By Eric Schweibenz
On May 4, 2009, ALJ Carl C. Charneski issued Order No. 34 in Certain Variable Speed Wind Turbines And Components Thereof (337-TA-641).  In the Order, ALJ Charneski denied General Electric Company’s (“GE”) motion in limine to prohibit patent law expert Lawrence J. Goffney from presenting testimony in violation of Ground Rules 5(A) and 5(B) on behalf of Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc. (collectively, “MHI”).

According to the Order, GE argued that Goffney’s opinions, as set forth in his expert report, violate Ground Rule 5(A) (because such opinions contain legal arguments), and Ground Rule 5(B) (because such opinions go beyond the procedures of the U.S. Patent and Trademark Office (“PTO”)).  In response, MHI agreed to strike those portions of Goffney’s report which it believed GE found objectionable.   MHI further agreed to limit Goffney’s testimony to matters of (1) general considerations pertaining to patents (e.g., role and structure of the PTO and training and skill of PTO examiners), (2) PTO practices and procedures relating to the duty of candor of good faith in dealing with the PTO, (3) the prosecution histories of the applications for the patents at issue and (4) matters raised on cross-examination, matters necessary to rebut matters testified to by GE’s experts, and matters otherwise raised at the hearing by GE’s counsel or the ALJ.

ALJ Charneski determined that, “On their face, none of the four areas of Mr. Goffney’s (revised) expected testimony violate Ground Rules 5(A) and 5(B)” and accordingly denied GE’s motion in limine.  He did, however, allow for renewed objection by GE if specific objectionable testimony is provided during the hearing.