By: Levent Hergüner and Ryan McCrum – Citing gamesmanship and a failure to follow the Ground Rules, Chief Administrative Law Judge (“ALJ”) Bullock recently issued an opinion striking portions of Complainant’s expert report.  Certain Blow-Molded Bag-In-Container Devices, Associated Components, and End Products Containing or Using Same, Inv. 337-TA-1115, Order 20 (January 29, 2019).  In the Order, ALJ Bullock struck certain test results related to the accused products because Complainant did not include the results in their responses to contention interrogatories.  While ALJ Bullock agreed that all of the test results should have been included in Complainant’s responses to contention interrogatories, he held that an exception for test results related to “Alternative Designs” was appropriate due to Respondent’s “gamesmanship.”

ALJ Bullock said he expected the parties to disclose documents, deposition testimony, and testing in their responses to contention interrogatories pursuant to Ground Rule 4.4.3.  Ground Rule 4.4.3 states: “Parties are expected to respond to contention interrogatories by the date set forth in the Procedural Schedule.  A party may not introduce evidence at the hearing that is outside of the scope of its responses to contention interrogatories.”  ALJ Bullock noted that the rule was specifically added “to apprise the parties of their obligations . . . and to avoid any surprise when information outside of the scope of the responses is struck.”  He stressed that parties are not permitted to wait until expert reports to provide the supporting evidence for the contentions disclosed in their responses to contention interrogatories.  Accordingly, parties must disclose in their responses any evidence they wish to introduce to support a contention.

Although ALJ Bullock’s usual policy is that parties must move for leave to supplement contention interrogatory responses after the deadline, he felt an exception was appropriate in this case because of Respondent’s “gamesmanship” with respect to the disclosure of “Alternative Designs.”  Respondent had alleged that Complainant’s responses to contention interrogatories did not include information for Respondent’s Alternative Design products despite Respondent’s production of several Alternative Design samples.  But, ALJ Bullock found that Respondent did not produce final versions of the Alternative Designs until a week after final responses to contention interrogatories were due.  ALJ Bullock, in this situation, believed Respondent should not be permitted to withhold relevant products until the end of fact discovery and then complain that testing of those products was not included in responses to contention interrogatories.  Accordingly, ALJ Bullock declined to strike test results related to the Alternative Designs.

ALJ Bullock then held that the remaining test results should have been included in Complainant’s final responses to contention interrogatories as required by his Ground Rules.  The ALJ determined that these results were relevant evidence and not merely “additional information” as Complainant had contended.  He held that since Complainant did not include these results in their responses to contention interrogatories, they would not be able to rely on them during the hearing.


This case reiterates the importance of adhering to the ALJ’s Ground Rules to avoid potentially severe consequences, such as having evidence struck from the record.  Parties should be proactive in developing their cases and endeavor to introduce relevant evidence as early as possible – including introducing any potential redesigns as soon as possible.  If parties find themselves in a situation where they need to supplement disclosures, this order suggests they are better off seeking leave to supplement instead of asking forgiveness afterwards.

The following two tabs change content below.
Ryan McCrum, who co-chairs the Firm's intellectual property ITC practice, has nearly 20 years of experience handling high-stakes patent litigation. He has led teams from the initial filing of a complaint all the way through jury and bench trials. He has extensive experience examining witnesses of all types at trial, arguing claim construction and summary judgment hearings, and handling matters through appeal.