06
Dec
By Eric Schweibenz
On November 30, 2010, ALJ E. James Gildea issued the public versions of Order Nos. 64, 65, 66, and 67 in Certain Electronic Devices, Including Mobile Phones, Portable Music Players, and Computers (Inv. No. 337-TA-701).

In Order No. 64 (dated November 19, 2010), ALJ Gildea denied Complainants Nokia Corporation and Nokia, Inc.’s (collectively “Nokia”) motion in limine to exclude the testimony of two persons associated with non-party Broadcom Corporation ("Broadcom") who had been identified by Respondent, Apple Inc. (“Apple”) as hearing witnesses.  According to the Order, Nokia argued that a subpoena issued to Broadcom to produce documents relevant to whether certain Broadcom transceivers infringe U.S. Patent No. 6,714,091, but Broadcom over the following three months produced only a small number of materials, preventing Nokia from taking a meaningful deposition of Broadcom representatives prior to the July 2, 2010 deadline for fact discovery.  Nokia failed to obtain Apple’s agreement to jointly seek leave to take the belated deposition of a Broadcom representative, and Nokia’s motion to seek the belated deposition was denied on the basis that Nokia failed to show it diligently pursued discovery with respect to Broadcom.  Nokia further argued that Apple’s counsel worked with Broadcom to actively oppose Nokia’s efforts to seek belated discovery from Broadcom, and that to permit Broadcom’s testimony on behalf of Apple would be prejudicial as a form of “trial by ambush” in view of Apple’s opposition to Nokia’s efforts to obtain depositions of Broadcom.

Apple and the Commission Investigative Staff (OUII) opposed Nokia’s motion, arguing that Apple had informed Nokia as early as June 3, 2010, that it might call the two individuals from Broadcom as witnesses, and Nokia did not attempt to schedule Broadcom’s deposition until July 1, the day before the close of fact discovery.  ALJ Gildea determined that Nokia did not exercise due diligence in enforcing the subpoena served on Broadcom prior to the fact discovery deadline, and that Nokia had sufficient time to depose the two Broadcom witnesses prior to the fact discovery deadline.  ALJ Gildea further determined that the motion papers of the parties did not disclose that Apple or its attorneys engaged in improper conduct in opposing Nokia’s efforts to depose Broadcom, and based upon the above grounds denied Nokia’s motion.

In Order No. 65 (dated November 22, 2010), ALJ Gildea denied Apple’s motion in limine to preclude Nokia from offering into evidence five reverse engineering reports (TechInsights reports), and expert testimony based on those reports.  According to the Order, Apple argued that Nokia produced the reports on September 20, 2010, over two months after the close of fact discovery, even though the reports were responsive to Apple’s discovery requests, and several of the reports were dated almost two months prior to the close of fact discovery.  Apple also argued that Nokia’s expert conceded he had no involvement in the reports, he did not have the expertise to critically evaluate the reports, and that the reports contain unreliable speculation.  On these grounds, Apple moved to preclude the reports pursuant to Federal Rule of Evidence 703, and to preclude Nokia’s expert from offering testimony regarding these reports in support of his infringement opinions.

Nokia and the OUII opposed Apple’s motion.  According to the Order, Nokia argued that the reports were timely produced as part of their expert’s report, which in turn was timely produced by the scheduling order’s September 20 deadline.  Nokia also argued that Apple had deposed Nokia’s expert regarding the TechInsights reports, and that Apple’s expert in turn addressed them in his rebuttal report.  Nokia further argued that the Commission is not bound by the Federal Rules of Evidence, and in any event, experts may properly rely on tests and data provided to them, and experts are not required to actually perform all tests that they rely upon. Nokia additionally argued that Apple never sought to question the authors of the TechInsights reports.  ALJ Gildea determined that the TechInsights reports were timely produced with Nokia’s expert reports, and that Apple failed to demonstrate undue prejudice, due to Apple’s expert addressing the TechInsights reports in his rebuttal report, Apple’s ability to probe the accuracy of the reports with Infineon and Broadcom at the hearing, and Apple’s failure to seek discovery from TechInsights.  ALJ Gildea further determined that any issues regarding accuracy or competency of the TechInsights reports goes to their weight, and not their admissibility.  For the above reasons, ALJ Gildea denied Apple’s motion.

