UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
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`In the Matter of
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`CERTAIN ACTIVE MATRIX
`ORGANIC LIGHT-EMITTING DIODE
`DISPLAY PANELS AND MODULES
`FOR MOBILE DEVICES, AND
`COMPONENTS THEREOF
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`ORDER NO. 35:
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`Inv. No. 337-TA-1351
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`GRANTING-IN-PART COMPLAINANT’S MOTION TO STRIKE
`PORTIONS OF RESPONDENTS’
`INVALIDITY EXPERT
`REPORTS
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`(November 16, 2023)
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`On October 20, 2023, Complainant Samsung Display Co., Ltd. (“Complainant”) moved to
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`strike (Mot. 1351-013) portions of the invalidity expert reports of Dr. Daniel Foty and Dr. P.
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`Morgan Pattison.1 Respondents Mianyang BOE Optoelectronics Co., Ltd (“Mianyang BOE”),
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`Apt-Ability, LLC d/b/a MobileSentrix, and Mobile Defenders LLC (collectively, “Respondents”)2
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`opposed the motion. See EDIS Doc. ID 807333 (“Opp.”). The Commission Investigative Staff
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`(“Staff”) filed a response supporting-in-part the requested relief. EDIS Doc. ID 807626 (“Staff
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`Resp.”).
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`Complainant seeks to strike four categories of opinions contained within the invalidity
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`expert reports of Dr. Foty (“Foty Report) and Dr. Pattinson (“Pattison Report”)3: (1) opinions with
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`1 On November 1, 2023, Complainant filed a Supplement to Complainant’s Motion to Strike
`Portions of Respondents’ Invalidity Expert Reports (hereinafter, “Supp.”). Complainant explains
`that the supplement clarified “a typographical error contained in a chart included in Complainant’s
`Motion.” Supp. at 1.
`2 Several Respondents did not submit expert reports. The use of the term “Respondents” here refers
`only to those Respondents specifically identified.
`3 The Foty Report was served on behalf of the Respondents identified here. The Pattison Report
`was served on behalf of Mianyang BOE only.
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`respect to previously rejected indefiniteness arguments; (2) opinions that certain previously
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`construed terms and additional terms are indefinite; (3) opinions with respect to objective indicia
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`of non-obviousness of U.S. Patent No. 7,414,599 (“the ’599 patent”); and (4) opinions relating to
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`prior art combinations that allegedly were not disclosed in Respondents’ Final Invalidity
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`Contentions with respect to U.S. Patent No. 9,330,593 (“the ’593 patent”), U.S. Patent No.
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`10,854,683 (“the ’683 patent”) and U.S. Patent No. 11,594,578 (“the ’578 patent”).
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`I.
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`Rejected Indefiniteness Contentions
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`Complainant seeks to strike paragraphs 169-177 and 202-210 of the Pattison Report. Supp.
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`at 2. These paragraphs assert that the terms “virtual quadrangle” and the “shortest distance between
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`any two of the group of four neighboring ones…” are indefinite. Mot. Ex. 20 at ¶¶ 169-177, 202-
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`210. I have already found that these terms are not indefinite. Order No. 28 at 54, 58-59 (Sept. 11,
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`2023).
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`Complainant argues that these opinions should be struck because “the ALJ has already
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`decided that [these terms] are not indefinite.” Mot. at 14. Complainant further notes that
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`“Respondents are transparently trying to add expert opinion that they could have presented in claim
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`construction,” but that “their expert did not opine that any term of the ’578 Patent was indefinite.”
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`Id. Complainant thus asserts that “Respondents should not be permitted to circumvent the Ground
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`Rules to do so now.” Id.
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`Mianyang BOE asserts that it “does not intend to relitigate its indefiniteness arguments for
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`these two terms” but instead is “preserving its position pending the final outcome of the claim
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`construction for those terms.” Opp. at 12.
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`Staff supports Complainant’s motion. Staff Resp. at 4. Staff notes that “[t]hese
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`indefiniteness arguments were considered and rejected in the claim construction order.” Id.
