ALJ Orders

ALJ Luckern Issues Enforcement Initial Determination In Certain Ink Cartridges (337-TA-565)

By Eric Schweibenz
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Apr
21
On April 17, 2009, ALJ Paul J. Luckern issued a Notice of his Enforcement Initial Determination (“ED”) which included the non-confidential title page, conclusions of law, and the order in Certain Ink Cartridges and Components Thereof (337-TA-565).  According to the Notice, ALJ Luckern determined that enforcement respondents Ninestar Technology Company Ltd., Ninestar Technology Co., Ltd. and Town Sky, Incorporated violated the orders issued at the conclusion of Investigation No. 337-TA-565.

ALJ Luckern determined that the Ninestar and Town Sky compatible and remanufactured cartridges at issue are “covered products” under the Cease and Desist Order issued against it by the Commission on October 19, 2007.  ALJ Luckern also determined that Ninestar and Town Sky failed to meet their burden to demonstrate their affirmative defenses and were “jointly and severally liable for violations of the Cease and Desist Orders in the amount of $20,504,974.16.”

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ALJ Gildea Rules On PPC’s Motion for Summary Determination in Certain Coaxial Cable Connectors (337-TA-650)

By Eric Schweibenz
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Apr
21
On April 17, 2009, ALJ E. James Gildea issued the public version of Order No. 18 (dated April 6, 2009), the initial determination granting in part the motion for summary determination filed by Complainant John Mezzalingua Associates, Inc. d/b/a PPC, Inc. (“PPC”) in Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same (Inv. No. 337-TA-650).

PPC moved for summary determination on importation, infringement, domestic industry, and for a general exclusion order.  With respect to infringement, PPC moved for summary determination that products of Respondents Fu Ching Technical Industry Co. Ltd.  and Gem Electronics, Inc. (“Respondents”) infringed certain claims of the patent-in-suit “which is valid and enforceable.”  Respondents opposed and raised a number of theories regarding invalidity and non-infringement, but did not dispute PPC’s assertions relating to the economic prong of the domestic industry requirement and importation of the accused products.  The Commission Investigative Staff filed a response in support of a finding of summary determination for importation and economic prong, but argued there were genuine issues of material fact and that PPC had failed to meet its burden which would preclude summary determination on the issues of infringement and technical prong.

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ALJ Essex Issues Initial Determination in Certain Computer Products (337-TA-628)

By Eric Schweibenz
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Apr
24
As indicated in our March 18 post, on March 16, 2009, ALJ Theodore R. Essex issued his initial determination (“ID”) in the matter of Certain Computer Products, Computer Components and Products Containing Same (Inv. No. 337-TA-628).  On April 14, ALJ Essex issued the public version of his 172-page ID.

In the ID, ALJ Essex held that no violation of section 337 has occurred by respondents ASUSTeK Computer, Inc. and ASUS Computer International (“Respondents”) because the accused products do not infringe U.S. Patent Nos. 5,008,829, 5,249,741, and 5,371,852.  ALJ Essex further determined that the patents-in-suit are valid and that Complainant International Business Machines (“IBM”) satisfied the domestic industry requirement of section 337 for each of the patents-in-suit.

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ALJ Rogers Consolidates Investigation Nos. 337-TA-667 And 337-TA-673

By Eric Schweibenz
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Apr
29
On April 23, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 8 in Certain Electronic Devices Including Handheld Wireless Communications Devices (337-TA-673).  In the Order, ALJ Rogers granted the Commission Investigative Staff’s (the “Staff”) motion to consolidate investigation No. 337-TA-673 with investigation No. 337-TA-667.

Respondents Panasonic Corporation, Panasonic Corporation of America, and Panasonic Consumer Electronics Company (collectively “Panasonic”) and Palm, Inc. (“Palm”) from investigation No. 337-TA-667 opposed the motion.  Complainant Saxon Innovations, LLC (“Saxon”) (the complainant in both investigations) as well as respondents Nokia Corporation, Nokia Inc. (collectively “Nokia”), Research In Motion Ltd. and Research In Motion Corp. (collectively “RIM”) from investigation No. 337-TA-667 and respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively “Samsung”) from investigation No. 337-TA-673 did not oppose the motion. 

