ALJ Gildea

ALJ Gildea Grants-In-Part Motion To Compel And Denies Motion To Strike In Certain Electronic Devices For Capturing And Transmitting Images (337-TA-831)

By Eric Schweibenz
|
Oct
17
On October 15 and October 16, 2012, ALJ E. James Gildea issued the public versions of Order No. 22 (dated August 23, 2012) and Order No. 28 (dated September 25, 2012), respectively, in Certain Electronic Devices for Capturing and Transmitting Images, and Components Thereof(Inv. No. 337-TA-831).

According to Order No. 22, complainant Eastman Kodak Co. (“Kodak”) sought to compel respondents HTC Corp. and HTC America, Inc. (collectively, “HTC”) to provide complete responses to certain discovery.  Specifically, Kodak argued that HTC improperly limited the scope of its discovery responses to only those accused products named in the Complaint, and did not provide complete document production and interrogatory responses for belatedly disclosed Android and Windows-based products.  Kodak also asserted that HTC’s witnesses were not prepared to testify regarding the aforementioned products and therefore must be re-deposed.  Other disputed discovery related to HTC’s alleged failure to produce certain requested emails and respond to certain other interrogatories.  HTC countered that it need not produce the requested discovery because Kodak failed to produce timely claim charts for the Windows-based products, and argued that many of the other issues Kodak raised are moot because the requested discovery has or will be produced.  ALJ Gildea noted that the scope of the investigation is defined by the Notice of Investigation and encompasses electronic devices for capturing and transmitting images and components thereof, not just specific products identified in the Complaint.  The ALJ then stated that it is unacceptable for HTC to unilaterally limit the scope of discovery to solely those products identified in the Complaint, or to refuse to produce discovery on the basis that the requesting party has not provided related contention interrogatory responses.  Accordingly, ALJ Gildea ordered that HTC (1) supplement or complete its responses to the interrogatories at issue; (2) produce witnesses prepared to testify regarding HTC’s late-identified products; (3) produce the requested emails to the extent HTC has not done so; and (4) to the extent it has not done so, respond to all discovery requests related to all accused products, not just those specifically named in the Complaint.

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ALJ Gildea Denies Motion to Quash Nonparty Deposition In Certain Consumer Electronics (337-TA-839)

By Eric Schweibenz
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Oct
17
On October 16, 2012, ALJ James E. Gildea issued Order No. 13 (dated September 20, 2012) denying a motion to quash a deposition by a nonparty in Certain Consumer Electronics, Including Mobile Phones and Tablets (Inv. No. 337-TA-839).

 By way of background, this investigation is based on a complaint filed by Pragmatus AV, LLC alleging violation of Section 337 in the importation into the U.S. and sale of certain consumer electronics, including mobile phones and tablets, that infringe one or more claims of U.S. Patent Nos. 5,854,893; 6,237,025; 7,054,904; 7,185,054; and 7,206,809.  See our March 15, 2012 post for more details.

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ALJ Gildea Denies Joint Request For Initial Determination of No Violation, But Terminates Investigation based on Withdrawal of Complaint in Certain Devices for Mobile Data Communication (337-TA-809)

By Eric Schweibenz
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Oct
18
On October 11, 2012, ALJ Gildea issued Order No. 57, denying (i) Complainant Unwired Planet’s (formerly Openwave Systems, Inc.) motion to stay the procedural schedule pending resolution of Complainant’s concurrently filed acknowledgement that under ALJ Gildea’s claim constructions, Respondents do not infringe the asserted patents remaining in the investigation, and (ii) a joint request by the parties for an initial determination of no violation and termination of the investigation in Certain Devices for Mobile Data Communication (Inv. No. 337-TA-809).  ALJ Gildea then issued Order No. 60 on October 12, 2012, granting Complainant’s unopposed motion to terminate the Investigation based on the withdrawal of its complaint.

