On June 22, 2012, ALJ E. James Gildea issued Order No. 53 in Certain Dynamic Random Access Memory and NAND Flash Memory Devices and Products Containing Same (Inv. No. 337-TA-803). 

By way of background, this investigation is based on a July 12, 2011 complaint filed on behalf of 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”), against several manufacturers, distributors, and retailers of DRAM and NAND Flash memory devices for alleged infringement of U.S. Patent Nos. 5,654,932; 5,963,481; 5,982,696; 5,500,819; and 5,687,132.  See our July 13, 2011 post for more details.

According to the Order, IV filed a motion seeking to strike the testimony and reports of respondents’ expert Vivek Subramanian from the record on the basis that “(i) he repeatedly was instructed not to answer questions at his deposition due to an erroneous interpretation of a private stipulation; (ii) he was not a person of ordinary skill in the art at the time period relevant to the asserted patents; and (iii) he failed to follow ‘the most basic rules of claim construction.’”  IV further argued that they demonstrated multiple fundamental deficiencies with Dr. Subramanian’s testimony during a voir dire they conducted at the Markman hearing.  Respondents Hynix Semiconductor Inc. and Hynix Semiconductor America, Inc. (collectively, “Hynix”) opposed IV’s motion and argued that Dr. Subramanian answered, in depth, all questions concerning the bases of the opinions set forth in his expert reports and IV’s other allegations are baseless.  Hynix further argued that IV’s requested remedy was “draconian” and not justified, particularly since IV failed to meet and confer or resort to lesser remedies first.  The Commission Investigative Staff (“OUII”) filed an opposition to IV’s motion and argued that IV failed to articulate a proper basis for the requested relief and the appropriate remedy, if any, is for the ALJ to give Dr. Subramanian’s testimony and opinions the appropriate weight. 

In the Order, ALJ Gildea determined that IV was not diligent in raising this issue and “have reached too high with respect to their proposed remedy.”  Specifically, ALJ Gildea found that IV “certainly had the time to meet and confer with Hynix and [OUII] prior to the Markman hearing, as well as to raise this discovery dispute with the [ALJ].”  Further, ALJ Gildea found that IV could have requested at the Markman hearing that Dr. Subramanian answer their questions on the spot, which they had the opportunity to do, but did not.  Lastly, ALJ Gildea noted his agreement with Hynix and OUII that if there is some suggestion that Dr. Subramanian did not author some of his opinions, then the appropriate remedy would be to give those opinions little or no weight.  Accordingly, ALJ Gildea denied IV’s motion to strike.