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ALJ Gildea

ALJ Gildea Sets Target Date In Certain Set-Top Boxes (337-TA-761)

By Eric Schweibenz
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Mar
04
Further to our February 25, 2011 post, on March 3, 2011, ALJ E. James Gildea issued Order No. 2:  Notice of Ground Rules and Setting Target Date and Date for Submission of Proposed Procedural Schedule in Certain Set-Top Boxes, and Hardware and Software Components Thereof (Inv. No. 337-TA-761).

In the Order, ALJ Gildea set July 2, 2012 as the target date for completion of the investigation (which is 16 months after institution of the investigation).  Also, any final initial determination is due no later than March 2, 2012.
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ALJ Gildea Rules On Discovery Motions in Certain Electronic Devices with Image Processing Systems (337-TA-724)

By Eric Schweibenz
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Mar
07
On February 25, 2011 ALJ E. James Gildea issued the public version of Order No. 15 (dated February 3, 2011) in Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software (337-TA-724).  The order denied Respondent Apple, Inc.’s (“Apple”) motion to strike new allegations of infringement; granted Complainants S3 Graphics Co., Ltd and S3 Graphics, Inc.’s (collectively, “S3G”) motion to compel discovery; granted S3G’s motion to extend the deadline for nonparty discovery; granted Apple’s motion to extend time to depose a non-party; and ordered limited modifications to the procedural schedule.

According to the Order, Apple filed a motion seeking to preclude S3G from pursuing new allegations of infringement not disclosed in the complaint or in discovery and strike the portion of S3G’s expert report introducing these allegations.  Apple argued that S3G’s expert asserted for the first time, after the close of fact discovery, new infringement contentions.  Specifically, the expert report concluded that Mac computers that use graphics processing units supplied by non-party NVIDIA and Apple products that use the Mac operating system (“OS”) infringed the patents-in-suit through the use of DirectX Texture Compression (“DXT”) technology.  Apple asserted that these contentions were both outside the scope of the investigation and untimely.  In response, S3G argued that Apple’s use of DXT was within the scope of the notice of investigation, that S3G timely disclosed its contentions regarding the devices using the NVIDIA chips, and that its untimely disclosure of its contention regarding the use of DXT in the Mac OS was due to Apple’s improper withholding of discovery.  The Commission Investigative Staff (“OUII”) agreed with S3G, opposing Apple’s motion to strike. ALJ Gildea also agreed with S3G, determining that Apple’s Mac computers using NVIDIA chips and those running the Mac OS were “electronic devices with image processing systems,” falling within the scope of the notice of investigation.  With regard to Apple’s Mac computers using the NVIDIA chips, ALJ Gildea determined that S3G timely accused these devices of infringement.  Regarding the Apple products using the Mac OS, the ALJ agreed with S3G, that any failure of S3G to disclose this contention earlier was the result of Apple’s discovery failings.  The ALJ thus denied Apple’s request, and similarly denied its alternative request that discovery be re-opened and the hearing date extended to address the new infringement contentions.
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ALJ Gildea Denies Motion to Compel in Certain Electronic Devices with Image Processing Systems (337-TA-724)

By Eric Schweibenz
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Mar
09
On March 4, 2011 ALJ E. James Gildea issued the public version of Order No. 22 (dated February 17, 2011) in Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software (337-TA-724).  The order denied Respondent Apple, Inc.’s (“Apple”) motion to compel.