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ALJ Rogers Denies Motion To Strike Based On Failure to Meet And Confer In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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May
04
On May 1, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 29 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers denied respondents LSI Corporation, Seagate Technology, Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, Seagate Technologies International (Singapore), and Seagate (US) LLC’s (collectively “Respondents”) motion to strike complainant Qimonda AG’s (“Qimonda”) eight motions to compel. 

According to the Order, Respondents argued that Qimonda did not satisfy the meet and confer requirements of Ground Rule 3.2, including the provision requiring that the moving party attempt to contact and resolve the disputed matter with the other parties at least two business days prior to filing the motion.  According to Respondents, Qimonda sent an email at 10:19 p.m. on the night of April 21, 2009 stating that it intended to file motions to compel on various topics.  Qimonda subsequently filed the subject motions to compel on April 23.  Thus, Respondents argued Qimonda (1) failed to provide Respondents with the two day notice required by Ground Rule 3.2; (2) unreasonably delayed bringing the motions to compel since the issues that form the bases for the motions were disputed for weeks; and (3) sought to impede Respondents’ trial preparation.  In response, Qimonda argued that it satisfied Ground Rule 3.2 for each of the eight motions to compel and  Respondents violated Ground Rule 3.2 in filing the instant motion to strike by failing to notify Qimonda of Respondents’ intent to file such motion. The Commission Investigative Staff filed a response in support of Respondents’ motion to strike.

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ALJ Luckern Denies Motion for Summary Determination That Licensing Activities Satisfy Domestic Industry (Economic Prong) Requirement In Certain Video Games (337-TA-658)

By Eric Schweibenz
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May
05
On April 30, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 26 (dated March 26, 2009) in Certain Video Games and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern denied complainant Hillcrest Laboratories, Inc.’s (“Hillcrest”) motion for summary determination that Hillcrest’s licensing activities in the United States satisfy the domestic industry (economic prong) requirement of 19 U.S.C.§ 1337(a)(3)(C).

Section 337(a)(3)(C) provides for a domestic industry based on “substantial investment” in certain activities, including licensing of a patent.  Hillcrest sought summary determination that its licensing activities satisfied the domestic industry requirement because of its investments in negotiating licenses.  Hillcrest relied on the assertions of one of its own officers in an attempt to prove its contentions.

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ALJ Bullock Denies Motion for Extension of Target Date in Certain Digital Cameras (337-TA-671)

By Eric Schweibenz
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May
05
On April 23, 2009, ALJ Charles E. Bullock issued Order No. 4 in Certain Digital Cameras (337-TA-671) denying respondent Eastman Kodak Company’s (“Kodak”) motion for a two month extension of the target date, a request to extend the hearing date, and a request for a Markman hearing.  Complainants Samsung Electronics Company, Ltd. and Samsung Electronics America, Inc. (“Samsung”) and the Commission Investigative Staff opposed the motion.

Kodak sought the two month extension to allow time for a Markman hearing and to conduct foreign discovery as well as resolve a scheduling conflict with Investigation No. 337-TA-663 which, according to Kodak, involves the same parties and lead counsel.  Samsung and the Staff responded that, due to the simplicity of the technology, a Markman hearing is unnecessary and foreign discovery is routine in Section 337 investigations.  They also argued that the conflict with Investigation No. 337-TA-663 could resolve itself in view of the pending motion in that investigation to consolidate it with Investigation No. 337-TA-672, which would result in a rescheduling of that hearing.

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ALJ Luckern Denies Motion to Preclude Testimony in Certain Video Game Machines (337-TA-658)

By Eric Schweibenz
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May
05
On April 21, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 18 (dated March 23, 2009) in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658) denying respondent Nintendo Co., Ltd.’s  (“Nintendo”) motion to preclude complainant Hillcrest Laboratories Inc. (“Hillcrest”) from introducing evidence on the subject of infringement by Nintendo’s Nunchuk and Wii MotionPlus accessories and that the ALJ grant partial summary determination of non-infringement with respect to these two accessories.  Hillcrest and the Commission Investigative Staff  opposed the motion.

