On June 25, 2013, Chief ALJ Charles E. Bullock issued Order Nos. 120 (dated May 29, 2013), 121 (dated May 29, 2013), 122 (dated May 30, 2013), 123 (dated May 30, 2013), 124 (dated May 30, 2013), and 125 (dated May 30, 2013) in Certain Sintered Rare Earth Magnets, Methods of Making Same and Products Containing Same (Inv. No. 337-TA-855).

According to Order No. 120, Complainants Hitachi Metals, Ltd. and Hitachi Metals North Carolina, Ltd. (collectively, “Hitachi Metals”) filed a high priority objection to preclude Respondents from relying on prior art not disclosed in discovery.  Respondents asserted that the documents at issue are merely English-language translations of foreign-language documents produced during discovery.  Based on the pleadings and arguments presented, ALJ Bullock denied the motion.

According to Order No. 121, Hitachi Metals filed a high priority objection to preclude Respondents from using 500 prior art references not included on the Joint Notice of Prior Art.  Specifically, Hitachi Metals argued that Respondents intend to use 450 of prior art references to prove invalidity and 50 prior art references to prove non-infringement, invalidity, or lack of domestic industry.  In opposition, Respondents asserted that Hitachi Metals knew that the newly listed prior art references would be used to prove invalidity and that Respondents were still searching for relevant documents.  The Commission Investigative Staff (“OUII”) supported in part Hitachi Metals’ objection, contending that testimony that is based on the newly discovered prior art should be admitted.  ALJ Bullock held that Respondents cannot rely on prior art that was not listed on Respondents’ Joint Notice of Prior Art to prove invalidity.  However, ALJ Bullock held that the prior art can be used to prove non-infringement and lack of domestic industry.

According to Order No. 122, Hitachi Metals filed a motion in limine to preclude Respondents from introducing evidence based on magnets that Bunting allegedly had in its inventory since the late 1990s.  Hitachi Metals argued that: the magnets were not charted against the asserted claims, Respondents do not know who manufactured the magnets, Respondents’ expert did not offer testimony about the magnets, Mr. Bunting’s testimony about the magnets was uncorroborated, and the documents cited by Mr. Bunting are self-serving documents created for the litigation.  In opposition, Respondents asserted that Hitachi Metals’ infringement charts effectively serve as Bunting’s invalidity charts because the magnets Hitachi Metals accuses of infringement are the same magnets Bunting has had in inventory since the late 1990s.  Further, Respondents argued that Hitachi Metals’ other arguments relate more to the weight of the evidence and not admissibility.  OUII supported Respondents opposition.  Based on the pleadings and arguments presented, ALJ Bullock denied the motion.

According to Order No. 123, Hitachi Metals filed a motion in limine to exclude testimony of Respondents’ expert that is based on prior art not included in Respondents’ Joint Notice of Prior Art.  In opposition, Respondents argued that certain documents were included on the Respondents’ Joint Notice of Prior Art or were copies of documents included on the Joint Notice of Prior Art.  Consistent with his ruling in Order No. 121, ALJ Bullock held that any prior art references not included on Respondents’ Joint Notice of Prior Art may not be used to prove invalidity.  However, ALJ Bullock held that any prior art references that were merely copies of prior art references included on the Joint Notice of Prior art are admissible.  Accordingly, ALJ Bullock granted-in-part Hitachi Metals’ motion.

According to Order No. 124, Hitachi Metals filed a motion in limine to exclude testimony from Respondents’ expert on invalidity theories not set forth in Respondents’ invalidity contentions.  In opposition, Respondents argued that they timely disclosed the invalidity theories at issue in Respondents’ invalidity contentions and in their expert’s initial expert report.  OUII supported Respondents’ opposition.  Based on the pleadings and arguments presented, ALJ Bullock denied the motion.

According to Order No. 125, Hitachi Metals filed a motion to exclude testimony by Respondents’ expert related to purported re-designs.  Hitachi Metals argued that the Respondents with the purported re-designed products would not be participating at the hearing and, therefore, there is no evidence that the re-designed products were ever imported, sold for importation, or sold after importation into the United States.  In opposition, Respondents asserted that the expert is relying on the processes of the re-designed products, not the products themselves.  OUII supported Respondents’ opposition, noting that the testimony may be relevant to other issues than whether the re-designed products infringe the asserted patent claims. Based on the pleadings and arguments presented, ALJ Bullock denied the motion.