According to the Order, Apple sought to compel Complainants S3 Graphics Co., Ltd and S3 Graphics, Inc. (collectively, “S3G”) to produce a description of the business of an unidentified company, and details about the relationship between the unidentified company and S3G’s other parent corporation, Via Technologies, Inc. (“Via”).  Apple also sought to compel S3G to supplement its response to an interrogatory seeking identification of all patents owned by S3G, including patents not asserted in the investigation.  Apple argued that this information was central to issues in the case including S3G’s alleged domestic industry.  Specifically, Apple argued that the unidentified company and Via were “foreign interests” “who are directing Complainants’ activities” and that the S3G entitites were “merely shell organizations that have not engaged in a domestic industry.”  S3G argued in opposition that the information sought by Apple was neither responsive to a timely discovery request nor relevant to the investigation.  The ALJ agreed with S3G, denying the motion.
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ALJ Gildea Sets Procedural Schedule In Certain Reduced Ignition Proclivity Cigarette Paper Wrappers (337-TA-756)

By Eric Schweibenz
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Mar
18
Further to our January 27, 2011 post, on March 17, 2011, ALJ E. James Gildea issued Order No. 4: Setting Procedural Schedule in Certain Reduced Ignition Proclivity Cigarette Paper Wrappers and Products Containing Same (Inv. No. 337-TA-756).

In the Order, ALJ Gildea set the procedural schedule for the investigation and provided for the early exchange of claim terms for construction, as well as a May 18, 2011 deadline for the parties to submit proposals as to whether a Markman hearing would be useful in resolving disputed claim terms.  According to the procedural schedule, the evidentiary hearing will commence on October 27, 2011, any final initial determination is due no later than January 27, 2012, and the target date for completion of the investigation is May 29, 2012.
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ALJ Gildea Issues Initial Determination In Certain Electronic Devices (337-TA-701)

By Eric Schweibenz
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Mar
28
On March 25, 2011, ALJ E. James Gildea issued a notice regarding the Final Initial Determination and Recommended Determination on Remedy and Bond (“ID”) in Certain Electronic Devices, Including Mobile Phones, Portable Music Players, and Computers (Inv. No. 337-TA-701).

By way of background, the Complainants in this investigation are Nokia Corporation and Nokia Inc.  The Respondent is Apple Inc.
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ALJ Gildea Grants Motion to Preclude and Strike in Certain Electronic Devices with Image Processing Systems (337-TA-724)

By Eric Schweibenz
|
Mar
29
On March 23, 2011, ALJ E. James Gildea issued the public version of Order No. 24 (dated March 3, 2011) in Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software (337-TA-724).  The order granted Respondent Apple, Inc.’s (“Apple”) motion to preclude and strike Complainants S3 Graphics Co., Ltd and S3 Graphics, Inc.’s (collectively, “S3G”) untimely contentions regarding the conception date of the asserted patents.

According to the Order, Apple sought to preclude S3G from relying on a conception date earlier than an originally asserted date; preclude S3G’s expert from providing opinions at the hearing regarding an earlier conception date; and to strike one of S3G’s supplemental interrogatory responses and portions of the expert’s rebuttal expert report that rely on an earlier conception date.  Apple argued that although S3G had contended throughout discovery that the conception date of the inventions was the originally asserted date, after the deadline for contention interrogatory responses, S3G asserted a new and earlier conception date for many claims in a supplemental interrogatory response.  Apple additionally argued that in support of its new conception date, S3G relied on two source code modules that were never produced during discovery and were disclosed for the first time in it’s expert’s report.  Thus, Apple contended that although S3G was obligated to have stated its new position during fact discovery, it did not do so.  Apple argued that in reliance, it developed its invalidity positions and deposed the inventors based on the originally asserted date, and that Apple would be prejudiced if S3G was not precluded from asserting its new conception date.
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ALJ Gildea Sets Target Date In Certain Glassware (337-TA-767)

By Eric Schweibenz
|
Mar
30
Further to our March 21, 2011 post, on March 24, 2011, ALJ E. James Gildea issued Order No. 2:  Notice of Ground Rules and Setting Target Date and Date for Submission of Proposed Procedural Schedule in Certain Glassware (Inv. No. 337-TA-767).

