On April 23, 2013, ALJ E. James Gildea issued the public version of Order No. 18 and Order No. 19 (both dated March 26, 2013) regarding motions to strike certain portions of expert testimony in Certain Semiconductor Chips with DRAM Circuitry, and Modules and Products Containing Same (Inv. No. 337-TA-819).

By way of background, this investigation is based on a complaint filed by Elpida Memory, Inc and Elpida Memory (USA) Inc. (collectively, “Elpida”) alleging violation of Section 337 by Respondents Nanya Technology Corporation and Nanya Technology Corporation U.S.A. (collectively, “Nanya”) in the importation into the U.S. and sale of certain semiconductor chips with DRAM circuitry, and modules and products containing the same.  See our December 16, 2011 post for more details.  On March 26, 2013 ALJ Gildea issued a notice of Initial Determination that a violation of Section 337 had occurred.  See our April 3, 2013 post for more details.

According to the Orders, in post-hearing briefing, both Nanya and Elpida included motions to strike portions of the opposing expert’s testimony with regard to U.S. Patent No. 7,495,453 (“the ‘453 patent”).  Order No. 18 relates to Elpida’s motion to strike portions of Nanya’s expert Dr. Bagherzadeh’s testimony, and Order No. 19 relates to Nanya’s motion to strike portions of Elpida’s expert Dr. Baker’s testimony and some of Elpida’s related arguments.

With respect to Elpida’s motion and Order No. 18, Elpida argued that Dr. Bagherzadeh’s testimony included opinions not disclosed in his previous expert report or deposition testimony. Specifically, Elpida asserted that Dr. Bagherzadeh fundamentally changed his opinion with regard to how the Ba reference anticipated one of the claims of the ‘453 patent.  In addition, Elpida asserted that Dr. Bagherzadeh’s testimony combined the Ba and Park references in entirely new ways not presented in the obviousness arguments of his expert report.  Elpida argued that Dr. Bagherzadeh’s report merely included a catch-all paragraph regarding the obviousness of these claims without providing support or explaining how the references should be combined.  Nanya asserted in response that these opinions had been adequately disclosed.

In Order No. 18, ALJ Gildea determined that Dr. Bagherzadeh’s testimony was sufficiently within the scope of his report.  The ALJ found that his testimony on anticipation by the Ba reference was not inconsistent with the opinion set forth in his report and was consistent with the explanations set forth by Nanya.  As to the obviousness combination of Ba and Park, ALJ Gildea found that the claim charts included in the expert report described how the elements of the claims were found in Park and where secondary references could be used to teach certain elements.  The report also identified Ba and Park as an obviousness combination.  This was sufficient to inform Elpida of Dr. Bagherzadeh’s opinions regarding Ba and Park.

With respect to Nanya’s motion and Order No. 19, Nanya argued that Dr. Baker’s testimony included a new claim construction and associated validity argument.  Specifically, Nanya argued that the terms “unit buffer” and “unit” were not included in Dr. Baker’s reports but that, in his testimony, Dr. Baker sought to introduce the idea that a “unit buffer” should be understood based on the plain meaning of the words “unit” and “buffer.”  According to Nanya, based on this construction, Dr. Baker and Elpida then advanced a new argument as to why Ba did not disclose unit buffers.  In response, Elpida asserted that these opinions were supported by the report and were, in fact, appropriate responses to assertions made by Dr. Bagherzadeh.

In Order No. 19, ALJ Gildea determined that Dr. Baker’s testimony was within the scope of his report and was appropriately responsive to testimony provided by Dr. Bagherzadeh regarding his opinion on the separate meaning of the word “unit.”  The ALJ also found that Dr. Baker’s testimony as to why Ba did not disclose unit buffers and thus did not anticipate the claims was also consistent with his expert report.