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`I do not permit experts to opine on rejected claim construction positions. Such opinions are
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`not necessary to preserve a party’s position and are routinely rejected by ALJs. See, e.g., Certain
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`Elec. Devices & Semiconductor Devices Having Wireless Comm’n Capabilities & Components
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`Thereof, Inv. No. 337-1367, Order No. 2 at 15 (July 27, 2023) (ALJ Elliot’s ground rules providing
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`that, after a Markman order issues, “discovery and briefing in the Investigation should be limited
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`to” the judge’s claim construction). Additionally, permitting expert opinions (and presumably
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`expert testimony) on issues that have already been decided would be a waste of both time and
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`resources, particularly in an investigation such as this one, in which the parties already need to
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`narrow their case. For these reasons, paragraphs 169-177 and 202-210 of Dr. Pattinson’s expert
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`report are struck.
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`II.
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`New Indefiniteness Opinions
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`Complainant seeks to strike paragraphs in both the Foty and Pattison Reports that raise new
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`indefiniteness arguments. These opinions fall into two sub-categories: (1) opinions that previously
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`construed claim terms are indefinite; and (2) opinions that additional terms in the patents are
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`indefinite.
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`A.
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`Previously Construed Terms
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`Complainant seeks to strike paragraphs 1258-1262, 1264-1267, and 1268-12724 of the Foty
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`Report. Supp. at 2. These paragraphs argue the following terms are indefinite: “first node”, “second
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`node,” “outputting unit,” “first driver,” and “second driver.” Id. According to Complainant, these
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`opinions are attempts to relitigate issues already decided and should therefore be struck. Mot. at
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`15.
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`4 In the supplement, Complainant identifies the paragraphs at issue as: “1258-1262, 1264-3-1267,
`1268-1272.” Supp. at 2. It appears that the “3’ is a typographical error.
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`Mianyang BOE asserts that it should be permitted to make indefiniteness arguments with
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`respect to these terms. According to Mianyang BOE, it “point[ed] out these issues during
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`Markman” and “consistently made clear that its indefiniteness argument is not one based on the
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`claims in the abstract,” but is due to an “overbroad stretching of the claims.” Opp. at 13. It further
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`asserts that “ITC precedent has found that there is no waiver in this situation.” Id. Mianyang BOE
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`contends that it is “clear that there is no prejudice here.” Id. at 14.
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`Staff agrees with Complainant that “[t]he time to raise indefiniteness arguments was during
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`claim construction proceedings, not after the terms have been construed.” Staff Resp. at 4. Staff
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`therefore supports striking these paragraphs. Id.
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`In my Ground Rules, I specifically require parties to identify indefinite claim terms early
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`in the investigation. See Ground Rule 7.1 (“By the date ordered in the procedural schedule, each
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`party shall exchange a list of claim terms which that party contends should be construed by the
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`Administrative Law Judge. The list shall identify any claim term which the party contends is
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`indefinite…”). As noted above, I also require that, once a claim term has been construed, parties
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`limit their arguments to these constructions. There are, however, exceptions to these rules. If a
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`party asserts that a term is indefinite when applied, it may not be feasible for that party to raise the
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`argument earlier in the proceeding. See Certain Flocked Swabs, Inv. No. 337-TA-1279, Order No.
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`63 at 4 (June 24, 2002) (permitting an indefiniteness argument first raised in a pre-hearing brief
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`because it was based on Complainant’s application of the term).
