ALJ Charneski

ALJ Charneski Denies Motion For Summary Determination In Certain Large Scale Integrated Circuit Semiconductor Chips (337-TA-716)

By Eric Schweibenz
|
Oct
27
On October 25, 2010, ALJ Carl C. Charneski issued Order No. 19 in Certain Large Scale Integrated Circuit Semiconductors Chips and Products Containing Same (Inv. No. 337-TA-716) denying Respondents Freescale Semiconductor, Inc., Freescale Semiconductor Japan Ltd., Freescale Semiconductor (China) Limited, Freescale Semiconductor Qiangzin (Tianjin) IC Design Co., Ltd., Freescale Semiconductor Malaysia Sdn. Bhd., Freescale Semiconductor Singapore Pte. Ltd., Freescale Semiconductor Taiwan Ltd., Mouser Electronics, Inc., Motorola Inc., Newark Electronics Corp., and Newark Corp. (collectively, “Respondents”) motion for summary determination that the claims of U.S. Patent No. 6,834,336 (the ‘336 patent) were invalid as being anticipated under 35 U.S.C. § 102(b) by U.S. Patent No. 6,085,306 (the ‘306 patent).

In support of the motion, Respondents asserted that Complainant Panasonic Corporation (“Panasonic”) did not meet the statutory requirements of obtaining an earlier filing date pursuant to 35 U.S.C. § 120 and did not comply with 37 C.F.R. § 1.78.  In particular, Respondents “argue[d] that “the ‘336 patent is not entitled to the benefit of the earlier-filed application to the parent ‘306 patent under 35 U.S.C. § 120” because the USPTO printer, and not the applicant, amended the specification with a specific reference for the benefit of a prior filed application.  Respondents asserted that 35 U.S.C. § 120 requires that such an amendment can only be made by the applicant.  In opposition, Panasonic asserted that “there are no such requirements or limitations in the statute and that [Respondents are] misreading the plain language of the statute.”  Further, both Panasonic and the Commission Investigative Staff “argue[d] that the examiner - not the printer - made the amendment to the specification as permitted by 37 C.F.R. 1.121(g).”

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ALJ Charneski Sets Target Date And Procedural Schedule In Certain Toner Cartridges (337-TA-740)

By Eric Schweibenz
|
Nov
10
Further to our October 7, 2010 post, on November 2, 2010, ALJ Carl C. Charneski issued Order No. 7  and Order No. 8 in Certain Toner Cartridges and Components Thereof (Inv. No. 337-TA-740).

In Order No. 7, ALJ Charneski set March 12, 2012 as the target date (which is 17 months after institution of the investigation).  ALJ Charneski further indicated that the Initial Determination on violation shall be due November 10, 2011.

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ALJ Charneski Rules On Motion For Leave To File A Supplemental Notice Of Prior Art In Certain Personal Data And Mobile Communications Devices (337-TA-710)

By Eric Schweibenz
|
Nov
12
On November 9, 2010, ALJ Carl C. Charneski issued Order No. 40 granting-in-part Respondents High Tech Computer Corp., HTC America, Inc. and Exedia, Inc.’s (collectively, “HTC”) motion for leave to file a Supplemental Notice of Prior Art in Certain Personal Data and Mobile Communications Devices and Related Software (Inv. No. 337-TA-710).

According to the order, HTC sought to supplement its initial Notice of Prior Art with four categories of prior art: “(1) prior art references . . . that were previously identified in the Initial Notice of Prior Art for which additional documentation and/or source code were obtained following the initial Notice; (2) prior art references . . . that were identified through other sources after the initial Notice of Prior Art; (3) prior art references . . . that were identified and/or produced by third parties following the initial Notice of Prior Art; and (4) prior art references . . . ‘that were otherwise identified and determined to be material based on HTC’s diligent investigation following the initial Notice of Prior Art.’”  Complainant Apple Inc. and the Commission Investigative Staff opposed the motion.

