Cover All Your Bases in ITC Discovery

by Jones Day

Certain Access Control Systems and Components Thereof, Inv. No. 337-TA-1016 (May 31, 2017), is a good lesson in covering all your bases.  Relying on a non-infringement decision by ALJ Pender, respondents assumed that they did not need to present an invalidity case, and they failed to take certain relevant discovery.  When Judge Pender’s decision was reversed by the Commission, they tried to get that discovery.  Judge Pender ruled that it was too late.

The Chamberlain Group, Inc. (“CGI”) alleged that a group of respondents infringe three U.S. Patents including U.S. Patent No. 7,161,319.  All the claims of the ’319 Patent require a “wall console.”  Respondents argued at the Markman hearing, and Judge Pender agreed, that “wall console” should be construed as “a wall-mounted control unit including a passive infrared detector.”  Order No. 13 (Jan. 26, 2017).  The parties stipulated to non-infringement under that construction and Judge Pender so ordered.  Order No. 23 (Mar. 27, 2017).  CGI appealed the claim construction to the Commission.  On May 5, 2017, the Commission found that CGI’s broader construction of “wall console” was correct and vacated the summary judgment determination.  In the interim, the Investigation proceeded to an evidentiary hearing on the other asserted patents.  On remand, and after the evidentiary hearings on the other patents, Judge Pender extended the target date until February 23, 2018 in order to schedule a second evidentiary hearing for allegations relating to the ’319 Patent .  Order No. 29 (May 8, 2017).

In response, on May 24, respondents moved for leave to subpoena a third party for certain prior art, because that art was “possibl[y]” anticipatory under the Commission’s construction of “wall console” (but not under Judge Pender’s original construction).  Judge Pender denied the motion.  Order No. 33 (May 31, 2017).  Judge Pender held that respondents should have been aware of the possibility that the Commission would adopt CGI’s construction on review and should have prepared subpoenas during the discovery period accordingly.  Furthermore, the art was only potentially anticipatory.  “This is too much uncertainty for CGI to defend against and for me to schedule around at this point in the investigation.”


Judge Pender’s decision means that parties who limit their discovery in reliance on administrative law judges’ non-final decisions do so at their own peril.  A party’s win on a particular issue does not mean it can rest on its laurels—parties should endeavor to take contingent discovery in case the Commission reverses the ALJ.  Otherwise, as this decision shows, there is a possibility that the ALJ will not grant leave to take the discovery after remand.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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