• ALJ Rogers Denies Complainant’s Motion To Compel Discovery in Certain Starter Motors and Alternators (337-TA-755)
  • August 17, 2011 | Author: Alexander E. Gasser
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On August 9, 2011, ALJ Robert K. Rogers, Jr. issued Order No. 24 in Certain Starter Motors and Alternators (Inv. No. 337-TA-755).  In the Order, ALJ Rogers denied Complainant Remy International, Inc.’s (“Remy”) motion to compel Respondent Wetherill Associates, Inc. d/b/a WAI Global (“WAI”) to answer requests for admission and follow-on interrogatories and document requests regarding infringement of WAI products no longer imported or sold.

    According to the Order, Remy asserted that WAI improperly refused to respond to the requested discovery, and the fact that WAI claims that the products are no longer imported is irrelevant, at least in part, because information related to such products is still within the scope of discovery allowed by the Commission Rules.  WAI opposed the motion, asserting that the requests for admission call for improper legal conclusions, and that legal conclusions on infringement by products that WAI no longer imports or sells are not relevant or reasonably calculated to lead to the discovery of admissible evidence.  WAI also stated that it had redesigned the originally accused products and re-used many of the same model numbers, and the redesigned products no longer infringe the patents-in-suit.

    ALJ Rogers determined that Commission Rule 210.31 governs requests for admission, and permits requests “that relate to statements or opinions of fact or of the application of law to fact.” ALJ Rogers further determined that he had not yet issued a claim construction ruling, and requests seeking an admission of infringement prior to any claim construction do not “relate to statements or opinions of fact or of the application of law to fact;” instead, such requests are requests for legal conclusions, which are not permitted under Commission Rule 210.31(a).  Since the requests for admission are improper, the dependent interrogatories and document requests are likewise improper.  ALJ Rogers also determined that Remy’s motion violated Ground Rule 3.5(b) by not appending copies of the pertinent discovery requests to the motion.

    Although ALJ Rogers denied Remy’s motion, he clarified that regardless of WAI’s assertion that the originally accused products are no longer imported or sold, information regarding such products may still be relevant or reasonably calculated to lead to the discovery of admissible evidence.