By way of Background, Complainant alleged that Apple Inc. (“Apple”) and Research In Motion Ltd. and Research In Motion Corp. (the latter two parties, collectively, “RIM”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain devices for mobile data communication that infringe U.S. Patent Nos. 6,233,608 (the ‘608 patent), 6,289,212 (the ‘212 patent), 6,405,037 (the ‘037 patent), 6,430,409 (the ‘409 patent), and 6,625,447 (the ‘447 patent) (collectively, the “asserted patents”).  See our September 1, 2011 post for more information.  On March 22, 2012, the ALJ issued Order No. 23, which granted Complainant’s unopposed motion to terminate the investigation as to the ‘212 patent.

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ALJ Gildea Grants Motion To Terminate Investigation As To LG Electronics In Certain Blu-Ray Disc Players (337-TA-824)

By Eric Schweibenz
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Oct
22
On October 18, 2012, ALJ E. James Gildea issued Order No. 32 in Certain Blu-Ray Disc Players, Components Thereof and Products Containing Same(Inv. No. 337-TA-824).

In the Order, ALJ Gildea granted a joint motion filed by Complainant Walker Digital, LLC and Respondents LG Electronics, Inc. and LG Electronics U.S.A., Inc. to terminate the investigation based on a settlement agreement.

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ALJ Gildea Grants Motion To Compel In Certain Blu-Ray Disc Players (337-TA-824)

By Eric Schweibenz
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Oct
23
On October 18, 2012, ALJ E. James Gildea issued the public version of Order No. 29 (dated August 22, 2012) granting-in-part Respondents Funai Electronic Co., Ltd., Funai Corporation, Inc., and P&F USA, Inc.’s (collectively “Funai”) motion to compel production of itemized records in Certain Blu-Ray Disc Players, Components Thereof and Products Containing Same (Inv. No. 337-TA-824).

According to the Order, Funai alleged that Complainant Walker Digital, LLC (“Walker Digital”) relies on its licensing program to support the domestic industry requirement.  Funai asserted that Walker Digital claims to have incurred litigation fees and other cost related to licensing the asserted patent.  According to Funai, Walker Digital has produced only checks and payment records, which provide no details on how these expenses relate to licensing the asserted patent.  Accordingly, Funai requested any records providing an itemization of the litigation fees and other costs related to Walker Digital’s licensing program as it pertains to the assert patent.  Funai argued that the requested records are not privileged and discoverable, or, in the alternative, Walker Digital has waived any privilege by asserting its litigation expenses to meet the domestic industry requirement.

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ALJ Gildea Rules On Motions In Limine In Certain Devices For Mobile Data Communication (337-TA-809)

By Eric Schweibenz
|
Oct
23
On October 19, 2012, ALJ E. James Gildea issued the public versions of Order No. 58 and Order No. 59 (both dated October 11, 2012) in Certain Devices for Mobile Data Communication(Inv. No. 337-TA-809).

According to Order No. 58, the respondents sought to preclude complainant Unwired Planet (formerly Openwave Systems Inc.) from proffering unreliable or undisclosed testimony in support of its allegation that it satisfied the economic prong of the domestic industry requirement.  Specifically, the respondents sought to preclude testimony regarding Unwired Planet’s pre-suit license negotiations with 724 Solutions, which the respondents argued is comprised of “layers upon layers of hearsay” from Unwired Planet’s former employee, Sean MacNeil, that is uncorroborated by any documents or testimony.  The respondents also sought to preclude testimony regarding certain investments by OM 1 on the grounds that Unwired Planet never disclosed its intent to rely on OM 1 to satisfy the domestic industry requirement, did not include such information in the complaint, did not provide such information in response to discovery requests, and did not include such information in its pre-hearing brief.  Further, the respondents sought to preclude the declaration of David Cordeiro as unreliable hearsay since it was created especially for litigation, it was offered by the party that employed Mr. Cordeiro, its assertions are contradicted by other evidence from Unwired Planet, and its conclusions are not the sort of hearsay that can stand on its own.  Unwired Planet responded that (1) Mr. MacNeil’s testimony was reliable hearsay because he was included in discussions on the status of negotiations with 724 Solutions, and because his testimony was consistent with evidence of post-suit negotiations with 724 Solutions; (2) Unwired Planet stated in interrogatory responses that it would be relying on OM 1’s license and investments, respondents had the opportunity to take discovery from OM 1, and any lack of evidence regarding OM 1’s investments is the respondents’ own fault; and (3) Mr. Cordeiro’s sworn statement has inherent indicia of reliability and is wholly corroborated by evidence in the record.  The Commission Investigative Staff (“OUII”) supported the motion in part, agreeing with the respondents that the Cordeiro declaration should be stricken.