In the Order, ALJ Gildea set July 24, 2012 as the target date for completion of the investigation (which is 16 months after institution of the investigation).  Also, any final initial determination is due no later than March 23, 2012.
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ALJ Gildea Denies Motion To Preclude Evidence Regarding Domestic Industry In Certain Electronic Devices With Image Processing Systems (337-TA-724)

By Eric Schweibenz
|
Mar
31
On March 30, 2011, ALJ E. James Gildea issued the public version of Order No. 30 (dated March 16, 2011) denying Respondent Apple Inc.’s (“Apple”) motion to preclude Complainants S3 Graphics Co., Ltd. and S3 Graphics, Inc. (collectively, “S3G”) from presenting evidence regarding SG3’s domestic industry that was allegedly withheld during fact discovery in Certain Electronic Devices With Image Processing Systems, Components Thereof, and Associated Software (Inv. No. 337-TA-724).

According to the Order, Apple asserted that (1) S3G provided only vague responses to interrogatories on domestic industry, (2) S3G’s corporate representative was unable to answer certain technical questions regarding S3G’s domestic industry, and (3) S3G is attempting to remedy its deficient discovery responses by providing new facts in an expert report.  Apple thus sought an order precluding S3G from introducing at the hearing any fact about domestic industry activities not provided in response to interrogatories and deposition questions, or any document not similarly identified by S3G.  S3G argued in opposition that its interrogatory responses were detailed and identified supporting financial documents, and that while its responses did not specifically identify some technical documents containing evidence about the underlying activities represented in the financial documents, every financial and technical document S3G relies on to prove domestic industry was produced before the close of fact discovery.  S3G also pointed to its two corporate witnesses designated for topics related to domestic industry, who testified about S3G’s investments and licensing activities, as well as one of S3G’s chief engineers, who testified about technical details regarding S3G’s research, development, support, and repair activities.  Finally, S3G argued that the expert report in question was based only on information timely disclosed during discovery.
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ALJ Gildea Sets Procedural Schedule In Certain Set-Top Boxes (337-TA-761)

By Eric Schweibenz
|
Apr
07
Further to our February 25, 2011 post, on April 5, 2011, ALJ E. James Gildea issued Order No. 3: Setting Procedural Schedule in Certain Set-Top Boxes, and Hardware and Software Components Thereof(Inv. No. 337-TA-761).

In the Order, ALJ Gildea determined that the parties did not follow his instructions when they inserted proposed dates for a Markman hearing, rather than submit proposals as to whether a Markman hearing in advance of the evidentiary hearing would be useful.  ALJ Gildea also determined that as the parties have not yet exchanged patent claim terms for constructions or set forth their proposed constructions, it is too soon to determine whether an early Markman hearing would be beneficial here.  ALJ Gildea declined to set a Markman hearing as a matter of course and determined that the parties can still submit an explanation why such a hearing would be useful.
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ALJ Gildea Grants Motion for Summary Determination with Respect to Economic Domestic Industry Requirement In Certain Electronic Devices With Image Processing Systems (337-TA-724)

By Eric Schweibenz
|
Apr
07
On April 1, 2011, ALJ E. James Gildea issued the public version of Order No. 29 (dated March 11, 2011) granting Complainants S3 Graphics Co., Ltd. and S3 Graphics, Inc.’s (collectively, “S3G”) motion for summary determination that the economic prong of the domestic industry requirement had been met in Certain Electronic Devices With Image Processing Systems, Components Thereof, and Associated Software (Inv. No. 337-TA-724).

According to the Order, S3G argued that its domestic expenditures and activities supported a finding that S3G satisfied the economic prong of the domestic industry requirement.  Specifically S3G relied on its domestic activities and expenditures relating to support and repair of S3G’s domestic industry products; engineering, research and development, and design of S3G’s domestic industry products; and licensing of the asserted patents.  Respondent Apple Inc. (“Apple”) and the Commission Investigative Staff (“OUII”) opposed the motion.
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ALJ Gildea Grants Motion To Terminate Investigation In Certain Toner Cartridges (337-TA-731)

By Eric Schweibenz
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Apr
08
On April 8, 2011, ALJ E. James Gildea issued Order No. 11 in Certain Toner Cartridges and Components Thereof (Inv. No. 337-TA-731).

