In the Order, ALJ Bullock denied a joint motion filed by Complainant and Respondents to amend the Ground Rules to include provisions addressing electronic service, the time of Discovery Committee meetings, the timing for exchanging privilege logs and contents thereof, the timing and format of document production, the protection of inadvertently produced privileged or work-product protected materials, and the scope of expert discovery.  The Commission Investigative Staff did not oppose the joint motion. 

According to the Order, ALJ Bullock denied the motion noting that it is “inappropriate to amend the Ground Rules in the manner suggested by the Private Parties.”  In any event, ALJ Bullock determined that “the Private Parties are free to enter into a private agreement or stipulation regarding, inter alia, electronic service, the scope of expert discovery, and the inadvertent production of privileged information or work-product protected materials.”  Lastly, ALJ Bullock noted that he will not enforce any private agreements and the parties are thus responsible for resolving any disputes on their own.

In the Order, ALJ Essex set the procedural schedule for the investigation and included provisions for the early exchange of claim construction terms and proposed constructions.  ALJ Essex further indicated that the evidentiary hearing will commence on August 27, 2012, any final initial determination will issue no later than December 7, 2012, and the target date for completion of the investigation is April 7, 2013 (which is approximately 16 months after institution of the investigation).

In the Order, ALJ Essex granted a motion filed by Complainants Trek Technology (Singapore) Pte. Ltd., Trek 2000 International Ltd., and S-Com (S) Pte. Ltd. (collectively, “Trek”) and Respondent Patriot Memory, LLC (“Patriot”) to terminate the investigation based on a settlement agreement.  After reviewing the confidential and non-confidential versions of the agreement, ALJ Essex granted the joint  motion filed by Trek and Patriot.

The Investigation remains pending against several other Respondents.

In the Order, ALJ Bullock granted a joint motion filed by Complainant Cypress Semiconductor Corporation (“Cypress”) and Respondent Alcatel-Lucent (“ALU”) to terminate the investigation based upon Cypress’s withdrawal of the First and Second Amended Complaint, in their entirety, as against ALU.

The Investigation remains pending against several other Respondents.

In the Order, ALJ Shaw set April 19, 2013 as the target date for completing the investigation (which is fifteen months after institution of the investigation).  ALJ Shaw further determined that the initial determination on violation shall be due on December 19, 2012.

In the Order, ALJ Rogers granted a joint motion filed by Complainant Technology Properties Limited LLC (“TPL”) and Respondent ViewSonic Corporation (“ViewSonic”) to terminate the investigation based on a settlement agreement.  After reviewing the confidential and non-confidential versions of the agreement, ALJ Rogers granted the joint motion filed by TPL and ViewSonic.

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).

By way of background, this investigation was instituted on April 20, 2011 based on CK’s complaint alleging a violation of Section 337 by Respondents Nintendo of America, Inc. and Nintendo Co., Ltd. (collectively, “Nintendo”) for the importation into the U.S. and sale of certain video game systems and wireless controllers and components thereof, including Nintendo’s Wii wireless game system and controllers.  See our March 23, 2011 and April 21, 2011 posts for more information. 

According to the Order, CK filed a motion to serve a supplemental expert report alleging “Nintendo introduced certain claim construction arguments for the first time in the rebuttal expert report” and “Nintendo improperly refused to agree to a mutual exchange of claim constructions and signaled an intent to withhold its claim construction until the due date for rebuttal expert reports and the close of fact discovery.”  As a result, CK argued that it did not have an opportunity to take fact discovery or have its experts analyze these untimely constructions.  In response, Nintendo countered that both sides should be required to submit supplemental expert reports since neither side exchanged claim constructions at an early point.  Nintendo also argued that its claim construction position was not due any earlier according to the procedural schedule, and that it is unnecessary to seek leave to supplement an expert report since “supplementation is allowable under the Ground Rules and Commission Rules.” 

ALJ Bullock determined that CK had the better position on this issue, specifically rejecting Nintendo’s argument that the motion seeking leave to file a supplemental expert report was unnecessary.  The ALJ stated that he “generally requires parties to move for leave to serve supplemental expert reports” and that “CK has good cause to supplement its expert report.”  Accordingly, CK’s motion for leave to serve a supplemental report was granted.

CK argued to strike Nintendo’s supplemental expert report, asserting that it was served “long after the due date for opening and rebuttal expert reports” and “Nintendo failed to seek leave to file the supplemental report, even though it was outside of the time permitted by the procedural schedule.”  Nintendo opposed this motion, contending that there was no deadline for supplemental reports, and again asserting that “parties were permitted to supplement their expert reports without motions practice.” 

In this instance, ALJ Bullock found Nintendo’s arguments persuasive, noting that “contrary to CK’s assertions, the procedural schedule does not set forth any deadline for serving supplemental reports” and thus, Nintendo’s supplemental report was not untimely.  Therefore, even though the ALJ’s general practice is to require parties to move for leave to serve supplemental reports, CK’s motion to strike the expert report filed without such leave was denied.

According to the Order, ALJ Essex reviewed the memoranda submitted by B&N in support of its motion (joined by Respondent Inventec Corp. (“Inventec”)) for summary determination that U.S. Patent No. 5,889,522 is invalid, as well as those submitted by Complainant Microsoft Corp. (“Microsoft”) and the Commission Investigative Staff (“OUII”) in opposition, and found that summary determination was inappropriate because every aspect of B&N’s motion was opposed by Microsoft and OUII and genuine issues of material fact remain.  The ALJ denied B&N’s motion (also joined by Inventec) for summary determination of noninfringement of U.S. Patent No. 6,597,233 on the same grounds.

In Order No. 23, ALJ Bullock granted a joint motion filed by Complainant Cypress Semiconductor Corporation (“Cypress”) and Respondent Alcatel-Lucent USA, Inc. (“ALU USA”) to terminate the Investigation based on a settlement agreement between Cypress and ALU USA.

In Order No. 25, ALJ Bullock granted a joint motion filed by Cypress and Respondents Nokia Siemens Networks BV and Nokia Siemens Networks US LLC (collectively, “NSN”) to terminate the Investigation based on a settlement agreement between Cypress and NSN.