By Eric Schweibenz
On December 21, 2012, ALJ David P. Shaw issued the public versions of Order Nos. 36 (dated June 19, 2012), 42 (dated July 17, 2012), 44 (dated July 20, 2012), 51 (dated August 15, 2012), 56 (dated August 20, 2012), and 57 (dated August 20, 2012) in Certain Microprocessors, Components Thereof, and Products Containing Same (Inv. No. 337-TA-781).

By way of background, the Complainant in this investigation is X2Y Attenuators, LLC (X2Y) and the Respondents are Intel Corporation; Componentes Intel de Costa Rica S.A.; Intel Malaysia Sdn. Bhd; Intel Products (Chengdu) Ltd.; Intel Products (Shanghai) Ltd.; Apple Inc.; and Hewlett-Packard Company (collectively, the “Respondents”).  On December 14, 2012, ALJ Shaw issued a notice regarding the Initial Determination (“ID”) holding: a violation of Section 337 has not occurred, certain claims of the 7,916,444 (the ‘444 patent) and 8,023,241 (the ‘241 patent) patents are invalid, and the domestic industry requirement was satisfied with respect to all asserted patents.  See our December 18, 2012 post for more details.

According to Order No. 36, Respondents filed an emergency motion seeking to compel Dr. Neikirk, X2Y’s technical expert, to appear for a total of three days of deposition.  Respondents argued that Dr. Neikrik is X2Y’s sole technical expert and that three days of deposition are needed to cover all the issues covered by his opinions.  In opposition, X2Y argued that the agreed upon sixteen hours of deposition time is adequate to cover the issues remaining in the investigation.  ALJ Shaw granted-in-part the motion, holding that the circumstances of the deposition warranted allowing the deposition to continue on into the morning of the third day.

According to Order No. 42, non-party Dr. Neifeld moved to quash subpoenas duces tecum and ad testificandum.  Dr. Neifeld, and his law firm, Neifeld IP Law P.C. (“Neifeld IP Law”) served as patent prosecution counsel for X2Y.  Dr. Neifeld argued that the subpoenas seek the same information already received from Neifeld IP Law and X2Y.  In opposition, Respondents asserted that Dr. Neifeld has relevant information and that the burdens associated with complying with the subpoenas do not outweigh Respondents’ need for discovery.  Specifically, Respondents argued that “despite Respondents’ explicit request that Neifeld IP Law designate Dr. Neifeld as its corporate witness, Neifeld IP Law instead designated Mr. Margulies, who was unable to answer questions [pertinent to the investigation].”  ALJ Shaw denied the motion, holding that Dr. Neifeld is likely to have information that is relevant to the investigation.

According to Order No. 44, X2Y moved to for an order compelling Respondents Intel Corporation; Intel Americas, Inc.; Componentes Intel de Costa Rica S.A.; Intel Technology Sdn. Bhd; and Intel Products (Chengdu) Ltd., Inc. (collectively, “Intel”) to provide responsive documents and answers to interrogatories.  Specifically, X2Y argued that Intel improperly limited its discovery to the “substrate” of the accused products and failed to produce discovery related to the “processor” of the accused products.  In opposition, Intel argued that it understood discovery to be limited to the “substrate” structure and that this position was not challenged by X2Y for five months.  ALJ Shaw held that “it remains unclear that the broad discovery sought would shed light on current infringement allegations, or is otherwise reasonably calculated to lead to the discovery of admissible evidence.”  Accordingly, ALJ Shaw denied the motion.

According to Order No. 51, X2Y filed a motion for summary determination that it has satisfied the economic prong of the domestic industry requirement.  ALJ Shaw held that summary determination is not appropriate because X2Y failed to show that there is no genuine issue of material fact.  Specifically, ALJ Shaw held that the facts submitted by X2Y were contradicted by its motion to supplement its original motion for summary determination.  Accordingly, ALJ Shaw denied the motion.

According to Order No. 56, X2Y filed six motions in limine relating to various issues in the investigation.  Specifically, X2Y filed motions: 1) to exclude testimony and evidence relating to certain invalidity positions, 2) to exclude certain proposed claim construction and non-infringement theories, 3) to exclude certain lay opinion testimony, 4) to exclude testimony and evidence related to obviousness opinions of Drs. Shanfield and Cangellaris, 5) to exclude evidence and expert testimony seeking to establish that prior art discloses the “perimeter edge portion,” and 6) to exclude certain fact and expert testimony offered on the issue of the public interest.  ALJ Shaw denied all six motions.

According to Order No. 57, Respondents filed six motions in limine relating to various issues in the investigation.  Specifically, Respondents filed motions: 1) to preclude X2Y from calling James Muccioli as an adverse witness, 2) to exclude hearsay proffered in the testimony of Steven Cole and reliance thereon by X2Y’s expert, 3) to exclude certain testimony relating to Intel’s alleged intent, belief and recognition, 4) to preclude Dr. Stem from testifying regarding legal principles and offering legal opinions, 5) to preclude Dr. Button from offering an opinion regarding a design-around, and 6) to exclude certain expert opinions.  ALJ Shaw denied all six motions.