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`I find that such an exception applies to certain opinions in the Foty Report. Dr. Foty does
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`not assert that the terms are indefinite in the abstract. Instead, he asserts that the terms are indefinite
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`based on Complainant’s “apparent interpretation.” See Mot. Ex. 20 at ¶¶ 1258 (“first node” and
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`“second node”), 1264 (“outputting unit”), 1269 (“first driver” and “second driver”). With respect
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`to node, Dr. Foty explains that Complainant argues “that the Asserted Claims of the ’593 [patent]
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`cover the term ‘nodes’ that encompass intervening circuit elements” and cites to Complainant’s
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`infringement contentions. Id. at ¶ 1259. Dr. Foty then explains why he believes “[t]his
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`interpretation is contrary to the disclosure of the specification” and inconsistent with testimony
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`from the inventor of the ’593 patent. Id. at ¶¶ 1260-1261. Dr. Foty notes that portions of his analysis
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`for the remaining terms are premised on this purportedly incorrect interpretation of “node.” See,
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`e.g., id. at ¶¶ 1266, 1271 (explaining that, due to Complainant’s broad interpretation of the word
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`“node,” “the specification fails to provide guidance to a POSITA regarding the full scope of”
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`outputting unit, first driver, and second driver).
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`Additionally, Complainant was on notice of Respondents’ position. In the claim
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`construction order, I construed the term “node” as having its plain and ordinary meaning, which is
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`“a point or area of interconnection between two or more components.” Order No. 28 at 18. In doing
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`so, however, I noted that Respondents’ proposed construction was based “on a belief that
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`[Complainant’s] construction may be overbroad when applied.” Id. at 17. Because the dispute
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`related to the application of the term’s construction, I found that Respondents’ argument would be
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`better addressed in the context in which it arises. Id. Dr. Foty’s opinion raises these arguments in
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`the proper context. 5 As such, I find that these opinions are not in violation of my Ground Rules.
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`I do, however, find that the opinions offered in paragraphs 1265 and 1270 do not fall into
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`this exception. These paragraphs assert that the terms “outputting unit,” “first driver,” and “second
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`driver” are not terms in the art that have a known meaning. Mot. Ex. 20 at ¶¶ 1265, 1270. Both
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`5 It should be noted that Dr. Foty’s opinions do not appear to be true indefiniteness arguments. He
`does not argue that these terms are indefinite in the abstract. Instead, his arguments illustrate why
`he believes that Complainant’s application of these terms cannot be correct. His opinions would
`therefore be better addressed in the application of the claim limitations to the Accused Products
`rather than as standalone indefiniteness arguments.
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`arguments were already considered during the Markman phase of the investigation, in which I
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`found that all three terms should be given their plain and ordinary meaning. Order No. 28 at 25,
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`33, 37. Respondents are not permitted to advance positions that contradict these constructions.
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`Accordingly, I decline to strike paragraphs 1258-1262, 1264, 1266-1269, and 1271-1272
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`but do strike paragraphs 1265 and 1270 of the Foty Report.
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`B.
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`New Terms
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`Complainant seeks to strike paragraphs 189, 191-193, 196, and 199-201 of the Pattison
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`Report. Supp. at 2. These opinions assert that additional terms (that were not construed) are
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`indefinite: “elongated,” “connection portions” and two other terms containing the words
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`“connection portions.” Mot. Ex. 20 at ¶¶ 189, 191-193, 196, 199-201. Complainant argues that
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`these opinions “violate the plain requirements of Ground Rule 7.1.” Mot. at 15. Complainant also
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`notes that Respondents failed to previously assert that these terms were indefinite and have
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`therefore “waived their ability to do so now.” Id.
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`Mianyang BOE asserts that it “preserved the issue through its identification of disputed
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`claim terms for the term ‘elongated’ and ‘shortest distance between [the] two [elongated
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`sides/parallel sides/parallel edges].” Opp. at 15. Mianyang BOE further argues that “as was the
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`issue for the ’593 terms, the indefiniteness stems from [Complainant’s] application of those terms
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`in its infringement contentions.” Id.
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`Staff “agrees that the indefiniteness contentions are untimely.” Staff Resp. at 5. Staff “is
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`unaware of any good cause that would excuse Respondents’ failure to comply with the ground
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`rules.” Id. Staff further notes that Respondents failed to file a motion to supplement their
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`contentions alleging good cause. Id.
