UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, DC
`
`In The Matter Of
`
`CERTAIN SILICON MICROPHONE
`PACKAGES AND PRODUCTS
`CONTAINING SAME
`
`337-TA-825
`
`ORDER NO. 15: REGARDING COMPLAINANT’S MOTION IN LIMINE NO. 1 TO
`EXCLUDE IMPROPERLY DISCLOSED TESTIMONY, EXI-HBITS,
`AND ARGUMENT
`
`_
`
`(September 26, 2012)
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`On September 7, 2012, Complainant Knowles Electronics, LLC (Knowles) filed a
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`Motion in Limine to Exclude Improperly Disclosed Testimony, Exhibits, and Argument (Motion
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`Docket No. 825-020). Knowles first seeks to exclude the testimony (including exhibits when
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`relevant) of Complainants’ expert. Dr. Michael G. Pecht because:
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`It contains new opinions not presented in either of his expert reports or in his deposition,
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`as well as related exhibits;
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`It contains irrelevant opinions relating to contentions Respondents have now abandoned,
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`as well as a related exhibit;
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`It represents an attemptto rely on invalidity theories not timely disclosed in accordance
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`with the Procedural Schedule, which required Respondents to disclose their invalidity
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`contentions by April 24, 2012; and
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`It contains testimonial support for claim constructions asserted for the first time long after
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`the April 13, 2012 deadline.
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`l
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`Knowles also seeks to exclude pre-hearing brief arguments not previously disclosed in
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`discovery addressing:
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`The new contention that the combination of the Minervini ’91Oreference and Knowles
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`Three-Piece Microphone Packages allegedly render the asserted claims of U.S. Patent No.
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`7,439,616 (“the ’6l6 patent”) obvious;
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`The new contention that the Une prior art reference that Respondents contend anticipates
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`claims of U.S. Patent No. 8,018,049 (“the ’049 patent”) was somehow enabled;
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`The new contention that Figures 1-3 in the ’049 patent support an argument that some of
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`the asserted claims are somehow invalid for lack of written description; and
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`The new contention that the principle of issue preclusion should preclude Knowles from
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`arguing (a) that various references or combinations do not disclose various limitations of the
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`asserted claims, (b) that there would not have been a motivation to combine various references,
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`or (c) that various objective indicia of non-obviousness support the validity of the patents
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`asserted in this Investigation.
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`Respondents Analog Devices, Inc. (“ADI”), Amkor Technology, Inc. (“Amkor”), and
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`Avnet, Inc. (“Avnet”) (collectively, “Respondents”), replied to Complainants’ MiL No. 1 on
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`September 13, 2012. Respondents’ first reply is to allege that collateral estoppel precludes
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`Knowles from re-trying issues on which it lost in Investigation No. 695 and avers this position
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`was timely disclosed.
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`Analysis by Issue
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`I.
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`Collateral Estoppel Issue (Generally)
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`Just as I refused to rule on Respondents’ allegations directed to collateral estoppel in
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`deciding Respondents’ MiL No. 5 on substantive grounds, I must also refuse to do so to rule on
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`the instant motion. To exclude any evidence on that basis can only be done in response to a
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`Motion for Summary Determination establishing the affirmative defense is not available.
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`Otherwise, to the extent the matters are properly noticed for this investigation, collateral estoppel
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`will only be decided after a hearing.
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`In this investigation, Respondents properly plead the affirmative defense of collateral
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`estoppel as their Fifih Affirmative Defense. Hence, Knowles was on notice of the defense and
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`could have conducted discovery designed to explore the matter. Knowles claims it did conduct
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`discovery through application of Interrogatory No. 30. While it is possible someone could
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`construe Interrogatory No. 30 to include asking about collateral estoppel, I cannot agree that
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`Respondents were ll[1I6SpOI1SlV6to Interrogatory No. 30 if they failed to discuss collateral
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`estoppel in response, because invalidity, which is undoubtedly the point of Interrogatory No. 30,
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`is not usually associated with collateral estoppel. On the other hand, it could also be argued that
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`Respondents were “two cute by a half’ in not discussing collateral estoppel on a claim by claim
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`basis in response to Interrogatory No. 30.1 Still, there were specific questions Knowles could
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`have asked that would have ‘prevented any evasion concerning the collateral estoppel and these
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`were, apparently, unasked. Under these circumstances, I decline to exclude any reference to
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`collateral estoppel as it may pertain to any failure by Respondents to reply to Interrogatory No.
