ALJs

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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ITC Institutes Investigation (337-TA-676) Regarding Certain Lighting Control Devices Including Dimmer Switches And Parts Thereof

By Eric Schweibenz
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May
08
On May 6, 2009, the U.S. International Trade Commission instituted an investigation of Certain Lighting Control Devices Including Dimmer Switches and Parts Thereof (337-TA-676). 

The investigation is based on the April 7, 2009 complaint filed by Lutron Electronics Co., Inc. of Coopersburg, Pennsylvania.  As we explained in our April 9 post, the complaint alleges that Universal Smart Electric Corp. (“USE”) of Irvine, California unlawfully imports into the U.S., sells for importation, and/or sells within the U.S. after importation certain lighting control devices, including dimmer switches and/or switches and parts thereof that infringe certain claims of U.S. Patent Nos. 5,637,930 and 5,248,919, in addition to U.S. Trademark Reg. No. 3,061,804.

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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
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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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Update Regarding Certain Wireless Communications Devices (337-TA-675)

By Eric Schweibenz
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May
12
Further to our April 30 post, on May 1, 2009, ALJ E. James Gildea issued Order No. 2 – Notice of Ground Rules and Setting Target Date in Certain Wireless Communications Devices and Components Thereof (337-TA-675).

According to the Order, ALJ Gildea set August 27, 2010 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 to be issued no later than April 27, 2010. 

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Update Regarding Certain Adjustable Keyboard Support Systems (337-TA-670)

By Eric Schweibenz
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May
12
Further to our March 11 and April 13 posts, on April 20, 2009, Chief ALJ Paul J. Luckern issued Order No. 7 – setting procedural schedule in Certain Adjustable Keyboard Support Systems and Components Thereof (337-TA-670).

In the Order, ALJ Luckern sets the procedural schedule, including the schedule for the evidentiary hearing which will take place from December 1 – December 4, 2009.

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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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May
14
Further to our April 20 post, ALJ Carl C. Charneski issued Order No. 6 – Procedural Schedule in Certain Electronic Devices Having Image Capture or Display Functionality and Components Thereof (337-TA-672).

According to the Order, the evidentiary hearing in this matter will commence on February 1, 2010.

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Update Regarding Certain Digital Cameras (337-TA-671)

By Eric Schweibenz
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May
14
On May 5, 2009, ALJ Charles E. Bullock issued Order No. 5 – Setting the Procedural Schedule in Certain Digital Cameras (337-TA-671).

According to the Order, ALJ Bullock set a 14 month target date of May 24, 2010 for completion of this investigation in Order No. 2.  The parties thereafter submitted discovery statements and ALJ Bullock evaluated the various proposals in order to formulate the procedural schedule.  ALJ Bullock scheduled the evidentiary hearing for September 28, 2009.  The procedural schedule also provides that ALJ Bullock’s initial determination will be issued on January 24, 2010.

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ALJ Rogers Rules On Parties’ Requests For Receipt Of Evidence Without A Sponsoring Witness In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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May
15
On May 14, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 43 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers ruled on requests filed by complainant Qimonda AG (“Qimonda”) and 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”) for the receipt into evidence of certain proposed exhibits without a sponsoring witness.

ALJ Rogers first noted that the ITC’s rules provide that “[r]elevant, material, and reliable evidence shall be admitted.”  ALJ Rogers also noted that his Ground Rules provide that each exhibit that is offered into evidence must have a sponsoring witness and the only exception to this general rule is where the party wishing to have evidence admitted without a sponsoring witness shows good cause for admitting such evidence.

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ALJ Charneski Denies Respondents’ Motions In Limine In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
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May
18
On May 14, 2009, ALJ Carl C. Charneski issued the public versions of Order No. 37 (dated May 6, 2009) and Order No. 40 (dated May 7, 2009) in Certain Variable Speed Wind Turbines And Components Thereof (337-TA-641).  In the Orders, ALJ Charneski denied Respondents Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc.’s (collectively, “MHI”) motions in limine seeking orders to preclude complainant General Electric Company (“GE”) from offering certain evidence relating to alleged inequitable conduct committed during prosecution of the patents-in-suit.

According to Order No. 37, MHI sought to preclude an analysis performed by GE regarding a German Patent Office search report relating to a German patent application that corresponds to one of the U.S. patents being asserted by GE in the investigation.  Specifically, MHI sought to preclude GE from offering evidence purporting to show good faith in connection with its alleged failure to disclose the German Patent Office search report and references cited therein to the U.S. Patent and Trademark Office (“USPTO”).  ALJ Charneski denied MHI’s motion, determining that the facts were scarce and, to the extent they existed, such facts were in dispute.  ALJ Charneski further determined that MHI would be permitted to renew its objections at the evidentiary hearing.

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ALJ Charneski Denies Motion In Limine In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
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May
18
On May 14, 2009, ALJ Carl C. Charneski issued the public version of Order No. 35 (dated May 6, 2009) in Certain Variable Speed Wind Turbines and Components Thereof (Inv. No. 337-TA-641).  In the Order, ALJ Charneski denied complainant General Electric Co.’s (“GE”) motion in limine to prevent respondents Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc.’s (collectively, “MHI”) expert, Dr. Thomas G. Habetler (“MHI’s expert”), from testifying as to invalidity positions presented initially in his “Contention Rebuttal Report.”

GE’s motion in limine sought to exclude new obviousness, written description, and enablement arguments that MHI’s expert presented for the first time in his February 3, 2009 Contention Rebuttal Report.