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ALJ Gildea Rules On Motions To Strike In Certain Devices For Mobile Data Communication (337-TA-809)

By Eric Schweibenz
|
Oct
24
On October 18, 2012, ALJ E. James Gildea issued the public version of Order No. 49 (dated October 2, 2012) denying Respondents Research In Motion Ltd. and Research In Motion Corp.’s (“RIM”) motion to strike an untimely infringement contention in Certain Devices for Mobile Data Communication (Inv. No. 337-TA-809).  On October 19, ALJ Gildea issued the public version of Order No. 56 (dated October 10, 2012) denying RIM’s motion to strike a supplemental expert report in the same investigation.

By way of background, the investigation is based on a complaint filed by Openwave Systems, Inc. (now Unwired Planet, Inc., “Unwired”) alleging violation of Section 337 in the importation into the U.S. and sale of certain allegedly infringing devices for mobile data communication by Apple Inc. (“Apple”) and Research In Motion Ltd. and Research In Motion Corp. (collectively, “RIM”).  See our September 1, 2011 post for more details.

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ALJ Gildea Grants Motion To Disqualify Expert In Certain Mobile Electronic Devices Incorporating Haptics (337-TA-834)

By Eric Schweibenz
|
Oct
24
On October 18, 2012, ALJ E. James Gildea issued the public version of Order No. 15 (dated September 20, 2012) granting Complainant Immersion Corporation’s (“Immersion”) motion to preclude Respondent Motorola Mobility, Inc’s (“Motorola”) expert from serving in the investigation and accessing Immersion’s confidential business information (“CBI”) in Certain Mobile Electronic Devices Incorporating Haptics(Inv. No. 337-TA-834).

According to the Order, Immersion moved to disqualify Dr. Vincent Hayward from serving as an expert for Motorola based upon Dr. Hayward’s nine year employment with Immersion and service on Immersion’s Technical Advisory Board until February 10, 2012, which was three days after Immersion filed its Complaint in the investigation.  In particular, Immersion argued that Dr. Hayward received confidential information regarding the technologies at issue in the investigation and regarding Immersion’s business strategies and, therefore, “it is not realistic to believe that Dr. Hayward can serve as a consultant or expert for Motorola and separate in his mind the confidential materials and information to which he was exposed during the twelve years he was associated with Immersion.”  Immersion also noted that Dr. Hayward is currently serving as a scientific advisor to Tactile Labs, Inc. (“Tactile”), a company that develops haptic technologies. 

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ALJ Gildea Sets Target Date In Certain Devices With Secure Communications Capabilities (337-TA-858)

By Eric Schweibenz
|
Oct
25
Further to our October 18, 2012 post, on October 23, 2012, ALJ E. James Gildea issued Order No. 2 in Certain Devices with Secure Communication Capabilities, Components Thereof, and Products Containing Same (Inv. No. 337-TA-858).

According to the Order, ALJ Gildea set February 21, 2014 as the target date (which is approximately 16 months after institution of the investigation).  ALJ Gildea further indicated that the initial determination on alleged violation shall be due on October 21, 2013.

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ALJ Gildea Denies Motion For Sanctions In Certain Devices For Mobile Data Communication (337-TA-809)

By Eric Schweibenz
|
Oct
25
On October 18, 2012, ALJ E. James Gildea issued the public version of Order No. 52 (dated October 5, 2012) in Certain Devices for Mobile Data Communication (Inv. No. 337-TA-809).  In the Order, ALJ Gildea denied Respondents Research In Motion, Ltd., Research In Motion Corp. (collectively, “RIM”) and Apple Inc.’s (“Apple”) motion for sanctions against Complainant Unwired Planet, Inc. (“Unwired Planet”).