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`Ground Rule 7.1 requires parties to exchange lists of claim terms and to identify “any claim
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`term which the party contends to be indefinite.” Pursuant to this rule and the Procedural Schedule,
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`the parties exchanged claim terms for construction on March 31, 2023 and April 19, 2023. Mot. at
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`6. On June 29, 2023, the parties also submitted “The Parties’ Joint Submission Regarding Agreed-
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`Upon and Remaining Disputed Claim Terms.” Opp. Ex. 11. In this submission, Mianyang BOE
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`asserted that “shortest distance between [the] two [elongated sides/parallel sides/parallel edges”
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`was indefinite. Id. at 4; see also Mot. Ex. 19 (May 2, 2023 submission indicating that Respondents
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`contended “shortest distance” was indefinite). Accordingly, Mianyang BOE complied with the
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`Ground Rule with respect to this term. I therefore disagree that paragraph 189 should be struck.
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`See Mot. Ex. 21 at ¶ 189 (opining that “the shortest distance” term is indefinite).
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`Mianyang BOE did not, however, set forth a position that either of the three “connection
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`portions” terms were indefinite. See Opp. Ex. 11; Mot. Ex. 19. As such, these opinions are in
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`violation of the Ground Rules.
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`Nor do I find that these opinions fall within the exception to the rule discussed above.
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`Unlike with the previously construed terms, Dr. Pattinson’s opinions do not relate to the
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`application of the terms in an infringement context. Instead, Dr. Pattison opines that the
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`specification does not provide guidance as to these terms. See Mot. Ex. 21 at ¶¶ 192, 196, 200. As
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`such, Mianyang BOE could have either raised these positions at the time set forth in the procedural
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`schedule or – if it had good cause – moved to supplement its identifications of indefinite claim
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`terms. Because Mianyang BOE failed to do either, I find that Dr. Pattinson’s opinions at paragraphs
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`191-193, 196, and 199-201 should be struck.
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`III.
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`Secondary Considerations
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`Complainant seeks to strike paragraphs 662-668 of the Foty Report. Supp. at 1. These
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`paragraphs contain Dr. Foty’s opinion on objective indicia of nonobviousness for the ’599 patent.
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`Complainant asserts that these opinions should be struck because, while Respondents set forth
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`their positions on objective indicia as to the four other asserted patents, “they did not for the ’599
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`Patent.” Mot. at 11. Complainant also explains that the opinions related to the other patents cannot
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`be applied to the ’599 patent because the ’599 patent “is not related to any other asserted patent”
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`and “concerns different technology.” Id.
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`Respondents assert that these opinions should not be struck because Complainant is not
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`prejudiced. Id. According to Respondents, “Dr. Foty’s opinions regarding the ’599 patent are
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`similar to those regarding the ’593 patent.” Opp. at 11. Respondents note that the opinions for both
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`patents focus on an alleged lack of nexus and that Complainant’s “own expert report has largely
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`duplicative sections with respect to the two patents.” Id.
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`Staff supports Complainant’s motion to strike these paragraphs. Staff “disagrees that
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`Respondents’ contentions with respect to the other asserted patents provided notice with respect
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`to the ’599 patent.” Staff Resp. at 6. Staff explains that “[t]he ’599 patent is not related to any of
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`the other asserted patents.” Id.
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`Ground Rule 6.4.3 states: “A party may not introduce evidence at the hearing that is outside
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`of the scope of its responses to contention interrogatories.” Similarly, Ground Rule 9 provides that
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`“[a]n expert’s report is limited to the scope of [a party’s] disclosures in its responses to contention
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`interrogatories.” Judges have interpreted similar ground rules to require that a party not wait until
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`expert reports to provide the bases for its theories. Certain Blow-Molded Bag-In-Container
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`Devices, Associated Components, & End Prods. Containing or Using Same, Inv. No. 337-TA-
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`1115, Order No. 20 at 2 (Jan. 29, 2019); Certain Electrochemical Glucose Monitoring Sys. &
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`Components Thereof, Inv. No. 337-TA-1075, Order No. 26 at 4 (May 10, 2018) (“Electrochemical
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`Glucose”). Contentions raised for the first time in an expert report are routinely stricken unless
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`good cause exists based on information thereafter acquired. See, e.g., Certain Vision-Based Driver
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`Assistance Sys. Cameras & Components Thereof, Inv. No. 337-TA-907, Order No. 6 (striking
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`invalidity contention raised for the first time in expert report); Certain Wiper Blades, Inv. No. 337-
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`TA-816, Order No. 76 at 3 (Aug. 15, 2013) (striking portions of expert report pertaining to
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`references not disclosed in invalidity contentions).
