On March 10, 2014, ALJ E. James Gildea issued the public version of Order No. 43 (dated February 10, 2014) in Certain Integrated Circuit Devices and Products Containing the Same (Inv. No. 337-TA-873). In the Order, ALJ Gildea denied Complainant Tela Innovations, Inc.’s (“Tela”) motion to strike and preclude reliance on portions of Dr. Tsu-Jae King Liu’s expert report on invalidity that were allegedly outside the scope of Respondents’ invalidity contentions.
According to the Order, Tela argued that Dr. Liu’s report included obviousness theories that had not been properly set forth in Respondents’ invalidity contentions. In particular, Tela argued that Respondents had continued to use an improper “mix-and-match” approach to present obviousness arguments, in violation of a previous order. Additionally, Tela argued that Dr. Liu’s report included obviousness combinations that had not even been disclosed by the mix-and-match approach in Respondents’ invalidity contentions. Tela further argued that Dr. Liu’s report improperly relied on new documents that were absent from Respondents’ invalidity contentions. Moreover, Tela argued that Dr. Liu had contended that certain layouts of Intel products were prior art under 35 U.S.C. §§ 102(a) and 102(b) despite the fact that Respondents had previously represented that the Intel products would only be asserted as prior art under § 102(g). In addition, Tela argued that Dr. Liu had presented discussions of motivations to combine specific references, which Tela argued had not been discussed in Respondents’ invalidity contentions. Lastly, Tela requested that Respondents be precluded from relying on a specific obviousness combination because that combination had not been presented in Dr. Liu’s report.
Respondents opposed the motion, asserting that they had served supplemental invalidity contentions that provided additional claim charts and identified specific obviousness combinations to address previous concerns about using the mix-and-match approach. Respondents stated that Tela had not moved to compel any further responses after Respondents had served their supplemental invalidity contentions, and that the parties had appropriately proceeded with expert reports. Respondents further argued that Tela’s specific attacks on Dr. Liu’s expert report were based on erroneous statements and misleading characterizations. Respondents also argued that Tela’s motion should be denied because it erroneously suggested that the examples presented in the motion were representative of the entirety of what Tela sought to exclude.
After considering the arguments, ALJ Gildea determined to deny Tela’s motion. ALJ Gildea first found that Tela had not identified any specific combinations of references in Dr. Liu’s report that had not been disclosed in Respondents’ invalidity contention charts. The ALJ found that, to the extent that Tela had been unhappy with the form of Respondents’ supplemental invalidity contentions, Tela could and should have brought a subsequent motion objecting to those contentions, rather than the current motion to strike portions of Dr. Liu’s report. ALJ Gildea then found that Tela’s remaining arguments were either without merit or moot based on Respondents’ representations in their opposition. Accordingly, ALJ Gildea denied Tela’s motion in its entirety.