On January 30, 2012, ALJ David P. Shaw issued Order No. 33 concerning a renewed request to strike expert testimony by the Respondent in Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof  (337-TA-752).

As described in our January 26, 2012 post, ALJ Shaw recently ruled on several motions in limine filed by Complainants Motorola Mobility, Inc. and General Instrument Corp. (collectively, “Motorola”)and Respondent Microsoft Corp. (“Microsoft”) before holding the evidentiary hearing.  According to Order 33, during the evidentiary hearing Microsoft renewed its request to strike portions of the witness statement (containing the direct testimony) of one of Motorola’s expert witnesses, Dr. Vijay K. Madisetti.  As explained in the Order, the ALJ heard arguments from the parties and requested further briefing on this issue “particularly in view of the fact that the Madisetti witness statement had been the subject of a Motorola motion in limine, and a subsequent ruling contained in Order No. 32.”

According to the Order, Microsoft argued that “the disputed portions of Dr. Madisetti’s testimony amount to new theories not disclosed in his expert report” and that the “untimely disclosure” of these theories prejudiced Microsoft.  Motorola opposed, noting that “Microsoft’s objections…were already rejected” and pointing out that the testimony in issue was supported by Dr. Madisetti’s expert report.  Motorola also argued that any alleged prejudice could have been contradicted during the three and a half months that elapsed between the witness statement and the hearing and suggested that “at this point it is Motorola that would be prejudiced if, at such a late stage in the investigation, large portions of expert witness testimony were to be stricken.”

ALJ Shaw determined not to strike the portions of the Madisetti statement in issue, noting that Microsoft’s previous arguments leading to Order No. 32 were “largely unsubstantiated allegations” and that “Microsoft’s current arguments provide no support to overrule Order No. 32.”  The ALJ also noted that Microsoft appeared to cross-examine Dr. Madisetti effectively, and was persuaded by Motorola’s argument that “it is Motorola that could be prejudiced if key direct testimony of an expert were stricken from the record” at this late date.

Further to our December 5, 2011 post, on January 20, 2012, the International Trade Commission issued its opinion with respect to remedy, public interest, and bonding in Certain Electric Paper Towel Dispensing Devices And Components Thereof (Inv. No. 337-TA-718).

By way of background, Complainant Georgia-Pacific Consumer Products LP of Atlanta, Georgia (“Georgia-Pacific”) filed a complaint with the ITC naming seventeen Respondents, alleging violations of Section 337 by infringement of claims 4-7 of U.S. Patent No. 6,871,815; claims 8-22 of U.S. Patent No. 7,017,856; claims 1-3 of U.S. Patent No. 7,182,289; and claims 4-22 of U.S. Patent No. 7,387,274.  All Respondents except Stefco Industries, Inc. (“Stefco”), Cellynne Corporation (“Cellynne”), and NetPak Elektronik Plastik ve Kozmetik Sanayi Ve Ticaret Ltd. (“NetPak”) were terminated from the investigation by consent order.  On December 30, 2010, ALJ Gildea issued an Initial Determination (“ID”) finding Stefco, Cellynne, and NetPak in default.  The ITC determined not to review the ALJ’s determination.

On July 21, 2011, ALJ Gildea issued the public version of an ID (dated July 12, 2011) granting Georgia-Pacific’s motion for summary determination that defaulting Respondents Stefco, Cellynne, and NetPak (collectively, the “Defaulting Respondents”) violated Section 337.  The ALJ also recommended that the ITC issue general exclusion orders and cease and desist orders and impose a bond of 100 percent on the Defaulting Respondents.  See our July 29, 2011 post for more details.  On August 19, 2011, the ITC determined not to review the ALJ’s determination and requested briefing on remedy, the public interest, and bonding.  Only Georgia-Pacific and the Commission investigative attorney (“OUII”) timely filed submissions. 

As to remedy, the ITC agreed with ALJ Gildea’s recommendation that a general exclusion order should issue.  The ITC reasoned that there is both a likelihood of circumvention of a limited exclusion order, in violation of Section 337(d)(2)(A), and that there is “(i) a pattern of violation and (ii) difficulty in identifying the source of the products,” in violation of Section 337(d)(2)(B).  Specifically, with respect to the “likelihood of circumvention” analysis, the ITC determined that infringing products can be made easily and at a low cost using well-established distribution channels, “in which molds for manufacturing infringing products may be resold and/or noninfringing molds may be retooled at low cost.”  With respect to the “pattern of violation” analysis, the ITC determined that Georgia-Pacific had identified “four nonrespondents that also may infringe the asserted patents, and identified 21 other nonrespondents that may infringe and could enter the market.”  In addition, the opinion explained that many of the products are often sold unlabeled, making it difficult to identify the source of the infringing goods.  The ITC also agreed with the ALJ that cease and desist orders were warranted as to Respondents Stefco and Cellynne because both maintain significant domestic inventories of infringing dispensers. 

