By way of background, the Complainant in this investigation is Rambus Inc. and the Respondents are NVIDIA Corp., Asustek Computer Inc., ASUS Computer International, Inc., BFG Technologies, Inc., Biostar Microtech (U.S.A.) Corp., Biostar Microtech International Corp., Diablotek Inc., EVGA Corp., G.B.T. Inc., Giga-byte Technology Co., Ltd., Hewlett-Packard Co., MSI Computer Corp., Micro-star International Co., Ltd., Palit Multimedia Inc., Palit Microsystems Ltd., Pine Technology Holdings, Ltd., and Sparkle Computer Co., Ltd. (collectively, “Respondents”).  On January 22, 2010, ALJ Theodore R. Essex issued an Initial Determination (“ID”) finding a violation of Section 337 through the importation, sale for importation, or sale within the U.S. after importation of certain semiconductor chips having synchronous dynamic random access memory controllers and products containing same that infringe one or more claims of U.S. Patent Nos. 6,470,405, 6,591,353 and 7,287,109.  The ALJ further found no infringement of the asserted claims of U.S. Patent Nos. 7,177,998 and 7,210,016.  See our May 4, 2010 post for more details.

On March 25, 2010, the Commission issued a notice determining to review the ID in part.  See our March 26, 2010 post for more details.

After requesting briefing with respect to remedy, the public interest, bonding, and licensing issues (see our June 22, 2010 post) the Commission determined to affirm ALJ Essex’s ID.

The Commission determined that the appropriate form of relief is an LEO and a CDO against Respondents NVIDIA Corp., Hewlett-Packard Co., ASUS Computer International, Inc., Palit Multimedia Inc., Palit Microsystems Ltd., MSI Computer Corp., Micro-Star International, EVGA Corp., DiabloTek, Inc., Biostar Microtech Corp., and BFG Technologies, Inc.  The Commission further determined that the public interest factors did not preclude issuance of these LEO or CDO orders, and that the bond during the Presidential review period should be set at 2.65 percent of the entered value of the imported products.

Interrogatories

With regard to Nokia’s interrogatory responses, several of Apple’s complaints were rendered moot by recent supplementation by Nokia, or denied because it appeared Nokia had fully responded with information under its custody or control.  However, with regard to Apple’s interrogatory requesting information on Nokia’s first manufacture, use, or offer for sale of products practicing the patents-in-suit, ALJ Gildea determined that Nokia’s responses were deficient for not identifying requested persons with knowledge of such information, and not providing the production numbers of documents when relying upon Rule 210.29(c) to specify records from which the interrogatory answers may be derived or ascertained.  ALJ Gildea ordered Nokia to produce such information, even though it appeared that Apple did not first meet and confer on Nokia’s response to this interrogatory.  ALJ Gildea similarly ordered Nokia to provide full responses to interrogatories regarding Nokia’s licensing activities, including production numbers of any documents relied upon pursuant to Rules 210.29(c).

With respect to interrogatories requesting claim charts on how Nokia’s products satisfy the technical prong of the domestic industry requirement, and requesting the bases for Nokia’s position that a domestic industry exists for its phones, Apple objected that Nokia relied upon incomplete information in its complaint.  Nokia responded that the information it provided was sufficient, and that Apple was not entitled to further information until responses to contention interrogatories were due.  ALJ Gildea determined that since the deadline for responding to such contention interrogatories had passed, Nokia should provide detailed and complete responses.

Apple also requested supplementation of an interrogatory on the first written description and first disclosure of each claimed invention.  Nokia provided the respective dates of the first written description and disclosure, but did not identify underlying documents or information in support of these dates on the grounds of attorney-client privilege and that this information was not relevant until Apple identifies invalidating prior art that would require Nokia to swear behind the priority dates of the patents-in-suit.  Apple argued that Nokia was using attorney-client privilege as both a “sword and shield,” and that Nokia waived the privilege by providing the dates of the first written description and disclosure.  ALJ Gildea first determined that contrary to Nokia’s allegations, “the dates of first written description and disclosure are relevant, because once Apple knows the earliest conception date of the patents at issue, it will know how far back it needs to go to locate prior art.”  Accordingly, ALJ Gildea ordered Nokia to provide a more complete response.  However, ALJ Gildea determined that Nokia did not waive its privilege over documents supporting the dates of first written description or disclosure, because the “only information Nokia has disclosed are dates, which are not privileged.”

