On April 19, 2012, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 21 (dated March 7, 2012) granting-in-part Respondent MediaTek, Inc.’s (“MediaTek”) motion to strike sections of Complainant Freescale Semiconductor, Inc.’s (“Freescale”) initial expert report and preclude Freescale from offering certain evidence and argument at trial in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions (Inv. No. 337-TA-786).

According to the Order, MediaTek asserted that Freescale took the position in the parties’ Joint Claim Construction Statement that the “a conductor…” limitation in claim 9 of the patent at issue needed no construction, but then submitted an initial expert report containing a newly proposed construction of this limitation.  Thus, MediaTek argued that the sections of Freescale’s expert report relying on the new construction of “a conductor…” should be stricken.  MediaTek also sought to strike allegedly new infringement arguments raised in Freescale’s expert report, asserting that Freescale’s expert identified a series of new signals that meet the “control signal” limitation of claim 9 that were not identified in Freescale’s contention interrogatory.

Freescale countered that its expert’s report does not introduce a new construction for the “a conductor…” limitation, but simply takes the position that this limitation is best understood by using the claim language itself which is wholly consistent with Freescale’s position throughout the investigation.  Likewise, Freescale argued that its expert’s report does not introduce new infringement contentions, but merely provides a more detailed explanation of the control signals than what was found in its contention interrogatory, and that the two need not be identical.

The Commission Investigative Staff supported the motion.

ALJ Rogers mostly agreed with Freescale that the opinion in its expert’s initial report is consistent with the position it took in the Joint Claim Construction Statement.  However, the ALJ found that a statement repeated in many of the paragraphs identified by MediaTek contained a new claim construction position for the “a conductor…” limitation because it offered the expert’s opinion on the meaning of the claim language, and should therefore be stricken.  Further, ALJ Rogers concluded that Freescale’s contention interrogatory addressing the “control signals” limitation adequately supported part of the opinion of its expert, but not a portion of the opinion that cited to 30(b)(6) testimony and relied on a generalized reference to same (“See also generally Rule 30(b)(6) Depo. of Mediatek (Jao)”) in the contention interrogatory.  Accordingly, the motion was granted-in-part and denied-in-part.