By Eric Schweibenz
On May 8, 2014, ALJ Gildea issued the public versions of Order Nos. 35 (dated April 15, 2014), 36 (dated April 17, 2014), 39 (dated April 28, 2014), and 40 (dated April 28, 2014) in Certain Silicon Microphone Packages and Products Containing Same (Inv. No. 337-TA-888). 

By way of background, the Commission instituted this investigation on July 23, 2013 based on a complaint filed by Knowles Electronics, LLC (“Knowles”) alleging a violation of Section 337 by Respondents GoerTek, Inc. and GoerTek Electronics, Inc. (collectively, “GoerTek”) in the importation into the U.S. and sale of certain silicon microphone packages and products containing the same that infringe, or that are made by a process that infringes, one or more claims of U.S. Patent Nos. 7,439,616; 8,018,049; and 8,121,331.  See our June 25, 2013 and July 24, 2013 posts for more details on the complaint and notice of investigation, respectively.

Order No. 35

According to Order No. 35, Knowles filed a motion for determination that two documents produced by GoerTek were not privileged.  Knowles argued that the documents were (i) legal opinions rendered to a defunct third party – Silicon Matrix Pte. Ltd. (“Silicon Matrix”) – ; (ii) produced by GoerTek from the work computer of a GoerTek employee (Dr. Wang); and (iii) introduced as an exhibit during Dr. Wang’s deposition.  Knowles asserted that GoerTek was attempting to “claw back” these documents a month after Dr. Wang’s deposition and the close of fact discovery, and that any attempt to do so was without merit because (1) any claim of privilege was held by Silicon Matrix and terminated after Silicon Matrix’s dissolution; (2) neither GoerTek nor Dr. Wang had standing to assert privilege with respect to the documents; (3) the disclosure of the documents to GoerTek and its outside counsel waived any potential privilege claim; and (4) GoerTek waived its privilege claim by failing to provide a privilege log with respect to the documents.  GoerTek opposed the motion, withdrawing its claim of privilege with respect to the 339 document and argued that the other document, the 367 document was irrelevant to any matter, constituted inadmissible hearsay, and included attorney-client privileged communications owned by a third party that could not be waived by GoerTek.

ALJ Gildea found that any privilege with respect to the 367 document had been waived.  Additionally, ALJ Gildea found that GoerTek had not identified any efforts by GoerTek, Dr. Wang, or Silicon Matrix to protect this document from disclosure in discovery.  ALJ Gildea further found that GoerTek’s arguments regarding the relevancy or admissibility of the 367 document was unpersuasive.  Accordingly, ALJ Gildea granted the motion in part, finding that the 367 document was not privileged and denying the motion with respect to the 339 document as moot.

Order No. 36

According to Order No. 36, Knowles filed a motion to strike and preclude GoerTek from relying on new obviousness combinations and new theories related to the preambles of the asserted claims and presented in the initial expert report of Dr. Bright.  Knowles asserted that Dr. Bright’s report included 15 new obviousness combinations and allegations regarding the preambles of the asserted claims that were not disclosed in GoerTek’s contention interrogatory responses.  Knowles further asserted that in GoerTek’s invalidity contentions the preambles were addressed with respect to only one prior art reference and that GoerTek indicated that it was not arguing that the claim preambles were limiting for the other references.  GoerTek opposed the motion, arguing that Knowles had impermissibly waited over two months before raising the issues addressed in its motion, which prejudiced GoerTek and confirmed that Knowles had not suffered any prejudice.  Additionally, GoerTek argued that there was no prejudice because Knowles and Knowles’ experts had a full and fair opportunity to address the contentions in rebuttal expert reports and that the opinions in Dr. Bright’s report were disclosed in GoerTek’s contention interrogatory responses. 

ALJ Gildea found that Knowles’s arguments regarding prejudice were undermined by its delay in bringing the motion, as Knowles waited over two months to raise its concerns with GoerTek’s counsel and to file the motion.  Additionally, ALJ Gildea noted that Knowles did not explain its delay in filing.  Accordingly, ALJ Gildea denied the motion.

Order No. 39

According to Order No. 39, GoerTek filed a motion to compel Knowles to produce the July 28, 2012 deposition transcript of Knowles’ expert David Egolf taken during the prior 337-TA-825 investigation (the “825 Investigation”).  Goertek stated that Dr. Egolf submitted a report in the present investigation that initially listed his deposition in the 825 Investigation (the “825 transcript”) as one of the materials he considered in forming his opinion.  Dr. Egolf later submitted an errata sheet removing the 825 transcript from the list of materials considered, but GoerTek contended that Dr. Egolf confirmed during a March 7, 2014 deposition in the present investigation that he had reviewed the 825 transcript in connection with his opinions in the present matter.  GoerTek argued that the 825 transcript is relevant, that there was little burden on Knowles in producing it, and that any argument by Knowles that the 825 transcript was designated as confidential in the 825 investigation is a red herring because neither the opinions nor testimony contained any confidential business information.  Knowles opposed the motion, arguing that it should be denied because (1) it was brought too late since GoerTek knew in September 2013 of the proper course for obtaining third party confidential information, the deadlines for motions to compel was December 12, 2013, and expert discovery closed on March 14, 2014; (2) the 825 transcript was designated as confidential by third party Analog Devices, Inc. pursuant to the protective order in the 825 Investigation; and (3) the record is explicit that Dr. Egolf did not rely on the 825 transcript in connection with this investigation.

ALJ Gildea found that it was undisputed that the 825 transcript is relevant and that there is little burden on Knowles in producing it.  ALJ Gildea also found that none of Knowles’ arguments against producing the 825 transcript were persuasive, especially because the parties’ agreement, initially proposed by Knowles, provides that documents considered by experts in forming their opinions will be produced.  Additionally, ALJ Gildea found that Dr. Egolf’s deposition testimony in the present investigation showed that he likely considered the 825 transcript in preparing his report and reviewed it in preparing for his deposition.  ALJ Gildea further found that there was minimal delay on the part of GoerTek in filing the motion.  Accordingly, ALJ Gildea granted the motion.

Order No. 40

According to Order No. 40, Knowles filed a motion to compel GoerTek to produce GoerTek employees Bin Jiang, Wily Wang, and Tony Wang to testify live at the hearing in this investigation.  Knowles asserted that the witnesses’ presence was required in light of their unique knowledge of key information related to the investigation and that, while each had been deposed, their deposition testimony was not expected to be a reasonable proxy for appearing live.  GoerTek opposed the motion, agreeing to produce Tony Wang and Wily Wang at the hearing, but arguing that Bin Jiang is the chairman of GoerTek and Knowles’ motion is geared more towards inconveniencing the witness because Knowles could not justify a need for bringing GoerTek’s highest ranking officer to the hearing from China to testify for only 48 minutes on issues that are not central to the investigation. 

ALJ Gildea found that Knowles’ motion to compel live hearing testimony from Bin Jiang should be denied as GoerTek’s burden in producing Mr. Jiang was not overcome by any benefit that would be obtained from having him testify live, particularly because the parties had already agreed that Mr. Jiang’s deposition transcript should be admitted into the record.  Additionally, ALJ Gildea noted that Knowles’ own description of the testimony sought from Tony Wang called into question the claims that Mr. Jiang has unique knowledge that justifies compelling him to testify at the hearing.  ALJ Gildea also denied the motions to compel live testimony of Tony Wang and Wily Wang as moot.