As to interrogatories requesting detailed information on prices, dates of sale, and investments for products Nokia relies upon to satisfy the technical prong of the domestic industry requirement, ALJ Gildea found Nokia’s responses “wanting” and despite Nokia’s promises to produce business records, its responses remained incomplete due to an absence of production numbers disclosing where such documents could be found.  ALJ Gildea therefore ordered Nokia to provide more detailed and complete responses, including reference to production numbers where appropriate.

Apple also requested Nokia to supplement its response as to non-patent publications by the named inventors of the patents-in-suit.  ALJ Gildea determined that Nokia had produced patent-related publications by the named inventors, but that Nokia did not maintain non-patent related documents such as books or journal articles, and it could not be compelled to produce documents not in Nokia’s possession, custody, or control, and therefore denied Apple’s motion on this issue.

Document Requests

Apple’s request for Nokia to supplement technical documents for products on which Nokia relied upon to claim a domestic industry were determined by ALJ Gildea as substantially moot, in view of Nokia making source code for such products available for inspection, although ALJ Gildea ordered Nokia to produce any recently acquired documents relevant to this issue.

With respect to documents Nokia relied on for conception and reduction to practice, ALJ Gildea mirrored his analysis for the comparable interrogatory, determining that Nokia must produce “any non-privileged, responsive documents that would substantiate its disclosed dates of conception and reduction to practice for each of the patents-in-suit,” but that “Nokia has not waived its privilege to any of the underlying documents by disclosing the dates of conception and reduction to practice in its response to Apple’s First Set of Requests for Production.”

ALJ Gildea further denied as moot Apple’s request for additional litigation documents concerning U.S. Patent No. 6,714,091 in district court and ITC proceedings against Qualcomm, given that Nokia produced all pleadings, and no depositions, discovery responses, expert reports, or document productions existed in those other proceedings.  ALJ Gildea similarly denied as moot Apple’s request for additional documents from named inventors relating to the subject matters of the patents-in-suit, since Nokia appeared to produce or agreed to produce all responsive documents that it could locate.

Although the parties’ arguments regarding the production of licenses relating to the patents-in-suit were heavily redacted, ALJ Gildea determined that sufficient time had passed such that Nokia could arrange to permit disclosure of its licenses and licensing activities relating to the patents-in-suit, and therefore ordered their production.

With respect to documents in support of the economic prong of the domestic industry, ALJ Gildea acknowledged that although Nokia apparently produced more that one million pages of documents regarding this issue, Nokia did not specifically identify how its production addressed the topics on which Apple currently demands supplementation.  ALJ Gildea therefore ordered Nokia, to the extent it did not already do so, to produce documents regarding sales data for its domestic products, R&D expense data, cost of production data for its domestic products, data on employment, expenditures for R&D for its domestic products, expenditures for testing its domestic products, and data showing the actual selling prices of its domestic products.

Additional 30(b)(6) Testimony and Identification of Corporate Designees

ALJ Gildea found Apple’s request for additional 30(b)(6) moot due to Nokia’s designation of an additional witness to testify on various technical issues relating to the patents-in-suit, and similarly found Apple’s request for corporate designees for various topics substantially moot through Nokia’s recent designations.  However, the parties continued to dispute the propriety of a deposition topic on the Nokia 6100, which Nokia asserted was irrelevant because it was not available until more than three years after the filing of U.S. Patent No. 6,518,957.  ALJ Gildea determined that “Apple provides no reason why the Nokia 6100 is relevant even though as the party seeking discovery it has the burden of so showing,” and he therefore denied Apple’s motion to compel Nokia to provide a corporate representative on that topic.

