On August 17, 2012, ALJ E. By way of background, the investigation is based on a July 8, 2011 complaint alleging violation of Section 337 in the importation into the U.S. and sale of certain portable electronic devices and related software that infringe certain claims of U.S. Patent Nos. 7,844,915 (“the ‘915 patent”); 7,469,381; 7,084,859 (“the ‘859 patent”); RE 42,738 and 7,920,129 (“the ‘129 patent”) (collectively, “the asserted patents”).  The respondents in this investigation are HTC Corp., HTC America, Inc., and Exedea, Inc. (collectively, “HTC”).  See our July 11, 2011 post for more details.

In Order No. 60, ALJ Gildea ruled on Apple’s motion in limine to preclude three of HTC’s experts from testifying regarding (i)the doctrine of prosecution history estoppel, (ii) whether certain claims of the asserted patents were narrowed during prosecution, and (iii) the effect of any narrowing with regard to the doctrine of equivalents. Apple argued it would be improper and prejudicial for the experts to opine on matters of law as they do not have specialized knowledge, experience, or expertise that would enable them to offer reliable opinions regarding the effect of such amendments.

HTC opposed the motion, alleging its experts are entitled to testify regarding the facts and substance of these amendments, the resulting change in claim scope, and the fact that Apple’s proposed equivalents were foreseeable when the amendments were made. HTC added that the testimony relates to underlying factual issues that inform the prosecution history estoppel analysis and leaves the ALJ to decide the legal effect.

The Commission Investigative Staff (“OUII”) supported Apple’s motion in-part, arguing that HTC’s experts should be permitted to testify from the perspective of a person of ordinary skill in the art as to whether the patent applicants narrowed the scope of their invention, but should not be permitted to testify on the ultimate legal question of whether a presumption of estoppel exists.

After considering the parties positions, ALJ Gildea denied the motion noting that the Federal Circuit has held that this type of testimony is relevant to a factual inquiry for which expert testimony is appropriate, thereby allowing testimony as to whether the amendments narrowed the scope of the invention from the perspective of a person of ordinary skill in the art and whether any alleged equivalents were foreseeable at the time. As to the testimony on the ultimate legal issue regarding the effect of any amendments, the ALJ finds the motion premature, stating that the parties could make timely and appropriate objections at the evidentiary hearing.

In Order No. 62, the ALJ ruled on Apple’s motion in limine to preclude certain claim construction testimony by one of HTC’s experts, Dr. Bederson, that it alleged would conflict with ALJ Gildea’s claim construction order, Order No. 57. For more details on this claim construction order, see our July 31, 2012 post. Specifically, Apple asserted that Dr. Bederson attempts to construe the term “the event object invokes” of the ‘915 patent by further construing the term “event object” to require that it be able to “execute methods or functions for scrolling and scaling.” HTC, Apple argued, voluntarily waived construing this phrase during the Markman process. Apple also asserted that Dr. Bederson ignores the parties’ agreed constructions and injects a requirement of “identification” in certain claims of the ‘859 patent, despite ALJ Gildea’s rejection of an identification requirement in relation to the “pinch or bracket” limitation of these claims.

HTC opposed the motion, arguing that Dr. Bederson’s opinions are related to the plain and ordinary meaning to a person of ordinary skill in the art, specifically, to the plain and ordinary meaning of “invoke” and “pinch.” HTC added that Apple’s objection was untimely, as Dr. Bederson addressed this issue in his March 26, 2012 report.

The OUII supported Apple’s motion in-part, asserting that HTC should not be permitted to offer arguments or testimony regarding the scope of terms to the extent that such claim constructions are inconsistent with Order No. 57. The OUII added, however, that HTC should not be precluded from offering evidence simply because Apple alleges that it relates to a new claim construction and the ALJ should determine whether the evidence is relevant under the issued claim constructions.

After considering all submissions, the ALJ granted Apple’s motion in-part, determining that HTC should not be permitted to offer argument or testimony that would be inconsistent with the claim constructions of Order No. 57 and that no party would be permitted to advance constructions for claim terms addressed in that Order. Specifically, as to “event object invokes” of the ‘915 patent, the ALJ found that Dr. Bederson was not trying to further construe the term “event object,” but rather was attempting to advance a construction for the word “invoke” which was not addressed in Order No. 57. As such, ALJ Gildea ruled that any evidence and testimony attempting to construe the term “invokes” in the phrase “event object invokes” should be precluded. Regarding “pinch or bracket displayed data” of the ‘859 patent, the ALJ found that Order No. 57 did not address whether the ’859 patent requires a “pinch” or “identification” of data. Thus, the parties were not precluded from presenting evidence or testimony as to whether “identification” was required prior to further manipulation of the data.

