02
Oct
By Barry Herman
On September 30, 2009, ALJ E. James Gildea issued the public version of Order No. 29 in Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing the Same (Inv. No. 337-TA-666).  In the Order, ALJ Gildea denied: (1) respondents Asustek Computer, Inc.’s, Asus Computer International’s, and Monolithic Power Systems, Inc.’s (collectively, “Respondents”) motion to strike the rebuttal expert report of complainants O2 Micro International Ltd.’s and O2 Micro Inc.’s  (collectively, “O2 Micro”) expert witness and prevent him from testifying at the evidentiary hearing about the contents of his report; (2) O2 Micro’s motion to strike the expert report of Respondents’ expert witness and prevent him from testifying at the evidentiary hearing about the contents of his report; and (3) O2 Micro’s motion for summary determination as to the invention date of one of the asserted patents in the investigation and to strike any portions of any expert reports that challenge that invention date.

As to the first motion, Respondents argued that O2 Micro’s expert report should be stricken because O2 Micro had failed to disclose its expert at the time set forth in the Ground Rules.  O2 Micro responded that its expert report was a timely opposition to an expert report submitted by Respondents’ expert.  According to O2 Micro, Respondents’ expert report contained unanticipated arguments and therefore O2 Micro could not have disclosed its rebuttal expert at the time set forth in the Ground Rules.  O2 Micro argued that it promptly disclosed its expert as soon as it was aware that his testimony would be needed to refute the unanticipated arguments in Respondents’ expert report.  The Commission Investigative Staff (“the Staff”) agreed with O2 Micro that Respondents’ expert report covered “unexpectedly raised” topics that merited a rebuttal expert report, and therefore opposed Respondents’ motion.

As to the second motion, O2 Micro argued that Respondents’ expert report should be stricken because it is not relevant, lacks scientific analysis, and addresses matters previously litigated and resolved in other litigation.  Respondents responded that their expert has technical and specialized knowledge relevant to the date of conception for one of the asserted patents.  Further, Respondents argued that the other litigation raised by O2 Micro involved a different patent and therefore the subject matter in the expert report had not in fact been previously litigated and resolved.  The Staff opposed O2’s motion.

As to the third motion, O2 Micro argued that it was entitled to summary determination as to the invention date of one its asserted patents because the issue had already been litigated and resolved in other litigation, and that any portions of expert reports challenging its alleged invention date should be stricken.  Respondents responded that O2 Micro had misread the jury verdict from the other litigation, and, further, that the other litigation involved a different, albeit related, patent, with substantially different claim limitations.  Accordingly, collateral estoppel should not apply to the jury verdict in the other litigation.  The Staff also opposed O2’s motion.

ALJ Gildea denied all three motions, finding that Respondents’ expert report should not be stricken as unreliable, that O2 Micro’s rebuttal expert report should be allowed, and that summary determination was not appropriate because collateral estoppel did not apply to the jury verdict in the other litigation, as it involved a different patent.
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