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In this matter pending before the International Trade Commission
("ITC"), the ITC (Administrative Law Judge James Gildea)
rejected the respondent's pre-hearing statement for failing to
follow ITC Ground Rule 7.1. As noted by Judge Gildea, the parties
filed their respective prehearing statements on May 3, 2012.
"Ground Rule 7.1 requires complainants and respondents to
provide party-specific additional submissions correlating the
asserted claims to the accused products or prior art,
respectively." Judge Gildea also noted that the rule sets
forth sample charts to avoid any confusion as to what data is
required.
Judge Gildea then noted that "[o]ther parties in other
investigations have not had any trouble understanding the
requirements. Indeed, complainants in this Investigation submitted
a one page chart providing the information requested."
The relevant part of the rule states: "In addition to the
above, in Investigations involving patent litigation,
Respondents(s) asserting any Section 102 or 103 invalidity defenses
shall attach a chart or table to the prehearing statement listing
all asserted prior art references, or combinations of references,
and specifically matching these to each asserted patent
claim."
After quoting the rule, Judge Gildea found that respondent's
submission did not comply: "Instead of submitting the very
simple requested chart that matches up prior art references to
asserted claims, Respondent has submitted over 3,000 pages of
attachments with its limitation by limitation invalidity analyses.
This is unacceptable. As Respondent is aware, all analysis of
invalidity analyses. This is unacceptable. As Respondent is aware,
all analysis of invalidity belongs in the p re-hearing brief. (See
Ground Rule 7.2 (noting that the pre-hearing brief page
requirements should not be bypassed with attachments).)"
Accordingly, Judge Gildea found the submission improper and
ordered it re-filed within four days: "The administrative Law
Judge finds that Respondent's Rule 7.1 submission, including
all attachments should be stricken. Respondent shall have until
close of business on May 8, 2012 to re-submit its Rule 7.1 chart,
without attachments or extraneous information."
In the Matter of Certain Electronic Devices, Including
Wireless Communication Devices, Portable Music and Data Processing
Devices, and Tablet Computers, Inv. No. 337-TA-794 (ITC May 4,
2012) (Administrative Law Judge E. James Gildea)
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