Judge Shaw issued Order No. 22 in Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, Inv. 337-TA-1012, denying the Sony Respondents’[1]  motion to extend witness statement page limits.

Pursuant to Ground Rule 8, Judge Shaw set the collective page limit for Respondents’ Witness Statements to 800 pages for this investigation.  In its motion, Sony sought to extend this page limit by 200 pages to 1000 pages.  In particular, Sony argued that Complainants had not narrowed the issues in the investigation and that the same six patents and the same number of claims were still being asserted.  Sony further argued that the patents allegedly covered distinct technologies and non-overlapping technical issues.  (Respondents’ Motion to Extend Witness Statement Page Limits, Dec. 14, 2016).

In response, Judge Shaw indicated that Respondents’ motion “sought leave to file up to 1,000 pages of witness statements due to the large number of claims, defenses, and other issues in dispute, but no further exposition was offered.”  As a result, he concluded that Sony had “not specified a need to extend the witness-statement page limit by 200 pages (25%).” (Order No. 22).


While it appears Judge Shaw may be willing to grant leave to exceed page limits set by his ground rules, his recent Order suggests that such a request must include a specific showing as to why such leave is necessary.  Section 337 investigations have a statutory mandate to be concluded at the “earliest practicable time” and ALJs intend the ground rules to aid in the orderly administration of these fast-paced cases.  They often set restrictions such as page limits based on the circumstances of the particular case at hand.  Accordingly, parties should be aware that, as a general matter, leave for these types of requests may not be permitted and that the parties will be held to the ground rules as initially set forth by the ALJ.  They should develop their cases with these restrictions in mind so as not to be surprised as the case proceeds to trial.

[1] The Sony Respondents are Sony Corporation, Sony Corporation of America, and Sony Electronics Inc.

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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.