By way of background, the Complainants in this investigation are Avago Technologies Fiber IP Pte. Ltd., Avago Technologies General IP Pte. Ltd., and Avago Technologies Ltd.  The sole Respondent is Emcore Corporation (“Emcore”).  On March 12, 2010, ALJ Essex issued the Initial Determination (“ID”) finding that a violation of Section 337 occurred in connection with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain optoelectronic devices, components thereof, and products containing same by reason of infringement of claims 1, 2, 3, and 5 of U.S. Patent No. 5,359,447 (the ‘447 patent).  See our April 1, 2010 post for more details.

On May 13, 2010, the Commission issued notice of its determination not to review the ALJ’s final ID finding a violation of section 337, and requested written submissions on the issues of remedy, the public interest, and bonding.  See our May 13, 2010 post for more details.

The Commission determined that the appropriate form of relief is an LEO and a CDO.  The LEO prohibits the unlicensed entry of optoelectronic devices, components thereof, and products containing the same that are covered by one or more of claims 1, 2, 3 and 5 of the ‘447 patent, where the infringing optoelectronic devices, components thereof, and products containing the same are manufactured abroad by or on behalf of, or are imported by or on behalf of, Emcore, or any of its affiliated companies, parents, subsidiaries, licensees, contractors, or other related business entities, or successors or assigns.  The CDO prohibits Emcore from conducting the following activities in the United States: importing, selling, marketing, advertising, distributing, offering for sale, transferring (except for exportation), and soliciting U.S. agents or distributors for, optoelectronic devices, components thereof, and products containing the same that are covered by one or more of claims 1, 2, 3, and 5 of the ‘447 patent.  The Commission further determined that the public interest factors do not preclude issuance of these LEO or CDO orders, and that the bond during the Presidential review period should be set at three percent of the entered value of the covered products.

In Order No. 49 (dated March 5, 2009), ALJ Charneski denied Respondent Tower Semiconductor Ltd.’s (“Tower”) motion to compel Complainants LSI Corp. and Agere Systems, Inc. (“Complainants”) to provide an index to more than 565,000 electronic document images submitted to Tower during discovery.  Tower complained that an index was necessary because the documents were not produced as they were kept in the ordinary course of business and not cross-referenced to document requests propounded by Tower on November 11, 2008.  ALJ Charneski determined that although Complainants produced the documents in October-November 2008, Tower did not move for an index until February 12, 2009.  Additionally, ALJ Charneski determined that Complainants had provided text-searchable files, which was the practice both by Complainant and other Respondents.  Based on the above, ALJ Charneski denied Tower’s motion.

In Order No. 86 (dated June 2, 2009), ALJ Charneski granted several Respondents’ motion to strike Complainants’ supplementation of appendices and exhibits to Complainants’ expert’s report.  According to the Order, Complainants provided the supplementation to Respondents one month after the deadline provided by the Ground Rules, did not provide the supplementation until Complainants opposed Respondents’ motion to strike, and failed to file a separate motion requesting permission to supplement the expert report, per Ground Rule 2(s).  ALJ Charneski determined that Complainants’ failure to follow the ground rules and request permission to supplement was fatal, and there was no showing of “good cause” at any rate.

In Order No. 87 (dated June 2, 2009), ALJ Charneski granted Respondent Grace Semiconductor Manufacturing Corp.’s (“Grace”) motion to compel Complainants to respond to requests for admissions.  With regard to a first set of requests, ALJ Charneski determined that Complainants must answer whether they sought relief in this investigation with respect to any products made by Grace for identified licensees, despite arguments of the request’s overbreadth.  The request was limited to relief sought in the investigation, which concerned a single asserted patent, and Grace stated that the involved products were admittedly licensed as to that patent.  With respect to a second set of requests, the parties disputed whether Complainants could respond to an inquiry into the existence of confidential information known to Complainant’s counsel, but not known to Complainants.  ALJ Charneski determined that since the request only inquired into the existence of the information, rather than its substance, Complainants could make limited inquiries of their counsel as to the existence of the information and respond to the request.

