On December 21, 2012, ALJ David P. Shaw issued the public version of Order No. 49 (dated November 21, 2012) ruling on motions to strike expert reports and preclude evidence in Certain Gaming And Entertainment Consoles, Related Software, And Components Thereof (Inv. No. 337-TA-752).
By way of background, the investigation is based on a complaint filed by Motorola Mobility, Inc. and General Instrument Corporation (collectively, “Motorola”) alleging violation of Section 337 by Respondent Microsoft Corp. (“Microsoft”) for its importation into the U.S. and sale of certain models of Microsoft’s popular Xbox product. See our November 24, 2010 post for more details. On April 23, 2012, ALJ Shaw issued an initial determination (“ID”) which found that a violation of Section 337 occurred by reason of infringement of certain valid claims of U.S. Patent Nos. 5,357,571; 6,069,896; 6,980,596; and 7,162,094. See our May 24, 2012 post for more details on the public version of the ID. On June 29, 2012, the International Trade Commission (the “Commission”) issued a notice determining to review the final initial determination (“ID”). Specifically, the Commission remanded the investigation to ALJ Shaw to “apply the Commission’s opinion in Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software, Inv. No. 337-TA-724, Comm’n Op. (Dec. 21, 2011).” See our July 3, 2012 post for more details on the Commission’s notice to review the ID.
Motorola filed a motion seeking an order to strike the two “Contingent Expert Reports” served by Microsoft and to preclude Microsoft from presenting testimony and evidence concerning invalidity allegations at the upcoming remand hearing. Motorola argued that its motion should be granted because “they do not relate to any issue that is reasonably within the scope of these remand proceedings under Electronic Devices.” In opposition, Microsoft asserted that it would a “gross error” to allow Motorola to relitigate issues presented in their expert reports without permitting Microsoft the opportunity to raise its defenses. ALJ Shaw held that Microsoft’s expert reports and invalidity allegations are not directly related to a holding in the Commission’s Electronic Devices opinion. Accordingly, ALJ Shaw denied the motion.
Microsoft also filed a motion seeking an order to strike five of Motorola’s expert reports. Microsoft argued that the five expert reports are an attempt by Motorola to relitigate indirect infringement claims that have already been resolved. In opposition, Motorola asserted that their “approach to the Investigation was informed by the pre-Electronic Devices prevailing approach to establishing violation of method claims.” ALJ Shaw held that each of the reports contains subject matter “directly related to a holding in the Commission’s Electronic Devices opinion.” Accordingly, ALJ Shaw denied Microsoft’s motion.
In addition, Microsoft filed a motion seeking an order to strike the expert report of Dr. R. Sukumar. Microsoft argued that Dr. Sukumar was not disclosed until October 12, 2012 despite the fact that identification of experts was due on April 25, 2011. In opposition, Motorola asserted that the procedural schedule leading up to the remand hearing did not have a deadline for identification of experts. ALJ Shaw agreed with Motorola and, accordingly, denied Microsoft’s motion.
Further, Motorola filed a motion seeking an order to strike the contingent expert rebuttal report of James T. Geier and to preclude Microsoft from presenting evidence concerning alleged substantial non-infringing uses. Motorola argued that Microsoft refused to provide discovery regarding the alleged substantial non-infringing uses and, therefore, Motorola would be prejudiced if the expert report was allowed. In opposition, Microsoft asserted that the Mr. Geier’s expert report is merely a supplemental rebuttal exert report directly in response to Motorola’s expert, Dr. Madisetti. ALJ Shaw agreed with Microsoft and, accordingly, denied Motorola’s motion.
Lastly, Microsoft filed a motion seeking an order to strike the Second Supplemental Expert Report of Dr. Vijay K. Madisetti. Microsoft argued that Dr. Madisetti’s expert report was served “almost two weeks after the deadline for final supplemental rebuttal expert reports and on the date of the close of discovery.” Further, Microsoft asserted that Dr. Madisetti’s expert report was a “sur-rebuttal report” which was not permitted by ALJ Shaw’s procedural schedule. In opposition, Motorola argued that neither ALJ Shaw’s procedural schedule nor the Ground Rules prohibited the filing of sur-rebuttal reports. ALJ Shaw held that Dr. Madisetti’s expert report addresses the opinions expressed in Mr. Geier’s expert report. Accordingly, ALJ Shaw denied Microsoft’s motion.