ALJs

ALJ Essex Issues Order Regarding Witness Statements And Admissibility Of Expert Reports In Certain Automotive Multimedia Display and Navigation Systems (337-TA-657)

By Eric Schweibenz
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Apr
16
On April 15, 2009, ALJ Theodore R. Essex issued Order No. 16 in Certain Automotive Multimedia Display and Navigation Systems, Components Thereof, and Products Containing Same (337-TA-657). 

In the Order, ALJ Essex determined that “the use of witness statements in lieu of live testimony for direct examination by all of the parties would be the most efficient use of the allotted hearing time.”  ALJ Essex thus ordered the parties to “submit witness statements in lieu of live direct testimony, except for those third party witnesses who object to providing written testimony.”  With respect to expert reports, ALJ Essex determined that “expert reports will not be admitted into evidence, but exhibits and attachments to the expert reports may be received into evidence if they are properly introduced at the hearing during the examination of the experts, subject to any objections and rulings.”

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ALJ Rogers Denies Samsung’s Motion to Amend the Notice of Investigation in Certain Electronic Devices Including Handheld Wireless Communications Devices (337-TA-673)

By Eric Schweibenz
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Apr
20
On April 16, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 7 denying a motion filed by respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLP (“Samsung”) to amend the Notice of Investigation (“Notice”) and limit the scope of the investigation to Certain Camcorders and Wireless Telephones with Keypads.  Complainant Saxon Innovations, LLC and the Commission Investigative Staff opposed the motion.

According to the order, Samsung argued that the current Notice makes broad infringement claims against an unidentified range of Samsung’s “electronic devices” but that Saxon’s complaint only provided specific infringement allegations for two Samsung products -- a wireless telephone with a keypad and a camcorder.  Samsung argued that Saxon’s complaint only alleged a nexus between the asserted patents and two categories of Samsung products, and thus the scope of the investigation should be limited to those products.  Samsung argued that Saxon’s complaint failed to comply with Commission Rule 210.12.

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Update Regarding Certain Electronic Devices Having Image Capture Or Display Functionality (337-TA-672)

By Eric Schweibenz
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Apr
20
Further to our March 26 post, on April 16, 2009, ALJ Carl C. Charneski issued Order No. 4 – setting target date in Certain Electronic Devices Having Image Capture or Display Functionality and Components Thereof (337-TA-672). 

In the order, ALJ Charneski set a 16 month target date.  Therefore, the Initial Determination in this investigation will be due on March 30, 2010 and the target date for completion of the investigation is July 30, 2010.

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ALJ Luckern Determines That Respondents’ License Agreements Relating To Accused Products Are Not Relevant For Calculating The Appropriate Bond In Certain Video Game Machines (337-TA-658)

By Eric Schweibenz
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Apr
20
On April 16, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 17 in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658).  In the order, ALJ Luckern found respondents Nintendo Co., Ltd. and Nintendo of America, Inc.’s (“Nintendo”) license agreements relating to the accused products are not relevant for calculating the appropriate bond.

On March 2, 2009, complainant Hillcrest Laboratories, Inc. (“Hillcrest”) moved for an order compelling Nintendo to produce their license agreements relating to the accused products, and, if necessary, to produce a witness to provide testimony on those agreements.  Nintendo and the Commission Investigative Staff opposed Hillcrest’s motion.

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ALJ Essex Issues Initial Determination Terminating Certain Automotive Parts (337-TA-651) Based On Settlement Agreement

By Eric Schweibenz
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Apr
20
On April 16, 2009, ALJ Theodore R. Essex issued Order No. 30: Initial Determination Terminating Investigation On The Basis Of Settlement Agreement in Certain Automotive Parts (337-TA-651).

