On October 4, 2011, ALJ Robert K. Rogers, Jr. issued Order No. 8 in Certain Liquid Crystal Display Devices and Products Containing the Same (Inv. No. 337-TA-782).  In the Order, the ALJ granted Complainant Samsung Electronics Co., Ltd.’s (“Samsung”) motion to strike Respondent AU Optronics Corp.’s (“AUO”) thirteenth affirmative defense related to inequitable conduct.  The Order also denied AUO’s provisional cross-motion for leave to file an amended response to the amended complaint.

By way of background, in its August 30, 2011 motion to strike, Samsung asserted that AUO’s thirteenth affirmative defense failed to include sufficient detail to meet the heightened pleading standard of Fed. R. Civ. P. 9(b) and the Federal Circuit’s 2009 Exergen decision.  Samsung argued that it informed AUO of this deficiency, met and conferred with AUO, provided an explanation of its position in writing, and requested a response by August 29, 2011. AUO opposed Samsung’s motion arguing that its pleading was sufficiently detailed and alleging that Samsung’s motion violated Ground Rule 3.2 because Samsung failed to meet and confer to the point of impasse.  AUO additionally argued that it informed Samsung it would likely amend this defense, but that Samsung filed its motion without waiting for response.  AUO asserted that it provided Samsung with amended responses on August 30, 2011 and September 1, 2011, and requested Samsung withdraw its motion, but that Samsung declined.  AUO filed a provisional cross-motion, asking that if Samsung’s motion is granted, it be allowed to amend its response.  Samsung opposed AUO’s motion, arguing that AUO’s proposed amendment was based solely on information it possessed at the time of its original response and that Samsung’s amended complaint did not provide a basis for AUO to materially change its affirmative defenses.

In the Order, ALJ Rogers determined that because Samsung provided notice of its intent to file a motion, met and conferred with AUO, and provided an explanation in writing (requesting a response by a deadline that AUO failed to meet), Samsung’s motion complied with Ground Rule 3.2.  The ALJ also determined that AUO’s newly pled inequitable conduct defense failed to meet the pleading standards required by Fed. R. Civ. P. 9(b).  Specifically, AUO’s newly pled defense named two individuals alleged to have been involved in inequitable conduct, but failed to allege facts sufficient to support an inference these two individuals had knowledge of the materiality of the references implicated in the inequitable conduct allegations.  In addition, the newly pled defense also improperly identified “others involved in the preparation or prosecution of the [patent at issue],” without naming such persons. 

As to AUO’s cross-motion, ALJ Rogers determined that AUO failed to demonstrate the good cause necessary to amend its response.  Specifically, the new factual allegations in AUO’s proposed amended response were based on public information that was within AUO’s possession at the time of its original response. The ALJ also found that while the proposed amended response added more detail than the original response, it still failed to meet the standard in Fed. R. Civ. P. 9(b).

Accordingly, the ALJ granted Samsung’s motion to strike and denied AUO’s cross motion for leave to file an amended response.