In Certain Integrated Circuits with Voltage Regulators and Products Containing Same; Inv. No. 337-TA-1024, Chief ALJ Bullock recently denied a motion by Complainant R2 Semiconductor, Inc. to take additional discovery and supplement its expert reports based on the CALJ’s claim construction ruling.
By way of background, on July 7, 2017, the CALJ issued Order No. 36, which construed the terms of the asserted claims of the patent at issue. For one of these terms—“dissipative element” —the CALJ adopted a construction that was not proposed by either R2, Respondents, or Staff. Accordingly, the CALJ noted: “Because this construction was not proposed by any of the parties, the undersigned recognizes that the parties may require additional discovery (and time) to address this construction.”
Pursuant to this comment, R2 moved for leave to take additional discovery and to supplement its expert report and witness statement. Respondents countered in their response that R2 is using the request “to insert a new theory of infringement into this Investigation long after discovery has closed.” Staff concurred arguing that ““R2 is seeking to fix issues with its existing evidence through the guise [of] a motion for leave to address the CAL]’s construction…While the CALJ’s construction is not word-for-word identical to a party-proposed construction, it resolves the two ‘primary’ disputes identified in R2’s Rebuttal Markman Brief.”
The CALJ agreed with Respondents and Staff noting that “[a]llowing R2 to take additional discovery and/or supplement the report would provide it with a second bite at the apple ~ a result that was clearly not intended by the undersigned’s footnote in Order No. 36.”
The CALJ’s order highlights the need for a complainant to collect necessary evidence during discovery to prove its case under both its own construction of the claims terms as well as respondents’ constructions. Furthermore, to the extent expert reports are due before the claim terms are construed by the ALJ (or if there is no Markman hearing), a complainant should strive to include alternative theories of infringement that cover the contingency of an unfavorable claim construction.