On December 12, 2012, Chief ALJ Charles E. Bullock issued Order No. 56 granting-in-part Complainant Robert Bosch LLC’s (“Bosch”) motion to strike portions of Respondents ADM21 Co., Ltd., ADM21 Co. (North America), Ltd., Cequent Consumer Products, Inc., RainEater LLC (collectively, the “ADM21 Respondents”) and Respondents Corea Autoparts Producing Corporation, CAP America, and PIAA Corporation USA’s (collectively, the “CAP Respondents”) initial expert reports on invalidity in Certain Wiper Blades (Inv. No. 337-TA-816).
According to the Order, Bosch sought to strike certain portions of (1) the opening expert report of Gregory Davis regarding U.S. Patent Nos. 6,973,698, 6,836,926 and 6,675,434 and the opening expert report of Walter Cempura regarding U.S. Patent Nos. 6,944,905 and 6,523,218. Bosch argued that both reports improperly rely on references that were not identified in any of the ADM21 or CAP Respondents’ notices of prior art, and merely list references or figures from references without providing sufficient notice as to the basis of the obviousness arguments that the ADM21 or CAP Respondents intend to assert, in violation of Ground Rule 6. Thus, Bosch requested that the portions of both reports that rely on the references in question be stricken.
As to the Cempura expert report, the ADM21 and CAP Respondents argued that references GB 1,447,724, JP S56-139651, EP 0646507 and Trico Deposition Exhibits 8 and 9 were properly disclosed as prior art on or before the deadline for notices of prior art. The ADM21 and CAP Respondents also contended that the language “Respondents may also rely upon any and all prior art referenced below in connection with a particular Asserted Patent to anticipate and/or render obvious any other Asserted Patent” in their notices of prior art provided sufficient notice to Bosch. Further, the CAP Respondents asserted that Mr. Cempura provided a complete analysis in compliance with Ground Rule 6 explaining that each cited reference illustrates features that were well-known in the art and that one of ordinary skill in the art would have contemplated using such well-known features in combination with other prior art wiper blade designs to arrive at the invention of the ’905 patent.
Regarding the Davis expert report, the CAP Respondents argued that Bosch had full notice of U.S. Patent No. 3,785,002 as that reference discussed in the ’434 patent and during claim construction proceedings, and was attached to the complaint by Bosch. The CAP Respondents also asserted that their notice of prior art explained that they may rely upon any and all prior art referenced in the asserted patents and their prosecution histories, which includes the ’002 patent. Further, while the CAP Respondents admitted their notice of prior art inadvertently omitted U.S. Patent No. 3,083,394, they argued that notice was nonetheless provided since the CAP Respondents’ invalidity exhibits included identification of the ’394 patent as a reference that was being asserted against the ’434 patent. Finally, the CAP Respondents insisted that the Davis expert report provides a complete statement explaining how certain references render obvious the ’434 patent.
Having reviewed the pleadings, ALJ Bullock was not persuaded by the ADM21 and CAP Respondents’ arguments regarding the ’002 patent, EP 0646507, Trico Deposition Exhibits 8 and 9, GB 1,447,724 and JP S56-139651. In particular, the ALJ rejected the argument that “commonality” among all of Bosch’s patents excused the ADM21 and CAP Respondents from identifying each prior art reference they intend to rely on to invalidate each asserted patent. ALJ Bullock also was not convinced that just because a patent was included as an exhibit to the complaint or discussed at a Markman hearing meant that Respondents are excused from the requirement of having to disclose all references they plain to rely on in their notice of prior art. Further, the ALJ found that the language in the ADM21 and CAP Respondents’ notices of prior art did not, in and of itself, provide sufficient notice to Bosch, especially where there are nine asserted patents and hundreds of prior art references. However, although the CAP Respondents’ notice of prior art omitted the ’394 patent, the ALJ found that Bosch was provided the requisite notice since Bosch was contemporaneously served with the ’434 invalidity contentions which identified the ’394 patent as a prior art reference. In addition, ALJ Bullock stated his policy that an issue (i.e., obviousness) need only be mentioned in an expert report to be deemed in compliance with Ground Rule 6. Accordingly, the following portions of the expert reports were stricken: (1) any reference in the Davis expert report to the ’002 patent with respect to the ’434 patent; (2) any reference in the Cempura expert report to EP 0646507 with respect to the ’905 patent; (3) and reference in the Cempura expert report to Trico Deposition Exhibits 8 and 9 with respect to the ’905 patent; (4) any reference in the Cempura expert report to GB 1,447,724 with respect to the ’218 patent; and (5) any reference in the Cempura expert report to JP S56-139651 with respect to the ’218 patent.