In Order No. 66 (dated November 22, 2010), ALJ Gildea denied Apple’s motion in limine to preclude Nokia from offering opinions and exhibits regarding (i) arguments that activity associated with an outgoing call satisfies the disablement element of claims 1 and 25 of the U.S. Patent No. 6,518,957 (the ‘957 patent) because Nokia’s expert report did not describe his analysis “with any particularity,” (ii) cellular telecommunication standards and definitions that were allegedly produced after the close of expert discovery, and (iii) Nokia or Apple source code not identified in Nokia’s initial or rebuttal expert report.  Nokia, supported by the OUII, opposed Apple’s motion, and according to the Order argued that (i) Apple omitted Nokia’s expert’s opinions given in deposition, and ignored Ground Rule 9.5.6, which permits an expert to testify as to opinions disclosed during deposition; (ii) new exhibits regarding telecommunications standards and definitions are necessary due to Apple reviving a previously abandoned claim construction; and (iii) the source code objected to by Apple was cited and discussed in Nokia’s expert’s reports and expert’s deposition.

With respect to (i), ALJ Gildea determined that Apple’s analysis of the sufficiency and depth of Nokia’s expert opinions with respect to the disablement element of claims 1 and 25 of the ‘957 patent go to its weight, rather than admissibility, and Apple failed to fully address the scope of deposition testimony of Nokia’s expert on this subject.  As to (ii), ALJ Gildea determined Apple’s motion on this issue was moot, since Apple would not be permitted to raise any new claim construction positions, and therefore Nokia need not introduce its proposed exhibits, which were the subject of Apple’s motion.  Finally, with respect to (iii), ALJ Gildea determined that Apple again had failed to fully address the scope of deposition testimony of Nokia’s expert regarding the source code.  Based on the above, ALJ Gildea denied Apple’s motion in limine in its entirety.

In Order No. 67 (dated November 22, 2010), ALJ Gildea granted Apple’s motion to strike errata sheets to Nokia’s expert report on infringement, and granted-in-part Apple’s motion to strike portions of Nokia’s supplemental expert reports.  According to the Order, Apple argued that Nokia failed to request leave to untimely supplement its expert reports, and that Nokia’s errata sheets to its expert report on infringement improperly changed Nokia’s expert’s opinions with respect to claims 1 and 25 of the ‘957 patent, and “injects new opinions” regarding how Nokia’s products practice claim 1 of the ‘957 patent.  Apple further argued that it would be prejudiced if the errata sheets were permitted, because it does not have time to provide rebuttal opinions prior to the evidentiary hearing.  Apple further argued that Nokia’s expert acknowledged that the edits were substantive.  Nokia opposed Apple’s motion, arguing that its errata sheets merely fixed typographical errors, or fixed one factual error, and such errors did not require prior approval from the ALJ, given that Commission Rule 210.27(c) permits the correction of inaccurate discovery responses.  ALJ Gildea determined that Nokia effectively supplemented its expert report by making substantive changes through the errata sheets.  Although ALJ Gildea agreed that Commission rule 210.27(c) permitted the amendment of incomplete or incorrect discovery responses, he determined that such amendment or supplementation must be accomplished “seasonably,” and making substantive changes to an expert report after the deadline for rebuttal expert reports could render an opposing party unable to respond to the changes and result in prejudice.  For the above reasons, ALJ Gildea granted Apple’s motion to strike the errata sheets to Nokia’s expert report.  He further determined that Nokia’s expert may testify at the hearing why his report is incomplete or erroneous, to the limited extent he testified on this subject during his deposition, but that if Nokia opens the door on this subject, ALJ Gildea may in his discretion permit rebuttal testimony.

ALJ Gildea further granted-in-part Apple’s motion to strike portions of Nokia’s supplemental expert reports, for violating Order 53, which permitted parties to file supplemental expert reports addressing only those final claim constructions that “substantially differ from the constructions proposed by any party.”  Specifically, ALJ Gildea struck portions of a supplemental expert report regarding new opinions with respect to the term “control bus signal,” whose final construction did not differ substantively from OUII’s proposed construction.  ALJ Gildea denied Apple’s motion with respect to striking portions of supplemental expert reports regarding the terms “desired acoustic characteristic” and “output stage,” on the ground that the ALJ was not persuaded that the pertinent supplemental expert report “strays from discussion of the final claim construction” of the respective terms.
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