By Eric Schweibenz
On July 28, 2011, Chief ALJ Paul J. Luckern issued the public version of Order No. 27 (dated November 23, 2010) in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions, Media Players, and Cameras (Inv. No. 337-TA-709).

In the Order, certain Respondents moved in limine to preclude Complainant Freescale Semiconductor, Inc. (“Freescale”) from presenting any evidence regarding Freescale’s use of “institutional knowledge” in designing or manufacturing any product Freescale planned to rely upon to satisfy its domestic industry requirement for U.S. Patent No. 7,199,306.  More particularly, Respondents argued that (1) Freescale only introduced information regarding the use of this alleged “institutional knowledge” after the close of fact discovery, and (2) Respondents were prejudiced since they were unable to adequately defend against these new positions that were raised in Freescale’s expert reports.  In response, Freescale argued that the motion should be denied because Respondents knew about this information during discovery and excluding such evidence would severely prejudice Freescale.  The Commission Investigative Staff argued, inter alia, that the Respondents did not establish that Freescale withheld any information during discovery and thus the motion should be denied.

According to the Order, ALJ Luckern determined that Respondents’ motion is premised on Freescale’s alleged failure to disclose “institutional knowledge” in its responses to certain interrogatories propounded by Respondents.  These interrogatories all sought information directed to “the process” regarding Freescale’s assembly of BGA substrates, the number of layers to be used in a substrate, and the overall length and width of a printed circuit board.  ALJ Luckern noted, however, that these interrogatories did not call for the identification of, for example, how those “criteria” were selected.   Further, contrary to Respondents’ arguments, Freescale did use the specific label “institutional knowledge” in its prior discovery responses and deposition testimony.  Accordingly, ALJ Luckern denied Respondents’ motion in limine.