09
Jan
By Eric Schweibenz
On December 20, 2013, ALJ E. James Gildea issued the public version of Order No. 50 (dated December 16, 2013) in Certain Microelectromechanical Systems (“MEMS Devices”) and Products Containing the Same (Inv. No. 337-TA-876).  The order addressed a motion filed by Complainant STMicroelectronics, Inc. (“STM”) to strike what it alleged was a new claim construction set forth by the Respondents in the investigation with regard to the language “region doped with a dopant” which appears in multiple claims of U.S. Patent No. 6,034,419, one of the patents at issue in the investigation.

Specifically, STM argued that, in violation of the Ground Rules, Respondents first sought to define this language in their rebuttal Markman brief and expert report.  Respondents opposed stating that their expert was merely responding to Complainant’s construction thus they did not propose a new definition of the term.

The ALJ granted-in-part STM’s motion, clarifying that the Respondents’ expert could state that he disagrees with STM’s position regarding the term, i.e., stating what the disputed language is not, but could not during his explanation cross into a new, previously undisclosed opinion as to the proposed meaning of the term.  Accordingly, ALJ Gildea struck the portions of the expert’s report, the rebuttal Markman brief, and any corresponding portions of the Markman transcript that newly characterized the language “region doped with a dopant.”  The motion was denied as to any portions of those documents expressing disagreement as to the disputed construction, without more.