By Eric Schweibenz
On November 28, 2011, ALJ E. James Gildea issued the public version of Order No. 24 (dated November 18, 2011), Order No. 27 (dated November 21, 2011) and Order No. 28 (dated November 22, 2011) in Certain Set-Top Boxes, and Hardware and Software Components Thereof (Inv. No. 337-TA-761).

According to Order No. 24, Respondent TiVo Inc. (“TiVo”) objected to Complainant Microsoft Corporation’s (“Microsoft”) assertion of “brand new” conception dates on the last day of discovery and Microsoft’s alleged production of supporting documents several weeks after the close of fact discovery under the guise of producing documents related to other asserted patents.  Microsoft responded that it identified its conception dates in its discovery responses, and explained that it produced documents relating to the ‘838 patent’s conception date after the close of fact discovery pursuant to Order No. 16.  After reviewing the motion papers, ALJ Gildea denied TiVo’s request with respect to Microsoft’s discovery responses identifying conception dates, but granted the portion of TiVo’s motion seeking to preclude late-produced documents, noting that Order No. 16 concerned patents no longer at issue in the investigation and that Microsoft failed to explain how an order compelling discovery with respect to one such patent justifies document production with respect to the ‘838 patent.

According to Order No. 27, TiVo sought to preclude alleged untimely contentions and evidence provided by Microsoft relating to its technical prong domestic industry allegations regarding the ‘838 patent.  Microsoft argued in response that TiVo was on notice of its contentions regarding the technical prong of the domestic industry requirement because Microsoft consistently disclosed them.  The Commission Investigative Staff (“OUII”) supported TiVo’s motion to the extent that it sought to preclude Microsoft from asserting that it satisfied the requirement based on Mediaroom software testing and on the allegation that an industry is in the process of being established.  Based on the parties’ submissions, the ALJ was not persuaded that Microsoft unfairly withheld its contentions, finding on the contrary that there were sufficient disclosures in the Complaint and in Microsoft’s interrogatory responses to put TiVo on notice of same, and further noting that TiVo had some obligation to compel more information if it had concerns about the extent of Microsoft’s disclosures.

According to Order No. 28, Microsoft sought to preclude TiVo’s expert from testifying regarding opinions not previously disclosed in his expert reports.  TiVo opposed the motion, as did the OUII on the grounds that the motion was premature.  ALJ Gildea denied the motion, finding that Microsoft failed to adequately explain why Ground Rule 9.6 (providing that expert witness testimony at the hearing “shall be confined to the scope of the expert’s report(s), and deposition testimony”) should be narrowed to just the scope of expert reports, and stating that whether TiVo’s expert articulated adequate grounds for his opinions “is not an issue that should be resolved in limine.”  The ALJ noted, however, that Microsoft would not be precluded from raising objections to TiVo’s expert’s testimony at the evidentiary hearing should he introduce opinions that fall outside the scope of his expert reports and deposition testimony.