In Order No. 89 (dated June 8, 2009), ALJ Charneski granted-in-part Complainants’ motion to compel documents from Respondents Spansion Inc., Nanya Technology Corp., and Powerchip Semiconductor Corp.  With respect to recipes and process flows, ALJ Charneski denied Complainants’ motion on the grounds that Complainants had insufficient bases to counter Respondents’ detailed allegations that all relevant and responsive documents had been produced.  On the other hand, with respect to sales, inventory, importation, and licensing, ALJ Charneski granted Complainants’ motion to compel and determined that such information was shown to be relevant and within the scope of discovery to which Complainants were entitled.

In Order No. 90 (dated June 4, 2009), ALJ Charneski granted Respondent National Semiconductor Corporations’ (“NSC”) motion to reopen discovery, in view of NSC’s discovery of notebooks by one of the named inventors on the patent in suit.  The notebooks were discovered pursuant to a subpoena of a law firm (different from Complainants’ counsel) that retained the notebooks from a prior litigation.  The Order stated that Complainants had not been granted access to the entire unredacted files of the law firm due to confidentiality issues and therefore relied upon the law firm to conduct searches.  ALJ Charneski determined that NCS could further depose the inventor associated with the notebooks, and request more discovery if necessary, and he denied NCS’s motion for sanctions and to extend the procedural schedule and target date of the investigation.

Finally, in Order No. 109 (dated July 14, 2009), ALJ Charneski denied Complainants’ motion to strike the rebuttal expert report and testimony of MagnaChip Semiconductor, Ltd.’s (“Magnachip”) expert on non-infringement.  Complainants alleged that the rebuttal report relied upon “uncorroborated testing results” performed by MagnaChip, in which their expert had no involvement and could not verify procedures.  MagnaChip argued that the principles and methodologies were widely accepted and an expert need not have personal knowledge of the testing upon which he relies.  ALJ Charneski determined that Complainants’ issues went to the weight of the expert testimony, rather than whether the expert should testify in the first place.

By way of background, this investigation was instituted in May 2007 based on Tessera’s complaint against Respondents Spansion, Inc., Spansion, LLC, Qualcomm, Inc., ATI Technologies, Motorola, Inc., STMicroelectronics N.V., and Freescale Semiconductor, Inc. (collectively “Respondents”) alleging violation of Section 337 by reason of infringement of U.S. Patent Nos. 5,852,326 and 6,433,419.  On May 20, 2009, the Commission issued its final disposition of the investigation, finding a violation of Section 337 and issuing a limited exclusion order against the Respondents and cease and desist orders against several domestic Respondents.  See our May 22, 2009 and June 11, 2009 and May 28, 2010 posts for more details.

According to Order No. 65, Tessera argued that under the terms of the Cease-and-Desist Orders in this investigation it is entitled to have the bonds forfeited because: (l) the United States Trade Representative did not disapprove the Final Determination within the review period; (2) the United States Court of Appeals for the Federal Circuit has not reversed the Final Determination or any of the remedial orders; and (3) Respondents who posted bonds have not indicated that the products subject to those bonds were exported or destroyed.  Tessera argued that the fact that the appeal of the Commission’s Remedial Order is still pending before the Federal Circuit does not prevent the immediate forfeiture of the bonds, because the Commission’s enabling statute and regulatory provisions provide for the possibility of forfeiture while an appeal is still pending.  Tessera also argued that immediate forfeiture was appropriate in this case because in denying the Respondents’ emergency motion for stay of the Remedial Orders pending appeal, the Federal Circuit had already indicated that Respondents had not shown a likelihood of success on the merits.  Tessera also requested a “full accounting” of Respondents’ activities involving the products found infringing in this investigation during the Presidential Review Period, including the appropriate bond amount that each Respondent allegedly should have posted.  Tessera argued that discovery and an evidentiary hearing should be immediately ordered while the evidence of the quantity of infringing products is still “fresh.”