According to the Order, on April 3, 2009, complainant Ford Global Technologies, LLC (“Ford”) and respondents LKQ Corporation, Keystone Automotive Industries, Inc., Jui Li Enterprise Co., Y.C.C. Parts Manufacturing Co., Ltd., TYC Brother Industrial Co. Ltd., Taiwan Kai Yih Industrial Co., Ltd., and T.Y.G. Products, L.P. (“Respondents”) filed a joint motion to terminate the investigation on the basis of a settlement agreement.  The Commission Investigative Staff filed a response in support of the motion.

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ALJ Charneski Denies Motion To Dismiss Complaint In Certain Cast Steel Railway Wheels (337-TA-655)

By Eric Schweibenz
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Apr
20
On April 16, 2009, ALJ Carl C. Charneski issued the public version of Order No. 20 in Certain Cast Steel Railway Wheels, Certain Processes for Manufacturing or Relating to Same and Certain Products Containing Same (337-TA-655).  According to the Order, ALJ Charneski denied respondent Standard Car Truck Company’s (“SCT”) motion to dismiss complainant Amsted Industries Incorporated’s (“Amsted”) complaint. 

In the Order, ALJ Charneski first explained that SCT’s motion to dismiss “was filed pursuant to Commission Rule 210.18, i.e., the rule on summary determination (19 C.F.R. § 210.18).”  SCT argued that the complaint should be dismissed for three reasons: (1) there was no trade secrets in existence at the time of the filing of the complaint that could have been misappropriated as alleged by [Amsted]; (2) there was no domestic industry at the time of filing, and therefore (3) the [ITC] lacks subject matter jurisdiction.”  Amsted and the Commission Investigative Staff opposed SCT’s motion.

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ALJ Charneski Orders That Respondent Need Not Provide Deposition Testimony On Unasserted Claim In Certain Semiconductor Integrated Circuits (337-TA-648)

By Eric Schweibenz
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Apr
20
On April 16, 2009, ALJ Carl C. Charneski issued the public version of Order No. 48 (dated March 11, 2009) in Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same (337-TA-648).  In the Order, ALJ Charneski denied Complainants LSI Corporation’s and Agere Systems Inc.’s (“LSI”) motion for reconsideration of a ruling he made during a telephonic conference that a deposition witness appearing on behalf of respondent Cypress Semiconductor Corp. (“Cypress”) need not answer questions with respect to claim 4 of U.S. Patent No. 5,227,335 (the ‘335 patent”) since only claim 1 of the ‘335 patent was asserted against Cypress.  ALJ Charneski also denied LSI’s alternative request seeking leave for interlocutory review of the ruling.

By way of background, during a deposition, Cypress’ counsel instructed a Cypress engineer not to answer a question on the basis that the question only related to possible infringement of claim 4 of the ‘335 patent.  While claim 4 was asserted against other respondents, only claim 1 had been asserted against Cypress.  In response to Cypress’ counsel’s instruction, the parties contacted ALJ Charneski for a ruling as to whether Cypress’ counsel’s objection to the question was proper.  In addition to ruling that the objection was proper, ALJ Charneski went on to rule that questions regarding claim 4 were not permissible as to Cypress or to any other respondent that has not been asserted to have infringed claim 4.

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ALJ Gildea Denies Respondents’ 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. 19 (dated April 10, 2009) in Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same (337-TA-650).  ALJ Gildea denied Fu Ching Technical Industry Co., Ltd.’s and Gem Electronics, Inc.’s  (“Respondents”) joint motion for summary determination that (i) they do not infringe certain claims of U.S. Patent No. 5,470, 257 (the “‘257 patent”), (ii) the ‘257 patent is invalid as anticipated, obvious or indefinite, and (iii) Complainant John Mezzalingua Associates, Inc. d/b/a PPC, Inc. (“PPC”) is barred by laches from pursuing the Investigation against Respondents.

In the order, ALJ Gildea determined that a finding of non-infringement was inappropriate because genuine material issues of fact remain relating to at least (i) whether the locking member of Respondents’ accused products is separable from the connector body and (ii) whether a radially protruding circular shoulder is present on Respondents’ accused products at a first position.

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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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