By: Levent Hergüner and Vishal Khatri – Administrative Law Judge (“ALJ”) McNamara’s recent order suggests that respondents may be permitted to add defenses if another respondent makes the complainant aware of the defense during discovery.  See In the Matter of Certain Powered Cover Plates, Inv. No. 337-TA-1124, Order 30 (February 26, 2019).  Respondent Alltrade motioned to file a second amended response to the Complaint and Notice of Investigation.  ALJ McNamara granted the motion because she found Complainant SnapPower was already aware of the asserted defenses.

With the motion, Alltrade sought to add two defenses that a previous respondent, Ontel Products Corporation (“Ontel”), had asserted in its response before being terminated from the investigation.  These defenses included: (i) that the asserted patent was anticipated by U.S. Patent Nos. 9,362,728 (“the ’728 patent”) and 9,035,180 (“the ’180 patent”); and (ii) that the asserted patent was rendered obvious in view of the ’728 and ’180 patents.  Commission Rule 210.13(b) states that “[a]ffirmative defenses shall be pleaded with as much specificity as possible in the response [to the Complaint].”  Commission Rule 210.14(b)(2) adds that ALJs may allow amendments to pleadings in order to avoid prejudicing the public interest and the rights of the parties “[i]f disposition of the issues in an investigation on the merits will be facilitated, or for other good cause shown.”  Since ALJ McNamara found that SnapPower already knew of the defenses during discovery, she granted Alltrade’s motion.  ALJ McNamara also noted that the ITC granted motions to add entirely new defenses much later in other investigations.  For example, in Certain Semiconductor Devices, Semiconductor Device Packages, & Prods. Containing Same, an investigation that we wrote about before, the ITC granted a motion to supplement the response twelve days after the close of discovery because evidence relating to inequitable conduct was disclosed during discovery.

Even though Ontel was no longer a part of the investigation, ALJ McNamara found SnapPower knew of the defenses because the ’728 and ’180 patents were properly disclosed in Ontel’s Notice of Prior Art.  Thus, there was no prejudice in allowing the anticipation defense because the parties were aware of the defense and were afforded the opportunity of discovery on that issue “well before Ontel was terminated from the Investigation.”  According to ALJ McNamara, permitting the defense would facilitate the disposition on the merits of key issues with respect to the asserted patent, such as the applicability of a Section 337 violation.  The same facts supported allowing the obviousness defense.  ALJ McNamara highlighted that Ontel had actually pled the same obviousness defense in its response, giving the parties “ample time to take discovery” without prejudice.

Takeaway

While ALJs do not always permit respondents to amend their responses during discovery, ALJ McNamara’s order in this case reflects that advance knowledge of certain defenses, even if raised by another respondent, may provide sufficient justification for permitting such amendments.  However, in cases with multiple respondents, parties should be aware that reliance on another party’s defenses may not always be permitted and that such a strategy may not always be effective.  It remains important for respondents to coordinate with co-respondents so the pleadings reflect all applicable defenses as soon as possible.  Respondents should not rely on being able to add such defenses later.

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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).