On November 2, 2009, Respondents and the Commission Investigative Staff filed responses opposing the motion for bond forfeiture.

ALJ Essex determined that Rule 210.50(d), which controls proceedings to determine potential forfeiture of Respondents’ bonds, uses permissive language that implies it is not appropriate in all circumstances to initiate proceedings upon a forfeiture motion by a complainant.  ALJ Essex further determined after consulting the legislative history behind Rule 210.50(d), that the Commission did not intend for a bond forfeiture proceeding to be immediately initiated if an appeal is filed with the Federal Circuit.  ALJ Essex also determined that the language of the Cease-and-Desist Order counseled against commencing forfeiture hearings if an appeal of the Commission’s Final Determination is filed with the Federal Circuit.  Based on the above, ALJ Essex denied Tessera’s motion as premature.

ALJ Essex further denied Tessera’s request for discovery and an evidentiary hearing, determining that there was no support for Tessera’s allegations that the requested evidence will “degrade” over time, and that ordering discovery during the appeal of the Commissions Final Determination would subject Respondents to potentially unnecessary hardship and expense.

According to the Order, Rambus filed a motion on June 16, 2009 to compel NVIDIA to: (1) produce all source code bearing on the operation of the memory controllers contained in the accused products; (2) produce all technical documents describing the accused products; (3) produce all communications between Rambus and NVIDIA and documents relating to those communications; (4) provide a witness competent to testify on NVIDIA’s document collection in response to Rambus’s discovery requests; and (5) supplement its responses to Rambus’s Interrogatory Nos. 1, 75, and 142.

ALJ Essex determined that based upon documents produced by NVIDIA after Rambus filed its motion, the first two issues raised in Rambus’s motion to compel were denied as moot.

According to the Order, with respect to the third issue, Rambus argued NVIDIA failed to produce “large numbers of communications it has had with Rambus, as well as documents relating to those communications – including internal communications evidencing NVIDIA’s understanding of Rambus’s communications.”  ALJ Essex determined that in view of NVIDIA’s representation that it produced the communications found after a reasonable search, the fact that many documents were not found “is not atypical in a production this large, between large corporate parties, especially when the missing documents are electronic communications, such as the internal documents sought by Rambus.”  ALJ Essex therefore denied this issue as moot.

With respect to the fourth issue, Rambus argued that it timely served NVIDIA with a deposition notice seeking a witness to testify as to NVIDIA’s “search for, collection, and production of documents….”  According to the Order, NVIDIA did not dispute that the notice was timely or that the information sought was relevant, but rather, that Rambus was not entitled to such a witness because Rambus “had refused NVIDIA deposition testimony on the very same topic for months.” Although Rambus alleged that it agreed to produce said witness and nVidia did not pursue the offer, ALJ Essex determined the exhibit cited by Rambus did not show that it agreed to provide such a witness, and NVIDIA had not identified any evidence to indicate that Rambus refused to provide such a witness.  Because Rambus timely served NVIDIA with the notice of deposition, and the testimony of said witness is properly discoverable, ALJ Essex determined that Rambus was entitled to said testimony.

With regard to the final issue, Rambus requested supplemental responses to interrogatories 1, 75, and 142.  Interrogatory 1 requested the identity of memory types supported by Rambus’s definition of “accused products.”  NVIDIA argued that products for which information was not provided included items that did not contain DRAM, and those items were outside the scope of the investigation.  ALJ Essex determined that memory types of identified products must be provided, since such information is relevant to the investigation.  Rambus Interrogatory numbers 75 and 142 requested the identity of each memory controller used in the accused products, by internal NVIDIA designation or number, marketing designation or product name.  Although NVIDIA represented that it had provided the requested information, ALJ Essex granted Rambus’s motion with respect to these interrogatories, after determining that NVIDIA’s information provided only marketing designations, and not product numbers, and that “it is not sufficient to respond to interrogatories with confusing, convoluted, and repetitive charts.”

