02
Jul
By Barry Herman
On July 2, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 37 (dated April 23, 2009) in Certain Video Games and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern required Complainant Hillcrest Laboratories, Inc. (“Hillcrest”), Respondents Nintendo Co., Ltd. and Nintendo of America, Inc. (collectively “Nintendo”), and the Commission Investigative Staff (“Staff”) to answer questions and provide submissions “as an educational vehicle” in lieu of a tutorial on the subject matter of the investigation.

According to the Order, the ALJ required Hillcrest to answer 50 questions about the disclosure and claims of the patents-in-suit.  Specifically, the ALJ’s questions related to, among other things, the prosecution history of the patents-in-suit, an equation referenced in the patents-in-suit, the accuracy of statements in the specification of the patents-in-suit, the disputed claim terms and their interpretation, the evidence Hillcrest would offer at the evidentiary hearing in support of its positions, the understanding of a person of ordinary skill in the art with respect to certain issues, and various assertions made in Nintendo’s pre-hearing statement.

The ALJ required Nintendo to answer 29 questions, 12 of which were also posed to Hillcrest, as mentioned above.  The remaining questions to Nintendo likewise related to, among other things, various assertions made in Hillcrest’s pre-hearing statement, prior art, claim construction, the evidence Nintendo would offer at the evidentiary hearing in support of its positions, the understanding of a person of ordinary skill in the art with respect to certain issues, Nintendo’s inequitable conduct defense and assertions of errors associated with payments of small entity fees during prosecution of the patents-in-suit, and Nintendo’s reliance on KSR v. Teleflex.

The ALJ also required Hillcrest and Nintendo to respond to each other’s answers, required the Staff to respond to both parties’ answers and responses, and required Hillcrest and Nintendo to further respond to each other’s responses, as well as the Staff’s responses.

Finally, the ALJ ordered Hillcrest and Nintendo to meet and confer and, after consultation with the Staff, submit a joint stipulation on the technology at issue in the investigation.
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