By way of background this Investigation was based on a June 28, 2010 complaint and filed by Canon Inc. of Japan, Canon U.S.A., Inc. of Lake Success, New York and Canon Virginia, Inc. of Newport News, Virginia alleging violation of Section 337 in the importation into the U.S. and sale of certain toner cartridges and components thereof which infringe U.S. Patent Nos. 5,903,803 and 6,128,454.  See our July 28, 2010 post for more details.
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ALJ Gildea Denies Complainants’ Motion In Limine To Preclude Obviousness Argument In Certain Electronic Devices With Image Processing Systems (337-TA-724)

By Eric Schweibenz
|
Apr
11
On April 8, 2011, ALJ E. James Gildea issued the public version of Order No. 40 (dated March 30, 2011) denying Complainants S3 Graphics Co., Ltd. and S3 Graphics, Inc.’s (collectively, “S3G”) motion in limine to preclude Respondent Apple Inc. (“Apple”) from alleging that the asserted claims of the patents-in-suit are obvious in light of U.S. Patent No. 5,046,119 to Eric Hoffert (“Hoffert”) in view of Apple’s QuickTime product (the “Combination”) in Certain Electronic Devices With Image Processing Systems, Components Thereof, and Associated Software (Inv. No. 337-TA-724).

According to the Order, S3G argued that Apple failed to disclose this prior art Combination in its contention interrogatory responses, and that Apple never sought leave to supplement its interrogatory responses.  S3G further asserts that while Apple’s expert Dr. Delp “hinted at the Combination” in his invalidity report, he never adequately explained it.  According to S3G, Dr. Delp’s reference to the Combination could not cure Apple’s failure to disclose it in its contention interrogatory responses.  S3G also argued that an expert report is not a substitute for a motion to supplement contention interrogatory responses and that permitting Apple to hide its invalidity contentions until the service of expert reports prejudiced S3G.
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ALJ Gildea Defers Ruling on Motion for Sanctions In Certain Electronic Devices With Image Processing Systems (337-TA-724)

By Eric Schweibenz
|
Apr
13
On April 8, 2011, ALJ E. James Gildea issued the public version of Order No. 38 (dated March 29, 2011) addressing Complainants S3 Graphics Co., Ltd. and S3 Graphics, Inc.’s (collectively, “S3G”) motion for sanctions against Respondent Apple Inc. (“Apple”) in Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software (Inv. No. 337-TA-724).

According to the Order, S3G asserted that Apple failed to comply with Order 15, which compelled Apple to produce all requested documents and source code relating to S3TC/DXT technology in Apple’s Mac computers and to supplement its interrogatory answers to fully and accurately reflect same.  S3G therefore sought entry of several evidentiary findings of fact detrimental to Apple, and to preclude Apple from disputing that certain of its Mac computers infringe the asserted patents.  Apple responded that the information requested by S3G is confidential and proprietary to third party suppliers, and that Apple in fact produced all the information it was required to produce under Order 15.  The Commission Investigative Staff (“OUII”) agreed with S3G that Apple violated Order 15 by failing to timely produce the requested information or seek a protective order, but argued that the adverse evidentiary inferences requested by S3G were not warranted given the nature of the information Apple failed to produce.
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ALJ Gildea Denies Motion to Compel Discovery From Non-Party In Certain Wind And Solar-Powered Light Posts And Street Lamps (337-TA-736)

By Eric Schweibenz
|
Apr
28
On April 26, 2011, ALJ E. James Gildea issued Order No. 11 denying without prejudice a motion to compel discovery from non-party Benjamin Halpern in Certain Wind and Solar-Powered Light Posts and Street Lamps (Inv. No. 337-TA-736).  The motion was filed by Gus Power Incorporated; Efston Science, Inc.; The StressCrete Group; and King Luminaire, Inc. (collectively, “Respondents”).  Complainants Duggal Dimensions, LLC; Duggal Energy Solutions, LLC; and Duggal Visual Solutions, Inc. (collectively, “Duggal”) opposed the motion.