Nintendo argued that it had repeatedly inquired as to the scope of Hillcrest’s allegations of infringement, and that Hillcrest refused to answer.  Instead, according to the order, Nintendo argued that Hillcrest answered an interrogatory on the issue by “simply pointing to its expert reports,” which were served on the same day as the interrogatory answer, and that neither Nintendo nor the expert reports discussed how the Nunchuk and Wii MotionPlus accessories infringe the patents.  Hillcrest and the Staff responded that it was premature for the ALJ to preclude expert testimony regarding the Nunchuk and Wii MotionPlus accessories, citing Ground Rule 4(viii), which states that “[t]he party submitting said expert report shall have the opportunity to supplement at appropriate intervals the information contained therein if the party learns that in some material respect the information disclosed therein is incomplete or incorrect.”

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ALJ Rogers Denies Unopposed Motion For A Recommendation To U.S. District Court To Issue A Letter Rogatory In Certain Electronic Devices (337-TA-667)

By Eric Schweibenz
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May
05
On April 23, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 27 in Certain Electronic Devices Including Handheld Wireless Communications Devices (337-TA-667) denying Complainant Saxon Innovations, LLC’s (“Saxon”) unopposed motion to seek a recommendation to the U.S. District Court for the District of Columbia to issue a letter rogatory to allow Saxon to obtain deposition testimony in Japan.

Saxon sought to depose corporate representatives of Respondents Panasonic Corporation, Panasonic Corporation of North America, and Panasonic Consumer Electronics (collectively “Panasonic”) in Japan on or about May 7, 8, and 11, 2009.  Panasonic’s representative volunteered to sit for the depositions.  Under Japanese law and practice and the mutually agreed interpretation of the U.S. – Japan Bilateral Consular Convention concerning the obtaining of evidence in Japan, a deposition of a willing witness may be taken in Japan: (1) if the deposition is presided over by a U.S. consular official; (2) is conducted on U.S. consular premises; (3) is taken pursuant to an American court order or commission; and (4) if any non-Japanese participant travelling to Japan applies for and obtains a Japanese Special Deposition visa.  The U.S. State Department recommends that one must apply for a Special Deposition visa at least two weeks prior to departure for Japan.  A copy of the court order or commission must accompany the application for the Special Deposition visa.

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ALJ Gildea Denies Motion to Disqualify Counsel in Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits (337-TA-666)

By Eric Schweibenz
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May
05
On April 29, 2009, ALJ E. James Gildea issued the public version of Order No. 7 (dated April 17, 2009) denying a motion by Complainants 02 Micro International Ltd. and 02 Micro Inc. to disqualify counsel for Respondents LG Electronics Inc., LG Electronics USA, Inc., LG Display Co., Ltd., and LG Display America, Inc. in Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing the Same (337-TA-666).

O2 Micro argued that Morgan Lewis & Bockius LLP (“MLB”), the firm representing LG, had two conflicts of interest which should prevent it from representing LG in the investigation: (1) prior to joining LG’s law firm, MLB attorney Daniel Johnson had been lead counsel for O2 Micro in a lawsuit against Monolithic Power Systems (the “MPS Litigation”) involving a patent in the same family as the patent at issue in the Investigation, and (2) MLB represented O2 Micro in the MPS Litigation after Mr. Johnson joined the firm.  O2 Micro argued that MLB’s representation of LG violated loyalties and ethical obligations owed to O2 Micro and that confidences and secrets O2 Micro might have conveyed to Mr. Johnson and MLB during the MPS Litigation might give LG an unfair advantage.

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ALJ Luckern Denies Nintendo’s Motion for Summary Determination of Invalidity In Certain Video Game Machines (337-TA-658)

By Eric Schweibenz
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May
06
On April 30, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 33 (dated April 9, 2009) in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern denied Respondents Nintendo Co., Ltd. and Nintendo of America, Inc.’s (“Nintendo”) Motion for Summary Determination of Invalidity of U.S. Patent No. 7,139,983 (“the ‘983 patent”) Under 35 U.S.C. §§ 102 and 103.

According to the Order, the ‘983 patent is directed to a method for providing a user interface on a television comprising the steps of displaying media objects, receiving inputs, zooming, and displaying selections.  In its motion, Nintendo argued that under Hillcrest’s proposed claim construction, certain claims of the ‘983 patent are invalid under §§ 102 and 103, in light of (1) U.S. Patent No. 6,577,350 (“the ‘350 patent”); (2) a Pad++ system developed at New York University and the University of New Mexico (“Pad++”); and (3) Nintendo’s N64 Extreme-G video game (“Extreme-G”).

