Goodwin Insights August 21, 2020

Late Disclosure Of New Infringement Theory Results In Expert Witness Being Precluded From Offering Testimony In Support Of New Theory

In the Matter of CERTAIN TOUCH-CONTROLLED MOBILE DEVICES, COMPUTERS, AND COMPONENTS THEREOF, Inv. No. 337-TA-1162, Order No. 50 Granting respondents’ motion in limine no. 7 to preclude Neodron’s new infringement theory relating to the ’910 accused products and claim 31 (June 2, 2020)

Before: ALJ Elliot

Practice Tips and Insights:

Practitioners should avoid disclosing new theories initially in its pre-hearing briefs. Such late disclosure, and if coupled with no supporting evidence, may result in preclusion of those newly raised theories.

Holding and Status:

ALJ Elliot granted respondents’ motion to preclude complainant’s expert witness from offering testimony or other evidence in support of the assertion that the ’910 accused products meet claim 31.

Order Background:

The instant order grants respondents’ motion to preclude complainant’s expert witness from testifying in support of an argument raised for the first time in a single footnote of complainant’s pre-trial brief.

Notable Disputed Issues and Related Points of Law:

Late disclosure of infringement theory: Complainant disclosed a new infringement theory for the first time in its pre-trial brief and failed to identify any language in the expert’s report or deposition to support this new assertion. Because of its late disclosure and lack of supporting evidence, complainant’s expert witness was precluding from offering testimony or other evidence in support of the new infringement theory.

Order Maintaining Confidentiality of Certain Materials Gathered by a Private Investigator

In the Matter of CERTAIN FOODSERVICE EQUIPMENT AND COMPONENTS THEREOF, Inv. No. 337-TA-1166, Order No. 45 Granting-in-Part and Denying-in-Part Respondents’ Motion to Declassify and Reclassify Complainant Walbro, LLC’s Confidential Motion to Strike Certain Portions of Amazon.com Inc.’s Opening Expert Report of James H. Lee Regarding Invalidity (July 24, 2019)

Before: ALJ Lord

Practice Tips and Insights:

Rule 210.20(a) is an available procedural vehicle to get information designated as outside counsel only to the public if there is a good faith belief that the designated information does not meet the Commission’s test related to confidential business information. However, the commission take a liberal view on what qualifies as CBI, especially with respect to third parties.

Holding and Status:

Certain evidence gathered by a private investigator was confidential as to the third party investigator and therefore protected as CBI.

Order Background:

Respondents filed a motion seeking to declassify certain information related to a private investigator.

Notable Disputed Issues and Related Points of Law:

The dispute related to declassification here was rarely straightforward—respondents sought to declassify information regarding the identity of a private investigator and the materials gathered by the private investigator. Judge Lord emphasized that “the rule on confidential business information (‘CBI’) has been applied liberally” and that “information from third parties not involved in the 337 investigation regularly is protected as CBI.” As a result, the details related to the investigator and the information collected by the private investigator was not de-designated. Judge Lord explained that “information collected by the private investigator will continue to be classified as CBI, but it is the private investigator’s CBI, not Complainants’.” Judge Lord also explained that through their motion “Respondents seem to conflate Fourth Amendment privacy concerns with the Protective Order, which on its face is not intended to and does not protect privacy interests.”