On December 22, 2011, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 13 (dated November 22, 2011) in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions (Inv. No. 337-TA-786) Denying Complainant’s Motion to Compel.

According to the Order, Complainant Freescale Semiconductor, Inc. (“Freescale”) filed a motion to compel Respondent MediaTek, Inc. (“MediaTek”) to provide dates in December 2011 for depositions.  Freescale stated that it requested deposition dates for MediaTeks’s witnesses in Taiwan in December 2011 and MediaTek responded by claiming its witnesses were not available in December, offering dates in January 2012.  According to Freescale’s remarks set forth in the Order, “MediaTek offered no reason regarding why its witnesses could not sit for depositions in December.”  Freescale argued that it wanted to hold the depositions well in advance of the February 10, 2012 deadline for close of discovery “given MediaTek’s past failures in providing prompt responses to discovery.”

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On December 22, 2011, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 9 (dated November 2, 2011) in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions (Inv. No. 337-TA-786) granting-in-part and denying-in-part respondent Funai Electric Co. Ltd.’s and Funai Corp., Inc.’s (“Funai”) motion to compel responses to Interrogatory Nos. 1, 5, and 6.

Funai previously filed a motion for summary determination, alleging that complainant Freescale Semiconductor, Inc.’s (“Freescale”) allegations were barred under the doctrines of issue preclusion and bar based on related Investigation No. 337-TA-709 (“Integrated Circuits I”).  Freescale successfully opposed, alleging there were disputed facts as to whether the claims are the same as those decided in Integrated Circuits I, pointing to paragraph 56 of the complaint.  Soon after, Funai issued its First Set of Interrogatories (1-6) to Freescale.  Interrogatory No. 1 requested the factual basis for paragraph 56 of the complaint, and Interrogatories 5 and 6 requested information regarding Freescale’s pre-filing investigation.  Freescale served its responses to Funai’s First Set of Interrogatories on September 9, 2011 providing the names of those involved in the pre-filing investigation, stating that investigation continues in order to confirm its factual basis, and claiming that all other information is protected by attorney-client privilege and/or the work product doctrine.

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Further to our October 28, 2011 and November 28, 2011 posts, on December 21, 2011, Chief ALJ Charles E. Bullock issued Order No. 6: Setting Procedural Schedule in Certain Navigation Products, Components Thereof, and Related Software (Inv. No. 337-TA-810).

In the Order, ALJ Bullock included provisions for the early exchange of claim terms, claim construction expert reports, Markman briefs, and a Markman hearing on March 21, 2012.  ALJ Bullock also determined that the evidentiary hearing will commence on August 6, 2012.  The Initial Determination is due on November 5, 2012 and the target date for completing the investigation is March 4, 2013.

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On December 20, 2011, ALJ Robert K. Rogers, Jr. issued Order No. 10 (i) Granting-In-Part and Denying-In-Part Complainant Openwave Systems, Inc.’s Motion To Strike Apple, Inc.’s Inadequately Pleaded Affirmative Defenses, and (ii) Granting Respondent Apple, Inc.’s Unopposed Motion For Leave to Amend Its Response to the Complaint (Eighth Affirmative Defense) in Certain Devices for Mobile Data Communication (Inv. No. 337-TA-809). 

The investigation is based on a complaint filed by Openwave Systems, Inc. (“Openwave”) of Redwood City, California alleging violation of Section 337 in the importation into the U.S. and sale of certain allegedly infringing devices for mobile data communication.  See our September 1, 2011 post for more details.

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On December 19, 2011, ALJ Thomas B. Pender issued Order No. 27 (dated December 16, 2011) in Certain Vaginal Ring Birth Control Devices (Inv. No. 337-TA-768).  In the Order, ALJ Pender granted-in-part Respondents Merck & Co., Inc., Schering-Plough Corporation, Organon USA, Inc., and N.V. Organon’s (collectively, “Merck”) motion to quash subpoenas ad testificandum and duces tecum directed to Dr. Marilyn Jerome, a non-testifying witness retained by Merck.