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`Respondents do not dispute that they failed to disclose their contentions during discovery.
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`See Opp. at 11. Instead, Respondents argue that the disclosure of secondary considerations with
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`respect to other patents was sufficient disclosure of Dr. Foty’s opinions with respect to the ’599
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`patent. I disagree that such a disclosure is sufficient under my Ground Rules.
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`Respondents also assert that the opinions should not be struck because Complainant has
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`not shown any prejudice. I am not persuaded by this argument. While the impact of a rule violation
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`on a party may be taken into account when deciding the remedy, there is no per se rule that a party
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`must prove that it was prejudiced by a violation of a Ground Rule. If, for example, a party filed a
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`brief exceeding the page limits, I would not require the opposing party to demonstrate specific
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`prejudice as a result of the extra pages before issuing a remedy.
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`For these reasons, I strike paragraphs 662-668 of the Foty Report.
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`IV. Obviousness Combinations
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`Complainant seeks to strike the following portions of the Foty and Pattison Reports. Supp.
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`at 1-2.
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`CONTAINS CONFIDENTIAL BUSINESS INFORMATION
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`Opinion—“‘*‘“‘C;S™SCSCCCCCOLReport|Paagraph(s)
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`Moonin view of Jeong (’593 Patent
`1175-1198
`Moonin view of Sasaki
`(’593 Patent
`1162-1174
`Matthies in view of Yamada and Kitabiyashi (’683
`859, 968-971, 980-983,
`Patent
`1035-1044
`Muraiin view of Yamada and Kitabiyashi (683
`1047, 1120-1124, 1132-
`Patent
`1134, 1156-1164
`Kusakabe in view of Yamada and Kitabiyashi (°683
`1167, 1194-1197, 1205—
`Patent
`1208, 1217-1225
`Matthies in view of Yamada and Kitabiyashi (°578
`1459-1476, 1527-1537,
`Patent
`1538-1567
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`Kusakabe in view of Yamada and Hong/Kitabiyashi|Pattison 1571-1637, 1663-1665,
`(7578 Patent)
`1704-1728, 1770-1786,
`1795-1810
`Supp. at 1-2. Complainantasserts that “the challenged obviousness combinations .
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`.
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`. were never
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`disclosed in fact discovery.” Mot. at 11. According to Complainant,
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`the Final Invalidity
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`Contentions instead include “boilerplate, catch-all language.” Jd. at 12. Complainant notes that
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`“It]hese boilerplate sentences. .
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`. do not disclose any of the specific challenged combinations” and
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`cannot“fairly be read as adequate disclosure.” Jd. Complainantalso arguesthatit is prejudiced by
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`Respondents’ actions.Jd. at 13.
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`Respondents’ and Staff's arguments with respect to these combinations are specific as to
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`each patent. Accordingly, I will address each in turn below:
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`A.
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`The ’593 Patent
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`Complainant asserts that Dr. Foty’s opinions on the following combinations should be
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`struck: (1) US 2007/0263763A1 (“Moon”) in view of US 2008/0062097 (“Jeong”); and (2) Moon
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`in view of US 2005/0185752 (“Sasaki”).
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`Respondents argue that these combinations were disclosed. Opp. at 8. According to
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`Respondents, they expressly contended that Moon “renders obvious the Asserted Claims of the
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`’593 patent either alone or in combination”with four references, including both Jeong and Sasaki.
