By way of background, the Complaint in this investigation is Schweitzer-Mauduit International Inc.  The Respondents are Julius Glatz GmbH, LIPtec GmbH, and KneX Worldwide LLC (collectively, the “Respondents”). 

According to the notice, ALJ Gildea determined that no violation of Section 337 had occurred by the Respondents in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain reduced ignition proclivity cigarette paper wrappers by reason of infringement of (i) claims 1-6, 10-18, and 22-25 of U.S. Patent No. 5,878,753 (the ‘753 patent), and (ii) claims 36, 43, and 45 of U.S. Patent No. 6,725,867 (the ‘867 patent). 

ALJ Gildea further determined that a domestic industry does not exist that practices the ‘753 patent.  ALJ Gildea also determined that a domestic industry does exist that practices the ‘867 patent. 

With respect to the public interest, ALJ Gildea determined that enforcement of a remedy in this investigation would not raise public interest issues.

The notice issued by ALJ Gildea released only the first two pages of the ID.  We will provide additional information after the public version of the ID issues in its entirety.

In the Order, ALJ Gildea set the procedural schedule for the investigation and provided for the early exchange of claim terms for construction.  ALJ Gildea also determined that the evidentiary hearing will commence on December 10, 2012, any final initial determination will issue no later than March 26, 2013, and the target date for completion of the investigation is July 26, 2013 (which is 19 months after institution of the investigation).

According to the Order, ALJ Gildea set August 23, 2013 as the target date (which is approximately 20 months after institution of the investigation).  ALJ Gildea further indicated that the initial determination on alleged violation shall be due on April 23, 2013.

In addition, ALJ Gildea directed the parties to submit discovery statements and proposed procedural schedules by February 13, 2012.  ALJ Gildea also determined that the evidentiary hearing in this matter will commence on January 25, 2013.

Lastly, the Order also included ALJ Gildea’s ground rules governing the conduct of the investigation.

In the Order, ALJ Gildea set the procedural schedule for the investigation and provided for the early exchange of claim terms for construction.  ALJ Gildea also determined that the evidentiary hearing will commence on November 28, 2012, any final initial determination will issue no later than February 20, 2013, and the target date for completion of the investigation is June 20, 2013.

By way of background, this investigation is based on a July 12, 2011 complaint filed on behalf of Intellectual Ventures Management, LLC, Invention Investment Fund I, L.P., Invention Investment Fund II, LLC, Intellectual Ventures I LLC, and Intellectual Ventures II LLC, against several manufacturers, distributors, and retailers of DRAM and NAND Flash memory devices by Hynix Semiconductor Inc. and Hynix Semiconductor America, Inc. and Elpida Memory, Inc. and Elpida Memory (USA) Inc., for alleged infringement of U.S. Patent Nos. 5,654,932; 5,963,481; 5,982,696; 5,500,819; and 5,687,132.  See our July 13, 2011 post for more details.

As an initial matter, ALJ Gildea ordered Complainants to re-file revised public versions of all three settlement agreements because two were so heavily redacted that the requirement to file non-confidential versions was rendered “meaningless,” and the third agreement was not submitted at all.  ALJ Gildea stated that Complainants may only redact “the minimum required to protect confidential business information, even if that means only redacting single words or portions of a sentence.”

ALJ Gildea set the hearing so that “the parties, and any interested non-parties, may provide argument and relevant evidence regarding the effect of the proposed settlement on the public health and welfare, competitive conditions in the U.S. economy, the production of like or directly competitive articles in the United States, and U.S. consumers.”  ALJ Gildea further determined that the parties or interested non-parties were permitted to submit pre-hearing briefs of no more than twenty-five pages, and that the procedures for this hearing on the public interest would be modeled after the procedures set forth in the Ground Rules for an evidentiary hearing.  ALJ Gildea further determined that nonparties who wished to participate in the hearing, and who had argument or evidence relevant to this specific settlement, should contact the ALJ’s assistant, but that since many of the settlement terms are not public, any nonparty’s input on the public interest would be limited.

According to Order No. 35, Complainant Microsoft Corporation (“Microsoft”) sought to preclude Respondent TiVo Inc. (“TiVo”) from offering testimony or documents at the evidentiary hearing from its expert/fact witness Peter Hallenbeck regarding a product called SuperGuide, arguing that TiVo never served an expert report describing his opinions that TiVo intends to proffer, and that TiVo never indicated that the SuperGuide product was relevant to the asserted patents.  TiVo responded that it had in fact provided Microsoft with adequate notice of the substance of Mr. Hallenbeck’s testimony, and that he would only testify as a fact witness to discuss his personal knowledge of the development of electronic program guides.  The Commission Investigate Staff (“OUII”) agreed with Microsoft that Mr. Hallenbeck should be precluded from offering expert opinions, but agreed with TiVo that he should be allowed to provide non-expert testimony regarding the SuperGuide product.  ALJ Gildea denied the motion, finding that TiVo’s listing of Mr. Hallenbeck as a “Former SuperGuide employee” on its witness list, and listing the SuperGuide product in its Notice of Prior Art and Mr. Hallenbeck as a “Person with Knowledge” regarding that product constituted adequate notice to Microsoft.  The ALJ also noted that TiVo was bound by its representations that it would not elicit expert testimony from Mr. Hallenbeck at the evidentiary hearing.

