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-897).

By way of background, this investigation is based on a September 3, 2013 complaint filed by Optical Devices, LLC ("Optical") alleging violation of Section 337 in the importation into the U.S. and sale of certain optical disc drives, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,904,007; 7,196,979; 8,416,651; RE40,927; RE42,913; and RE43,681.  See our September 6, 2013 and October 23, 2013 posts for more details on the complaint and Notice of Investigation, respectively. 

According to the Order, Respondents Nintendo Co., Ltd. and Nintendo of America, Inc. (collectively, "Nintendo") filed a motion to strike all references to the Wii U from Dr. Aris Silzars' witness statement and also requested expedited briefing.  Optical opposed the motion.  In its motion, Nintendo argued that on June 16, 2014, it requested that Optical withdraw statements related to the Wii U in light of Order Nos. 62 and 77 and that Optical stated it was not ready to discuss the motion during a June 16, 2014 meet and confer.  Nintendo also requested that the Ground Rule 3.2 requirements be waived because Nintendo had to respond to Dr. Silzars' statements by June 30, 2014.

In its motion, Nintendo argued that Order Nos. 62 and 77 had already made clear that the Wii U is not an accused product in the investigation and that, despite these two Orders, Dr. Silzars' Witness Statement contained 235 questions concerning the Wii U.  Nintendo argued that all of the references to the Wii U in Dr. Silzars' Witness Statement, including Questions Q1805-Q2040, should be stricken.

In its opposition, Optical conceded that the Wii U is not a part of the investigation, but nonetheless argued that it was relying on the Wii U's optical disc drive as a device that is representative of all Nintendo products for the purposes of an infringement analysis.  Optical argued that even though the optical disc drive in the Wii U and Wii are identical in terms of an infringement analysis, the Wii U's optical disc drive structure is easier to analyze for the purpose of demonstrating infringement.  Optical also argued that Nintendo was not prejudiced because it had already addressed the analysis of the Wii U in its rebuttal expert reports and because the analysis of the Wii U is relied upon solely as being representative of the Wii.

On April 22, 2014, in Order No. 62, ALJ Lord ordered that Optical's responses to interrogatories including infringement analysis of the Wii U be stricken and stated that the Wii U would not be "one of the devices that is subject to the proceeding as we go forward."  On May 12, 2014, in Order No. 77, ALJ Lord denied Optical's motion for interlocutory review of the decision in Order No. 62 to exclude the Wii U, finding that Optical had failed to exercise diligence in seeking discovery of the Wii U, identifying the Wii U as an accused device, and providing infringement contentions regarding the Wii U.  Therefore, ALJ Lord found that Optical had waived its right to assert the Wii U as an accused device in the investigation.

With respect to the motion to strike here, ALJ Lord found that Optical's reliance on the Wii U's optical disc dive as a "representative device" for all Nintendo products did not excuse or correct its failure to timely disclose its analysis of the Wii U and that, although Nintendo responded to Optical's analysis of the Wii U in Dr. Manuripur's rebuttal report, it did not mean that Nintendo was not prejudiced by Optical's unreasonable delay in providing its analysis.  Accordingly, as Optical had not demonstrated good cause for its delay and Nintendo would be prejudiced if Optical was allowed to rely on the untimely infringement analysis of the Wii U, Nintendo's motion was granted and all reference to the Wii U were ordered stricken from Dr. Silzars' Witness Statement.