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.


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On April 28, 2009, the U.S. International Trade Commission issued a Notice determining not to review the Initial Determination (“ID”) (Order No. 18) issued by Administrative Law Judge E. James Gildea on April 6, 2009, in Certain Coaxial Cable Connectors and Components Thereof and Products Containing the Same (Inv. No. 337-TA-650).

As explained in our April 21 post, Complainant John Mezzalingua Associates, Inc. d/b/a PPC, Inc. (“PPC”) had moved for summary determination against Respondents Fu Ching Technical Industry Co. Ltd. and Gem Electronics, Inc. (“Respondents”) on importation, infringement, domestic industry, and for a general exclusion order.  Respondents opposed and raised a number of arguments regarding invalidity and non-infringement, but did not dispute PPC’s assertions relating to domestic industry (economic prong) and importation of the accused products.  The Commission Investigative Staff filed a response in support of PPC’s motion for summary determination on only the importation and economic prong issues.


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On April 30, 2009, Administrative Law Judge E. James Gildea issued Order No. 20 setting technology and Markman tutorials in Certain Coaxial Cable Connectors and Components Thereof and Products Containing the Same (Inv. No. 337-TA-650).

According to the Order, ALJ Gildea determined that “brief technology tutorials will be useful in setting the stage for the hearing.”  ALJ Gildea permitted the private parties 30 minutes per side and indicated that      “[l]egal argument during said presentations will not be permitted.”


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By Eric Schweibenz
|
May
06
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.


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On April 30, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 33 (dated April 9, 2009) in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern denied Respondents Nintendo Co., Ltd. and Nintendo of America, Inc.’s (“Nintendo”) Motion for Summary Determination of Invalidity of U.S. Patent No. 7,139,983 (“the ‘983 patent”) Under 35 U.S.C. §§ 102 and 103.

According to the Order, the ‘983 patent is directed to a method for providing a user interface on a television comprising the steps of displaying media objects, receiving inputs, zooming, and displaying selections.  In its motion, Nintendo argued that under Hillcrest’s proposed claim construction, certain claims of the ‘983 patent are invalid under §§ 102 and 103, in light of (1) U.S. Patent No. 6,577,350 (“the ‘350 patent”); (2) a Pad++ system developed at New York University and the University of New Mexico (“Pad++”); and (3) Nintendo’s N64 Extreme-G video game (“Extreme-G”).


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