In a recent order, International Trade Commission (ITC) Administrative Law Judge David Shaw confirmed the importance of respondents searching for potential prior art references as early — and as diligently — as possible.

In a typical ITC investigation, the ground rules issued by an administrative law judge (ALJ) require that any party asserting invalidity must file, on or before a certain date set in the procedural schedule, a “notice of prior art.” (In 16 of the most recent 25 investigations at the ITC, the average time span between the date the investigation started and the deadline to file the notice of prior art was 2.5 months.)

The importance of meeting the deadline for the notice of prior art cannot be overstated; in the absence of such notice, potentially invalidating prior art may not be introduced into evidence at trial. While the ground rules typically allow parties to supplement a notice of prior art “upon a timely motion showing good cause,” ALJ Shaw’s recent opinion underscores the high burden involved.

In Certain Portable Gaming Console Systems with Attachable Handheld Controllers and Components Thereof (Inv. No. 337-TA-1111), the respondents filed a motion seeking leave to supplement the notice of prior art. See Order No. 18 (November 20, 2018). Specifically, the respondents sought to supplement their notice to add references from an individual named Godfroid. The respondents insisted that they had been diligent in searching for prior art but, due to large document productions and slow discovery responses from the complainant, had failed to uncover the Godfroid references until after the prior art deadline. The complainant countered that the Godfroid references were publicly available and that the respondents provided no explanation for why they could not find the art sooner.

ALJ Shaw considered four factors in determining whether good cause exists: (1) the party’s diligence in searching for prior art (the most heavily weighted factor); (2) the difficulty of identifying the prior art in question; (3) the potential prejudice the amendment would cause to any non-moving party; and (4) whether the prior art addresses the merits of the case. ALJ Shaw denied the motion, noting that respondents had not shown that they were diligent in identifying the Godfroid references, nor had they shown that the references were difficult to identify. Furthermore, ALJ Shaw noted that the belated addition of new alleged prior art would unduly disrupt the procedural schedule.

Takeaway:

ALJ Shaw’s order provides two important lessons: First, an accused infringer must begin diligently searching for prior art as soon as possible and from all sources, including publicly available art. Second, even if potentially invalidating prior art is found after the deadline for the notice of prior art, there are no guarantees that an accused infringer will be able to supplement or amend its notice of prior art.