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ALJ Charneski Rules On Motion To Compel In Collaborative System Products (337-TA-728)

By Eric Schweibenz
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Nov
16
On November 12, 2010, ALJ Carl C. Charneski issued Order No. 18, granting Respondents Promethean Inc., Promethean Limited, and Promethean Technology Shenzhen, Ltd.’s (collectively, “Promethean”) motion to compel Complainant eInstruction Corporation (“eInstruction”) to produce a document claimed to be protected by the attorney work product doctrine in Collaborative System Products and Components (II) (Inv. No. 337-TA-728).

According to the Order, eInstruction’s document is an analysis prepared by a non-lawyer regarding which competitors were thought to infringe the sole patent at issue in this investigation, U.S. Patent No. 6,930,673 (the ‘673 patent), and further estimating each competitor’s volume, revenue and margin analysis.  This analysis was forwarded to eInstruction’s CFO, who requested the analysis, and eInstruction’s CEO.  The CFO subsequently sent the analysis to various counsel to “see if these law firms would bring infringement actions on a contingency fee basis.”  eInstruction argued that the analysis was prepared in anticipation of litigation and “formed part of the basis on which law firms decided whether to pursue actions to enforce the ‘673 patent and to identify the companies against which such actions would be brought.”

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ALJ Charneski Rules On Motion For Summary Determination Regarding Invalidity In Certain Flash Memory (337-TA-685)

By Eric Schweibenz
|
Nov
17
On November 15, 2010, ALJ Carl C. Charneski issued Order No. 38 in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685) denying Respondents Spansion, Inc. and Spansion LLC’s (collectively, “Spansion”) motion for summary determination of no violation of Section 337 on the ground that the asserted claims of U.S. Patent No. 5,740,065 (the ‘065 patent) are invalid under 35 U.S.C. § 101.

In support of its motion, Spansion argued that the asserted claims of the ‘065 patent were invalid because they “attempt[ed] to patent the abstract idea of applying a recursive mathematical function with an error correction to a non-specific method of semiconductor manufacture, using parameters measured in a non-specific manner.”  In opposition, Complainant Samsung Electronics Co., Ltd. (“Samsung”) asserted that “Spansion misapplies Supreme Court precedent and further, that it misconstrues the ‘065 patent.”  In this regard, Samsung asserted that “[a] claim drawn to subject matter otherwise statutory does not become non-statutory simply because it uses a mathematical formula” and “the ‘065 patent does not claim the abstract manipulation of numbers and formulas on a computer.”  Similarly, the Commission Investigative Staff (“OUII”) opposed the motion arguing that “the asserted claims protect an industrial process for manufacturing a device, and while the process employs a mathematical equation, the claims do not pre-empt the use of that equation.”  Further, OUII asserted that the ‘065 patent claims “are drawn to an industrial process for manufacturing a semiconductor device using claimed manufacturing equipment – not to a mere mathematical formula with the manufacturing context added as an afterthought.”

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ALJ Charneski Rules On Motion For Summary Determination Regarding Importation In Certain Flash Memory (337-TA-685)

By Eric Schweibenz
|
Nov
18
On November 17, 2010, ALJ Carl C. Charneski issued the public version of Order No. 34 (dated November 3, 2010) in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685) granting Complainant Samsung Electronics Co., Ltd.’s (“Samsung”) motion for summary determination that Respondents Spansion, Inc. and Spansion LLC (collectively, “Spansion”) have met the importation requirement of Section 337.

