• ALJ Charneski Grants Motion to Add Unenforceability Defense in Certain Large Scale Integrated Circuit Semiconductor Chips (337-TA-716)
  • January 13, 2011 | Authors: Andrew K. Beverina; Alexander E. Gasser
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On January 10, 2011, ALJ Carl C. Charneski released the Public Version of Order 29 (dated December 20, 2010), granting Respondents’ motion to amend their Responses to the Amended Complaint and Notice of Investigation to assert a defense of inequitable conduct in Certain Large Scale Integrated Circuit Semiconductor Chips and Products Containing Same (Inv. No. 337-TA-716).

    Respondents Freescale Semiconductor, Inc., Freescale Semiconductor Japan Ltd., Freescale Semiconductor Malaysia Sdn. Bhd., Freescale Semiconductor Singapore Pte. Ltd., Freescale Semiconductor Taiwan Ltd., Freescale Qiangxin (Tianjin) IC Design Co., Ltd., Freescale Semiconductor (China) Limited, Mouser Electronics, Inc, Motorola, Inc., Newark Electronics Corporation, and Newark Corporation (collectively “Respondents” or “Freescale”) - sought to amend their responses to assert an inequitable conduct defense regarding U.S. Patent No. 5,933,364 (the ’364 patent).  Respondents argued that they only learned of the underlying facts from documents recently produced by Complainant Panasonic Corporation (“Panasonic”) and in a recent deposition of one of the ’364 patent’s co-inventors.  The Commission Investigative Staff supported the motion because the above information was disclosed by Panasonic during discovery and would not prejudice the parties.

    Panasonic opposed the motion, arguing that Freescale delayed taking the discovery which led to the disclosure.  They also complained they would be prejudiced as discovery is now closed and they will be unable to conduct any discovery on the new inequitable conduct allegation.

    In granting the motion, ALJ Charneski determined that Freescale worked diligently during discovery - noting that delays in depositions were due, in part, to the logistics of scheduling depositions in Japan, and that it was not possible for Freescale to plead inequitable conduct when they responded to the amended complaint.  He further found that all the documents relating to inequitable conduct were in the possession, custody and control of Panasonic, and so they would not be prejudiced by granting the motion.