According to Order No. 36, TiVo sought to preclude Microsoft from asserting an infringement theory allegedly disclosed for the first time in its pre-hearing brief.  Microsoft countered that TiVo was to blame for the late disclosure because it had obfuscated discovery with respect to source code.  The OUII supported the motion in part.  ALJ Gildea granted the motion in part, limiting Microsoft’s expert to the theories and analyses set forth in his expert reports and deposition testimony, and acknowledging that there is some dispute as to what extent Microsoft’s expert disclosed the theories at issue during expert discovery.  The ALJ observed that the source code at issue was undisputedly in Microsoft’s possession by June 2011, that Microsoft was obliged to review the code TiVo produced to determine its relevance, and that Microsoft had declined to apprise the ALJ that TiVo was providing allegedly inadequate interrogatory responses or unprepared corporate witnesses by bringing a motion to compel, request supplemental discovery responses, or seek leave to file an additional or supplemental expert report.  ALJ Gildea advised Microsoft to be prepared to point to specific passages in its expert’s report(s) and/or deposition transcript(s) to refute any objections raised by TiVo or the OUII, and advised TiVo to be equally prepared and not interrupt the hearing with unsupported objections.

According to Order No. 37, Microsoft sought to preclude TiVo from relying upon allegedly false, hearsay information that was provided to TiVo’s expert after the close of fact discovery regarding the operation of a feature of the accused devices.  TiVo and the OUII opposed the motion.  ALJ Gildea denied the motion, finding that the question of whether TiVo’s expert relied on dubious information in forming his non-infringement opinion is a matter best reserved for cross-examination and rebuttal.  The ALJ noted that to the extent TiVo should open the door, Microsoft may present appropriate evidence for cross-examination, including relevant source code.

According to Order No. 38, TiVo filed a series of motions in limine seeking to preclude Microsoft and/or its expert from (1) relying on a previously undisclosed theory regarding why the ‘258 patent was not anticipated, (2) relying on third party documents with the ATT_ITC Bates prefix, (3) relying on documents produced after the close of discovery, (4) relying on any new evidence of secondary considerations outside the scope of Microsoft’s corporate representative’s deposition testimony, (5) testifying on matters not disclosed in experts reports or deposition, and (6) relying on certain declarations.  ALJ Gildea denied each of TiVo’s motions, correspondingly finding that (1) Microsoft’s expert report and its response to TiVo’s Interrogatory No. 68 provided adequate notice of Microsoft’s validity contention (noting TiVo’s failure to previously address any concerns it had regarding the level of detail in Microsoft’s disclosures or expert submissions through affirmative discovery or motion practice), (2) it is premature to put a blanket ban on all such third party documents without affording Microsoft an opportunity to lay a proper foundation or show that the documents are self-authenticating, (3) the documents at issue were previously precluded in Order No. 25, (4) TiVo’s arguments relate to the sufficiency of the evidence and not its admissibility, and that Microsoft’s corporate representative is a fact witness whose testimony is not limited as would be the case with an expert witness, (5) the scope of Microsoft’s expert testimony was previously addressed in Order No. 36, and (6) the parties came to an agreement and the motion in limine was withdrawn.

According to Order No. 39, Microsoft sought to preclude TiVo from offering undisclosed expert testimony from Dr. Ben Bederson, arguing that the expert report submitted by Dr. Bederson concerned the validity of a patent which was terminated from the investigation.  TiVo argued in response that Microsoft “surprised” TiVo with a new infringement theory based on software code after the exchange of expert reports (which it has moved to preclude), requiring TiVo to list Dr. Bederson as a rebuttal witness on that software code.  OUII supported the motion in part, asserting that if Microsoft is permitted to introduce a section of code purportedly prohibited by Ground Rule 5, then Dr. Bederson should be permitted to provide belated rebuttal opinions on the interpretation of that section of code.  ALJ Gildea granted the motion, finding that Dr. Bederson’s rebuttal testimony is unnecessary in light of Order No. 36.

In the Order, ALJ Gildea granted a motion filed by Respondent Jakks Pacific, Inc. (“Jakks”) to terminate the investigation based on a consent order stipulation. 

The Investigation remains pending against other Respondents.