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ALJ Luckern Grants Motion To Consolidate Investigation Nos. 337-TA-640 and 337-TA-674

By Eric Schweibenz
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May
21
On May 19, 2009, Chief ALJ Paul J. Luckern issued an Order granting complainant Gertrude Neumark Rothschild’s motion to consolidate Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same (Inv. No. 337-TA-674) and Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same (Inv. No. 337-TA-640).

ALJ Luckern determined that “both the 640 Investigation and the 674 Investigation involve the same complainant (as well as the same administrative law judge and staff attorney), the same allegations of domestic industry, the same asserted patent (U.S. Patent No. 5,252,499), and the same asserted claims (independent claim 10 and dependent claims 12, 13 and 16).”  Thus, in view of the overlap in factual and legal issues between the two investigations, ALJ Luckern found that the most efficient course was to consolidate the two investigations.  ALJ Luckern also determined that consolidation “would (i) conserve the parties’ and the Commission’s resources, (ii) avoid the need for two hearings, and (iii) avoid potentially difficult procedural and legal complications that could arise by having to determine whether and to what extent any rulings in the 640 Investigation could affect issues in the 674 Investigation if the investigations proceed on separate, independent tracks.”

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ALJ Essex Grants Complainant’s Motion to Compel In Certain Automotive Multimedia Display and Navigation Systems (337-TA-657)

By Eric Schweibenz
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May
21
On May 20, 2009, ALJ Theodore R. Essex issued the public version of Order No. 22 (dated May 11, 2009) in Certain Automotive Multimedia Display and Navigation Systems, Components Thereof, and Products Containing Same (337-TA-657).  In the Order, ALJ Essex granted complainant Honeywell International, Inc.’s (“Honeywell”) motion to compel respondents Alpine Electronics, Inc. and Alpine Electronics of America, Inc. (collectively “Alpine”) to produce documents relating to “Mercedes-Benz Alpine navigation products” and a witness to testify regarding such documents.

According to the Order, Honeywell asserted that documents related to the “Mercedes-Benz Alpine navigation products” were responsive to its discovery requests.  Specifically, Honeywell requested documents related to products sold for importation as part of certain Mercedes-Benz vehicles and products imported into the U.S. for testing purposes.  In opposition, Alpine argued that the documents Honeywell sought were irrelevant to the investigation because they related to “a product that has not been released commercially” and “products that Alpine never imported for the sale in the United States.”  Alpine further argued that the documents were irrelevant because Honeywell was not seeking a general exclusion order nor a remedy against downstream products or parties other than Alpine.  The Commission Investigative Staff argued that the documents Honeywell sought were subject to discovery because certain products are “imported as part of assembled Mercedes-Benz vehicles and, thus might be considered as sold for importation” and other products are sufficiently close to completion to be relevant to the investigation.

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ALJ Essex Grants Motion To Compel Production Of Source Code In Certain Automotive Multimedia Display And Navigation Systems (337-TA-657)

By Eric Schweibenz
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May
26
On May 19, 2009, ALJ Theodore R. Essex issued the public version of Order No. 21 (dated May 11, 2009) in Certain Automotive Multimedia Display and Navigation Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-657).  In the Order, ALJ Essex granted complainant Honeywell International Inc.’s (“Honeywell”) motion to compel respondents Pioneer Corp. and Pioneer Electronics (USA), Inc. (collectively, “Pioneer”) to produce source code for their OEM products made for Honda.

According to the order, Honeywell argued that the source code was discoverable because it controls various functions within the accused products and is relevant to whether certain claim elements were met.  Pioneer argued that since the source code was for OEM products made for non-party Honda, and the products of non-parties could not be excluded by an ITC limited exclusion order under Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340 (Fed. Cir. 2008), the source code was irrelevant.

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ALJ Charneski Denies Motions For Summary Determination In Certain Semiconductor Integrated Circuits Using Tungsten Metallization (337-TA-648)

By Eric Schweibenz
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May
27
On May 20, 2009, ALJ Carl C. Charneski issued Order No. 80 and Order No. 81 in Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same (Inv. No. 337-TA-648).  In the Orders, ALJ Charneski denied five motions for summary determination relating to the validity or invalidity of U.S. Patent No. 5,227,335.

Order No. 80 addresses four motions for summary determination concerning alleged anticipation and/or obviousness of certain claims of the ‘335 patent in light of prior work conducted at non-party IBM (“IBM Prior Art”).  According to the Order, Respondents National Semiconductor Corp., Integrated Device Technology, Inc., STMicroelectronics N.V., Grace Semiconductor Manufacturing Corp., Spansion Inc., Nanya Technology Corp., Powerchip Semiconductor Corp., Cypress Semiconductor Corp. and Elpida Memory, Inc. moved for summary determination of invalidity of claims 1, 3, and 4 of the ‘335 patent for anticipation and obviousness.  Complainants LSI Corp. and Agere Systems, Inc. (“Complainants”) filed a response and cross motion for summary determination of validity of claims 1, 3, and 4.  Complainants also filed a separate motion for summary determination that the IBM Prior Art does not anticipate claims 1, 3, or 4 of the ‘335 patent against respondents Microchip Technology, Inc., ProMOS Technologies, Inc., United Microelectronics Corp., Micronas Holding AG, NXP Semiconductors USA, Inc., Vanguard International Semiconductor Corp., Dongbu HiTek Semiconductor Business, Qimonda AG, Jazz Semiconductor, Tower Semiconductor, Ltd. and ON Semiconductor Corp.  Lastly, Complainants filed an additional motion for summary determination that the IBM Prior Art does not anticipate or render obvious claims 1, 3, or 4 of the ‘335 patent against respondent Magnachip Semiconductor, Ltd.

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