By Eric Schweibenz
On January 23, 2012 ALJ David P. Shaw issued the public versions of Order Nos. 31 and 32 (both dated January 6, 2012) concerning motions in limine filed by the Complainants and the Respondent, respectively, in Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof (337-TA-752).

By way of background, the investigation is based on a November 22, 2010 complaint filed by Motorola Mobility, Inc. and General Instrument Corp. (collectively, “Motorola”) alleging that Microsoft Corp. (“Microsoft”) violates Section 337 by infringing various patents.  See our November 24, 2010 post for more details.

According to Order No. 31, Motorola filed six motions in limine.  Motion No. 1 was granted in part, allowing exhibits containing prior art references but barring an expert from testifying who was not previously identified or deposed.  Motion No. 2 was also granted in part, disallowing an expert from testifying on Japanese prosecution documents that were not addressed in his expert report or deposition.  Motion No. 3 was denied without detail, and the order merely indicates “it has not been shown that the testimony should be precluded as a threshold manner.”  Motion No. 4 was granted in part, allowing prior art to be used as evidence but preventing admission of late-submitted declarations based on the prior art.  Motion No. 5 was denied, and thus the testimony of a particular expert regarding invalidity will be allowed.  ALJ Shaw stated in the order that “it is not necessary at this time to preclude in its entirety the witness’ testimony with respect to the validity of the patent” but notes that the briefing “has identified areas of concern that may have a bearing on the relevance of portions of his testimony, and the weight that should be given to his testimony.”  Motion No. 6 to exclude other expert witness testimony was similarly denied, although the ALJ again noted concerns regarding the expert’s testimony.

According to Order No. 32, Microsoft filed three motions in limine.  The first motion was to preclude Motorola from presenting evidence based on depositions and document production by Motorola’s suppliers.  The second motion was to preclude Motorola from relying on any testimony or evidence beyond the scope of the original expert reports.  The third motion was directed at precluding Motorola from relying on any evidence based on several “untimely” expert reports.  These motions were directly affected by the ALJ’s issuance of Order No. 24 granting Motorola’s motion “for leave to present at the hearing evidence that was the subject of certain discovery, as well as certain expert reports and testimony that addressed such discovery.”  Since this order was directed at the evidence relating to Motorola’s suppliers and the allegedly “untimely” expert reports, ALJ Shaw determined that Microsoft’s first and third motions are moot.  The ALJ denied Microsoft’s second motion because some of the testimony was not shown to be beyond the scope of the original report, and the remaining testimony and evidence outside the original reports is related to the discovery and evidence from Motorola’s suppliers, evidence specifically allowed by Order No. 24.