By Levent Herguner and David Maiorana – In a recent decision, ALJ Cheney determined that severance of an investigation was necessary for efficient adjudication of the issues raised in the Complaint.  Certain Light-Emitting Diode Products, Systems, and Components Thereof, Inv. No. 337-TA-1163, Order No. 5 (July 10, 2019).  The ALJ ordered the severance just two weeks after noting that he was contemplating as much pursuant to 19 C.F.R. § 210.14(h).  See Order No. 3 (June 25, 2019).

19 C.F.R. § 210.14(h) was introduced in amendments to the rules that went into effect on June 7, 2018 to give the ALJs more control over their dockets.  The rule states that “[t]he administrative law judge may determine to sever an investigation into two or more investigations at any time prior to or upon thirty days from institution, based upon either a motion by any party or upon the administrative law judge’s own judgment that severance is necessary to allow efficient adjudication. . .”  ALJ Cheney determined that the rule would be useful in this investigation because the Complainant asserted multiple separate patents and their asserted claims against ten different respondent groups and the assertion of multiple patents would require adjudication of infringement, invalidity, and a determination of whether a domestic industry exists under each.

During the preliminary conference, Respondents argued that the allegations related to different technologies, different accused products on several levels of the supply chain, and different types of alleged unfair acts.  Complainants argued that severing would increase the requisite workload while straining the resources of the Commission, only to save a minority of Respondents.  Ultimately, ALJ Cheney agreed with Respondents, stating that the scope and breadth of the Complaint warranted severing the investigation into two separate investigations.  He added that this could be accomplished by instituting a separate investigation limited to three of the Asserted Patents that were asserted against eight of the ten Respondent groups.  Accordingly, the ALJ ordered the investigation to be severed as follows:

  1. Certain Light-Emitting Diode Products, Systems, and Components Thereof (I), Inv. No. 337-TA-1163, which includes all issues relating to whether there is a section 337 violation based on allegations of infringement of two Asserted Patents.
  2. Certain Light-Emitting Diode Products, Systems, and Components Thereof (III), Inv. No. 337-TA-1168, which includes all issues relating to whether there is a section 337 violation based on allegations of infringement of the three remaining Asserted Patents. Additionally, ALJ noted that the entire administrative record of Inv. No. 337-TA-1163 to date, including the protective order (Order No. 1) and ground rules (Order No. 2), would be incorporated into the administrative record of Inv. No. 337-TA-1168.


19 C.F.R. § 210.14(h) allows the ALJ to determine whether severance of a case is necessary to allow efficient adjudication.  While this rule is fairly new and has not been utilized as much as some initially thought it would, ALJ Cheney’s determination in this investigation highlights that complaints asserting separate patents relating to different technologies from multiple respondents are likely to be scrutinized under this rule.  Accordingly, complainants should consider the possibility their complaint will be severed into multiple investigations.  Respondents should also be aware that this rule permits a party to request such a severance.

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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a USPTO examiner along with 20 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the ITC. Dave has experience in diverse technology areas, including teeth whitening, diapers, fem care products, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.