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ALJ Charneski Denies Motion In Limine To Prevent Expert Testimony Relating To PTO Procedures In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
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May
06
On May 4, 2009, ALJ Carl C. Charneski issued Order No. 34 in Certain Variable Speed Wind Turbines And Components Thereof (337-TA-641).  In the Order, ALJ Charneski denied General Electric Company’s (“GE”) motion in limine to prohibit patent law expert Lawrence J. Goffney from presenting testimony in violation of Ground Rules 5(A) and 5(B) on behalf of Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc. (collectively, “MHI”).

According to the Order, GE argued that Goffney’s opinions, as set forth in his expert report, violate Ground Rule 5(A) (because such opinions contain legal arguments), and Ground Rule 5(B) (because such opinions go beyond the procedures of the U.S. Patent and Trademark Office (“PTO”)).  In response, MHI agreed to strike those portions of Goffney’s report which it believed GE found objectionable.   MHI further agreed to limit Goffney’s testimony to matters of (1) general considerations pertaining to patents (e.g., role and structure of the PTO and training and skill of PTO examiners), (2) PTO practices and procedures relating to the duty of candor of good faith in dealing with the PTO, (3) the prosecution histories of the applications for the patents at issue and (4) matters raised on cross-examination, matters necessary to rebut matters testified to by GE’s experts, and matters otherwise raised at the hearing by GE’s counsel or the ALJ.

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ALJ Gildea Issues Order Setting Technology and Markman Tutorials In Certain Coaxial Cable Connectors (337-TA-650)

By Eric Schweibenz
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May
06
On April 30, 2009, Administrative Law Judge E. James Gildea issued Order No. 20 setting technology and Markman tutorials in Certain Coaxial Cable Connectors and Components Thereof and Products Containing the Same (Inv. No. 337-TA-650).

According to the Order, ALJ Gildea determined that “brief technology tutorials will be useful in setting the stage for the hearing.”  ALJ Gildea permitted the private parties 30 minutes per side and indicated that      “[l]egal argument during said presentations will not be permitted.”

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ALJ Rogers Grants-In-Part Motion To Strike Expert Report and Preclude Testimony In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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May
07
On April 28 2009, ALJ Robert K. Rogers, Jr. issued Order No. 24 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers granted-in-part Complainant Qimonda AG’s (“Qimonda”) motion to strike the expert report and preclude testimony of respondents LSI Corporation, Seagate Technology, Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, Seagate Technologies International (Singapore), and Seagate (US) LLC’s (collectively “Respondents”) legal expert John F. Witherspoon, Esq.

According to the Order, Qimonda asserted that Respondents’ violated Ground Rule section 9.2, which provides that “[l]egal experts may only testify to procedures of the U.S. Patent and Trademark Office.”  Specifically, Qimonda alleged that Mr. Witherspoon improperly opines in his expert report “on case law, legal standards, and ultimate factual issues related to Respondents’ defense of inequitable conduct.”  In response, Respondents argued that Mr. Witherspoon’s report complies with Ground Rule 9.2 as it describes various aspects of PTO procedure, including PTO Rule 56 and its significance in patent prosecution and sets forth his opinions based on his review of the prosecution histories of the asserted patents.  The Commission Investigative Staff supported Qimonda’s motion arguing that Mr. Witherspoon’s expert report is directed to Respondents’ various legal defenses rather than towards PTO procedures.

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ALJ Rogers Denies Motion For Summary Determination Regarding Invalidity In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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May
07
On April 28 2009, ALJ Robert K. Rogers, Jr. issued Order No. 25 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers denied Respondent LSI Corporation’s (“LSI”) motion for summary determination that claims 1-3, 5, and 7-9 of U.S. Patent No. 6,714,055 (the “‘055 patent”) are invalid.

In its motion, LSI argued that U.S. Patent No. 4,779,013 to Tanaka (“Tanaka”) anticipates claims 1-3 and 7-9 of the ‘055 patent and that claim 5 of the ‘055 patent is obvious in light of the combination of U.S. Patent No. 5,854,560 to Chow (“Chow”) and a 1997 journal article entitled “A Low Power-Noise Output Driver with an Adaptive Characteristic Applicable to a Wide Range of Loading Conditions” (“Choy Article”), or the combination of U.S. Patent No. 6,066,958 to Taniguchi (“Taniguchi”) and the Choy Article.

