By Eric Schweibenz
On April 21, 2014, ALJ E. James Gildea issued the public versions of Order Nos. 71, 74, and 76 (dated April 1, 2014, April 2, 2014, and April 4, 2014, respectively) in Certain Consumer Electronics With Display and Processing Capabilities (Inv. No. 337-TA-884).

By way of background, the investigation is based on a complaint filed by Graphics Properties Holding Inc. (“Complainant”) alleging a violation of Section 337 in the importation into the U.S., sale of importation into the U.S., or sale after importation into the U.S. of certain consumer electronics with display and processing capabilities that infringe one or more claims of U.S. Patent Nos. 6,650,327 (the ‘327 patent), 8,144,158 (the ‘158 patent), and 5,717,881 (the ‘881 patent) by numerous Respondents.  See our May 21, 2013 and June 24, 2013 posts for more details on the complaint and Notice of Investigation, respectively.

According to Order No. 71, Respondents filed a motion to strike certain of Complainant’s arguments and expert opinions regarding infringement and domestic industry.  Specifically, Respondents argued that the initial expert report of Complainant’s expert, Dr. Reinman, contained arguments outside the scope of Complainant’s contention interrogatory responses and, therefore, should be stricken. 

In opposition, Complainant argued that Respondents’ motion should be denied because “its contention interrogatory responses disclose many of the opinions Respondents say are new, that other opinions disputed by Respondents have been taken out of context, that some of Respondents’ allegations concern claims that aren’t being asserted, and that if Dr. Reinman’s opinions had to shift at all, it was because Respondents presented the moving target.”

ALJ Gildea held that Respondents’ motion was untimely because Respondents waited until the eve of the hearing to bring the motion, despite the expert report being filed in December.  Additionally, ALJ Gildea determined that Respondents’ case law failed to support their motion because the case cited by Respondents dealt with opinions that were raised for the first time in a rebuttal expert report.  Accordingly, ALJ Gildea denied Respondents’ motion.

According to Order No. 74, Complainant filed a motion for a protective order, seeking to preclude reliance on the expert report of Dr. Lastra.  Panasonic submitted Dr. Lastra’s expert report in support of its invalidity position, but later submitted a letter withdrawing its defenses and related papers, including the expert report of Dr. Lastra, based on Panasonic’s termination from the proceeding due to a settlement.  Complainant asserted that it did not serve a rebuttal expert report on certain issues raised only in Dr. Lastra’s report because the remaining Respondents did not join Dr. Lastra’s report and, instead, served a separate invalidity report, which did not address those certain issues.

In opposition, Respondents argued that they have repeatedly disclosed their intent to rely on Dr. Lastra’s report.  Specifically, Respondents asserted that they:  disclosed Dr. Lastra in their disclosures under Ground Rule 5, disclosed Dr. Lastra in their Joint Identification of Expert Witnesses, disclosed Dr. Lastra in their tentative hearing list, showed that they were relying Dr. Lastra’s report in his report, and showed that they were relying on Dr. Lastra’s report in their expert’s invalidity report.  Additionally, Respondents asserted that they offered Complainant the opportunity to file a rebuttal expert report and argued that Complaint’s refusal to submit such a report was a tactical decision.  The Commission Investigative Staff also opposed the motion because the Respondents were on notice that all the Respondents would be relying on Dr. Lastra’s report. 

ALJ Gildea determined that Complainant’s position – that Dr. Lastra’s report was solely submitted by Panasonic – was unreasonable under the circumstances.  ALJ Gildea held that Complainant was on notice that all the Respondents could use Dr. Lastra’s report because it specifically stated that the report may be used by other Respondents.  ALJ Gildea further noted that Complainant’s action in declining Respondents’ offer to submit a rebuttal report appeared to be tactical in nature.  Accordingly, ALJ Gildea denied Complainant’s motion for a protective order.

According to Order No. 76, Respondents filed a motion for summary determination of no violation with respect to nearly all the accused products.  Specifically, Respondents argued that the accused products contain components that are covered by express license, implied license, or the doctrine of patent exhaustion.  Additionally, Respondents Toshiba Corp., Toshiba America, Inc., and Toshiba America Information Systems, Inc. (collectively, “Toshiba”) filed a motion to strike certain arguments, one of which related to patent exhaustion,  made by Complainant because they were not disclosed in its contention interrogatory responses or its expert’s rebuttal report.

In opposition to the motion for summary determination, Complainant argued that genuine issues of material fact remain.  Specifically, Complainant asserted that issues of fact remained with respect to whether the accused products and their components fall within the scope of certain licenses.  The Commission Investigative Staff also opposed the motion, asserting that a question of material fact remains at least to whether the accused product’s displays satisfy any limitation of the asserted claims.

In opposition to the motion to strike, Complainant argued that it did not make affirmative arguments that it must disclose in contention interrogatory responses but, rather, simply pointed out that Toshiba failed to meet is its burden of proof.  The Commission Investigative Staff partially opposed Toshiba’s motion, only supporting Toshiba’s argument regarding patent exhaustion.

ALJ Gildea determined that disputed issues of material fact remain, which prevents a summary determination.  Specifically, ALJ Gildea determined that material issues of fact remain as to the scope of licenses at issue.  Additionally, ALJ Gildea agreed with Complainant that there is a difference between alleging that a party has not met its burden of proof and alleging an affirmative defense.  Accordingly, ALJ Gildea denied Respondents’ motion for summary determination and Toshiba’s motion to strike.