According to the Order, Merck explained that, although it had previously identified Dr. Jerome as a testifying expert and served an expert report containing her opinions, Merck has since re-designated Dr. Jerome as a non-testifying expert and, thus, under Federal Rule of Civil Procedure 26(b)(4)(D), her testimony and materials are shielded from discovery.  Further, Merck argued that, because Dr. Jerome is not a Rule 35 expert witness as defined by Rule 26(b)(4)(D)(i), and because Complainant Femina Pharma (“Femina”) cannot show “exceptional circumstances under which it is impracticable for [Femina] to obtain facts or opinions on the same subject by other means,” neither exception to Rule 26(b)(4)(D) applies.

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On December 19, 2011, ALJ Gildea issued the public version of Order No. 8 (dated October 18, 2011) in Certain Dynamic Random Access Memory and NAND Flash Memory Devices and Products Containing Same (Inv. No. 337-TA-803).  In the Order, ALJ Gildea set a hearing on November 15, 2011 from 9 a.m. to 5 p.m. to address the effects on the public interest of Complainants’ October 14, 2011 motion to terminate two Respondents, Pentech Co., Ltd. and Pantech Wireless, Inc. from the investigation on the basis of settlement.

By way of background, this investigation is based on a July 12, 2011 complaint filed on behalf of Intellectual Ventures Management, LLC, Invention Investment Fund I, L.P., Invention Investment Fund II, LLC, Intellectual Ventures I LLC, and Intellectual Ventures II LLC, against several manufacturers, distributors, and retailers of DRAM and NAND Flash memory devices by Hynix Semiconductor Inc. and Hynix Semiconductor America, Inc. and Elpida Memory, Inc. and Elpida Memory (USA) Inc., for alleged infringement of U.S. Patent Nos. 5,654,932; 5,963,481; 5,982,696; 5,500,819; and 5,687,132.  See our July 13, 2011 post for more details.

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On December 20, 2011, ALJ Theodore R. Essex issued a notice regarding the Initial Determination (“ID”) in Certain Mobile Devices, Associated Software, and Components Thereof (Inv. No. 337-TA-744).

By way of background, the Complainant in this investigation is Microsoft Corporation and the Respondent is Motorola Mobility, Inc.

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On December 21, 2011, the U.S. International Trade Commission voted to institute an investigation of Certain Dynamic Random Access Memory Devices, and Products Containing Same (Inv. No. 337-TA-821).

The investigation is based on a November 21, 2011 complaint filed by Nanya Technology Corporation of Taiwan alleging violation of Section 337 in the importation into the U.S. and sale of certain dynamic random access memory (“DRAM”) devices and products containing same that infringe one or more claims of U.S. Patent Nos. 5,677,566, 6,399,983, 6,586,796, and 6,664,634.  See our November 23, 2011 post for more details.

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On November 29, 2011, ALJ Theodore R. Essex issued the public versions of Order Nos. 19 and 20 (both dated November 29, 2011) in Certain Protective Cases and Components Thereof (Inv. No. 337-TA-780).

In Order No. 19, ALJ Essex granted a joint motion filed by Complainant Otter Products, LLC (“Otter”) and Respondents Cellairis Franchise, Inc. and Global Cellular, Inc. to terminate the Investigation based on a settlement agreement.

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On December 19, 2011, ALJ Thomas B. Pender issued the public version of Order No. 24 (dated November 19, 2011) in Certain Vaginal Ring Birth Control Devices (Inv. No. 337-TA-768).  The order denied a motion for summary determination filed by Respondents Merck & Co., Inc., Schering Plough Corp., Organon USA, Inc., N.V. Organon, Wal-Mart Stores, Inc., CVS Pharmacy, Inc., and Walgreen Co. (“Respondents”) that Complainant Femina Pharma, Inc. (“Femina”) failed to meet the domestic industry requirement of Section 337.

The investigation is based on a complaint filed by Femina alleging violation of Section 337 in the importation into the U.S. and sale of certain vaginal ring birth control devices.  See our February 28, 2011 post for more details.

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