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`Id. (citing Mot. Ex. 4 at 21). They also pointto statements within their invalidity charts as evidence
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`that the disclosure was adequate. Id. Respondents further note that “any decision not to provide
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`additional detail for a combination ‘should not be interpreted as an admission or concession that
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`[the combination] does not apply.’” Id. (quoting Mot. Ex. 4 at 22-27).
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`Staff asserts that the opinions related to these combinations should be struck. Staff Resp.
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`at 7. Staff argues that “the boilerplate language that it would have been obvious to combine Moon
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`with one of the other references listed in the invalidity contentions did not provide [Complainant]
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`adequate notice of the challenged combinations.” Id.
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`Respondents served their Final Invalidity Contentions on September 6, 2023. See Mot. Ex.
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`4. These invalidity contentions identify seven primary prior art references for the ’593 patent, with
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`charts for each reference. Id. at 21 (“Each of the references cited . . . renders obvious the Asserted
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`Claims of the ’593 Patent either alone or in combination with one or more other references cited
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`in Exhibits ’593-1 through ’593-7.”). Moon is one of these primary references. Id. With respect to
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`obviousness, the contentions include the following statement:
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`To the extent [Complainant] contends any reference identified in any ’593 Exhibits
`is missing one of more elements of the asserted claims, a POSITA would have
`considered it obvious and would have been motivated to apply the teachings of
`references, included, but not limited to, the below to the prior art references
`identified in the ’593 Exhibits, in view of POSITA’s background knowledge, the
`knowledge in the art, the teachings in the references in Exhibits ’593-1 through
`’593-7 and further in view of the teachings in the below references:
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`• US 2012/0133574 (“Wu”)
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`• US 2008/0062097 (“Jeong”)
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`• US 2005/0185752 (“Sasaki”)
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`• US 4,720,815 (“Ogawa”)
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`Id. at 26. Accordingly, through this statement, Respondents disclosed the combinations of Moon
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`and Jeong and Moon and Sasaki.
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`Respondents did not, however, provide more detail for their contention that these
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`combinations render the ’593 patent obvious. In the chart that details Respondents’ views on how
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`Moon invalidates the patent, Respondents only address the combination of Moon and Wu. See
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`generally Mot. Ex. 12. Neither Jeong nor Sasaki are mentioned in the chart. Id. Conclusory
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`disclosures of obviousness combinations are not sufficient disclosures under my Ground Rules.
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`See, e.g., Certain Video Security Equip. & Sys. Related Software Components Thereof, & Prods.
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`Containing Same, Inv. No. 337-1281, Order No. 34 (June 6, 2022).6 As such, I strike paragraphs
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`1162–1174 and 1175–1198 of the Foty Report.
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`B.
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`The ’683 Patent
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`Complainant asserts that Dr. Pattison’s opinions with respect to claims 3 and 11 should be
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`struck as to three combinations: US 6,897,855 (“Matthies”), JP 4496852B2 (“Murai”), and JP
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`2006018195A (“Kusakabe”) each in view of US 6,366,025 (“Yamada”) in further view of US
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`20090195144A1 (“Kitabiyashi”).
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`Mianyang BOE explains that it disclosed several obviousness combinations for
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`independent claim 1: (1) Matthies in view of Yamada; (2) Murai in view of Yamada; and (3)
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`Kusakabe in view of Yamada. Opp. at 4 (citing Opp. Ex. 4). Mianyang BOE further explains that
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`it incorporated the analysis from independent claim 1 into the analysis for dependent claims 3 and
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`11. Id. It then “identified several third references, including Kitabiyashi” to address the additional
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`limitations of the dependent claims. Id. Mianyang BOE therefore asserts that the “analysis for
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`dependent claims 3 and 11 disclosed the combination of the first two references from independent
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`claim 1 combined with the newly added third reference for those claims, i.e., the same three-
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`6 Certain Video Equipment involved Ground Rules issued by Chief ALJ Bullock. The ground rule
`at issue, however, contained identical language to my Ground Rule 6.4.3. See Video Security
`Equip., Order No. 2 at G.R. 4.4.3 (“A party may not introduce evidence at the hearing that is
`outside of the scope of its responses to contention interrogatories.”).
