When Is It Too Late to Amend an ITC Complaint?

by Jones Day

In a recent order, Administrative Law Judge McNamara denied Complainants Advanced Micro Devices, Inc. and ATI Technologies ULC’s motion for leave to file an amended complaint to assert U.S. Patent Nos. 8,760,454 and 9,582,846 against Respondent VIZIO, Inc.  Certain Graphic Systems, Components Thereof, And Consumer Products Containing The Same, Inv. No. 337-TA-1044, Order 32.

Complainants filed their original complaint on January 24, 2017, which they amended before institution to accuse LG, VIZIO, MediaTek, and SDI of infringing United States Patent Nos. 7,633,506 and 7,796,133.  The amended complaint also accused LG and MediaTek of infringing the ’454 and the ’846 patents—but not VIZIO.  Complainants were subsequently granted leave to file two more amendments to the complaint that added a certificate of correction to an asserted patent and MStar, a subsidiary of MediaTek, as a respondent.  On July 19, 2017, Complainants moved for leave to file a Fourth Amended Complaint to assert the ’454 and the ’846 patents against VIZIO.  Id. at 1.

Commission Rule 210.14(b)(1) provides that, after institution, “the complaint or notice of investigation may be amended only by leave of the Commission for good cause shown and upon such conditions as are necessary to avoid prejudicing the public interest and the rights of the parties to the investigation.”  19 C.F.R. 210. 14(b)(l).  Generally, good cause exists when new information is obtained during discovery that was not known to a complainant prior to institution.  Order 32 at 4.  Prior to an amendment, there must be an inquiry into whether granting the motion would prejudice the rights of the other parties or the public interest.  Id.

Complainants asserted that good cause existed because they first learned that VIZIO’s accused products infringed the ’454 and ’846 patents when a third-party produced confidential technical documents regarding GPUs in certain VIZIO products.  Id. at 4.  VIZIO opposed the motion because the third-party information was publicly available before the Investigation.  VIZIO also noted that Complainants waited almost a month after Respondents identified the third party as a supplier before applying for a subpoena.  Id. at 5-6.  Staff asserted that good cause may exist but granting the motion would prejudice the public interest and Respondents.  Id. at 6.

ALJ McNamara agreed with Staff and found that despite any good cause that Complainants alleged, the unavoidable prejudice to VIZIO, the remaining Respondents, and the public interest weighed in favor of denying Complainants’ motion.  Id. at 7.  The ALJ explained that claim construction briefing is complete; the fact discovery cutoff and opening expert reports are only a few weeks away; and expert discovery closes shortly thereafter.  Id. at 8.  She further noted that VIZIO should not be forced into the position of relying on the Markman positions or the defenses developed by other Respondents, and that any significant adjustment to the Procedural Schedule to mitigate prejudice to VIZIO would prejudice the right of the remaining respondents to a timely hearing and final agency decision.  Id. at 8.  For these reasons, ALJ McNamara denied the motion.  Id. at 9.


The fast pace of Section 337 proceedings often favors complainants who take the time to organize their case before filing.  However, ALJ McNamara’s order shows that this fast pace can also limit a complainant’s ability to amend the complaint.  Accordingly, an ITC complainant should endeavor to conduct a comprehensive pre-suit inquiry to identify infringing conduct by respondents, including any relevant suppliers.  Complainants also need to react quickly to new facts obtained through discovery.  Furthermore, the optics of seeking to amend the complaint for the fourth time likely weakened the Complainants’ position in this case.

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.

© Jones Day | Attorney Advertising

Written by:

Jones Day

Jones Day on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.