According to the Order, Samsung identified seven Spansion flash memory products in its Complaint that allegedly infringe U.S. Patent No. 5,740,065 (the ‘065 patent).  In response to the Complaint and Notice of Investigation, Spansion admitted that it imports, sells for importation, and/or sells within the United States after importation accused flash memory chips.  Nevertheless, in opposing Samsung’s motion for summary determination, Spansion argued that Samsung failed to provide undisputed evidence that the accused chips are in fact those being imported, and that summary determination is inappropriate because Samsung has not yet properly identified the accused chips.  In support of its argument, Spansion asserted that the ‘065 patent, properly read, “should be limited to process control in the alignment and exposure operations in photolithographic processes,” and that there is “a dispute between technical experts as to the meaning and scope of the asserted claims, and therefore what products are allegedly protected.”  The Commission Investigative Staff did not file a response to Samsung’s motion.

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ALJ Charneski Rules On Motions For Summary Determination Regarding Invalidity In Certain Flash Memory (337-TA-685)

By Eric Schweibenz
|
Nov
22
On November 17, 2010, ALJ Carl C. Charneski issued Order Nos. 40 and 41 in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685) denying motions by Respondents Spansion, Inc. and Spansion LLC’s (collectively, “Spansion”) and Complainant Samsung Electronics Co., Ltd. (“Samsung”) for summary determination with respect to the validity of the asserted claims of U.S. Patent No. 5,740,065 (the ‘065 patent).

With respect to Order No. 40, Spansion filed a motion for summary determination that all asserted claims of the ‘065 patent are invalid under 35 U.S.C. § 112, ¶ 1 for failing to satisfy the written description and enablement requirements.  Spansion further argued that the asserted claims were also invalid as indefinite under § 112, ¶ 2.  ALJ Charneski denied Spansion’s motion, determining that, “simply put, Spansion’s motion is premature,” because the § 112 issues raised by Spansion could not be resolved without the benefit of a hearing record, including expert testimony.

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ALJ Charneski Issues Public Version of Initial Determination In Certain Hair Irons (337-TA-637)

By Eric Schweibenz
|
Nov
26
On November 19, 2010, ALJ Carl C. Charneski issued the public version of Order No. 14 granting Complainant Farouk System, Inc.’s (“FSI”) motion for summary determination of violation of Section 337 and recommended determination on remedy and bonding (dated March 10, 2009) in Certain Hair Irons and Packaging Thereof (Inv. No. 337-TA-637).

By way of background, on March 14, 2008, the Commission instituted the investigation naming the following respondents:  CHI Systems Singapore Pte. Ltd. of Singapore (“CHI Systems”); Princess Silk, LLC of Lake Forest, California (“Princess Silk”); Kamashi International of Hong Kong, China (“Kamashi”); Mount Rise, Ltd. of Dongguan, China (“Mount Rise”); and Dongguan Fumeikang Electrical Technology Co., Ltd. of Dongguan, China (“Dongguan Fumeikang”).  Dongguan Fumeikang and Princess Silk were terminated from the investigation via consent order on May 21, 2008 and December 4, 2008, respectively.  On January 30, 2009, ALJ Charneski granted FSI’s motion (Order No. 13) to find Mount Rise, Kamashi, and CHI Systems in default for failure to respond to the complaint and Notice of Investigation.

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ALJ Charneski Denies Motion To Compel In Certain Personal Data And Mobile Communications Devices (337-TA-710)

By Eric Schweibenz
|
Dec
01
On November 29, 2010, ALJ Carl C. Charneski issued Order No. 53 denying Respondents HTC Corp., HTC America, Inc., and Exedea, Inc.’s (collectively, “HTC”) motion to compel in Certain Personal Data and Mobile Communications Devices and Related Software (Inv. No. 337-TA-710).

According to the Order, HTC moved to compel Complainants Apple, Inc. and NeXT Software, Inc. (collectively, “Apple”) to “(i) [ ] provide correct and complete custodian information . . . for all documents previously produced and all documents produced during the remainder of this investigation; (2) . . . verify that Apple has searched for and produced all relevant, non-privileged documents from that custodian; (3) compel production of all responsive documents from the files of each custodian searched by Apple, and a search by Apple of all custodians holding relevant documents; and (4) allow the continuation of any depositions HTC has previously taken of witnesses whose documents were not properly collected or produced by Apple.”  Apple opposed the motion.

