• ALJ Charneski Rules on Motions in Limine in Certain Multimedia Display and Navigation Devices and Systems (337-TA-694)
  • September 15, 2010 | Author: Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On September 9 and September 10, 2010, ALJ Carl C. Charneski issued Order No. 39, Order No. 40, Order No. 41, Order No. 42, Order No. 43, Order No. 44, Order No. 45, Order No. 46, and Order No. 47 in Certain Multimedia Display and Navigation Devices and Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-694).  In the Orders, ALJ Charneski ruled on four motions in limine filed by Complaints Pioneer Corporation and Pioneer Electronics (USA), Inc. (collectively, “Pioneer”) and five motions in limine filed by Respondents Garmin International, Inc. and Garmin Corp. (collectively, “Garmin”).

    In Order No. 39, ALJ Charneski denied Pioneer’s motion in limine to preclude Garmin’s expert from testifying that the memory structures used to store Point of Interest data in its products do not infringe one of the asserted patents.  Pioneer had argued that the expert’s testimony was based on unreliable hearsay and that Garmin had not sufficiently complied with its discovery obligations regarding the Point of Interest data.  Garmin and the Commission Investigative Staff (“OUII”) opposed the motion, arguing that there was sufficient evidence in the record to provide support for the expert’s expected testimony.  ALJ Charneski found Garmin’s and OUII’s arguments persuasive and denied Pioneer’s motion.

    In Order No. 40, ALJ Charneski granted Pioneer’s motion in limine to preclude Garmin from offering expert testimony alleging the invalidity of certain dependent claims of the asserted patents.  Pioneer had asserted that the expert “has not offered any opinions, either through his opening expert report or his deposition testimony, that these dependent claims are anticipated or obvious in view of any references upon which Garmin can rely.”  OUII supported the motion.  Garmin opposed the motion in part, stating that it does not oppose “to the extent it seeks to limit Dr. Michalson’s testimony to the substance of his May 24, 2010, report.”  Accordingly, ALJ Charneski granted the motion and ordered that Dr. Michalson be precluded from offering expert testimony asserting that the identified dependent claims are invalid.

    In Order No. 41, ALJ Charneski denied as moot Pioneer’s motion in limine to exclude expert testimony by Dr. Michalson on the issue of inherency.  Pioneer had argued that Dr. Michalson had not offered opinions on inherency in either his expert report or at deposition.  Garmin agreed and stated that the reference to inherency in its pre-hearing statement was a “benign, if inartful, attempt to synthesize the opinions that Dr. Michalson had originally provided,” and that it would not be relying on the legal concept of inherency at the hearing.  Accordingly, ALJ Charneski denied the motion in limine as moot.

    In Order No. 42, ALJ Charneski denied Pioneer’s motion in limine to exclude testimony by Dr. Michalson on obviousness.  Pioneer had argued that Dr. Michalson “has never offered anything more than mere conclusory statements” to support his assertion that the asserted patents are rendered obvious in view of the prior art.  Garmin opposed the motion, stating that Pioneer had taken Dr. Michalson’s opinions regarding obviousness out of context.  OUII also opposed the motion.  ALJ Charneski denied the motion and stated that “[a]ny objections to the substance of Dr. Michalson’s testimony on the issue of obviousness may be more appropriately addressed in the context of the hearing.”

    In Order No. 43, ALJ Charneski denied Garmin’s motion in limine to exclude Pioneer’s cease-and-desist and bonding contentions.  Garmin had based its argument on the fact that Pioneer did not respond to certain interrogatories relating to the cease-and-desist remedy and bonding.  The ALJ found this argument unpersuasive because Pioneer had disclosed its intention to seek a cease-and-desist order in its Complaint and Garmin had been fully aware of the underlying facts concerning its own commercially significant inventories that would support Pioneer’s request for a cease-and-desist order.  With respect to bonding, ALJ Charneski noted that if Pioneer were successful in the investigation, it would be entitled to a bond remedy based upon the record evidence.  Accordingly, the motion in limine was denied.

    In Order No. 44, ALJ Charneski denied Garmin’s motion in limine to preclude Pioneer from relying on information and documents not produced until after the close of fact discovery.  In the Order, ALJ Charneski stated that “[d]ue to the nature of this evidentiary objection, as well as the number of documents involved, [Garmin’s] objection and [Pioneer’s] opposition cannot be understood outside of the context of a hearing.”  Accordingly, while the instant motion was denied, Garmin was given license to renew its objection at the hearing “on a document-by-document basis.”

    In Order No. 45, ALJ Charneski denied Garmin’s motion in limine to preclude Pioneer “from relying on allegations of domestic industry for which underlying documentation was shielded from discovery based on claims of privilege and to preclude Pioneer from eliciting testimony at the hearing in support of such allegations.”  The motion was denied because, according to the Order, Pioneer had represented that it would only rely on domestic industry information at the hearing that had been provided to Garmin.  Moreover, “at no time had Garmin sought to compel the production of the information withheld by Pioneer under the claim of privilege.”

    In Order No. 46, ALJ Charneski denied Garmin’s motion in limine to preclude Pioneer’s claim construction expert from offering infringement opinions.  Garmin had argued that the expert should not be permitted to provide testimony on infringement because he had not been identified as an infringement expert, had not offered infringement opinions in his expert reports, and during his deposition had expressly denied that he was offering any infringement opinions.  OUII supported the motion.  In response, Pioneer stated that it had committed an editing error in its pre-hearing brief regarding the scope of the expert’s anticipated hearing testimony and that in fact the expert was not going to testify as to infringement by the accused products.    The Order states that Garmin’s motion in limine is denied “to the extent that it is inconsistent with Order No. 38.”

    In Order No. 47, ALJ Charneski granted Garmin’s motion in limine to exclude evidence or testimony concerning the operation of non-accused Garmin products, in particular “Garmin’s Automotive OEM products, which are not accused of infringement in this investigation.”  Pioneer opposed the motion, arguing that “Garmin’s OEM products remain within the scope of this investigation and any potential remedy that the Commission may order.”  OUII supported the motion to the extent that Pioneer was seeking to introduce evidence concerning Garmin products that had not been accused of infringement in the investigation.  ALJ Charneski rejected Pioneer’s argument and granted Garmin’s motion because the private parties had earlier submitted a Joint Statement Regarding Identification of Accused Products, and Pioneer’s proposal of introducing evidence concerning Garmin products that had not been identified as infringing would create uncertainty as to the scope of the hearing.