By Eric Schweibenz
On May 7, 2010, ALJ E. James Gildea issued the public version of Order No. 49 (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 Complainants O2 Micro International Ltd. and O2 Micro Inc.’s (collectively, “O2 Micro”) motion to strike certain hearing testimony of the following witnesses of Respondent Microsemi Corporation (“Microsemi”) as outside the scope of expert reports and depositions and/or outside the scope of contentions raised in Microsemi’s pre-hearing brief: Dr. Patrick Chapman, Mr. Kevin Choi, Mr. George Henry, Dr. Xiaoping Jin, and Mr. Roger Holliday.

Although portions of the Order were heavily redacted, O2 Micro argued that Dr. Chapman’s testimony with regard to the accused LX 1691 products, including an allegedly new non-infringement contention, was outside the scope of his expert reports and deposition testimony.  O2 Micro also sought to strike similar testimony from a fact witness, Mr. Kevin Choi, regarding the overvoltage protection in the accused LX 1691 products, as outside the scope of Microsemi’s pre-hearing brief.  O2 Micro additionally sought to strike Dr. Chapman’s testimony regarding a family of 2240 devices, tests O2 Micro performed on accused products, allegedly new non-infringement theories based on the AC overvoltage signal of the accused LX 1692 products and the overvoltage protection circuitry of the LX 1693 products.  O2 Micro further sought to strike the testimony from George Henry, the named inventor of a prior art ‘129 Henry patent, on the grounds that none of Microsemi’s expert witnesses offered any invalidity opinion based on the Henry patent.  Finally, O2 Micro argued that the testimony of Dr. Jin and Mr. Holliday regarding the "Jin balancer" should be stricken because it was raised in Microsemi's pre-hearing briefs solely with respect to products no longer accused in this Investigation.

Microsemi opposed Complainants’ motion, arguing that Complainants had understated the scope of Dr. Chapman’s opinions expressed in his expert reports and depositions.  According to the Order, Microsemi also alleged that portions of Dr. Chapman’s testimony regarding the LX 1691 products were in response to arguments raised by O2 Micro’s expert for the first time at the hearing, or only after Dr. Chapman submitted his expert reports and deposition testimony, and therefore Dr. Chapman did not have an opportunity to rebut prior to the hearing.  Microsemi also argued that Mr. Choi’s testimony should not be stricken because it was provided in response to O2 Micro’s questions during cross-examination.  According to the Order, Microsemi further argued to maintain the testimony of George Henry to rebut O2 Micro’s assertion that Microsemi copied portions of the patent-in-suit when designing its products, and that it was “genius” to use secondary-side voltage sensing.  Finally, Microsemi argued that Dr. Jin and Mr. Holliday’s testimony regarding the “Jin balancer” should be maintained to rebut an allegation that the accused products have no substantial non-infringing uses.

According to the Order, the Commission Investigative Staff supported Complainants’ motion with respect to Dr. Chapman's testimony on O2 Micro's testing of accused products, but opposed the motion in all other respects.

With respect to Dr. Chapman’s testimony on the LX 1691 Product, ALJ Gildea granted O2 Micro’s motion at least as to his testimony regarding O2 Micro’s testing of an LG 32-inch television, due to “no plausible justification for omitting a discussion of the tests in Chapman's rebuttal expert report.”  ALJ Gildea also determined that simply because an opponent’s expert allegedly raises an issue for the first time at a hearing does not permit one’s own expert witness to testify outside the scope of their expert reports and deposition testimony.  Instead, ALJ Gildea stated that “the proper recourse for it would have been to object to that [opponent’s] testimony as outside the scope of his expert reports and deposition testimony.”

However, with respect to Dr. Chapman’s testimony at the hearing opposing O2 Micro’s expert’s description of the family of 2240 devices, ALJ Gildea acknowledged that O2 Micro’s expert first mentioned the 2240 devices after Dr. Chapman had already provided his expert reports and deposition testimony.  ALJ Gildea further determined that the relevant issue regarding the 2240 devices was O2 Micro’s alleged equivalency of counters and timers, and Dr. Chapman had sufficiently addressed this issue in his deposition and expert report, such that O2 Micro’s request to strike his hearing testimony on this issue was denied.

ALJ Gildea also determined that Dr. Chapman’s hearing testimony regarding the LX 1692 and LX 1693 was sufficiently grounded in, or was at least a “permissible elaboration of his previously disclosed opinion” in his expert report and/or deposition testimony so “that Chapman's testimony in this regard does not violate Ground Rule 10.5.6 and therefore O2 Micro's motion to strike this testimony is denied.”

With regard to Mr. Choi’s testimony in response to questions on cross-examination, ALJ Gildea found that his answers “were responsive to the questions asked by O2 Micro and within the scope of Microsemi's pre-hearing brief.”  Therefore, O2 Micro’s motion strike this testimony of Mr. Choi was denied.

ALJ Gildea agreed with Microsemi that Mr. Henry’s testimony is relevant to the issue of whether it was “genius” to use secondary-side voltage sensing, and therefore denied O2 Micro’s motion to strike that testimony.

Finally, ALJ Gildea determined to strike the testimony of Dr. Jin and Mr. Holliday regarding the “Jin balancer” because he had informed Microsemi at the hearing that its prehearing brief was particularized with regard to this issue on products not accused of infringement, and that Microsemi could have addressed this issue at the hearing with respect to “non-infringement and substantial non-infringing use with respect to each of the accused products, but it did not.”

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