ALJ Charneski Issues Public Versions of Orders on Evidentiary and Discovery Matters In Certain Semiconductor Integrated Circuits Using Tungsten Metallization (337-TA-648)
On July 2, 2010, ALJ Carl C. Charneski issued public versions of Order Nos. 49, 86, 87, 89, 90, and 109 in Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same (Inv. No. 337-TA-648).
In Order No. 49 (dated March 5, 2009), ALJ Charneski denied Respondent Tower Semiconductor Ltd.’s (“Tower”) motion to compel Complainants LSI Corp. and Agere Systems, Inc. (“Complainants”) to provide an index to more than 565,000 electronic document images submitted to Tower during discovery. Tower complained that an index was necessary because the documents were not produced as they were kept in the ordinary course of business and not cross-referenced to document requests propounded by Tower on November 11, 2008. ALJ Charneski determined that although Complainants produced the documents in October-November 2008, Tower did not move for an index until February 12, 2009. Additionally, ALJ Charneski determined that Complainants had provided text-searchable files, which was the practice both by Complainant and other Respondents. Based on the above, ALJ Charneski denied Tower’s motion.
In Order No. 86 (dated June 2, 2009), ALJ Charneski granted several Respondents’ motion to strike Complainants’ supplementation of appendices and exhibits to Complainants’ expert’s report. According to the Order, Complainants provided the supplementation to Respondents one month after the deadline provided by the Ground Rules, did not provide the supplementation until Complainants opposed Respondents’ motion to strike, and failed to file a separate motion requesting permission to supplement the expert report, per Ground Rule 2(s). ALJ Charneski determined that Complainants’ failure to follow the ground rules and request permission to supplement was fatal, and there was no showing of “good cause” at any rate.
In Order No. 87 (dated June 2, 2009), ALJ Charneski granted Respondent Grace Semiconductor Manufacturing Corp.’s (“Grace”) motion to compel Complainants to respond to requests for admissions. With regard to a first set of requests, ALJ Charneski determined that Complainants must answer whether they sought relief in this investigation with respect to any products made by Grace for identified licensees, despite arguments of the request’s overbreadth. The request was limited to relief sought in the investigation, which concerned a single asserted patent, and Grace stated that the involved products were admittedly licensed as to that patent. With respect to a second set of requests, the parties disputed whether Complainants could respond to an inquiry into the existence of confidential information known to Complainant’s counsel, but not known to Complainants. ALJ Charneski determined that since the request only inquired into the existence of the information, rather than its substance, Complainants could make limited inquiries of their counsel as to the existence of the information and respond to the request.
In Order No. 89 (dated June 8, 2009), ALJ Charneski granted-in-part Complainants’ motion to compel documents from Respondents Spansion Inc., Nanya Technology Corp., and Powerchip Semiconductor Corp. With respect to recipes and process flows, ALJ Charneski denied Complainants’ motion on the grounds that Complainants had insufficient bases to counter Respondents’ detailed allegations that all relevant and responsive documents had been produced. On the other hand, with respect to sales, inventory, importation, and licensing, ALJ Charneski granted Complainants’ motion to compel and determined that such information was shown to be relevant and within the scope of discovery to which Complainants were entitled.
In Order No. 90 (dated June 4, 2009), ALJ Charneski granted Respondent National Semiconductor Corporations’ (“NSC”) motion to reopen discovery, in view of NSC’s discovery of notebooks by one of the named inventors on the patent in suit. The notebooks were discovered pursuant to a subpoena of a law firm (different from Complainants’ counsel) that retained the notebooks from a prior litigation. The Order stated that Complainants had not been granted access to the entire unredacted files of the law firm due to confidentiality issues and therefore relied upon the law firm to conduct searches. ALJ Charneski determined that NCS could further depose the inventor associated with the notebooks, and request more discovery if necessary, and he denied NCS’s motion for sanctions and to extend the procedural schedule and target date of the investigation.
Finally, in Order No. 109 (dated July 14, 2009), ALJ Charneski denied Complainants’ motion to strike the rebuttal expert report and testimony of MagnaChip Semiconductor, Ltd.’s (“Magnachip”) expert on non-infringement. Complainants alleged that the rebuttal report relied upon “uncorroborated testing results” performed by MagnaChip, in which their expert had no involvement and could not verify procedures. MagnaChip argued that the principles and methodologies were widely accepted and an expert need not have personal knowledge of the testing upon which he relies. ALJ Charneski determined that Complainants’ issues went to the weight of the expert testimony, rather than whether the expert should testify in the first place.
