By Eric Schweibenz
On June 29, 2010, ALJ Robert K. Rogers, Jr. issued Order No. 7 in Certain MEMS Devices and Products Containing the Same (Inv. No. 337-TA-700).  In the Order, ALJ Rogers granted-in-part and denied-in-part Complainant Analog Devices, Inc.’s (“Analog”) motion to strike the rebuttal expert reports of Respondents Knowles Electronics LLC and Mouser Electronics, Inc.’s (collectively, “Respondents”) experts, Drs. Wallace and Vander Veen, and the “errata” to Dr. Wallace’s initial expert report.

According to the Order, Analog argued that Respondents’ rebuttal expert reports were improper because those reports were directed exclusively to the issue of commercial success in connection with Respondents’ invalidity arguments.  Analog took the position that since Analog’s initial expert reports dealt only with infringement and domestic industry, it was improper for Respondents’ experts to address an invalidity issue in their rebuttal expert reports.  According to Analog, Respondents should have addressed all invalidity issues -- including secondary considerations of nonobviousness -- in their initial expert reports.  In support of its argument, Analog pointed to deposition testimony by Dr. Wallace where Dr. Wallace stated that he had started his commercial success analysis prior to the initial expert report deadline, but that he could not finish in time.

Respondents opposed Analog’s motion, arguing that whether information should go into an initial expert report as opposed to a rebuttal expert report depends on which party bears the burden of proof.  While Respondents bore the burden of proof on invalidity as a whole, they argued that showing commercial success was Analog’s burden, and that therefore it was proper for Respondents to wait and not address commercial success in their initial expert reports.

The Commission Investigative Staff (“OUII”) did not file a timely response to Analog’s motion.  OUII did seek leave to file a response to the motion one day after the due date, but ALJ Rogers denied the motion for leave and did not consider OUII’s proposed response.

ALJ Rogers struck both of Respondents’ rebuttal expert reports, finding that the reports “are not proper rebuttals, because they raise new issues rather than addressing issues raised by Analog’s initial expert reports.”  The ALJ determined that “Respondents’ experts should have addressed all issues of invalidity, including secondary considerations, in their initial expert reports.”  Regardless of the ultimate burden of production with respect to secondary considerations of nonobviousness, “it was Respondents’ responsibility to treat all relevant issues regarding invalidity in their initial expert reports.”

Lastly, with respect to Analog’s request to strike the “errata” to Dr. Wallace’s initial expert report, ALJ Rogers stated that “[t]hat issue was already fully addressed in Order No. 6, and will not be addressed here.”