By Eric Schweibenz
On April 25, 2012, ALJ David P. Shaw issued Order No. 24 ruling on various motions to strike and motions in limine in Certain Light-Emitting Diodes and Products Containing the Same (Inv. No. 337-TA-784).

According to the Order, Respondents LG Electronics, Inc., LG Innotek Co., Ltd., LG Electronics U.S.A., Inc., and LG Innotek U.S.A., Inc. (collectively, “LG”) moved to strike portions of the rebuttal expert report and certain deposition testimony of Complainant OSRAM AG’s (“OSRAM”) expert witness, Dr. Blanchard, along with related test evidence.  The ALJ found that LG was right to question the timing and disclosure of Dr. Blanchard’s additional thermal testing, but nevertheless found that OSRAM’s motivation for conducting the additional tests seemed reasonable, and that the timing of the depositions and rebuttal expert reports were such that the testing did not actually prejudice LG.  Accordingly, ALJ Shaw denied the motion.

LG also sought to preclude certain hearing testimony by former Examiner-in-Chief and Administrative Patent Judge James T. Carmichael, which OSRAM opposed.  The ALJ granted the motion in part, striking portions of the witness’s rebuttal statement pursuant to Ground Rule 8(d).

Additionally, LG moved in limine to preclude certain testimony by Dr. Jerry A. Hausman.  While ALJ Shaw agreed with LG that portions of Dr. Hausman’s testimony contain legal or factual statements outside his area of purported expertise, the ALJ denied the motion on the grounds that it would be helpful to know the legal and technical assumptions under which Dr. Hausman was working (and noted his expectation that OSRAM would not cite Dr. Hausman’s testimony to support arguments outside his area of expertise).

Further, LG sought to preclude certain fact witnesses from providing expert testimony, which OSRAM opposed.  The ALJ denied the motion, finding that many of the questions and answers at issue involve facts rather than opinion, and that others involve matters that are arguably opinion and might be accorded little or no weight but would be helpful to have in the record because they explain the witness’ understanding of their work.

LG also sought to preclude Dr. Seshadri and Dr. Blanchard from providing opinions during the hearing based on allegedly invalid experimental data.  ALJ Shaw denied the motion, observing that LG’s concerns may be fruitful areas for cross-examination.

OSRAM sought to preclude the March 21 witness statement of Dr. Dupuis regarding an interference.  ALJ Shaw denied the motion since granting it would require a ruling on the legal sufficiency of one or more of LG’s affirmative defenses, which was not supported by OSRAM’s motion in limine.

OSRAM also moved in limine to preclude Dr. Kohl from offering certain opinions regarding U.S. Patent No. 7,271,425 and to strike certain contentions from LG’s prehearing brief.  The ALJ refused to strike Dr. Kohl’s testimony on inventorship since it appeared that LG acted expeditiously once it received the information it needed and OSRAM was not prejudiced, and also refused to strike Dr. Kohl’s testimony on secondary considerations because his testimony appeared to be proper.  However, ALJ Shaw agreed to strike certain portions of Dr. Kohl’s obviousness testimony.  Further, the ALJ concluded that no reason was presented for the belated disclosure of the combination of Japanese patent application No. 1991-10288 and the Siemens-SMT-TPO-LED references, and therefore struck these portions from LG’s prehearing brief.

In addition, OSRAM sought to preclude LG from offering certain expert opinions regarding U.S. Patent No. 7,151,283 and to strike corresponding portions of LG’s prehearing brief.  ALJ Shaw saw no need to strike the opinions and portions of the prehearing brief at issue based on the parties’ filings, and denied the motion.

Finally, OSRAM moved in limine to preclude Andrew Miekle from testifying at the hearing.  The ALJ stated that this motion would be ruled on during the prehearing conference or at the evidentiary hearing.