According to the Order, Halpern was one of the attorneys responsible for prosecuting the application that matured into the patent-at-issue in the investigation.  Respondents’ motion asserted that during Halpern’s deposition, Duggal repeatedly asserted the attorney-client privilege and instructed Halpern not to answer questions that were not privileged and were highly relevant to Respondents’ claims of improper inventorship and inequitable conduct.  Respondents thus requested that the ALJ compel Halpern to testify fully and completely at a reconvened deposition at Duggal’s expense. Duggal opposed Respondents’ motion, arguing that the information and documents sought by Respondents was properly protected by the attorney-client privilege.
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ALJ Gildea Sets Procedural Schedule In Certain Glassware (337-TA-767)

By Eric Schweibenz
|
Apr
29
On April 27, 2011, ALJ E. James Gildea issued Order No. 3:  Setting Procedural Schedule in Certain Glassware (Inv. No. 337-TA-767).

By way of background, the Complainant in this investigation is Boston Beer Corporation of Boston, Massachusetts and the Respondents are 1 Source Signature Glassware, Inc., di Sciacca Co., and San Tan Brewing Co., all of Chandler, Arizona.
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ALJ Gildea Sets Revised Procedural Schedule In Certain Products Containing Interactive Program Guide And Parental Controls Technology (337-TA-747)

By Eric Schweibenz
|
Apr
29
On April 27, 2011, ALJ E. James Gildea issued Order No. 14: Setting Revised Procedural Schedule in Certain Products Containing Interactive Program Guide And Parental Controls Technology (Inv. No. 337-TA-747).

By way of background, the Complainant in this investigation is Rovi Corporation, Rovi Guides, Inc., and United Video Properties, Inc. — all of Santa Clara, California — and Index Systems, Inc. of the British Virgin Islands.  The Respondents in this investigation are Toshiba Corp. of Japan, Toshiba America, Inc. of New York, New York, Toshiba America Consumer Products, L.L.C. of Wayne, New Jersey, and Toshiba America Information Systems, Inc. of Irvine, California.
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ALJ Gildea Rules On Various Motions In Certain Electronic Devices With Image Processing Systems (337-TA-724)

By Eric Schweibenz
|
May
02
On April 28, 2011, ALJ E. James Gildea issued the public versions of Order No. 20 (dated February 11, 2011), Order No. 35 (dated March 28, 2011), Order No. 39 (dated March 29, 2011), and Order No. 43 (dated April 1, 2011) in Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software (Inv. No. 337-TA-724).  In the Orders, ALJ Gildea ruled on two motions in limine, a motion to amend an exhibit list, and a motion for emergency relief filed by Complainants S3 Graphics Co., Ltd. and S3 Graphics, Inc. (collectively, “S3G”), as well as a motion in limine filed by Respondent Apple Inc. (“Apple”).

In Order No. 20, ALJ Gildea granted-in-part S3G’s motion for emergency relief related to Order No. 15.  See our March 7, 2011 post for more details on Order No. 15.  According to Order No. 20, on February 8, 2011, S3G filed a motion seeking a supplemental order from the ALJ stating that Order No. 15 required Apple to provide a corporate representative for deposition regarding Apple’s implementation of DCT/S3TC.  Apple opposed the motion, arguing that Order No. 15 did not give S3G leave to take additional corporate depositions from Apple beyond the depositions of the individuals specifically named in the Order.  Apple further argued that S3G had rejected a compromise that would have allowed S3G to take additional corporate testimony on three deposition topics that relate directly to DXT and/or S3TC.  ALJ Gildea determined that while Order No. 15 did not require Apple to provide a corporate representative for deposition, discovery in the case would be advanced by allowing S3G to take the limited deposition testimony that had been offered by Apple.  Accordingly, the ALJ granted S3G’s motion in part and ordered that S3G be allowed to take Apple’s corporate deposition on the three limited topics at issue.
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ALJ Gildea Denies Motion to Compel Discovery In Certain Wind And Solar-Powered Light Posts And Street Lamps (337-TA-736)

By Eric Schweibenz
|
May
03
On April 28, 2011, ALJ E. James Gildea issued the public version of Order No. 8 (dated April 13, 2011) denying a motion to compel filed by Complainants Duggal Dimensions, LLC, Duggal Energy Solutions, LLC, and Duggal Visual Solutions, Inc. (collectively, “Duggal”) in Certain Wind and Solar-Powered Light Posts and Street Lamps (Inv. No. 337-TA-736).

