04
May
By Eric Schweibenz
On April 30, 2010, ALJ E. James Gildea issued the public version of Order No. 48 (dated April 19, 2010) in Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing the Same (Inv. No. 337-TA-666).  In the Order, ALJ Gildea granted-in-part Respondents Monolithic Power Systems, Inc., ASUSTeK Computer Inc., and ASUS Computer International’s (collectively, “Respondents”) motion to strike certain hearing testimony of Complainants O2 Micro International Ltd. and O2 Micro Inc.’s (collectively, “O2 Micro”) experts, Richard A. Flasck and Dr. Melvin Ray Mercer.

According to the Order, Respondents argued that the testimony at issue should be stricken because it was outside the scope of Mr. Flasck’s and Dr. Mercer’s respective expert reports and deposition testimony.  In particular, Respondents were seeking to have stricken Mr. Flasck’s testimony that Respondents’ accused products infringe O2 Micro’s U.S. Patent No. 7,417,382 (the ‘382 patent) even though “squegging” causes the output signal from the capacitor divider of those products to periodically fall below the alleged “threshold.”  Also, Respondents were seeking to have stricken Mr. Flasck’s opinions regarding the operation of their MP1015 and MP1009 products, claim construction, and “classic timers” in connection with the accused products.  With regard to Dr. Mercer, Respondents were seeking to have stricken the expert’s opinions concerning the conception and reduction to practice of the invention of the ‘382 patent, the simulation of the “Kawabata circuit,” and a waveform diagram he drew during his deposition.

O2 Micro opposed Respondents’ motion, arguing that Respondents had understated the scope of the opinions that Mr. Flasck and Dr. Mercer expressed in their expert reports and depositions.  O2 Micro also argued that Respondents had taken the testimony of Mr. Flasck and Dr. Mercer out of context.  According to O2 Micro, when the objected-to testimony is compared to the actual testimony presented by the witnesses in their expert reports and deposition transcripts, it is apparent that the opinions that Mr. Flasck and Dr. Mercer voiced during the evidentiary hearing were within the scope of their expert reports or depositions and were thus permissible under the Ground Rules.

The Commission Investigative Staff (“OUII”) argued that Respondents’ motion should be granted-in-part because some, but not all, of their objections had merit.  In particular, OUII agreed that Dr. Mercer’s testimony regarding the conception and reduction to practice of the invention of the ‘382 patent and the simulation of the Kawabata circuit should be stricken.  However, OUII argued that Dr. Mercer’s testimony regarding the waveform diagram should not be stricken, and that none of Mr. Flasck’s testimony should be stricken.

ALJ Gildea determined to grant Respondents’ motion in part.  The ALJ found that Mr. Flasck’s testimony on claim construction, the “squegging” issue, the operation of the MP1015 and MP1009 products, and “classic timers” was sufficiently supported by Mr. Flasck’s expert reports and deposition testimony, and ALJ Gildea therefore decided not to strike that testimony.  However, ALJ Gildea did strike certain portions of Mr. Flasck’s testimony that referenced “the IEEE dictionary” and “the official IEEE definitions,” because O2 Micro could not point to anything in Mr. Flasck’s expert reports or deposition testimony that indicated that he ever relied on the IEEE dictionary.

With regard to Dr. Mercer’s testimony, ALJ Gildea determined to strike testimony relating to the inventor’s diligence in reducing the invention of the ‘382 patent to practice.  The ALJ found that such testimony was outside the scope of Dr. Mercer’s expert reports and deposition testimony because, while that earlier testimony had covered the inventor’s conception and reduction to practice, it had not touched on diligence – which ALJ Gildea found to be a separate and distinct issue.  ALJ Gildea also struck Dr. Mercer’s testimony relating to the simulation of the Kawabata circuit because Dr. Mercer had not disclosed before the hearing that he had ever conducted such a simulation.  However, ALJ Gildea declined to strike hearing testimony relating to the waveform diagram that Dr. Mercer had drawn at his deposition because such hearing testimony was not outside the scope of the deposition testimony, and to the extent that Respondents believed that the hearing testimony contradicted the deposition testimony, the issue could be addressed as a question of the weight to be accorded to Dr. Mercer’s testimony.
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