By: Vishal Khatri – In a recently issued order, ALJ McNamara relied on her Ground Rules to require the parties to limit their cases and focus on their best theories.  Certain Rotating 3-D Lidar Devices, Components Thereof and Sensing Systems Containing the Same, 337-TA-1173, Order 9 (November 14, 2019).  Complainant was required to limit the number of asserted claims and Respondent was required to limit the number of prior art references relied upon to support their invalidity defense.

The Order was in response to Respondents Notice of Prior Art filed a day earlier. Respondents Notice of Prior Art was “30 pages long and disclosed hundreds of potential prior art references.” In response, ALJ McNamara indicated that the Notice failed to comply with Ground Rule 4 which states “[n]otices of prior art with excessive disclosures have been stricken in the past on the basis that the thwart the purpose of this Ground Rule 4.”  ALJ McNamara commented that the Complainant had asserted a single patent and that the disclosure exemplified a lack of focus and excess.  She instructed Respondents to limit the total number to just 12 prior art references.

ALJ McNamara went on to indicate that Complainants assertion of 24 claims, including 22 dependent claims, from the sole asserted patent was also an example of lack of focus and excess.  She commented that Complainant “should know its strongest claims from its own pre-investigation due diligence” and instructed Complainants to reduce the number of asserted claims.  While she did not provide a maximum number, she did indicate that a recommended number would be no more than 10-12 claims.


We have previously written about the importance of complying with the ALJ’s ground rules (here) and this order is an example of how ALJs can use their ground rules to manage their cases.  In this investigation, it seems the relative simplicity of the technical aspects of the patent and the compressed ITC timeline, led ALJ McNamara to conclude a more focused approach was appropriate.

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Vishal Khatri is an intellectual property lawyer with more than 15 years of experience representing clients in high stakes, bet-the-company patent litigation and procurement matters around the world. He routinely represents clients in matters before U.S. district courts, the United States International Trade Commission (ITC), and the United States Patent and Trademark Office (USPTO), including Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB).