By Eric Schweibenz
On February 21, 2013, ALJ David P. Shaw issued the public version of Order No. 89 (dated January 16, 2013) in Certain Wireless Devices with 3G Capabilities and Components Thereof (Inv. No. 337-TA-800).

By way of background, this investigation is based on a July 26, 2011 complaint filed on behalf of InterDigital Communications, LLC, InterDigital Technology Corporation, and IPR Licensing (collectively, “InterDigital”) alleging violation of Section 337 by Respondents Huawei Technologies Co., Ltd., FutureWei Technologies, Inc. d/b/a Huawei Technologies (USA),  ZTE Corp., ZTE (USA) Inc., and Nokia (collectively, the “Respondents”) in the importation into the U.S. and sale of certain wireless devices with 3G capabilities and components thereof that infringe one or more claims of U.S. Patent Nos. 7,349,540; 7,502,406; 7,536,013; 7,616,970; 7,706,332; 7,706,830; and 7,970,127.  See our August 29, 2011 post for more details on this investigation.

According to the Order, InterDigital filed five motions to strike various portions of the Respondents’ expert reports, or in the alternative, be granted leave to rebut the reports in their witness statements. 

In four of InterDigital’s motions it asserted that the expert was raising new invalidity opinions, claim construction contentions/arguments, and/or non-infringement arguments and moved to strike the paragraphs from each report containing the allegedly newly presented material.  The Respondents opposed each motion, arguing that their experts were merely presenting appropriate rebuttal to new arguments presented by InterDigital for the first time in its supplemented expert reports, or were properly included for the first time now in view of the order of the expert reports.

ALJ Shaw granted each of these four motions in part, concluding that striking the indicated paragraphs was not warranted, but granting InterDigital leave to address the contested paragraphs in the witness statements of its experts.

InterDigital’s fifth motion to strike an expert report was based on the allegation that it contained improper opinions on a Nokia design-around that were a “premature request for an advisory opinion concerning a hypothetical prototype design.”  Nokia opposed the motion, noting that the devices fall into the scope of the Notice of Investigation and were specifically listed in the parties’ Joint Statement Regarding Identification of Accused Products.  ALJ Shaw determined that the listing in the Joint Statement was sufficient to allow the expert to opine on the products, and InterDigital’s motion to strike was denied.

Respondents filed their own motion to strike in part the supplemented expert reports of InterDigital’s experts, arguing that to the extent any of their experts’ statements were stricken, InterDigital’s experts’ reports should be “similarly stricken on fairness and equity grounds.”  Since ALJ Shaw did not grant InterDigital’s motions to strike, instead granting leave to address the noted portions in witness statements, this motion was denied.