The ITC further agreed with Georgia-Pacific and the OUII that a general exclusion order and cease and desist orders would not harm the public interest because there was no evidence that U.S. demand for the dispensers cannot be met by Georgia-Pacific or by the sale of non-infringing alternatives offered by Respondents and other nonrespondent distributors. 

Finally, as to bond, the ITC determined that because Georgia-Pacific leases its dispensers while most Respondents and nonrespondents sell their dispensers, it is impossible to calculate a bond based upon a set price differential between the product made by the domestic industry and the lower price of the infringing imported product.  The ITC also determined that a reasonable royalty rate could not be established for the infringing imported product because each Respondent in the investigation who did not default was terminated by consent order.  Accordingly, a bond set at 100 percent of the entered value for any electronic paper towel dispenser covered by the general exclusion order and cease and desist orders was determined to be appropriate during the period of Presidential review.

Further to our January 17, 2012 post, on January 24, 2012, ALJ Robert K. Rogers, Jr. issued Order No. 3 in Certain Portable Communication Devices (Inv. No. 337-TA-827).

According to the Order, ALJ Rogers set July 18, 2013 as the target date (which is 18 months after institution of the investigation).  ALJ Rogers further indicated that the initial determination on alleged violation shall be due on March 18, 2013.

ALJ Rogers determined that there is good cause for setting an 18-month target date in this investigation since, inter alia, “[t]his investigation includes 21 respondents, 4 patents and 46 claims.”

On January 25, 2012, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 19 (dated January 25, 2012) in Certain Digital Photo Frames And Image Display Devices and Components Thereof (Inv. No. 337-TA-807).

In the Order, ALJ Rogers granted a joint motion filed by Complainant Technology Properties Limited LLC (“TPL”) and Respondent Royal Consumer Information Products, Inc. (“Royal”) to terminate the investigation based on a settlement agreement.  After reviewing the confidential and non-confidential versions of the agreement, ALJ Rogers granted the joint motion filed by TPL and Royal.

Further to our December 16, 2011 and January 12, 2012 posts, on January 24, 2012, Chief ALJ Charles E. Bullock issued Order No. 5 in Certain Products Containing Interactive Program Guide And Parental Control Technology (Inv. No. 337-TA-820).

In the Order, ALJ Bullock included provisions for the early exchange of claim terms, claim construction expert reports, Markman briefs, and a Markman hearing on April 5, 2012.  ALJ Bullock also determined that the evidentiary hearing will commence on November 9, 2012.  The Initial Determination is due on March 22, 2013 and the target date for completing the investigation is July 22, 2013.

On January 20 2012, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 52 in Certain Starter Motors and Alternators (Inv. No. 337-TA-755). 

In the Order, ALJ Rogers granted a joint motion filed by Complainants Remy International, Inc. and Remy Technologies LLC and Respondent Electric Motor Service, Inc. to terminate the investigation based on a settlement agreement.  The Commission Investigative Staff (“OUII”) initially opposed the motion because the parties did not file a public version of the settlement agreement; however, after the parties filed a supplement to their motion that included a public version of the agreement, the OUII supported the motion.  After reviewing the confidential and non-confidential versions of the agreement, ALJ Rogers granted the motion.

On January 20, 2012, ALJ Thomas B. Pender issued Order No. 30 in Certain Vaginal Ring Birth Control Devices (Inv. No. 337-TA-768). 

According to the Order, Complainant Femina Pharma Inc. (“Femina”) moved to terminate the investigation based on withdrawal of the complaint under Commission Rule 210.21(a)(1).  Respondents Merck & Co., Inc., Schering Plough Corporation, Organon Inc., and N.V. Organon and the Commission Investigate Staff did not oppose the motion.  Because Femina filed its motion prior to the evidentiary hearing and there were no extraordinary circumstances to justify denying of the motion, ALJ Pender issued an Initial Determination granting the motion.

On January 26, 2012, ALJ Robert K. Rogers, Jr. issued Order No. 24 denying Respondents SKC, Inc. and SKC Kolon PI, Inc.’s (collectively, “SKC”) motion for summary determination that claims 1, 2, 6-10 and 12-14 of U.S. Patent No. 7,691,961 (“the ‘961 patent”) are invalid as anticipated in Certain Polyimide Films, Products Containing Same, and Related Methods (Inv. No. 337-TA-772).

According to the Order, SKC argued that the asserted claims of the ‘961 patent were invalid in light of prior art polyimide films manufactured and sold by E.I. DuPont de Nemours and Company (“DuPont”) more than a year before the earliest priority date asserted by Complainant Kaneka Corporation (“Kaneka”).  SKC pointed to Kaneka’s interrogatory responses indicating that the inventors of the ‘961 patent conceived of the inventions therein “in early 2003” and reduced the inventions to practice “in or about the Summer of 2003,” and contended that the undisputed facts show that some of DuPont’s Kapton® film products manufactured prior to September 2001 meet each limitation set forth in the asserted claims as construed by Kaneka.  SKC relied on samples of Kapton® 200HN and Kapton® 200FPC that were tested using a protocol developed by SKC based on the ‘961 patent, and a report submitted by its expert witness.