According to the Order, RIM and Apple (collectively, “Respondents”) argued that Unwired Planet had repeatedly misrepresented its contacts with inventor Allain Rossman and that severe sanctions, including dismissal, were warranted.  In particular, RIM asserted that it had made it known that it was attempting to contact and depose Mr. Rossman, but that Unwired Planet had indicated that it did not represent Mr. Rossman and could not produce him for deposition.  According to Respondents, Unwired Planet’s representations had led Respondents to believe that there had been no substantive communications between Unwired Planet and Mr. Rossman.  However, Respondents later discovered that there had been active communications between Unwired Planet and Mr. Rossman since shortly after Unwired Planet filed its complaint, including 153 emails that were not produced until June 21, 2012—just before Mr. Rossman’s deposition.  Respondents further argued that Unwired Planet had misrepresented both its efforts to contact Mr. Rossman and Mr. Rossman’s willingness to cooperate in the investigation, and that Unwired Planet had therefore violated its duty of candor under Commission Rule 210.4.

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ALJ Gildea Grants Motion to Quash Nonparty Subpoenas in Certain Consumer Electronics (337-TA-839)

By Eric Schweibenz
|
Nov
05
On November 2, 2012, ALJ James E. Gildea issued Order No. 17 granting a motion to quash subpoenas served on a nonparty in Certain Consumer Electronics, Including Mobile Phones and Tablets(Inv. No. 337-TA-839).

By way of background, this investigation is based on a complaint filed by Pragmatus AV, LLC (“Pragmatus”) alleging violation of Section 337 in the importation into the U.S. and sale of certain consumer electronics, including mobile phones and tablets, that infringe one or more claims of U.S. Patent Nos. 5,854,893, 6,237,025, 7,054,904, 7,185,054, and 7,206,809.  See our March 15, 2012 post for more details.

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ALJ Gildea Grants Motions To Terminate Investigation In Certain Dynamic Random Access Memory and NAND Flash Memory Devices (337-TA-803)

By Eric Schweibenz
|
Nov
14
On November 7 and 8, 2012, ALJ E. James Gildea issued Order Nos. 70-72 in Certain Dynamic Random Access Memory and NAND Flash Memory Devices and Products Containing Same(Inv. No. 337-TA-803).

In Order No. 70, ALJ Gildea granted a joint motion filed by Intellectual Ventures Management, LLC, Invention Investment Fund I, L.P., Invention Investment Fund II, LLC, Intellectual Ventures I LLC, and Intellectual Ventures II LLC (collectively, “IV”) and Respondents Elpida Memory, Inc. and Elpida Memory (USA) Inc. (collectively, “Elpida”) to terminate the investigation with respect to Elpida on the basis of a license agreement.  According to the Order, subsequent to institution of the investigation, Elpida filed for reorganization in Japan for bankruptcy in the U.S.  Also, Complainants’ licensee, nonparty Micron Technology, Inc. (“Micron”) entered into an agreement to acquire Elpida, pending approval by the relevant bankruptcy courts.  According to the Order, Micron’s acquisition of Elpida will resolve the dispute between IV and Elpida. 

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ALJ Gildea Grants-In-Part Kodak’s Motion To Compel HTC To Produce Discovery And Witnesses In Certain Electronic Devices For Capturing And Transmitting Images (337-TA-831)

By Eric Schweibenz
|
Nov
15
On November 6, 2012, ALJ E. James Gildea issued the public version of Order No. 33 (dated October 12, 2012) in Certain Electronic Devices for Capturing and Transmitting Images, and Components Thereof (Inv. No. 337-TA-831).

On August 23, 2012, in Order No. 22, ALJ Gildea ruled on a motion filed by Complainant Eastman Kodak Co. (“Kodak”) to compel Respondents HTC Corp. and HTC America, Inc. (collectively, “HTC”). In that order, the ALJ required that HTC supplement or complete certain interrogatory responses, produce witnesses to testify regarding late-identified HTC products, produce certain emails, and respond to all discovery requests related to all accused products (not just those specifically named in the Complaint).  See our October 17, 2012 post for more details.