According to the Order, Emcore argued that its failure to include the Masahiro application in the Notice of Prior Art was “unintentional and inadvertent” because the omission stemmed from a clerical error in recording the application number for the Masahiro application, which ultimately lead to Emcore’s failure to include it in its Notice of Prior Art.  Emcore further argued that since the Masahiro application was cited in the prosecution history of asserted U.S. Patent No. 5,761,229 (the ‘229 patent), there was no prejudice to the Complainants, who have been on notice of Emcore’s intent since the filing of the original motion to supplement and the use of the prior art during inventor depositions.

ALJ Essex determined that in its original motion Emcore argued it could not make a timely determination as to whether it should include the Masahiro application in its Notice of Prior Art because it did not have a certified translation at that time, while in its instant motion, Emcore argued that its failure was due to a clerical error — an incorrect application number for a different application — which led Emcore’s attorneys to deem that reference irrelevant.  ALJ Essex determined that these two arguments were irreconcilable, indicated that the failure was due to carelessness rather than inadvertency, and “significantly undercuts Emcore’s credibility before the ALJ on this matter.”

ALJ Essex also determined that the circumstances presented in Emcore’s instant motion could have been presented in its original motion and were not “new circumstances” or “new evidence.”  Finally, ALJ Essex determined that Emcore’s arguments as to lack of prejudice made “Emcore’s conduct even less excusable,” because Emcore was well aware from the institution of this investigation that the Masahiro application was a prior art reference in the prosecution history of the ‘229 patent.

For the above reasons, ALJ denied Emcore’s request for reconsideration.

For background on the procedural history leading to the Markman hearing in this investigation, please see our April 28, 2010 post.

According to the portions of the ID released through the notice, ALJ Luckern construed the following terms of the sole patent at issue, U.S. Patent No. 6,292,218:

The claimed term “motion processor” was construed as a processor that processes a series of motion images using digital image processing that is different and distinct in circuitry from the digital image processing of the still processor and the claimed term “still processor” was construed as a processor that processes a captured still image using digital image processing that is different and distinct in circuitry from the digital image processing of the motion processor.

The claimed term “at least three different colors” was construed as referring to three or more distinct colors, for example red, blue and green, where each color is a phenomenon of light or visual perception that enables one to differentiate otherwise identical objects.

The claimed term “capture button” was construed as a user control physically located on the camera, though it need not be a mechanical element.

The claimed term “initiating capture of a still image while previewing the motion images” was construed as sending a signal from the capture button to the timing and controls section, said signal starting the still image capture process and being sent during the display of motion images.

The claimed phrase “each captured image having a first number of color pixel values provided in a first color pattern” was construed as each image of a scene received by the image sensor having a first number of color pixel values generated by the image sensor, provided in an arrangement of the color pixel values generated by the image sensor, where a color pixel value is a measurement of the intensity of one color of light.

The claimed phrase “captured image” was construed as an image of a scene received by the image sensor.

The claimed phrase “first number of color pixel values” was construed as the number of color pixel values generated by the image sensor, where a color pixel value is a measure of the intensity of one color.

The claimed phrase “first color pattern” was construed as the arrangement of the color pixel values generated by the image sensor.

While certifying the ID to the Commission, ALJ Luckern stated that pursuant to Order No. 5, which issued on March 31, 2010, an evidentiary hearing on violation is set to commence on September 1, 2010.   He therefore determined that “a final determination on claim construction on all claim language, or at least certain of the claim language, treated in said determination, before the commencement of the evidentiary hearing on violation on September 1, would lead to efficiencies at the violation hearing.”  ALJ Luckern accordingly requested an early decision by the Commission on this ID.

