On June 24, 2014, ALJ Theodore R. Essex issued the public versions of Order No. 12 (dated May 30, 2014), Order No. 14 (dated June 5, 2014) and Order No. 16 (dated June 18, 2014) in Certain Windshield Wipers and Components Thereof (Inv. No. 337-TA-902).

According to Order No. 12, Respondents Federal-Mogul Corp. and Federal-Mogul S.A. (collectively, “Federal-Mogul”) moved for reconsideration and/or clarification of Order No. 9 (or, alternatively, for leave to seek Commission review) granting-in-part Complainant Trico Products Corp.’s (“Trico”) motion to strike Federal-Mogul’s untimely invalidity contentions.  See our June 6, 2014 post for additional details regarding Order No. 9.  Federal-Mogul argued that under Order No. 9, and to prevent manifest injustice, it should permitted to advance any invalidity contention subject to Interrogatories 20 and 21 that was otherwise made available to Trico on or before February 27, 2014, specifically a claim chart for German Patent DE 19627115 (“the ’115 patent”) that was produced before the contention deadline.  Federal-Mogul pointed out that the ’115 patent was disclosed in the Notice of Prior Art, and that Federal-Mogul produced the Bosch claim chart related to the ’115 patent prior to the contention deadline.  Further, Federal-Mogul contended that Trico is not prejudiced by the timing of the production of Federal-Mogul ’s claim charts because Trico’s expert fully addressed in his rebuttal report each of the eight references on which Federal-Mogul relies, including the ’115 patent.  Trico countered that Federal-Mogul did not timely produce invalidity contentions with respect to the ’115 patent and is “attempting to cloak the Bosch claim charts — produced as part of a third-party production in this Investigation — which were not identified by Federal-Mogul in response to Trico’s contention interrogatories at any time during this Investigation, as a sufficient disclosure for Federal-Mogul to argue that the ’115 patent is not struck by virtue of Order No. 9.”  Trico also argued out that the Bosch claim charts do not disclose the ’115 patent or its equivalent, and that Federal-Mogul never provided notice to Trico that it intended to rely on the Bosch claim charts.  The Commission Investigative Staff (“OUII”) also opposed reconsideration, stating that as Federal-Mogul “failed to include this reference within its response to Interrogatories 20 and 21, it cannot reasonably argue[] Trico should have understood the third party document from a different litigation necessarily represents [Federal-Mogul's] invalidity contentions in this investigation.”  ALJ Essex agreed with Trico and the OUII that Federal-Mogul raised no new questions that it could not have raised previously, and denied the motion.

According to Order No. 14, Federal-Mogul requested leave to use supplemental document productions related to its No Top Flash (“NTF”) alternative design because the productions are consistent with the duty to supplement pursuant to Rule 210.27(f)(1), even after the close of fact discovery.  Federal-Mogul argued that the component drawings, release authorizations, and test reports relating to the NTF design were not in existence before the close of discovery.  Federal-Mogul also asserted that its initial interrogatory responses were rendered incomplete once Trico untimely disclosed its “weld flash” spacing formation infringement contention, and that Federal-Mogul began design validation of the NTF alternative connector three days later.  Trico responded that Federal-Mogul’s motion should be denied because (1) Federal-Mogul failed to satisfy its meet and confer obligations pursuant to Ground Rules 3.2 and 3.5; (2) Federal-Mogul’s attempt to show good cause by virtue of Trico advising that it would move to preclude the documents is not valid because the duty to seek leave is imposed on the party producing the document; (3) based on Federal-Mogul’s counsel’s statements, Trico had no reason to believe that Federal-Mogul would seek to put the NTF design materials into evidence; (4) Federal-Mogul’s claim that it began to work on the NTF prototypes after Trico disclosed its “weld flash” contention is untrue; (5) when asked about the one prototype produced on the second-to-last day of fact discovery during a call with the ALJ, Federal-Mogul stated that it was “merely a demonstrative”; and (6) the prototype products are not sold or imported in the U.S.  The OUII also opposed the motion on the grounds that (1) other than an email stating its intent to file the motion, Federal-Mogul never raised the motion in discussions between the parties; (2) the motion lacks clarity as to whether leave is sought to admit documents into discovery and/or admit documents as evidentiary exhibits; and (3) there is insufficient information that the alternative design currently undergoing validation will actually be a product imported for Federal-Mogul’s customers, or whether further design changes will be made.  ALJ Essex agreed with Trico and the OUII and denied the motion.

According to Order No. 16, Trico requested that Federal-Mogul be found in default for failing to cooperate in discovery.  In particular, Trico contends that (1) Federal-Mogul’s six document productions since the close of discovery shows that Federal-Mogul misrepresented to the ALJ that it had produced all relevant, responsive documents; (2) Federal-Mogul ignored a clear order from the ALJ requiring it to either produce all documents on its privilege log that contain proprietary information of its customers, or file a motion explaining why those documents are not privileged; (3)  Federal-Moguls late production of documents relating to “welding,” “welding well,” and design changes thereto warrant the imposition of an adverse inference that each of Federal-Mogul’s accused products be found to have at least one spacing formation carried by the support structure as required by the asserted claims of U.S. Patent No. 6,799,348.  Federal-Mogul responded that conducted discovery throughout this investigation in a “timely, prudent and forthright manner,” laying out an “exhaustive review” of the over 3,000 documents it produced since March 7, 2014 that either were not in existence, contained confidential customer information, or were timely produced in supplemental productions.  Federal-Mogul argued that neither default nor an adverse inference on infringement are warranted under these circumstances.  The OUII took the position that the “drastic relief” of default should only apply against parties that refuse to partake in discovery, but agreed with Trico that an adverse inference as to infringement is warranted due to Federal-Mogul’s “failure to abide by the oral orders regarding production of all relevant technical documents.”  ALJ Essex denied the motion in its entirety, finding that the record supported neither the “harsh remedy” of default nor an adverse inference.