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ALJ Charneski Rules On Motion For Summary Determination Regarding Domestic Industry In Certain Flash Memory (337-TA-685)

By Eric Schweibenz
|
Dec
02
On December 1, 2010, ALJ Carl C. Charneski issued Order No. 46 in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685) denying Complainant Samsung Electronics, Co., Ltd.’s (“Samsung”) motion for summary determination that Samsung satisfies the economic prong of the domestic industry requirement under 19 U.S.C. § 1337(a)(3).

In support of its motion, Samsung asserted that the domestic industry requirement was satisfied “through it activities related to Samsung Austin Semiconductor, LLC, and its semiconductor fabrication facilities in Austin, Texas.”   Respondents Spansion, Inc. and Spansion LLC opposed Samsung’s motion.  The Commission Investigative Staff supported the motion.

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ALJ Charneski Rules On Motion For Summary Determination Regarding Non-Infringement In Certain Flash Memory (337-TA-685)

By Eric Schweibenz
|
Dec
10
On December 9, 2010, ALJ Carl C. Charneski issued the public version of Order No. 42 (dated November 18, 2010) in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685) denying Respondents Spansion, Inc. and Spansion LLC’s (collectively, “Spansion”) motion for summary determination that claim 12 of U.S. Patent No. 5,740,065 (the ‘065 patent) is not infringed either literally or under the doctrine of equivalents.

In support of its motion, Spansion relied upon the deposition testimony of Complainant Samsung Electronics, Co., Ltd.’s (“Samsung”) expert witness for the proposition that there were no insubstantial differences between features of the accused products and a certain limitation of claim 12.  In opposition to the motion, Samsung asserted that (1) “Spansion fails to explain how these purported differences relate to and affect the ‘essential functionality’ of claim 12”, (2) its expert’s comparison was made under a theoretical assumption, (3) the deposition testimony relied upon by Spansion was quoted out of context and “provid[ed] a general answer to an exceptionally general question, and not an answer directed to the ‘essential functionality’ of claim 12”, and (4) Samsung’s expert “provided a function, way, result analysis in support of his opinion that claim 12 of the ‘065 patent is infringed.”

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ALJ Charneski Terminates Investigation As To Alpine Electronics In Certain Flash Memory (337-TA-685)

By Eric Schweibenz
|
Dec
10
On December 8, 2010, ALJ Carl C. Charneski issued Order No. 55 in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685) terminating the investigation as to Respondent Alpine Electronics, Inc. (“Alpine”).

According to the Order, Complainant Samsung Electronics Co., Ltd. filed a motion to withdraw the allegations in the complaint against Alpine.  No parties to the investigation opposed and thus ALJ Charneski granted the motion under Commission Rule 210.21(a).

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ALJ Charneski Rules On Motion To Strike Section of Prehearing Brief and Preclude Hearing Testimony In Certain Flash Memory (337-TA-685)

By Eric Schweibenz
|
Dec
13
On December 1, 2010, ALJ Carl C. Charneski issued Order No. 48 in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685) granting Complainant Samsung Electronics, Co., Ltd.’s (“Samsung”) motion to strike sections of Respondents Spansion, Inc. and Spansion LLC’s (collectively, “Spansion”) prehearing brief and preclude hearing testimony by Spansion relating to new prior art invalidity theories not discussed in Spansion’s expert report on invalidity.

According to the Order, Spansion’s expert report on invalidity of U.S. Patent No. 5,740,065 (the ‘065 patent) solely expressed invalidity opinions based on two prior art references; namely, that claims 1 and 8 were anticipated by Hirosato, and Claim 12 was rendered obvious by Hirosato, and by Hirosato in view of Leang.  In its prehearing brief, Spansion added that claim 8 was anticipated by Hu, and Claim 12 was rendered obvious by each of the following; Hu, Hu and Leang, Hu and Butler, and Hirosato and Butler.  According to the Order, Spansion’s expert report listed both Hu and Butler in the list of documents considered, and Hu was cited in the background section of the report, but neither Hu nor Butler was discussed with regard to any claim limitation of the ‘065 patent.  The Commission Investigative Staff supported Samsung’s motion.

