By Eric Schweibenz and John Presper
On February 1, 2017, ALJ Dee Lord issued the public version of Order No. 58 (dated January 17, 2017) denying a motion filed by Respondents Broadcom Limited, Broadcom Corporation, Avago Technologies Limited, and Avago Technologies U.S. Inc. (collectively, “Broadcom”) to preclude Complainants Tessera Technologies, Inc., Tessera, Inc., and Invensas Corporation (collectively, “Tessera”) from relying on certain representative products to satisfy the technical prong of the domestic industry requirement in Certain Semiconductor Devices, Semiconductor Device Packages, and Products Containing Same (Inv. No. 337-TA-1010).

By way of background, this investigation is based on a complaint filed by Tessera alleging violation of Section 337 by way of the unlawful importation into the U.S., selling for importation, and/or selling within the U.S. after importation certain semiconductor devices, semiconductor device packages, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,856,007; 6,849,946; and 6,133,136 (”the ’136 patent”). See our May 24, 2016 and July 1, 2016 posts for more details on the complaint and Notice of Investigation, respectively.

According to the Order, Broadcom argued that Tessera alleged at the outset of the investigation that only one product practiced the ’136 patent (the IBM Espresso die), and that Tessera did not indicate until October 20, 2016—“more than five months into the investigation”—that it was seeking discovery from third party GlobalFoundries concerning products licensed by that company that might practice the ’136 patent. According to Broadcom, Tessera identified GlobalFoundries products at that time but did not explain how they practiced the ’136 patent or submit claim charts for such products. Broadcom further asserted that Tessera submitted additional claim charts for such products on November 25, 2016, thus expanding its domestic industry contentions three weeks before the close of fact discovery and one week after the date for substantial completion of production of technical documents, and that Broadcom is prejudiced from such late disclosure because of the inability to conduct additional discovery or adequately analyze the GlobalFoundries products.

In opposition, Tessera stated that its complaint alleged that products manufactured by GlobalFoundries would be part of its domestic industry contentions for the ’136 patent and that the IBM Espresso die was identified only as a representative product pursuant to Commission Rule 210.12(a)(9)(ix). Tessera also asserted that it identified the GlobalFoundries products by the agreed date for initial responses to burden contention interrogatories, and that Tessera timely supplemented its contentions as it received additional information in third-party discovery.

ALJ Lord found that Tessera diligently conducted discovery and seasonably updated its contentions based on what it learned from third parties, and that there was no substantial prejudice to Broadcom from the disclosure relating to the GlobalFoundries products within three weeks of the close of discovery. Accordingly, Broadcom’s motion was denied.