On July 26, 2012, ALJ Thomas B. Pender issued the public version of Order No. 34 (dated June 20, 2012) granting-in-part motions by respondents LG Electronics, Inc., LG Innotek Co., Ltd., LG Electronics U.S.A., Inc., and LG Innotek U.S.A., Inc. (collectively, “LG”), and Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, “Samsung”) to preclude complainant OSRAM AG (“OSRAM”) from offering expert testimony and evidence regarding infringement and domestic industry in Certain Light-Emitting Diodes and Products Containing the Same (Inv. No. 337-TA-785).

By way of background, ALJ Pender previously sanctioned OSRAM in Order No. 31 for supplementing its responses to contention interrogatories on infringement and domestic industry after the February 24, 2012 deadline, and denied OSRAM’s motion to supplement its expert reports in Order No. 33.  See our June 12, 2012 and June 20, 2012 posts for more details.

According to the Order, LG sought to limit OSRAM’s expert testimony on infringement to one LG product alleged to infringe claims 1, 20 and 26 of the ‘162 patent and claim 1 of the ‘621 patent because these were the only claims and the only product expressly analyzed in both OSRAM’s contention interrogatories and its expert reports.  OSRAM countered that its expert reports support its experts’ infringement opinions regarding five additional LG products because (1) the reports provide exemplary claim charts which specifically explain how each limitation of each asserted claim is met by a representative accused product; (2) the reports specifically state that although certain discussion in the experts’ analysis focuses on representative accused products, the analysis is equally applicable to the additional disputed products; and (3) the reports provide “attribute tables” for each disputed product showing their characteristics relevant to infringement.  ALJ Pender agreed with LG and found that OSRAM’s expert reports did not make sufficiently clear which claim chart applies to which products, rejecting the case law cited by OSRAM regarding representative claim charts as inapposite.  The ALJ ordered that OSRAM’s experts may testify regarding characteristics of LG’s products as set forth in exhibits to their expert reports, but may not offer opinions correlating these facts to limitations of the asserted claims.

Similarly, Samsung argued that OSRAM is not entitled to accuse any product of infringement other than the single Samsung product charted in OSRAM’s expert reports.  OSRAM responded that two additional Samsung products are either incorporated in, or materially the same as, the product it charted.  ALJ Pender agreed with Samsung and precluded OSRAM’s experts from testifying on infringement regarding the disputed products, noting that OSRAM had the information available to accuse those products but failed to do so, and that OSRAM’s experts failed to identify which patents and which claims are allegedly infringed by one of the disputed products.

With respect to domestic industry, LG and Samsung argued that OSRAM’s expert testimony should be limited to the overlap between what OSRAM charted in its domestic industry contentions and its expert reports.  ALJ Pender agreed and limited OSRAM’s experts’ opinions to the assertions in OSRAM’s contention interrogatories that its products practice claim 1 of the ‘500 patent, claim 1 of the ‘732 patent, claim 1 of the ‘621 patent, and claim 1 of the ‘162 patent.  However, the ALJ declined to limit OSRAM to the products charted in its contention interrogatories, explaining that (1) because OSRAM’s domestic industry allegations were limited to only one claim of the aforementioned patents, LG and Samsung were on notice of OSRAM’s allegations relating to the products and supporting evidence identified in its contention interrogatories and appendices thereto; and (2) OSRAM’s expert reports which discuss how the representative products satisfy the technical prong, identify the domestic industry products alleged to practice claim 1 of the aforementioned patents, and provide the underlying facts supporting OSRAM’s domestic industry allegations are sufficient to support OSRAM’s experts’ testimony regarding the practice of claim 1 of those patents.  That said, the ALJ stated that the alleged facts set forth in OSRAM’s expert reports must have been disclosed in OSRAM’s contention interrogatories or documents cited therein.