In Certain Digital Cable and Satellite Products, Set-Top Boxes, Gateways and components Thereof; Inv. No. 337-TA-1049, ALJ McNamara recently denied a motion by Respondents to amend their answer to the complaint to add the defense of impermissible reissue recapture under 35 U.S.C. § 251.

By way of background, on March 10, 2017, Complainants filed the complaint alleging infringement of, inter alia, claim 26 of U.S. Patent No. RE45,126.  On May 15, 2017, Respondents filed their answer.  On June 19, 2017, Respondents disclosed their defense of reissue recapture in their first set of interrogatory responses.  Over a month later, on July 28, 2017, Respondents moved, with the support of Staff, to amend their answer to include this affirmative defense.  Respondents argued that that because of nearly 2,000 pages of relevant patent application file histories and the complex issues of law involved with reissue applications, Respondents required additional time and effort to investigate the defense that they now seek to add.

Judge McNamara denied the motion finding that Respondents failed to show good cause.  The ALJ noted that Respondents had access to the ’126 patent and the relevant prosecution histories from the inception of the Investigation.  Thus, Respondents had two months to review the relevant prosecution histories and to decide whether to assert the reissue recapture defense to claim 26 in their answer.  Furthermore, the ALJ held that Respondents’ delay of a month and a half between the disclosure of the defense and the motion to amend was unreasonable in light of the upcoming Markman hearing.

Takeaway

One of the advantages of the ITC for complainants is the fast-paced nature of the forum.  As this order demonstrates, a respondent has little time to access the case before it must present its defenses.  Parties named in an ITC complaint should therefore seek the assistance of counsel as soon as possible after receiving the complaint.

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