Kaneka argued in response that genuine issues of material fact precluding summary determination exist with respect to the methods and results of the testing of the DuPont films, specifically regarding the calculation of the molecular orientation axis (MOA) and the coefficient of linear expansion (CLE) in claims 1, 2 and 6-8, and the calculation of the tear propagation resistance (TPR) in claims 9-10 and 12-14.

ALJ Rogers agreed with Kaneka that a genuine issue of fact exists as to whether the measurements for the MOA, CLE and TPR were correctly determined for the DuPont films, and therefore denied the motion.

On January 20, 2012 ALJ Thomas B. Pender issued Order No. 21 in Certain Wireless Communication Devices and Systems, Components Thereof, and Products Containing Same (337-TA-775) denying Respondents Apple Inc., Hewlett-Packard Company, Aruba Networks, Inc., Meru Networks, and Ruckus Wireless’s (collectively, “Respondents”) motion to compel the production of documents and testimony from Complainant Linex Technologies, Inc. (“Linex”).

By way of background, the investigation is based on a May 6, 2011 complaint filed by Linex alleging violation of Section 337 in the importation into the U.S. and sale of certain products and components that infringe U.S. Patent Nos. 6,757,322 and RE42,219.  See our May 10, 2011 post for more details.

According to the Order, Respondents sought documents and testimony from Linex sufficient to establish the figures and factors used to calculate the licensing-based expenses on which Linex intends to rely to establish a domestic industry or, alternatively, to preclude Linex from presenting evidence of any licensing-based expenses for which it has not provided a basis for its calculation.  Respondents also sought to preclude Linex from relying on any expenses that were disclosed after the November 2, 2011 contention interrogatory response deadline.  The Commission Investigative Staff supported the motion to the extent that supplemental information Linex indicated it intended to provide did not render the motion moot.

ALJ Pender denied the motion, noting that Respondents failed to identify the pertinent document requests or deposition topics in contravention of Ground Rule 3.5.  The ALJ also found that while Respondents attached a notice of deposition to their motion, they failed to identify the deposition topics for which the witness was designated.  Further, while Respondents’ motion stated that their contention interrogatories on the issue of domestic industry include Apple Inc.’s Interrogatory Nos. 46, 47, 61, 72-75 and 77-78, Respondents failed to attach Linex’s responses to these interrogatories except for Interrogatory No. 46, which ALJ Pender pointed out is not a contention interrogatory.  Thus, Respondents provided no basis to preclude Linex from relying on expenses disclosed after the contention interrogatory response deadline.

On January 23, 2012 ALJ David P. Shaw issued the public versions of Order Nos. 31 and 32 (both dated January 6, 2012) concerning motions in limine filed by the Complainants and the Respondent, respectively, in Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof (337-TA-752).

By way of background, the investigation is based on a November 22, 2010 complaint filed by Motorola Mobility, Inc. and General Instrument Corp. (collectively, “Motorola”) alleging that Microsoft Corp. (“Microsoft”) violates Section 337 by infringing various patents.  See our November 24, 2010 post for more details.

According to Order No. 31, Motorola filed six motions in limine.  Motion No. 1 was granted in part, allowing exhibits containing prior art references but barring an expert from testifying who was not previously identified or deposed.  Motion No. 2 was also granted in part, disallowing an expert from testifying on Japanese prosecution documents that were not addressed in his expert report or deposition.  Motion No. 3 was denied without detail, and the order merely indicates “it has not been shown that the testimony should be precluded as a threshold manner.”  Motion No. 4 was granted in part, allowing prior art to be used as evidence but preventing admission of late-submitted declarations based on the prior art.  Motion No. 5 was denied, and thus the testimony of a particular expert regarding invalidity will be allowed.  ALJ Shaw stated in the order that “it is not necessary at this time to preclude in its entirety the witness’ testimony with respect to the validity of the patent” but notes that the briefing “has identified areas of concern that may have a bearing on the relevance of portions of his testimony, and the weight that should be given to his testimony.”  Motion No. 6 to exclude other expert witness testimony was similarly denied, although the ALJ again noted concerns regarding the expert’s testimony.

According to Order No. 32, Microsoft filed three motions in limine.  The first motion was to preclude Motorola from presenting evidence based on depositions and document production by Motorola’s suppliers.  The second motion was to preclude Motorola from relying on any testimony or evidence beyond the scope of the original expert reports.  The third motion was directed at precluding Motorola from relying on any evidence based on several “untimely” expert reports.  These motions were directly affected by the ALJ’s issuance of Order No. 24 granting Motorola’s motion “for leave to present at the hearing evidence that was the subject of certain discovery, as well as certain expert reports and testimony that addressed such discovery.”  Since this order was directed at the evidence relating to Motorola’s suppliers and the allegedly “untimely” expert reports, ALJ Shaw determined that Microsoft’s first and third motions are moot.  The ALJ denied Microsoft’s second motion because some of the testimony was not shown to be beyond the scope of the original report, and the remaining testimony and evidence outside the original reports is related to the discovery and evidence from Motorola’s suppliers, evidence specifically allowed by Order No. 24.