On April 28 2009, ALJ Robert K. Rogers, Jr. issued Order No. 24 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers granted-in-part Complainant Qimonda AG’s (“Qimonda”) motion to strike the expert report and preclude testimony of respondents LSI Corporation, Seagate Technology, Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, Seagate Technologies International (Singapore), and Seagate (US) LLC’s (collectively “Respondents”) legal expert John F. Witherspoon, Esq.

According to the Order, Qimonda asserted that Respondents’ violated Ground Rule section 9.2, which provides that “[l]egal experts may only testify to procedures of the U.S. Patent and Trademark Office.”  Specifically, Qimonda alleged that Mr. Witherspoon improperly opines in his expert report “on case law, legal standards, and ultimate factual issues related to Respondents’ defense of inequitable conduct.”  In response, Respondents argued that Mr. Witherspoon’s report complies with Ground Rule 9.2 as it describes various aspects of PTO procedure, including PTO Rule 56 and its significance in patent prosecution and sets forth his opinions based on his review of the prosecution histories of the asserted patents.  The Commission Investigative Staff supported Qimonda’s motion arguing that Mr. Witherspoon’s expert report is directed to Respondents’ various legal defenses rather than towards PTO procedures.

ALJ Rogers struck certain paragraphs of Mr. Witherspoon’s expert report that improperly seek “to explain the duty of candor, discuss PTO Rule 56 (37 C.F.R. § 1.56) and its regulatory history and discuss the Federal Circuit definition of material information with respect to Rule 56.”  He also struck paragraphs that “contain statements of legal standards related to patentability”, e.g., 35 U.S.C. §§ 103, 121 and 112 ¶ 1, and “purport to explain the legal standards that the examiner considers during prosecution.”  ALJ Rogers also struck paragraphs containing “background information about the asserted patent and make reference to prior art that Mr. Witherspoon opines was not before the patent examiner during the prosecution of the asserted patent” and legal conclusions concerning the alleged inequitable conduct.