By way of background, the Complainant in this investigation is MOSAID Technologies Inc. and the Respondents are Cisco Systems, Inc., Cisco Consumer Products LLC, Cisco Systems International B.V., and Scientific Atlanta LLC.  See our May 20, 2011 post for more details about the complaint in this matter.

According to the Order, Respondents asserted that a two-year patent prosecution bar on Complainant’s outside counsel and experts who have access to Respondents’ confidential business information is necessary, relying on In re Deutsche Bank Trust Co Americas, 605 F.3d 1373 (Fed. Cir. 2010) (“Deutsche Bank”).  Complainant opposed the motion, arguing that the motion was untimely and that the Respondents failed to show the requisite good cause.

ALJ Gildea provided a detailed discussion of Deutsche Bank, and determined that this case requires the following before a patent prosecution bar should be entered: (1) the information triggering the bar is confidential and relevant to patent prosecution (i.e., it is of a confidential technical nature, rather than confidential financial or public data); (2) a particular person having access to the information is involved in competitive decision making (i.e., requiring a case by case evaluation of counsel to determine their role in “crafting the content of patent applications or advising clients on the direction to take their portfolios”), and (3) the risk of inadvertent disclosure by that person outweighs the burden a prosecution bar would impose on that individual.

ALJ Gildea disagreed with Respondents’ interpretation of Deutsche Bank.  Specifically, ALJ Gildea determined that Respondents’ argument that the “case by case evaluation of counsel only applies in the instance of whether an exemption to a prosecution bar should apply” disregards a key holding in Deutsche Bank and was unpersuasive.  As such, Respondents “failed to set forth the requisite case by case showing for those individuals they seek to have barred from engaging in patent prosecution” and ALJ Gildea denied Respondents’ request for a prosecution bar without prejudice.  Since the threshold showing was not met by Respondents, ALJ Gildea did not discuss the Complainant’s timeliness arguments, but urged Respondents to consider this issue when deciding whether to re-file their motion.

In the Order, ALJ Gildea granted a joint motion filed by Complainant Ogma, LLC (“Ogma”) and Respondents Nintendo Co., Ltd and Nintendo of America (collectively, “Nintendo”) to terminate the investigation based on a settlement agreement.  After reviewing the confidential and non-confidential versions of the agreement, ALJ Gildea granted the joint motion filed by Ogma and Nintendo.

The Investigation remains pending against several other Respondents.

According to Order No. 24, Respondent TiVo Inc. (“TiVo”) objected to Complainant Microsoft Corporation’s (“Microsoft”) assertion of “brand new” conception dates on the last day of discovery and Microsoft’s alleged production of supporting documents several weeks after the close of fact discovery under the guise of producing documents related to other asserted patents.  Microsoft responded that it identified its conception dates in its discovery responses, and explained that it produced documents relating to the ‘838 patent’s conception date after the close of fact discovery pursuant to Order No. 16.  After reviewing the motion papers, ALJ Gildea denied TiVo’s request with respect to Microsoft’s discovery responses identifying conception dates, but granted the portion of TiVo’s motion seeking to preclude late-produced documents, noting that Order No. 16 concerned patents no longer at issue in the investigation and that Microsoft failed to explain how an order compelling discovery with respect to one such patent justifies document production with respect to the ‘838 patent.

According to Order No. 27, TiVo sought to preclude alleged untimely contentions and evidence provided by Microsoft relating to its technical prong domestic industry allegations regarding the ‘838 patent.  Microsoft argued in response that TiVo was on notice of its contentions regarding the technical prong of the domestic industry requirement because Microsoft consistently disclosed them.  The Commission Investigative Staff (“OUII”) supported TiVo’s motion to the extent that it sought to preclude Microsoft from asserting that it satisfied the requirement based on Mediaroom software testing and on the allegation that an industry is in the process of being established.  Based on the parties’ submissions, the ALJ was not persuaded that Microsoft unfairly withheld its contentions, finding on the contrary that there were sufficient disclosures in the Complaint and in Microsoft’s interrogatory responses to put TiVo on notice of same, and further noting that TiVo had some obligation to compel more information if it had concerns about the extent of Microsoft’s disclosures.

According to Order No. 28, Microsoft sought to preclude TiVo’s expert from testifying regarding opinions not previously disclosed in his expert reports.  TiVo opposed the motion, as did the OUII on the grounds that the motion was premature.  ALJ Gildea denied the motion, finding that Microsoft failed to adequately explain why Ground Rule 9.6 (providing that expert witness testimony at the hearing “shall be confined to the scope of the expert’s report(s), and deposition testimony”) should be narrowed to just the scope of expert reports, and stating that whether TiVo’s expert articulated adequate grounds for his opinions “is not an issue that should be resolved in limine.”  The ALJ noted, however, that Microsoft would not be precluded from raising objections to TiVo’s expert’s testimony at the evidentiary hearing should he introduce opinions that fall outside the scope of his expert reports and deposition testimony.