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ALJ Gildea Grants-In-Part Kodak’s Motion To Compel Apple To Produce Discovery In Certain Electronic Devices For Capturing And Transmitting Images (337-TA-831)

By Eric Schweibenz
|
Nov
15
On November 6, 2012, ALJ E. James Gildea issued the public version of Order No. 35 (dated October 24, 2012) in Certain Electronic Devices for Capturing and Transmitting Images, and Components Thereof (Inv. No. 337-TA-831).

On September 20, 2012, Complainant Eastman Kodak Company (“Kodak”) filed a motion seeking to compel Respondent Apple Inc. (“Apple”) to supplement its interrogatory responses, produce documents, samples/prototypes, and source code, and produce corporate witnesses with respect to Apple’s iPhone 5, new iPod Touch, iOS 6, and “other late-identified Apple products” not yet released.  Kodak argued that these products were not identified as relevant until July 30, 2012, that Apple has not been forthcoming with discovery on these products, and that to the extent materials were produced, they were produced after the close of fact discovery and after the depositions of “knowledgeable witnesses.”  Apple opposed the motion, detailing the discovery produced to date.

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ALJ Gildea Rules Regarding Kodak’s Motion For Judicial Enforcement Against Non-Party Microsoft In Certain Electronic Devices For Capturing And Transmitting Images (337-TA-831)

By Eric Schweibenz
|
Nov
15
On November 6, 2012, ALJ E. James Gildea issued the public version of Order No. 36 (dated October 25, 2012) and Order No. 38 in Certain Electronic Devices for Capturing and Transmitting Images, and Components Thereof (Inv. No. 337-TA-831).

Order No. 36 addressed a motion filed by Complainant Eastman Kodak Company (“Kodak”) seeking judicial enforcement of a subpoena against non-party Microsoft Corporation (“Microsoft”) for refusing to produce discovery on its Windows Phone 8 (“WP 8”).

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ALJ Gildea Grants Motion For Leave To Reopen Fact Discovery In Certain Electronic Devices With Graphics Data Processing Systems (337-TA-813)

By Eric Schweibenz
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Nov
19
On November 14, 2012, ALJ E. James Gildea issued the public version of Order No. 28 (dated October 19, 2012) granting Respondent Apple Inc.’s (“Apple”) motion for leave to reopen fact discovery in Certain Electronic Devices with Graphics Data Processing Systems, Components Thereof, and Associated Software (Inv. No. 337-TA-813).

According to the Order, Apple sought to reopen fact discovery for the limited purpose of including source code produced from Pixar and documents produced from Lockheed Martin Corp. (“Lockheed”).  Apple argued that it diligently sought production of the Pixar source code by serving Pixar with a subpoena and deposing Pixar’s Chief Technical Officer.  Apple asserted that it diligently sought production of the Lockheed documents by contacting Lockheed on numerous occasions and timely obtaining the necessary permissions required prior to Lockheed releasing the desired documents.  Further, Apple argued that Complainants S3 Graphics Co., Ltd and S3 Graphics, Inc. (collectively, “S3G”) would not be prejudiced because S3G was aware of the source code and documents since Apple filed its original and amended Notices of Prior Art.  The Commission Investigative Staff supported the motions for the reasons cited by Apple.

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ALJ Gildea Grants-In-Part Apple’s Motion To Strike In Certain Electronic Devices With Graphics Data Processing Systems (337-TA-813)

By Eric Schweibenz
|
Nov
19
On November 14, 2012, ALJ E. James Gildea issued the public version of Order No. 29 (dated November 8, 2012) granting-in-part Respondent Apple Inc.’s (“Apple”) motion to strike in Certain Electronic Devices with Graphics Data Processing Systems, Components Thereof, and Associated Software (Inv. No. 337-TA-813).