According to Order No. 25, LG moved on May 19, 2010, to preclude Respondents from offering evidence relating to an RCA Set Top Box Model DTC-100 (the “DTC-100”) on the grounds that the DTC-100 was not prior art to asserted U.S. Patent No. 7,154,564.  LG also moved to preclude Respondents from comparing LG’s infringement contentions regarding asserted U.S. Patent No. 5,790,096 to the Video Electronics Standards Association (“VESA”) “TV Panels Standard” on the grounds that Respondents “failed to adduce sufficient evidence and expert analysis to support a defense of breach of contractual duty of good faith in connection with LG’s membership in VESA.”  Respondents and the Commission Investigative Staff (“OUII”) opposed LG’s motion on May 27, 2010, noting that the issues raised by LG were in dispute and concerned the weight, rather than admissibility of the evidence, and that Dr. Min had extensively opined on the VESA standard and its relation to LG’s infringement contentions.  ALJ Gildea agreed with Respondents, and determined that the “issue of whether the DTC-100 is prior art to the ‘564 patent is not as clear cut as LG argues, and thus all parties should have an opportunity to present evidence on this issue at the hearing.”  ALJ Gildea further determined that LG had not demonstrated that Dr. Min failed to discuss the VESA defense, and for the above reasons denied LG’s in limine motion in full.

According to Order No. 26, Respondents filed a motion in limine on May 19, 2010, to preclude LG from (i) offering expert testimony relating to alleged infringement under the doctrine of equivalents; (ii) offering evidence relating to accused televisions other than the three specific models analyzed by LG and its experts, including any expert testimony that the examined products are representative of any other products; (iii) offering into evidence designated deposition transcript testimony from transcripts that LG had designated in their entirety, from LG-controlled witnesses, or from witnesses that Respondents will be bringing to the hearing to provide live testimony; and (iv) offering into evidence interrogatory responses.

With respect to expert testimony on infringement under the doctrine of equivalents, Respondents argued that LG’s experts “did not provide substantive analysis” to assess equivalence.  LG and OUII argued that the expert reports of LG’s experts disclosed their opinions regarding doctrine of equivalence, and that Respondents had an opportunity to explore their opinions during depositions.  ALJ Gildea agreed with LG and OUII, and denied this portion of Respondents’ motion.

Regarding LG’s use of representative products, Respondents argued that LG’s experts failed to explain to which infringement groups a non-representative product belonged, the basis for categorizing these infringement groups, and how representative products operated similarly to non-representative products.  LG responded that its experts created four groupings of accused products, and that LG’s experts’ analysis of one representative product from each group applied to each and every member of the respective group.  ALJ Gildea determined that Respondents had not demonstrated the LG failed to explain its system of representative products such that all evidence relating to the accused televisions other than the representative products should be precluded, and accordingly denied this portion of Respondents’ motion.

With respect to deposition designations, Respondents argued that LG had “no legitimate reason” to designate entire deposition transcripts, that deposition transcripts of LG-controlled witnesses should not be designated in lieu of live testimony, and that deposition designations for Respondents’ witnesses who will be testifying at the hearing would be inappropriate for any purpose other than impeachment.  According to the order, LG responded that Respondents had agreed to admit certain of the deposition transcripts as joint exhibits, and that LG is entitled to make counter-designations in response to Respondents’ deposition designations under Commission Rule 210.28(h)(4), and this rule does not limit the volume of depositions to be designated.  ALJ Gildea determined that based on this rule, LG was within its rights to counter-designate testimony of its own witnesses in response to Respondent’s designations, and therefore denied this portion of Respondent’s motion.  ALJ Gildea also determined that with respect to designations of testimony of witnesses from outside the United States, it was not yet clear which witnesses would be providing live testimony at the hearing, and therefore it would be premature to rule on such designations.   ALJ Gildea further determined that “regardless of the volume of deposition testimony that may ultimately be admitted into evidence, it is the parties’ responsibility to specifically cite to those portions that may have significance in their proposed and rebuttal findings of fact and in the post-hearing briefing.”