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`reference combinations [Complainant] seek[s] to strike.” Id. Staff agrees with Respondents that
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`these opinions should not be struck. Staff Resp. at 8.
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`I find that Mianyang BOE adequately disclosed the combinations of Matthies, Murai, and
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`Kusakabe each in view of Yamada in further view of Kitabiyashi for claims 3 and 11. As Mianyang
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`BOE notes, its disclosure of its analysis for claim 1 was incorporated into claims 3 and 11. It was
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`therefore apparent that Respondents intended to rely on both Yamada and Kitabiyashi for each of
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`the three primary references with respect to claims 3 and 11.
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`Accordingly, I decline to strike paragraphs 859, 968-971, 980-983, 1035-1044, 1047, 1120-
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`1124, 1132-1134, 1156-1164, 1167, 1194-1197, 1205-1208, and 1217-1225 of the Pattison Report.
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`C.
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`The ’578 Patent
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`Complainant asserts that Dr. Pattinson’s opinions with respect to two combinations should
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`be struck: (1) Matthies in view of Yamada and Kitabiyashi; and (2) Kusakabe in view of Yamada
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`and US 2001/0234550 (“Hong”)/Kitabiyashi.
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`1.
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`Matthies in view of Yamada and Kitabiyashi
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`Complainant seeks to strike Dr. Pattinson’s opinion that the combination of Matthies,
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`Yamada, and Kitabiyashi renders claims 14, 40, 43, 45, 47, and 52 obvious. As an initial matter, I
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`find that Mianyang BOE adequately disclosed this combination with respect to claim 14 for similar
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`reasons as those outlined in Section IV.B. Accordingly, I decline to strike paragraphs 1541-1544
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`of the Pattison Report, as well as paragraphs 1538-1540, as these paragraphs could apply to
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`properly disclosed claims.
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`I find, however, that Respondents failed to adequately disclose the combination of
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`Matthies, Yamada, and Kitabiyashi with respect to claims 40, 43, 45, 47, and 52. While the chart
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`for Matthies disclosed the combination of Matthies and Yamada, it did not include references to
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`Kitabiyashi with respect to claims 40, 45, 47, or 52.7 See Mot. Ex. 10 at 484-730. Some of the
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`opinions that Complainant seeks to strike, however, do not appear to pertain to this specific
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`combination. See Mot. Ex. 21 at 1459-1466, 1471, 1474-1476, 1545-1548, and 1550-1559.
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`Additionally, certain paragraphs discuss the motivation to combine Matthies, Yamada, and
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`Kitabiyashi (see id. at 1527-1537, 1560-1567), but Complainant has not established that
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`Respondents failed to set forth evidence about motivation. As such, I likewise decline to strike
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`these portions.8
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`Certain portions of the remaining paragraphs also relate to the combination of Matthies,
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`Yamada, and Hong. See, e.g., Mot. Ex. 21 at ¶ 1467 (“The claim and the claims that depend on it
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`are additionally obvious when Hong’s or Kitabiyashi’s octagonal pixel shapes are employed.”);
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`see also id. at ¶ 1468 (“This, in my opinion, is also taught by Matthies in view of Yamada and
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`Hong or Kitabiyashi.”); see also id. at ¶¶ 1469-1470, 1473 (applying generally to the combination
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`and not specifically referencing Kitabiyashi). Complainant does not, however, seek to strike the
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`combination of Matthies, Yamada, and Hong. See Supp. at 1 (noting that it seeks to strike opinions
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`related to “Matthies in view of Yamada and Kitabiyashi”); compare id. at 2 (seeking to strike
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`opinions related to “Kusakabe in view of Yamada and Hong/Kitabiyashi”). Thus, while references
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`to Kitabiyashi should be struck from these paragraphs, the opinions are otherwise permitted.
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`7 The claim charts did include references to both Yamada and Kitabiyashi for other claims. See,
`e.g., Mot. Ex. 10 at 197, 206. The omission of Kitabiyashi from the claim charts for claims 40, 45,
`47, and 52 implied that Respondents did not intend to rely on this particular combination for
`invalidity of these claims.
