On March 2, 2015, ALJ Dee Lord issued the public version of Order No. 25 (dated January 5, 2015) in Certain Non-Volatile Memory Chips and Products Containing the Same (Inv. No. 337-TA-916).

By way of background, this investigation is based on an April 29, 2014 complaint filed by Spansion LLC alleging violation of Section 337 in the importation into the U.S. and sale of certain non-volatile memory chips and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,246,611; 6,744,666; 6,399,446; and 6,436,766.  See our May 1, 2014 and June 3, 2014 posts for more details on the complaint and the Notice of Investigation, respectively. 

According to the Order, Spansion filed a motion to strike portions of the expert report of Dr. Coleman Bazelon for presenting new public interest theories not previously disclosed during fact discovery, and to preclude Macronix from presenting such theories at the hearing.  Specifically, Spansion argued that the portions of Dr. Bazelon's expert report addressing healthcare, loss of innovation, and the education sector should be stricken because Macronix did not identify these contentions in its interrogatory responses.  After reviewing the evidence, ALJ Lord found that there are adequate disclosures for some of Dr. Bazelon's opinions, but not for others.

Being mindful that Commission policy favors admitting evidence regarding the public interest, but acknowledging the authority to "limit public interest discovery appropriately," ALJ Lord stated that Macronix was not permitted to introduce new evidence and contentions during expert discovery that should have been disclosed during fact discovery.

Regarding Dr. Bazelon's opinions on the effect of an exclusion order on public health, ALJ Lord found that Macronix and the Downstream Respondents properly disclosed general contentions regarding public health and a specific contention regarding the Microsoft Surface.  ALJ Lord determined that Macronix's public interest statements included general references to public health concerns and the Downstream Respondents specifically identified the Microsoft Surface as a product used by doctors.  ALJ Lord found that these disclosures sufficiently gave Spansion notice of Macronix's general contentions regarding public health and the specific evidence regarding the Microsoft Surface, which are reflected in Dr. Bazelon's opinion.

ALJ Lord found, however, that Dr. Bazelon's opinions regarding other specific healthcare products were outside the scope of Macronix's contentions.  ALJ Lord stated that these products had not been previously identified in contentions or public interest statements and were categorically different from consumer electronics like the Microsoft Surface.  Although Macronix argued that Spansion could have questioned Mr. Yang about these products, none of Macronix's contention interrogatory responses or public interest statements even identified a broad category of documents that would have put Spansion on notice to seek further discovery.  Moreover, ALJ Lord found that Macronix could have produced documents or otherwise identified these products during fact discovery.

Spansion also argued to strike Dr. Bazelon's opinions that consumers would be deprived of the benefits of Macronix's invention, but ALJ Lord found that this opinion was consistent with Macronix's contention that its products have unique features or functionality.  Accordingly, ALJ Lord determined that Spansion could not reasonably claim that it was surprised by Macronix's contention that its products are innovative.

ALJ Lord did find, however, that Macronix failed to identify any corresponding contention for Dr. Bazelon's opinions regarding the education sector.  Accordingly, ALJ Lord found that Macronix failed to meet its obligation to timely disclose its contentions in response to Spansion's interrogatories.  For the above reasons, ALJ Lord granted-in-part and denied-in-part Spansion's motion.