On February 11, 2014, ALJ E. James Gildea issued the public versions of Order No. 62 and No. 63 in Certain Microelectromechanical Systems (“MEMS Devices”) and Products Containing the Same (Inv. No. 337-TA-876).
According to Order No. 62, Complainant STMicroelectronics, Inc. (“STM”) filed a motion in limine seeking an order striking what it alleged were new invalidity arguments inappropriately set forth in Respondents’ rebuttal expert report. Specifically, STM argued that Respondents carried the burden of proof on invalidity and did not challenge the validity of claim 11 of the asserted ‘954 patent in their initial interrogatory responses, instead alleging it for the first time in their domestic industry rebuttal report. Additionally, STM argued that Respondents changed the allegedly invalidating prior art reference in their pre-hearing brief. Respondents opposed the motion, contending that they properly responded to STM’s expert report regarding domestic industry, that they timely disclosed the prior art at issue in their Notice of Prior Art, and that STM was able to adequately depose their expert with respect to his invalidity theories, resulting in no prejudice.
ALJ Gildea agreed with STM that Respondents’ rebuttal opinions were improper and that a deposition would not remedy any potential prejudice. In particular, the ALJ stated that STM was not given the opportunity of any responsive expert report with respect to the validity of claim 11 and that STM should not have sought one after Respondents asserted invalidity opinions regarding claim 11 for the first time in a rebuttal report. ALJ Gildea also noted that, while STM should have moved to strike promptly, it appeared that counsel for STM was led to believe that Respondents were withdrawing their allegations with respect to claim 11. Accordingly, the ALJ granted STM’s motion in limine.
According to Order No. 63, Respondents filed a motion in limine seeking to preclude all evidence and argument relating to the issue of indirect infringement of the asserted ‘291 patent. Specifically, Respondents argued that the Federal Circuit’s Suprema opinion meant that STM could not prove a violation of induced infringement, and that STM’s expert failed to timely disclose a contributory infringement opinion. STM argued in opposition that Respondents had improperly sought summary determination in the form of a motion in limine, and that STM should be permitted to create a record, particularly because the Commission is in the process of seeking an en banc rehearing of Suprema. STM also argued that Respondents’ reading of Suprema was so broad that it “would require overruling prior precedent … addressing a claim of induced infringement,” which cannot be done unless the Federal Circuit issues an en banc decision. STM further noted that even if Respondents’ allegations were true regarding STM’s expert’s opinions, Respondents ignored the timely developed factual evidence regarding contributory infringement that STM should be allowed to present.
ALJ Gildea noted that Respondents did not attach any evidence to support their motion in limine. As such, the ALJ found that Respondents failed to meet their burden of showing that STM’s expert report was deficient. With respect to the Suprema opinion, ALJ Gildea found that precluding all evidence and testimony related to induced infringement would be premature. The ALJ also found that even if the opinion was interpreted as broadly as Respondents proposed, STM should be permitted to proffer evidence in the event that the Commission’s petition for a rehearing en banc is granted. Accordingly, the motion in limine was denied.