Request to supplement contentions denied where prior art was identified in related patents

At the ITC, In the Matter of Certain Light-Emitting Diodes and Products Containing Same (April 4, 2012), Judge Pender (337-TA-785) denied Respondent's motion to supplement its invalidity contentions as to a single prior art reference. Respondent requested the supplement arguing that

it made diligent efforts to locate and identify prior art in advance of the February 6 deadline, provided timely notice of the prior art it identified, and incorporated by reference the prior art identified in the LG's Notice of Prior Art.

(Order at 1).

In denying the requested supplement to add the Miura prior art reference for "good cause", Judge Pender relied on Ground Rules 7 and 1.10.1:

"The Notice of Prior Art may be amended or supplemented only upon written motion showing good cause." Ground Rule 7 (Feb. 12, 2012). "Note that good cause will not be found absent a showing that the requesting party has taken active steps and made a good faith effort to meet the deadline for which the extension is sought. Also note that lack of prejudice does not equate to good cause." Ground Rule 1.10.1 (Feb. 12, 2012).

(Order at 2).  Judge Pender, agreeing that the Miura reference is cited on the face of  seven patents related to Respondent's inequitable conduct allegations, determined that Respondent

should have been able to identify the Miura reference before the deadline.

(Order at 3).

Takeaways - Late disclosures at the ITC are not tolerated without sufficient justification.  Here, Judge Pender was not convinced that Respondent was diligent in locating the new prior art because the reference appeared in multiple patents related to a different defense theory.  What if the Miura reference was cited on only one patent related to the inequitable conduct allegations, different result?  Based on the Ground Rules at the ITC for a Notice of Prior Art, some compelling reason must be identified to show why the prior art was not identified by the stated deadline, or expect this type of result to be the norm.

Failure to locate prior art earlier is not good cause

At the ITC, In the Matter of Certain Coenzyme Q10 Products and Methods of Making Same (April 3, 2012), Judge Rogers (337-TA-790) denied Respondents' motion to supplement their invalidity contentions as to a single prior art reference. Respondents' requested supplementation to add the Kanazawa article based on the explanation that the article

was not uncovered until ... counsel ... reviewed the prosecution history of U.S. Patent No. 5,011,858.

In denying the requested supplement for the Kanazawa prior art for "good cause" under Ground Rule 5, governing notice of prior art, Judge Rogers repeated his guidance provided at an earlier hearing concerning Ground Rule 5:

[Ground] Rule 5 talks about notices of prior art.  There is a date in the procedural schedule for filing the notice of prior art.  That's a not later than date, and if you are late doing it, and you haven't filed it timely, then proof of the matters related to that prior art that's not timely will not be allowed in evidence at the trial, unless you show good cause by a written motion, and the fact that your expert couldn't find the references is not adequate for good cause.

(Order at 2).  Judge Rogers reasoned that he warned the Respondents about this situation at the preliminary conference, and therefore denied the proposed amendment to their notices of prior art.

Takeaways - Judge Rogers focused on the fact that identifying prior art after the notice date would only be permitted for good cause, and failure to locate a reference does not constitute good cause.  It was also noted that the Kanazawa prior art was a publicly-available reference.  With such tight time frames in the ITC, it appears there was little the Respondents could due once the notice period expired, except identify some other rationale to support the "good cause" requirement, different from explaining why the reference could not be found earlier.