According to the notice, ALJ Charneski held that there was no violation of Section 337 in this investigation.  Specifically, ALJ Charneski determined that none of the accused products practiced U.S. Patent Nos. 7,016,539 (the ‘539 patent) and 7,065,262 (the ‘262 patent).  ALJ Charneski also determined that certain claims of the ‘262 patent were invalid as anticipated and that all asserted claims of the ‘262 and ‘539 patents were invalid for failure to claim patent-eligible subject matter.  Lastly, ALJ Charneski determined that the “domestic industry requirement is satisfied with respect to the ‘539 patent and the ‘262 patent.”

The notice issued by ALJ Charneski released only the conclusions of law from the ID.  We will provide additional information once the public version of the ID issues in its entirety.

AMS, along with two other law firms, filed the complaint in the instant investigation (the “710 Investigation”) on behalf of Apple.  Nokia was not named as a Respondent in the 710 Investigation.  Nokia was, however, a Respondent in an earlier Investigation involving Apple (Inv. No. 337-TA-704 – the “704 Investigation”).  AMS voluntarily withdrew as counsel in the 704 Investigation based on its previous representation of  Nokia in the Qualcomm investigation (Inv. No. 337-TA-578).  While that withdrawal ended any possible conflict of interest in the 704 investigation, when investigations 704 and 710 were partially consolidated, Nokia became a respondent and the conflict issue arose again.

Nokia argued that disqualification was warranted because the Qualcomm and the 710 investigation were substantially related as they both involve the same basic technology – the software and hardware in Nokia phones.  Nokia also argued that AMS acquired confidential proprietary business information during its representation of Nokia.

AMS argued that the matters are not substantially related because the patents at issue in each investigation are different.  They further argued that they had not been involved in the technical issues of the Qualcomm investigation and, in any event, had erected an ethical wall between attorneys for the Qualcomm and 710 investigations.

OUII, while agreeing with Nokia that the investigations were substantially related, argued that the ethical wall was adequate to protect Nokia’s interests.

ALJ Charneski found that the investigations are substantially related.  He also held that AMS did not address the “critical issue” that AMS acquired Nokia’s confidential proprietary business information during the Qualcomm investigation.  According to the Order, AMS’s failure to rebut Nokia’s assertions proved fatal to AMS’s arguments.

ALJ Charneski further held that the ethical wall was not sufficient to satisfy ABA Model Rule 1.9(a) which states that “[a] lawyer who has formerly represented a client in a matter shall not thereafter represent another person in the same or a substantially related matter in which that person’s interests are materially adverse to the interests of the former client unless the former client gives formal consent, confirmed in writing.”

LGE’s motion sought an order compelling Kodak to produce (i) technical information “relating to face detection, auto-focusing, and the system architecture of the processors of Kodak’s accused products,” and (ii) a corporate representative to testify regarding certain deposition topics.  In opposition, Kodak argued that it properly complied with LGE’s discovery requests, including “producing more than 1.8 million pages of documents” and “tens of thousands” of pages of responsive third-party documents.  Kodak also argued that the documents sought by LGE were either already produced, or were not the subject of a previous meet and confer.

According to the Order, ALJ Charneski determined that “LGE is not entitled to an order compelling Kodak to produce the requested information” in view of (i) Kodak’s representation as to the documents already provided in discovery, (ii) the overall lack of clarity in LGE’s motion to compel, and (iii) the fact that LGE had subpoened third-party supplier documents.  ALJ Charneski nonetheless ordered the parties to meet and confer in an effort to resolve the disputed discovery issues and report to the ALJ as to the results achieved through the parties’ discussions.

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.

According to Order No. 5, ALJ Charneski set October 17, 2011, as the target date (which is 16 months after institution of the investigation).  ALJ Charneski further indicated that the Initial Determination on violation shall be due June 17, 2011.

In Order No. 6, ALJ Charneski set the procedural schedule for the investigation, including a January 10, 2011 start date for the evidentiary hearing.

In the Order, ALJ Charneski granted a joint motion filed by Complainant Samsung Electronics Co., Ltd and Respondents Synology Inc. and Synology America Corporation to terminate the investigation based on a consent order stipulation.

In the Order, ALJ Charneski granted a joint motion filed by Complainant Samsung Electronics Co., Ltd and Respondent Appro International, Inc. to terminate the investigation based on a consent order stipulation.

In the Order, ALJ Charneski set the procedural schedule for the investigation, including a February 17, 2011 start date for the evidentiary hearing.

In the Order, ALJ Charneski granted a joint motion filed by Complainants Funai Electric Co., Ltd. and Funai Corporation, Inc. and Respondents Vizio, Inc., AmTran Technology Co., Ltd., and Suzhou Raken Technology, Ltd. (the “Vizio Respondents”) to terminate the enforcement proceeding as to the Vizio Respondents based on settlement and licensing agreements.