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ALJ Charneski Rules On Motion For Summary Determination of Non-Infringement In Certain Flash Memory (337-TA-685)

By Eric Schweibenz
|
Dec
14
On December 1, 2010, ALJ Carl C. Charneski issued Order No. 49 in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685) denying Respondents Spansion, Inc. and Spansion LLC’s (collectively, “Spansion”) motion for summary determination that claims 1 and 8 of U.S. Patent No. 5,740,065 (the ‘065 patent) are not infringed.

In its motion, Spansion asserted that claims 1 and 8, the only independent claims, were not infringed because Spansion does not “accumulatively average [ ] working conditions.”  Rather, Spansion argued that it employs an “Exponentially Weighted Moving Average” (“EWMA”).  According to Spansion, EWMAs are not described by the ‘065 patent and are different from “accumulatively averaging.”  Specifically, Spansion stated that an EWMA is “moving” so as to include only recent data, dropping older data from the average, and is “exponentially weighted.”  In addition, Spansion asserted that even if “accumulatively averaging” could include an EWMA, Spansion’s process averages error, not “working conditions.”

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ALJ Charneski Issues Initial Determination In Certain Multimedia Display And Navigation Devices And Systems (337-TA-694)

By Eric Schweibenz
|
Dec
21
On December 16, 2010, ALJ Carl C. Charneski issued a notice regarding the Initial Determination in Certain Multimedia Display and Navigation Devices and Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-694).

By way of background, the Complainants in this investigation are Pioneer Corporation and Pioneer Electronics (USA), Inc. and the Respondents are Garmin International, Inc. and Garmin Corp.

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ALJ Charneski Grants Motion To Terminate Investigation In Certain Data Storage Products (337-TA-748)

By Eric Schweibenz
|
Dec
22
On December 22, 2010, ALJ Carl C. Charneski issued Order No. 9 terminating the investigation as to all respondents based on a withdrawal of the complaint in Certain Data Storage Products and Components Thereof (Inv. No. 337-TA-748).

By way of background, the Complainant in this investigation is Data Network Storage, LLC of Newport Beach, California (“DNS”) and the Respondents are NetApp, Inc. of Sunnyvale, California (“NetApp”), Dell, Inc. of Round Rock, Texas (“Dell”), Xyratex, Ltd. of Fremont, California, Xyratex International Inc. of West Sacramento, California, Xyratex (Malaysia) Sdn Bhd of Malaysia, Dot Hill Systems Corp. of Longmont, Colorado, International Business Machines Corporation of Armonk, New York, Cisco Systems, Inc. of San Jose, California, and QNAP Systems, Inc. of Pomona, California.

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ALJ Charneski Grants Motion To Terminate Investigation As To Print-Rite In Certain Toner Cartridges (337-TA-740)

By Eric Schweibenz
|
Dec
23
On December 23, 2010, ALJ Carl C. Charneski issued Order No. 11 in Certain Toner Cartridges and Components Thereof (Inv. No. 337-TA-740).

In the Order, ALJ Charneski granted a joint motion filed by Complainant Lexmark International, Inc. and Respondent Print-Rite Holdings Ltd. to terminate the investigation based on a settlement agreement.

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ALJ Charneski Rules On Motion To Preclude Asserting Infringement Under Doctrine Of Equivalents In Certain Personal Data And Mobile Communications Devices (337-TA-710)

By Eric Schweibenz
|
Dec
29
On December 22, 2010, ALJ Carl C. Charneski issued Order No. 69, denying Respondents HTC Corp., HTC America, Inc. and Exedia, Inc.’s (collectively, “HTC”) and Respondents Nokia Corp. and Nokia, Inc.’s (collectively, "Nokia") motion to preclude Complainants Apple Inc. and NeXT Software Inc. (collectively, “Apple”) from asserting infringement under the doctrine of equivalents in Certain Personal Data and Mobile Communications Devices and Related Software (Inv. No. 337-TA-710).