In support of the motion, Duggal argued that Respondent The StressCrete Group (“StressCrete”) should be compelled to produce documents concerning litigation between StressCrete and a company known as Skycast since such documents may represent a dispute over product design and bear on StressCrete’s credibility.  StressCrete opposed the motion and argued that its litigation with Skycast concerned the use of a concrete pole for telecommunications circuitry in residential neighborhoods which involved a “completely independent utility patent” and thus was not relevant to the current investigation.
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ALJ Gildea Denies Motion To Compel Discovery From Nonparty In Certain Wind And Solar-Powered Light Posts And Street Lamps (337-TA-736)

By Eric Schweibenz
|
May
03
On April 28, 2011, ALJ E. James Gildea issued the public version of Order No. 9 (dated April 13, 2011) in Certain Wind and Solar-Powered Light Posts and Street Lamps (Inv. No. 337-TA-736).  In the Order, ALJ Gildea denied Respondents Gus Power Incorporated, Efston Science, Inc., The StressCrete Group, and King Luminaire, Inc.’s (collectively, “Respondents”) motion to compel nonparty Infographics to provide documents and testimony relating to the preparation of drawings for asserted U.S. Patent No. D610,732S (the ‘732 patent).

According to the Order, Respondents argued that the discovery they sought from Infographics was relevant to their allegation that Complainants Duggal Dimensions LLC, Duggal Energy Solutions, LLC, and Duggal Visual Solutions, Inc. (collectively, “Duggal”) intentionally withheld the identity of the true inventors of the design described in the ‘732 patent from the Patent Office.  Respondents had subpoenaed Infographics for documents and testimony relating to the preparation of drawings for the application that matured into the ‘732 patent; however, Respondents were not satisfied with Infograhics’ document production and objected to the claims of privilege raised by Duggal and/or Infographics in response to the subpoena.
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ALJ Gildea Rules On Motion To Compel In Certain Products Containing Interactive Program Guide And Parental Controls Technology (337-TA-747)

By Eric Schweibenz
|
May
03
On April 28, 2011, ALJ E. James Gildea issued the public version of Order No. 11 (dated April 8, 2011) in Certain Products Containing Interactive Program Guide and Parental Controls Technology (Inv. No. 337-TA-747).  In the Order, ALJ Gildea granted Respondents Toshiba Corporation, Toshiba America, Inc., Toshiba America Consumer Products, L.L.C., and Toshiba America Information Systems, Inc.’s (collectively, “Toshiba”) motion to compel Complainants Rovi Corporation, Rovi Guides, Inc., United Video Properties, Inc., and Index Systems, Inc. (collectively, “Rovi”) to supplement their interrogatory responses and document production relating to Rovi’s products, past and current.

According to the order, Toshiba sought to compel Rovi to state a date certain on which the inventions described in the asserted patents had been conceived and reduced to practice.  Toshiba further sought to compel Rovi to review thousands of boxes of documents in Rovi’s control to search for potential prior art, for contracts relating to the purchase of Rovi’s products, and for documents relating to Rovi’s participation in standards organizations.  Toshiba sought this discovery pursuant to Interrogatory Nos. 4, 6-8, 10-11, 14, 32, 41, and 43 and Document Request Nos. 7, 9-11, 23-26, and 49.
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The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important ITC issues. These postings are in no way representative of the opinions of the Oblon firm, or its clients, but rather the personal views of the individual authors.