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ALJ Luckern Denies Motion To Stay In Certain Video Game Machines (337-TA-658)

By Eric Schweibenz
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May
07
On April 30, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 30 (dated April 2, 2009) in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern denied Nintendo Co. Ltd and Nintendo of America Inc.’s (collectively “Nintendo”) motion to stay the procedural schedule.

According to the Order, Nintendo sought to extend the time in which they would be permitted to obtain discovery from Mr. James D. Richards III (“Mr. Richards”) and Mr. Donald S. Odell (“Mr. Odell”).  Such an extension, Nintendo argued, would provide ample time for Nintendo to supplement its expert reports.  Nintendo additionally sought a temporary stay of the procedural schedule, including the evidentiary hearing, until at least six weeks after Mr. Richards complied with a subpoena directed to him.  In response, complainant Hillcrest Laboratories, Inc. (“Hillcrest”) argued that (1) Mr. Richards had no critical information, (2) Nintendo could have previously obtained the discovery it sought from Mr. Richards, and (3) delaying the procedural schedule would cause severe prejudice to Hillcrest and the integrity of Section 337 proceedings.  The Commission Investigative Staff opposed Nintendo’s motion arguing that (1) Nintendo failed to demonstrate a further need for the documents and prototypes currently in Mr. Richard’s possession, (2) discovery of the information sought by Nintendo would not simplify the issues, (3) Nintendo would not be unduly prejudiced without a stay, and (4) a stay would not facilitate the most efficient use of Commission resources.

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ALJ Luckern Grants Motion to Amend Answer to Assert Unenforceability Due to Inequitable Conduct in Certain Video Games (337-TA-658)

By Eric Schweibenz
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May
07
On April 30, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 31 (dated April 2, 2009) in Certain Video Games and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern granted respondents’ Nintendo Co., Ltd. and Nintendo of America, Inc.’s (collectively “Nintendo”) motion to amend their answer to Complainant Hillcrest Laboratories, Inc.’s (“Hillcrest”) Complaint to assert the defenses that the asserted claims of the patents at issue were unenforceable due to inequitable conduct.

According to the Order, Commission Rule 210.14(b)(2) provides that the presiding ALJ may allow amendments to the pleadings under conditions that avoid prejudicing the public interest and the rights of the parties if disposition on the merits will be facilitated, or if other good cause is shown.  ALJ Luckern noted that the ITC typically favors allowing respondents to amend their answer, however, an unjustified delay in presenting an affirmative defense may show that there is no good cause to amend the pleading.

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ALJ Rogers Denies Motion to Compel In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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May
11
On May 6, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 33 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers denied Complainant Qimonda AG’s (“Qimonda”) motion to compel respondents LSI Corporation, Seagate Technology, Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, and Seagate (US) LLC’s (collectively “Respondents”) to produce documents relating to importation.

In the Order, ALJ Rogers determined that Qimonda violated Ground Rules 3.2 and 3.5 (requiring parties to make good-faith efforts to resolve discovery disputes without ALJ intervention and to meet and confer to resolve discovery disputes at least two business days prior to filing a motion), as well as Ground Rule 4.1.1 (providing that no motion to compel discovery may be filed unless the subject matter has first been raised to the Discovery Committee and such Committee has reached an impasse) in connection with its motion.  By way of background, according to Ground Rule 4.1.1, the Discovery Committee consists of lead counsel for the private parties and the Commission Investigative Staff Attorney.

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ALJ Charneski Denies Motion In Limine To Prevent Rebuttal Testimony Not Identified In Pre-Hearing Statement In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
|
May
11
On May 6, 2009, ALJ Carl C. Charneski issued Order No. 36 in Certain Variable Speed Wind Turbines And Components Thereof (337-TA-641).  In the Order, ALJ Charneski denied Respondents Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc.’s (collectively, “MHI”) motion in limine seeking an order precluding complainant General Electric Company (“GE”) from offering rebuttal testimony not identified in GE’s pre-hearing statement.

According to the Order, MHI argued in its motion that “GE’s attempt to hide potential witnesses is improper trial by ambush, procedurally flawed, and severely prejudices MHI’s ability to prepare for the Hearing.”  ALJ Charneski, however, disagreed finding that “GE has identified all potential witnesses who may testify at the hearing” and “GE need not identify rebuttal witnesses at this time inasmuch as MHI has yet to put on its case-in-chief.”

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