In Order No. 67, ALJ Gildea ruled on Apple’s motion in limine to preclude three of HTC’s experts from introducing evidence, argument, or testimony that was not properly disclosed in their expert reports and deposition testimony. Specifically, Apple requested that HTC be precluded from offering evidence or argument relating to prior art combinations not timely disclosed, new invalidity arguments, and new non-infringement arguments. Regarding the undisclosed prior art combinations, Apple asserted that HTC’s expert reports merely included a laundry list of references that could be combined with various other references to render the claims obvious, but failed to meaningfully disclose the way specific combinations of prior art would render the asserted claims obvious.

Thus, Apple reasoned, HTC should  be precluded from offering any evidence regarding any 103 prior art combinations. As to the alleged new invalidity arguments, Apple asserted that, when writing its prehearing brief, it relied on communications from HTC including a narrow list of prior art which HTC intended to include in its brief with regard to the validity of the ‘129 patent. However, in its briefing, HTC included additional references outside those listed in the letter. Accordingly, Apple requested that HTC be precluded from presenting evidence regarding these invalidity contentions. Apple also requested that HTC be precluded from presenting evidence on additional new invalidity arguments first disclosed in the brief and new non-infringement arguments first disclosed in the brief for which HTC failed to provide requested discovery.

HTC opposed Apple’s motion. As to the prior art combinations Apple argued were undisclosed in the expert reports, HTC asserted the expert reports did discuss each combination of prior art and that Apple should have raised any concerns as to these reports earlier. With respect to the communications from HTC to Apple, HTC argued that Apple’s reliance was misplaced and that HTC indicated its anticipation references and obviousness combinations could change and that, although it indicated it would not be using a particular reference, Philipp, as an anticipating reference or as the primary reference in certain obviousness combinations, those combinations did not include those Apple now seeks to preclude. Regarding Apple’s new invalidity and infringement allegations, HTC stated that these arguments were in-fact disclosed previously, that HTC did provide discovery related to the non-infringement arguments, that Apple’s motion does not identify which discovery is missing, and that Apple’s untimely discovery dispute is inappropriate for resolution in a motion in limine.

The OUII supported Apple’s motion in-part, supporting the motion to the extent that new prior art combinations or new details about previously disclosed contentions were raised in HTC’s brief or during the hearing. The OUII opposed the motion to the extent that these combinations and contentions were disclosed in the expert reports. Specifically, with regard to the discovery issue, the OUII opposed the motion stating that Apple had not shown any evidence that it requested discovery on the issue or pursued a motion to compel such discovery.

After reviewing the submission, the ALJ granted Apple’s motion in-part. As to Apple’s dispute regarding the sufficiency of the prior art combinations disclosed in the expert reports, ALJ Gildea ruled that Apple’s requested relief, the barring of HTC from presenting any obviousness combinations, would go too far and was unwarranted. Thus, the ALJ denied this portion of the motion, stating that any appropriate supported objection could be raised during the hearing should the experts introduce new opinions or expand upon opinions that fall outside the scope of their reports and deposition testimony. With respect to Apple’s dispute about the HTC communications, the ALJ did not find sufficient language to put Apple on notice that the list of references and combinations could change without notice and found it reasonable that Apple concluded that HTC did not intend to rely on the combinations with Philipp at issue in the motion. ALJ Gildea, accordingly granted this portion of the motion, ruling that HTC should be precluded from presenting evidence on combinations of references that were not included in the communications at issue. The ALJ clarified, however that HTC was not precluded from offering evidence on any reference with respect to the state of the art, secondary considerations, or motivation to combine as HTC reserved its right to do so in those communications.

Finally, as to the alleged new invalidity and infringement allegations, the ALJ found that these arguments were not new, rather they were addressed in the appropriate expert report. As to the discovery issue, ALJ Gildea agreed with the OUII that Apple had not shown that it requested discovery on the issue or pursued it with a motion to compel. Therefore, the ALJ denied these aspects of Apple’s motion.