According to the Order, Apple sought to strike the declaration of Daniel L. Regard II (the “Regard Declaration”) and the late-produced native files and associate metadata relied on in the Regard Declaration.  Apple argued that Complainants S3 Graphics Co., Ltd and S3 Graphics, Inc. (collectively, “S3G”) and the Regard Declaration rely on the native files-at-issue and associated metadata to establish the date of conception and, accordingly, an earlier priority date for U.S. Patent No. 5,945,997.  Apple asserted that S3G produced the files-at-issue in only TIFF format, without metadata.  Despite producing only the TIFF format, the Regard Declaration, which S3G produced two days before the end of discovery, relied on the native version of the files-at-issue and their associated metadata.  Apple then argued that following the production of the Regard Declaration, despite its production request, S3G never produced the native versions and associated metadata for all the files-at-issue relied on in the Regard Declaration.  The Commission Investigative Staff supported Apple’s motion finding that S3G failed to meet its production obligations and acted inappropriately by stating that all responsive files had been produced.

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ALJ Gildea Sets Procedural Schedule In Certain Devices With Secure Communications Capabilities (337-TA-858)

By Eric Schweibenz
|
Nov
27
Further to our October 18, 2012 and October 25, 2012 posts, on November 26, 2012, ALJ E. James Gildea issued Order No. 2 in Certain Devices with Secure Communication Capabilities, Components Thereof, and Products Containing Same (Inv. No. 337-TA-858).

In the Order, ALJ Gildea set the procedural schedule for the investigation and provided for the early exchange of claim terms and proposed constructions.  ALJ Gildea also determined that the evidentiary hearing will commence on July 10, 2013, any final initial determination will issue no later than October 21, 2013, and the target date for completion of the investigation is February 21, 2014 (which is approximately 16 months after institution of the investigation).

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ALJ Gildea Denies Private Parties’ Joint Motion To Terminate Investigation In Certain Portable Electronic Devices (337-TA-797)

By Eric Schweibenz
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Nov
29
On November 27, 2012, ALJ E. James Gildea issued Order No. 73 in Certain Portable Electronic Devices and Related Software (Inv. No. 337-TA-797).  In the Order, ALJ Gildea denied without prejudice Complainant Apple Inc. (“Apple”) and Respondents HTC Corp., HTC America, Inc., and Exedea, Inc.’s (collectively, “HTC”) joint motion to terminate the investigation based on a settlement agreement.

According to the Order, Apple and HTC had filed both a public version and a confidential version of their motion to terminate.  The public version of the motion included a redacted version of the settlement agreement.  The confidential version of the motion included a confidential version of the settlement agreement.  However, even the confidential version included certain redactions relating to the specific consideration for the private parties’ cross licenses, which Apple and HTC argued were highly sensitive.  In particular, Apple and HTC argued that disclosure of these redacted licensing terms was unnecessary and that neither Apple nor HTC had generally disclosed the terms within their own organizations.  They further argued that additional disclosure of these terms had the potential to impact the private parties’ interests and the settlement of the instant investigation as well as other investigations, that the terms are not relevant to any remaining issues in the investigation, and that termination of the investigation based on the settlement agreement is in the public interest and poses no threat to the public health and welfare, competitive conditions in the U.S. economy, the production of competitive articles in the U.S., or U.S. consumers.

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ALJ Gildea Grants Unopposed Motion For Summary Determination Regarding Economic Prong Of Domestic Industry Requirement in Certain Semiconductor Chips With DRAM Circuitry (337-TA-819)

By Eric Schweibenz
|
Dec
10
On December 6, 2012, ALJ E. James Gildea issued the public version of Order No. 9 (dated October 24, 2012) granting Complainants Elpida Memory, Inc. and Elpida Memory (USA) Inc.'s ("EMUSA") (collectively, "Elpida") unopposed motion for summary determination that the economic prong of the domestic industry requirement is satisfied in Certain Semiconductor Chips with DRAM Circuitry, and Modules and Products Containing Same(Inv. No. 337-TA-819).

According to the Order, Elpida alleged that EMUSA made significant investments in plant, equipment, labor and capital that is directly attributable to products protected by each of the six asserted patents in the investigation.  Elpida also relied on activities of EMUSA's Quality Assurance Group, Application Engineering Group, and MNA Sales Group to support its domestic industry assertions.  The motion was unopposed and no responses were filed.  Acordingly, ALJ Gildea granted the motion, noting that he was not making a finding at this time with respect to the technical prong of the domestic industry requirement.

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