ALJ Gildea Issues Orders Denying Respondents’ Motion In Limine, Granting Complainants’ Motion In Limine, and Granting In Part Complainants’ Motion to Strike In Certain Semiconductor Chips With DRAM Circuitry (337-TA-819)

On December 21, 2012, ALJ E. James Gildea issued the public versions of Order No. 14 (dated December 4, 2012), Order No. 15 (dated December 4, 2012), and Order No. 16 (dated December 6, 2012) in Certain Semiconductor Chips with DRAM Circuitry, and Modules and Products Containing Same (Inv. No. 337-TA-819).  Each will be discussed in turn below.

By way of background, the investigation is based on a complaint filed by Elpida Memory, Inc and Elpida Memory (USA) Inc. (“Elpida”) alleging violation of Section 337 in the importation into the U.S. and sale of certain semiconductor chips with DRAM circuitry, and modules and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,150,689, 6,635,918, 6,555,861, 7,659,571, 7,713,828, 7,495,453, and 7,906,809.  See our November 16, 2011 post for more details.

According to Order No. 14, Respondents Nanya Technology Corporation and Nanya Technology Corporation USA (collectively, “Nanya”) moved to exclude testimony by Elpida’s expert regarding infringement under the doctrine of equivalents (“DOE”).  Nanya argued the expert had failed to disclose legally sufficient information with respect to DOE in his expert report, relying only on “bare statement[s].”  Elpida disagreed, and asserted that the expert provided particularized discussions of the functionality of various elements sufficient to support his DOE opinions, with indications to several sections of his report.  Elpida also pointed out that Nanya “has made no showing that it will be prejudiced if [the expert] is permitted to testify” about DOE at the evidentiary hearing as Nanya has been on notice since at least July 13, 2012.  ALJ Gildea denied the motion to strike, noting that Nanya ignored substantial portions of the expert’s report in drafting their motion, portions that provide sufficient information related to his DOE opinions.  Regardless, the ALJ emphasized that the report “is not, and will not be, substantive evidence at the hearing.”  Since the ALJ concluded that Nanya was notified sufficiently in advance that Elpida was raising a DOE infringement position, the motion was denied.

According to Order No. 15, Elpida filed a motion in limine to preclude arguments against the validity of claims 1, 15, and 27 of asserted U.S. Patent No. 7,495,453 (the ‘453 patent) based on Nanya’s Supplemental Notice of Prior Art.  Elpida argued that Nanya should be precluded from arguing based on this new prior art as it violates Order No. 7 and Nanya failed to file the requisite motion based on Ground Rule 4 to assert this new art.  Nanya opposed Elpida’s motion, and argued that Elpida’s tactic of waiting until “the eve of trial” to oppose this prior art was inappropriate and that Elpida had not shown that it would be prejudiced.  ALJ Gildea explained that Order No. 7 included modifications to the scheduling order, including “a deadline for Nanya to file a notice of prior art with respect to the newly asserted dependent claims” and an explanation that Nanya was not permitted to assert new art absent a motion pursuant to Ground Rule 4.  In light of Nanya’s disregard of these requirements, ALJ Gildea granted the motion, stating “any prejudice to Nanya that results…is of its own doing.”

According to Order No. 16, Elpida filed a motion to strike Nanya’s second supplemental responses to certain interrogatories as untimely under the procedural schedule.  Elpida was ordered to update its motion in order to clarify what subject matter was included in this motion in light of the motion in limine discussed in Order No. 15, and as such, only one issue remained ripe for consideration:  whether or not to strike Nanya’s invalidity argument based on 35 U.S.C. § 112.  Elpida asserted that Nanya’s § 112 contentions were not provided until the last day of fact discovery, and that this new contention was unjustified.  Nanya stated that there is no basis to strike this argument because no fact discovery was necessary and Elpida was not otherwise prejudiced.  ALJ Gildea noted that Nanya supplemented its interrogatory response well after the deadline for contentions with no explanation for the addition showing good cause or that the contention is based on new information.  Although Elpida could obtain expert discovery on this issue, the ALJ agreed with Elpida that fact discovery may have been useful.  As such, Nanya’s contention was determined to be untimely, and the motion to strike was granted in relation to this issue. Therefore, Nanya was precluded from asserting its § 112 argument in the investigation.

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