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`UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
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`In the Matter of
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`CERTAIN RECHARGEABLE
`BATTERIES AND COMPONENTS THEREOF
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`Inv. No. 337-TA-1421
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`ORDER NO. 16: GRANTING STAFF’S MOTION FOR LEAVE TO SUPPLEMENT
`ITS NOTICE OF PRIOR ART
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`(February 26, 2025)
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`The Staff moves for leave to supplement its notice of prior art. Motion Docket No. 1421-
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`08 at 1 (EDIS Doc. ID 843508). Complainants LithiumHub LLC, Lithiumhub Technologies, LLC,
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`and Martin Koebler oppose the motion. Mot. at 1; Opp. at 1–2 (EDIS Doc. ID 844272).
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`Respondents do not oppose. Mot. at 1–2.
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`The Staff seeks to supplement its notice of prior art to identify: (1) a datasheet for Texas
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`Instruments part number bq76PL536 and (2) an application report relating to the bq76PL536 part.
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`Mot. at 2.
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`The procedural schedule set January 15, 2025, as the date for parties to file any notice of
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`prior art under 35 U.S.C. § 282. Order No. 6 at 2 (EDIS Doc. ID 837175). The Staff argues that
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`although the bq76PL536 part was referenced in an article, called the Fisk article, identified in
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`Respondents’ notice of prior art, it was unaware of the bq76PL536 datasheet until it received
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`Complainants’ claim construction slides on February 5, 2025, and became aware of the application
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`report on February 12, 2025, following an investigation into the datasheet. Mot. at 4–6.
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`Complainants state that the Fisk article “was cited multiple times in, and included as an exhibit to,
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`Respondents’ Opening Claim Construction Brief, filed January 10, 2025 (Doc. ID 840888). See
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`Resp’ts’ Opening Claim Constr. Br. at ii (denoting Fisk Thesis as Exhibit B), 9-11 (repeatedly
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`citing Fisk Thesis).” Opp. at 2; see also id. at 5. Complainants’ recounting is misleading. Dr.
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`Toliyat’s declaration, not Respondents’ brief, cites portions of the Fisk article that do not discuss
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`the bq76PL536 part, which is discussed elsewhere. Respondents’ Claim Constr. Br., Ex. 2 at 8–
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`11, citing Fisk article (Ex. B) at 19, 22–23 (EDIS Doc. ID 840888). Complainants’ suggestion that
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`Respondents knew details of the bq76PL536 part because of their expert’s reliance on different
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`portions of an article identifying the part is not supported by the record.
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`Based on the parties’ arguments, I find that good cause exists for the Staff to supplement
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`its notice of prior art. The datasheet was first identified by Complainants on February 5, 2025, and
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`Staff discovered the application report shortly thereafter. I am unpersuaded by Complainants’
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`argument that Staff was on constructive notice and therefore should have identified the datasheet
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`sooner. The Staff acted promptly after Complainants put the datasheet at issue, which was after
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`the due date for prior art notices. Staff was diligent in moving to supplement its notice of prior art
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`after learning of the datasheet and application report. Complainants’ argument that it will be
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`prejudiced is unpersuasive at least because they put the datasheet at issue. It would be unfair to
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`permit Complainants to, after the deadline for prior art notices, use the datasheet to defeat an
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`argument that certain claims are invalid for indefiniteness while barring the other parties from
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`relying on it. Complainants will also not be prejudiced given that, as they note, Respondents have
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`provided invalidity contentions including the identified materials. Opp. at 7. Further, while the
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`close of fact discovery is imminent, Complainants will be able to test any invalidity theories based
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`on the datasheet and application report through expert discovery. While Complainants contend
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`that they will be prejudiced because the supplement will “[c]ompound[] the prejudice” from
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`2
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`alleged deficiencies in Respondents’ invalidity contentions, Opp. at 6–7, any alleged deficiencies
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`in Respondents’ invalidity contentions are irrelevant to this motion.
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`Complainants also argue that Respondents should not be permitted to rely on the datasheet
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`or application report because they did not join the Staff’s motion. Id. at 7–8. I disagree. In addition,
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`Complainants’ interpretation of Lannom (“it is likely that the Staff would be prevented from
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`relying on [the datasheet] under the principle enunciated in Lannom” and stating that principle as:
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`“Staff should not be allowed to assert invalidity defenses that Respondents do not”), Opp. at 8, is
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`directly at odds with Lannom itself and Commission precedent. In Lannom, following an
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`evidentiary hearing at which no respondent “appeared or defended” and no invalidity defense was
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`raised, the ALJ found claims invalid and the Commission affirmed. Lannom Mfg. Co., Inc. v. U.S.
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`Int’l Trade Comm’n, 799 F.2d 1572, 1573–74 (Fed. Cir. 1986). The Federal Circuit vacated the
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`invalidity holding, stating that “Congress did not authorize the Commission to redetermine patent
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`validity when no defense of invalidity has been raised.” Id. at 1580. That holding was based on the
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`fact that the Staff, which the court specifically recognized as a separate party, appeared in the
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`investigation and took the position that the claims were not invalid. Id. at 1574 and n.1. The
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`Commission has applied the principles in Lannom, stating that “[t]here is no dispute that OUII
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`may assert invalidity arguments that were not raised by other parties.” Certain Liquid Transfer
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`Devices with an Integral Vial Adapter, Inv. No. 337-TA-1362, Comm’n Op. at 18 (July 26, 2024)
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`(EDIS Doc. ID 827305). Lannom thus does not stand for the proposition that “Staff should not be
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`allowed to assert invalidity defenses that Respondents do not,” as Complainants assert.
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`Motion 1421-08 is GRANTED.
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`3
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`SO ORDERED.
`SO ORDERED.
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` Doris Johnson Hines
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`Administrative Law Judge
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`4
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