Some respondents at the ITC have taken advantage of using infringement contentions as a procedural tool to deny patent owners from getting their day in court.  In some investigations, respondents have gone so far as to delay their own production of discovery until after the infringement contention deadline, then claim lack of fair notice when the patent owner uses the late discovery in its expert report.  This gamesmanship, and its potential repercussions, adds dimensions of procedural complexity to representing patent owners at the ITC. 

ALJ Elliot’s recent decision in Certain Touch-Controlled Mobile Devices (Inv. No. 337-TA-1162) may tip the balance away from respondents trying to use infringement contentions as a vehicle to unduly restrict patent owners and more in favor of the gatekeeper function originally intended.  In this case, ALJ Elliot denied Amazon, Dell, HP, Lenovo, Microsoft, Motorola, and Samsung’s (collectively, “Respondents”) motion to strike portions of Neodron Ltd.’s (“Neodron” or “Complainant”) expert report on infringement.

The thrust of Respondents’ line of attack was that the infringement contentions were devoid of the source code citations and narrative concerning how the claim limitations were met found in the expert report.  What Respondents missed, however, was that “experts may reasonably elaborate on a party’s contentions and experts are not precluded from identifying additional technical details, such as source code, to support their opinions.” Order 23 at 2.  In this case, for example, the absence of the source code citations in the infringement contentions was not dispositive as to whether Respondents were put on fair notice of the theories of infringement. To the contrary, the ALJ found that Neodron’s expert reports “properly elaborated on functions and features that Neodron identified in its contentions” Id. Accordingly, “there [were] no opinions that [were] wholly outside the scope of [Neodron’s] disclosed contentions.” Id. at 3. The ALJ went further and pointed out that “parties should reasonably expect expert report to contain opinions that are more detailed than a party’s contention interrogatory responses.” Id. at 4.

ALJ Elliot’s decision also underscores that a party’s delay in addressing an alleged deficiency can undermine later claims of undue prejudice.  In this case, there were indications that the respondents knew that the source code described the structure and operation of the accused products, but said nothing about lack of specific source code citations when the infringement contentions were served.  ALJ Elliot emphasized that Respondents had some affirmative obligation to seek discovery if they had concerns on deficiencies in Neodron’s contentions, including the need for specific source code citations. Because Respondents never moved to compel discovery from Neodron and evidence suggested Respondents fully understood Neodron’s final contentions, there was no undue prejudice.

ALJ Elliot’s decision is consistent with a long line of cases that differences matter between explaining or explicating upon a previously disclosed infringement theory and advancing a new infringement theory in the first instance.  And it serves as an important reminder that a party’s delay in addressing an alleged deficiency can undermine later claims of undue prejudice.