ALJ Gildea Rules On Various Motions In Certain Electronic Devices With Image Processing Systems (337-TA-724)
On April 28, 2011, ALJ E. James Gildea issued the public versions of Order No. 20 (dated February 11, 2011), Order No. 35 (dated March 28, 2011), Order No. 39 (dated March 29, 2011), and Order No. 43 (dated April 1, 2011) in Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software (Inv. No. 337-TA-724). In the Orders, ALJ Gildea ruled on two motions in limine, a motion to amend an exhibit list, and a motion for emergency relief filed by Complainants S3 Graphics Co., Ltd. and S3 Graphics, Inc. (collectively, “S3G”), as well as a motion in limine filed by Respondent Apple Inc. (“Apple”).
In Order No. 20, ALJ Gildea granted-in-part S3G’s motion for emergency relief related to Order No. 15. See our March 7, 2011 post for more details on Order No. 15. According to Order No. 20, on February 8, 2011, S3G filed a motion seeking a supplemental order from the ALJ stating that Order No. 15 required Apple to provide a corporate representative for deposition regarding Apple’s implementation of DCT/S3TC. Apple opposed the motion, arguing that Order No. 15 did not give S3G leave to take additional corporate depositions from Apple beyond the depositions of the individuals specifically named in the Order. Apple further argued that S3G had rejected a compromise that would have allowed S3G to take additional corporate testimony on three deposition topics that relate directly to DXT and/or S3TC. ALJ Gildea determined that while Order No. 15 did not require Apple to provide a corporate representative for deposition, discovery in the case would be advanced by allowing S3G to take the limited deposition testimony that had been offered by Apple. Accordingly, the ALJ granted S3G’s motion in part and ordered that S3G be allowed to take Apple’s corporate deposition on the three limited topics at issue.
In Order No. 35, ALJ Gildea granted Apple’s motion in limine to preclude testimony from witnesses from non-party Microsoft Corporation (“Microsoft”) and denied S3G’s motion to amend its proposed exhibit list. According to the order, on March 11, 2011, Apple filed a motion in limine to preclude testimony at the evidentiary hearing from unidentified witnesses employed by Microsoft. By way of background, Apple stated that S3G intended to prove its domestic industry case at least in part by relying on the activities of Microsoft, which is a licensee of the patents in suit. Apple argued that S3G had never identified the names of the Microsoft witnesses that S3G intended to call at the hearing. Moreover, Apple stated that S3G had obtained a subpoena and a discovery extension to depose Microsoft earlier in the investigation, but later withdrew the subpoena and cancelled the deposition. Accordingly, Apple argued that it would be unfair to allow testimony from Microsoft witnesses at a late date because Apple would not have time to prepare to defend against the testimony. In response, S3G admitted that it did not know the names of the Microsoft witnesses but argued that, notwithstanding Apple’s lack of testimonial discovery relating to the Microsoft witnesses, Apple would suffer no prejudice because a Microsoft technical witness would only be called to briefly authenticate the Microsoft source code that S3G intended to rely upon (and no Apple expert disputed the authenticity of the source code), and further that whatever economic testimony a Microsoft witness may give “is [as] equally unknown to S3G as it is to Apple.” ALJ Gildea granted Apple’s motion in limine after finding that S3G had violated Ground Rule 7.1 by failing to disclose “the names of all known witnesses… and a brief outline of their testimony,” and that S3G had not shown good cause to be relieved from the requirements of the Ground Rule. For the same reasons, the ALJ also denied S3G’s motion to amend its exhibit list to add two declarations concerning the authenticity of certain Microsoft source code.
In Order No. 39, ALJ Gildea denied S3G’s motion in limine to preclude testimony by Mr. Eric Hoffert and to preclude Apple and its experts from relying on Mr. Hoffert’s deposition testimony. According to the order, S3G argued that Mr. Hoffert’s testimony should be precluded because Apple allegedly refused to produce Mr. Hoffert for deposition until long after discovery closed and failed to produce critical documents relating to Apple’s QuickTime product, which Apple alleges invalidates S3G’s asserted claims and implements an image compression/decompression technology disclosed in a patent that had issued to Mr. Hoffert. S3G stated that it had served a subpoena on Mr. Hoffert on November 22, 2010, but that Apple had refused to produce him for a deposition. Apple opposed the motion, arguing that counsel for Mr. Hoffert had timely served objections to the Hoffert subpoena on November 24, 2010, and that contrary to S3G’s argument, Apple had never refused to make Mr. Hoffert available for a deposition. Rather, Apple stated that S3G had failed to follow up with Mr. Hoffert’s counsel to propose dates or inquire about Mr. Hoffert’s availability, and that it was not until February 2011 that the parties began discussing Mr. Hoffert’s deposition, and then only because counsel for Mr. Hoffert affirmatively raised the issue with S3G. Apple further stated that S3G had actually deposed Mr. Hoffert on February 21, 2011 and that S3G therefore would not suffer any prejudice if Mr. Hoffert testified at the hearing. The Commission Investigative Staff (“OUII”) argued that S3G’s motion should be denied, with the exception that Mr. Hoffert should be precluded from testifying about five QuickTime source code files that had been belatedly produced and identified by Apple. ALJ Gildea denied the motion after finding that any prejudice stemming from the lateness of Mr. Hoffert’s deposition was of S3G’s own making and further that any prejudice had been mitigated by the fact that S3G had been timely apprised of Apple’s invalidity contentions and that S3G did in fact depose Mr. Hoffert.
In Order No. 43, ALJ Gildea granted-in-part S3G’s motion in limine to preclude Apple from relying on QuickTime evidence not previously identified. According to the order, S3G argued that Apple had disclosed for the first time in its pre-hearing brief its intention to prove its QuickTime invalidity case through the testimony of certain Apple employees, the testimony of Mr. Eric Hoffert, and the use of various new trial exhibits. S3G argued that it had been prejudiced by Apple’s conduct because the conduct had prevented from S3G from seeking discovery, had created a limited record of evidence on which S3G’s expert could opine, and had hamstrung S3G’s ability to properly prepare its response to Apple’s invalidity defense. Apple opposed the motion, arguing that it had complied with all of its discovery obligations in disclosing information about the QuickTime and Hoffert prior art and producing relevant documents. Apple argued that S3G had not diligently reviewed those documents or witness disclosures and was therefore responsible for its own situation. Apple further argued that S3G was not prejudiced because it had had Apple’s QuickTime documents for months and had deposed each of the witnesses in question. OUII argued that Apple should be precluded from offering the witnesses’ testimony on QuickTime because although the files existed on a computer that had been made available to S3G, Apple had failed to single out the specific source code files on the computer that formed the basis of Apple’s invalidity contentions. After considering the arguments, ALJ Gildea denied S3G’s request to preclude the testimony of the Apple employees and Mr. Hoffert. With respect to the trial exhibits, ALG Gildea granted S3G’s motion in limine as to two of the exhibits that had not been produced during fact discovery, but denied the motion as to various other exhibits. In particular, ALJ Gildea did not accept S3G and OUII’s argument as to the files on the computer that had been made available to S3G, instead finding that “any failure of S3G to understand the significance of the computer and the files therein is of S3G’s own making.” Lastly, as to the remaining trial exhibits at issue, ALJ Gildea found that it was impossible to discern from the parties’ filings whether those exhibits had been timely produced to S3G. Accordingly, the ALJ ordered the parties to file additional letter briefs of no more than 2 pages attaching relevant evidence, if any, to support their arguments as to the remaining trial exhibits.