Finally, regarding the admission of interrogatory responses, Respondents asserted that “there is no place for interrogatory responses in evidence,” to which LG responded that it is ITC practice to admit interrogatory responses into evidence with a sponsoring witness.   ALJ Gildea declined to make a blanket ruling and determined that the admissibility of interrogatory responses would be made on a case-by-case basis, noting that “there may be situations, such as the introduction of a list of products via a sponsoring witness, where admission of all or a portion of a particular interrogatory response would be appropriate.”

For the above reasons, ALJ Gildea denied Respondents’ motion in limine.

By way of background, ALJ Essex’s Order No. 12, which issued May 21, 2010, denied Toyota’s renewed motion for summary determination terminating this investigation on the basis of claim preclusion.  See generally our April 6, 2010 and March 29, 2010 posts for further details on the claim preclusion issue.  In Order No. 12, ALJ Essex determined that an exception to claim preclusion applied in this investigation because Complainant Paice LLC (“Paice”) was unable to seek the remedy or form of relief in the district court that it could seek in this investigation, namely, the ITC’s exclusion orders.

According to Order 14, Toyota argued that the issues addressed in Order No. 12 involve controlling questions of law, including: “(1) whether the availability of exclusion orders provides a blanket exception to claim preclusion in ITC investigations following district court action; (2) whether the statutory language of Section 1337(a) that violations be dealt with ‘in addition to any other provision of law’ justifies a blanket exception to claim preclusion in ITC investigations; and (3) whether any differences between legal standards applied by the Commission for issuing exclusion orders and legal standards applied by district courts for issuing permanent injunctions pursuant to the Supreme Court decision in eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), require a blanket exception to claim preclusion in ITC investigations.”  Toyota further argued that Order No. 12 also involved a controlling question of policy as to which there is a substantial ground for difference of opinion, namely “whether a patentee that fails to secure an injunction in district court should automatically be permitted to try to secure that same relief at the ITC for the same claim.”  Toyota additionally argued that an immediate appeal of these issues would advance the ultimate completion of this investigation, since if the matter resolved in Toyota’s favor, this investigation would terminate.

In response, Paice argued that the law regarding claim preclusion is well-settled and that the ALJ correctly determined that an exception to claim preclusion applies.  Paice further argued that Toyota failed to establish that there was a controlling question of policy, because it is established that a patentee can bring both a federal court action and an ITC investigation against an alleged infringer.  Finally, Paice argued that Toyota failed to establish that an immediate appeal of the order would materially advance the ultimate completion of the investigation given the current procedural schedule.  The Commission Investigative Staff agreed with Paice and opposed Toyota’s motion on similar grounds.

ALJ Essex determined that Toyota failed to meet its “heavy burden” on both of the factors required for interlocutory appeal, namely, that (1) the ruling involves a controlling question of law or policy as to which there is substantial ground for difference of opinion, and that (2) either an immediate appeal from the ruling may materially advance the ultimate completion of the investigation or subsequent review will be an inadequate remedy.

ALJ Essex first addressed the second prong and determined that the evidentiary hearing started in merely five weeks, and that an interlocutory appeal would only advance the investigation if the ITC permitted the appeal, ruled in Toyota’s favor and terminated the investigation.  ALJ Essex therefore found that resources would be more efficiently used by proceeding with the investigation.  ALJ Essex further determined that Toyota failed to present any evidence that a subsequent review of the ALJ’s decision would be inadequate.

ALJ Essex then determined that Toyota failed to meet its burden regarding the first factor above, because his Order No. 12, was based “on an analysis of the facts of the instant investigation in light of the statutory language and Commission and Federal Circuit precedents,” and that such “an analysis does not rise to ‘controlling question[s] of law or policy’ as asserted by Toyota.”

For the above reasons, ALJ Essex denied Toyota’s motion for leave to file an application for interlocutory appeal.