By Eric Schweibenz
On April 8, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 19 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers granted-in-part respondents LSI Corporation, Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, Seagate Technologies International (Singapore), and Seagate (US) LLC’s (collectively “Respondents”) motion to preclude complainant Qimonda AG (“Qimonda”) from offering claim constructions for any claim term for which Qimonda’s proposed construction was “plain and ordinary meaning” or “plain meaning.”

In the Order, ALJ Rogers noted that his procedural schedule required the parties to (i) exchange lists of claim construction terms, and (ii) submit a joint list showing each party’s proposed claim constructions.  ALJ Rogers further noted that “Qimonda’s proposed constructions for many of the disputed claim terms is stated as ‘plain and ordinary meaning’ or ‘plain meaning.’”  Respondents objected to this approach and argued that Qimonda’s constructions were “nothing more than a strategic placeholder” and that Qimonda “was required to offer an actual definition, and not simply state that the term should be accorded its plain and ordinary meaning.”

In response, Qimonda argued that “plain and ordinary meaning” is the “default construction that should be given to claim terms, instead of the special constructions offered by Respondents” and that “such a definition does not preclude them from rebutting Respondents’ proposed claim constructions.”  For its part, Staff argued that the motion was premature and that Respondents “will have the opportunity to question Qimonda’s experts [at upcoming depositions] regarding the expert’s beliefs regarding the plain and ordinary meaning of the claim terms.”

ALJ Rogers agreed with Respondents and found that “Qimonda’s mere recital of ‘plain and ordinary meaning’ does not rise to the level of a definition; it is only a recitation of one requirement of claim construction.”  In support of this finding, ALJ Rogers cited to several cases, including the Federal Circuit’s 2008 decision in 02 Micro Int’l Ltd. v. Beyond Innovation Technology Co., Ltd. which “recognized that construction of a claim term using the ‘plain and ordinary meaning’ could still involve a dispute regarding what the ‘plain and ordinary’ meaning is.”

ALJ Rogers further determined that “the purpose of the claim construction submission” was to “narrow the issues to be considered at hearing” and that “[c]oncealing proposed claim constructions until late in the investigation runs counter to the entire purpose of my order requiring the parties to submit their proposed claim constructions.”  ALJ Rogers also found that Qimonda must have construed the asserted claims in order to file its complaint and permitting Qimonda to offer a specific definition later as the “plain and ordinary meaning” would be “prejudicial to Respondents, who have provided actual definitions for each of the claim terms that they seek to have construed.”  ALJ Rogers rejected the Federal Circuit and district court cases cited by Qimonda finding that such cases “do not, in fact, support a ruling that recitation of ‘plain and ordinary meaning,’ absent language stating what constitutes ‘plain and ordinary meaning,’ amounts to a valid construction of a given term.”

Accordingly, ALJ Rogers determined that “Qimonda is precluded from offering any specific claim construction definitions that it has not already revealed. Qimonda may assert any specific definitions included in the joint claim construction submission or in Qimonda’s initial expert reports.  Further, Qimonda may argue against Respondents’ and Staff’s definitions.”