According to the Order, HTC and Nokia argued that Apple failed to articulate a sufficient basis for infringement under the doctrine of equivalents when, in response to contention interrogatories, Apple recited for each asserted claim that “each [claim] element is also met by the Accused HTC Android Products and the Accused HTC DSP Products under the doctrine of equivalents.”  Apple’s responses further stated that, “the differences, if any, between the claim elements and Accused HTC Android Products and the Accused HTC DSP Products are insubstantial, and the application performs substantially the same function in substantially the same way with substantially the same result as the claim elements.”  Respondents argued that Apple had no excuse for failing to articulate the contentions in greater detail, and that this failure prejudiced Respondents’ preparation of expert reports and the ability to fully participate in discovery.

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ALJ Charneski Rules On Motions For Summary Determination In Certain Flash Memory (337-TA-685)

By Eric Schweibenz
|
Dec
31
On December 22, 2010, ALJ Carl C. Charneski issued the public versions of Order No. 44 (dated November 30, 2010), Order No. 45 (dated November 30, 2010), and Order No. 47 (dated December 1, 2010) in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685).

In Order No. 44, ALJ Charneski granted Complainant Samsung Electronics, Co., Ltd.’s (“Samsung”) motion for summary determination that Respondents Alpine Electronics, Inc. and Alpine Electronics of America, Inc. (collectively, “Alpine”) have met the importation requirement of 19 U.S.C. § 1337(a)(1)(B).  In support of its motion, Samsung alleged that Alpine infringes the asserted claims of U.S. Patent No. 5,740,065 (the ‘065 patent), and “identifie[d] the accused products that infringe the ‘065 patent as including, but not limited to,” certain products of Respondents Spansion, Inc. and Spansion LLC. (collectively, “Spansion”).  In granting Samsung’s motion, ALJ Charneski determined that “there is no real dispute in substance” given that “Alpine concedes that ‘the Commission has jurisdiction over certain Alpine downstream products containing Spansion chips that are imported into the United States’” and that “Alpine admitted that it has sold for importation and sold after importation products in the United States.” 

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ALJ Charneski Grants Motion to Add Unenforceability Defense in Certain Large Scale Integrated Circuit Semiconductor Chips (337-TA-716)

By Eric Schweibenz
|
Jan
12
On January 10, 2011, ALJ Carl C. Charneski released the Public Version of Order 29 (dated December 20, 2010), granting Respondents’ motion to amend their Responses to the Amended Complaint and Notice of Investigation to assert a defense of inequitable conduct in Certain Large Scale Integrated Circuit Semiconductor Chips and Products Containing Same (Inv. No. 337-TA-716).

Respondents Freescale Semiconductor, Inc., Freescale Semiconductor Japan Ltd., Freescale Semiconductor Malaysia Sdn. Bhd., Freescale Semiconductor Singapore Pte. Ltd., Freescale Semiconductor Taiwan Ltd., Freescale Qiangxin (Tianjin) IC Design Co., Ltd., Freescale Semiconductor (China) Limited, Mouser Electronics, Inc, Motorola, Inc., Newark Electronics Corporation, and Newark Corporation (collectively “Respondents” or “Freescale”) – sought to amend their responses to assert an inequitable conduct defense regarding U.S. Patent No. 5,933,364 (the ’364 patent).  Respondents argued that they only learned of the underlying facts from documents recently produced by Complainant Panasonic Corporation (“Panasonic”) and in a recent deposition of one of the ’364 patent’s co-inventors.  The Commission Investigative Staff supported the motion because the above information was disclosed by Panasonic during discovery and would not prejudice the parties.

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