`8 To the extent that these permitted opinions go beyond the scope of Respondents’ invalidity
`contentions, I find that Complainant has not met its burden to show why they should be struck.
`Complainant offered only generalized arguments its motion, but determining which opinions were
`or were not disclosed involved a time-consuming and nuanced analysis. That analysis should have
`been conducted by Complainant.
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`Accordingly, I strike paragraph 1549 of the Pattison Report, as well as the reference to
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`Kitabiyashi in paragraphs 1467-1468 and 1472.
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`2.
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`Kusakabe in view of Yamada and Hong/Kitabiyashi
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`Complainant seeks to strike Dr. Pattinson’s opinions that the combination of Kusakabe,
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`Yamada, and Kitabiyashi (either alone or with Hong) renders claims 14, 40, 43, 45, 47, and 52
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`obvious. As an initial matter, I find that Mianyang BOE adequately disclosed this combination
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`with respect to claim 14 for similar reasons as those outlined in Section IV.B. Accordingly, I
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`decline to strike paragraphs 1663-1665 of the Pattison Report.
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`I further find that Respondents adequately disclosed the combination of Kusakabe,
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`Yamada, and Hong. See, e.g., Mot. Ex. 17 at 76. Accordingly, I decline to strike the opinions with
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`respect to this combination.
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`With regards to the combination of Kusakabe, Yamada, and Kitabiyashi, I note that the
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`chart for Kusakabe does not reference Kitabiyashi with respect to claims 40, 45, 47, or 52.9 See
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`Mot. Ex. 17. Once again, Complainant has not demonstrated why some of these opinions should
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`be struck on that ground. Instead, some of the opinions do not appear to relate to the combination
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`of Kusakabe, Yamada, and Kitabiyashi. Accordingly, I decline to strike paragraphs 1571-1637,
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`1704, 1708-1727, 1770-1773, 1775-1777, 1779-1786, 1795-1810.
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`For the above reasons, I hereby strike paragraph 1728 of the Pattison Report, as well as the
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`reference to Kitabiyashi in paragraphs 1705-1707, 1774, and 1778.
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`9 The claims charts did include references to both Yamada and Kitabiyashi for other claims. See,
`e.g., Mot. Ex. 17 at 48. The omission of these references from the claim charts for claims 40, 45,
`47, and 52 implied that Respondents did not intend to rely on this particular combination for
`invalidity of these claims.
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`V.
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`Conclusion
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`For the reasons set forth above, Motion No. 1351-013 is hereby granted-in-part. The
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`following paragraphs are struck:10 (1) paragraphs 662-668, 1162-1198, 1265, and 1270 of the Foty
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`Report; and (2) paragraphs 169-177, 191-193, 196, 199-210, 1549, and 1728 of the Pattison
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`Report, as well as the portions of paragraphs 1467-1468, 1472, 1705-1707, 1774, and 1778 that
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`specifically relate to Kitabiyashi.
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`Within seven days of the date of this document, the parties shall submit to the Office of the
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`Administrative Law Judges a joint statement as to whether they seek to have any portion of this
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`document deleted from the public version. If the parties do seek to have portions of this document
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`deleted from the public version, they must submit to this office a copy of this document with red
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`brackets indicating the portion or portions asserted to contain confidential business information.
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`The submission should be emailed by the aforementioned date and need not be filed with the
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`Commission Secretary.
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`SO ORDERED.
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`10 Complainant notes that Respondents also served an expert report by Mr. Thomas Credelle. Mot.
`at 1 n. 1. Complainant explains that “Mr. Credelle claims to have reviewed the Foty Report and,
`with no separate analysis, ‘agree’ with Dr. Foty’s opinions.” Id. While I am not explicitly ruling
`on Mr. Credelle’s report at this time, Respondents should take this order into consideration when
`considering what opinions they wish Mr. Credelle to present at the evidentiary hearing.
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