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3,000 Page Attachment with Limitation by Limitation Invalidity Analysis Violates ITC Ground Rule and Is Rejected

In this matter pending before the International Trade Commission (“ITC”), the ITC (Administrative Law Judge James Gildea) rejected the respondent’s pre-hearing statement for failing to follow ITC Ground Rule 7.1. As noted by Judge Gildea, the parties filed their respective prehearing statements on May 3, 2012. “Ground Rule 7.1 requires complainants and respondents to provide party-specific additional submissions correlating the asserted claims to the accused products or prior art, respectively.” Judge Gildea also noted that the rule sets forth sample charts to avoid any confusion as to what data is required.

Judge Gildea then noted that “[o]ther parties in other investigations have not had any trouble understanding the requirements. Indeed, complainants in this Investigation submitted a one page chart providing the information requested.”

The relevant part of the rule states: “In addition to the above, in Investigations involving patent litigation, Respondents(s) asserting any Section 102 or 103 invalidity defenses shall attach a chart or table to the prehearing statement listing all asserted prior art references, or combinations of references, and specifically matching these to each asserted patent claim.”

After quoting the rule, Judge Gildea found that respondent’s submission did not comply: “Instead of submitting the very simple requested chart that matches up prior art references to asserted claims, Respondent has submitted over 3,000 pages of attachments with its limitation by limitation invalidity analyses. This is unacceptable. As Respondent is aware, all analysis of invalidity analyses. This is unacceptable. As Respondent is aware, all analysis of invalidity belongs in the p re-hearing brief. (See Ground Rule 7.2 (noting that the pre-hearing brief page requirements should not be bypassed with attachments).)”

Accordingly, Judge Gildea found the submission improper and ordered it re-filed within four days: “The administrative Law Judge finds that Respondent’s Rule 7.1 submission, including all attachments should be stricken. Respondent shall have until close of business on May 8, 2012 to re-submit its Rule 7.1 chart, without attachments or extraneous information.”

In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers, Inv. No. 337-TA-794 (ITC May 4, 2012) (Administrative Law Judge E. James Gildea)

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