By Eric Schweibenz
On May 14, 2009, ALJ Carl C. Charneski issued the public version of Order No. 35 (dated May 6, 2009) in Certain Variable Speed Wind Turbines and Components Thereof (Inv. No. 337-TA-641).  In the Order, ALJ Charneski denied complainant General Electric Co.’s (“GE”) motion in limine to prevent respondents Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc.’s (collectively, “MHI”) expert, Dr. Thomas G. Habetler (“MHI’s expert”), from testifying as to invalidity positions presented initially in his “Contention Rebuttal Report.”

GE’s motion in limine sought to exclude new obviousness, written description, and enablement arguments that MHI’s expert presented for the first time in his February 3, 2009 Contention Rebuttal Report.

ALJ Charneski denied GE’s motion in limine.  According to the Order, GE’s own expert, Dr. Kirtley, had taken new claim construction positions in his initial expert report that were clearly at odds with GE’s original claim construction contentions submitted on August 22, 2008.  Thus, according to the Order, it was not improper for MHI’s expert to respond to GE’s new claim construction positions with new invalidity arguments in the Contention Rebuttal Report.  Accordingly, ALJ Charneski determined that MHI’s expert would not be precluded from testifying on these new arguments at the evidentiary hearing.  However, ALJ Charneski also noted that GE’s expert would be given an opportunity to respond to MHI’s invalidity arguments at the hearing.

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