On March 10, 2014, ALJ E. James Gildea issued the public version of Order No. 44 (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 Respondents’ request to strike portions of an expert report of a Dr. Kruglick, which had been served on behalf of Complainant Tela Innovations, Inc. (“Tela”).  However, the ALJ granted-in-part Respondents’ request to preclude Tela from eliciting and relying on certain testimony from Dr. Kruglick.

According to the Order, Respondents asserted that Tela had served an initial expert report from Dr. Kruglick that repeatedly promoted constructions for certain claim terms which had been the subject of Order No. 14 in the investigation.  See our July 9, 2013 post for more details on Order No. 14.  Respondents argued that Dr. Kruglick’s report constituted extrinsic evidence of claim construction that was precluded by Order No. 14.

Tela opposed Respondents’ motion, arguing that nothing in Dr. Kruglick’s report was contrary to the language of Order No. 14.  In particular, Tela argued that the report merely pointed to intrinsic evidence of what the plain and ordinary meanings of the relevant claim terms are, and provided expert opinions refuting the proposed constructions of the Commission Investigative Staff (“OUII”) and Respondents.

OUII filed a response supporting Respondents’ motion in part.  Specifically, OUII asserted that the parties would benefit from further instruction from ALJ Gildea regarding “the particular metes and bounds intended to be set by Order No. 14.”  OUII requested clarification of three issues:  (1) whether Tela may rely on Dr. Kruglick to identify portions of the intrinsic evidence that it believes are relevant to the plain and ordinary meaning of the disputed terms; (2) whether Dr. Kruglick may use the exact language of the specification in order to positively address the plain and ordinary meaning of disputed terms; and (3) to what extent Dr. Kruglick may reference and/or characterize the intrinsic record in rebutting Respondents’ and OUII’s proposed constructions.

After considering the arguments, ALJ Gildea determined to deny Respondents’ request to strike portions of Dr. Kruglick’s report, but to adopt OUII’s approach and grant-in-part Respondents’ request to preclude Tela from eliciting and relying on certain testimony.  Regarding OUII’s first two issues, ALJ Gildea found that Dr. Kruglick’s identification of portions of the intrinsic evidence related to the plain and ordinary meaning would constitute extrinsic evidence in the form of an expert opinion, and thus, was precluded by Order No. 14.  Regarding OUII’s third issue, ALJ Gildea determined that Tela may elicit testimony from Dr. Kruglick providing opinions on why Respondents’ or OUII’s proposed constructions are erroneous, including citations to intrinsic evidence, but that Tela may not elicit testimony providing an ultimate opinion as to what construction that evidence supports.