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`30. In so doing, I note that Respondents still have to prove collateral estoppel and if they do not,
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`all of the answers related thereto will be a nullity.
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`1 I note Dr. Pecht’s proposed testimony at Q/A 742 and 752 where he uses a very broad
`meaning for the tenn invalidity. If I were to hold Respondent responsible for the tenn used by
`their expert, then it could be fairly said they failed to properly respond to Interrogatory No. 30.
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`II.
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`Dr. Pecht’s Opinions on Non-Obviousness
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`Knowles seeks to exclude responses to Questions 738-39, 742-43, 747-52, 754-63, 770, 773,
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`779, 780, 785, 787-92, and 794-97 in Dr. Pecht’s Direct Witness Statement because these
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`allegedly contain not disclosed in expert discovery. (These new opinions relate to six objective
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`indieia of non-obviousness and are summarized in Complainant’s Memorandum in Support at
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`pp. 6-7.) Respondents have agreed to withdraw Q/As 787-792. Otherwise, Respondent’s oppose
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`and claim the opinions were disclosed and that any exhibits Knowles seeks to exclude did not
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`exist at the time Dr. Pecht Wrotehis report or because they were considered in forming his expert
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`report.
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`I have reviewed the parties’ contentions on the Q/As relevant to this part of the MiL. Before
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`ruling, I remind the parties that secondary considerations of non- obviousness should not be
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`considered a primary issue in this investigation. Regardless, I find:
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`With regard to Q/As 738 and 739, the record cited by Respondents (including the Expert
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`Report boilerplate answers) fails to give Complainant adequate notice of their subject area.
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`Hence, Q/As 738 and 739 are struck and Respondents may not use Dr. Pecht to sponsor any
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`document referenced therein.
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`The first two sentences of Q/A 742 are struck along with the first word of the third
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`sentence since this is not supported by the record cited by Respondents and is irrelevant to his
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`testimony. Adequate notice of Q/As 743, 747 was provided in Dr. Pecht’s report. I note that
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`Q/A 748 is struck because RX-0186C (paragraphs 681-682) does not give adequate notice of the
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`subject area of the answer, but also note that even had I not struck it I would give it little Weight
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`because it is a leading question with a suggested answer.
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`Q/As 749, 750, 752, 751, 756, 757, 758, 759, 761, 794, 795, 796, and 797 are struck because
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`the record cited by Respondents fails to give Complainant reasonable notice of their subject area.
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`(In one particular instance, Q/A 758, I note Respondents’ proffered support contradicts the
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`answer.) With regard to Q/A 760, that part of the answer from “however” in the last sentence is
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`struck, otherwise sufficient notice was provided. With regard to Q/A 762, “and RF immunity” is
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`struck from the answer, otherwise the answer is virtually word for word from RX-0186. In
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`passing I note that Respondents reference to testimony in a previous investigation is not helpful.
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`Respondents did provide adequate notice for Q/As 754, 755, 763, 770, 773, 779, 780, and 785.
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`With regard to the exclusion of exhibits, exhibits referenced in Q/As that were not struck are not
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`excluded. Exhibits referenced in Q/As that are stmck may only be used to the extent
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`Respondents can use a witness to sponsor these exhibits other than Dr. Pecht and adequate notice
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`was given of the question and answer applicable to the exhibit in question.
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`IH.
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`Dr. Pecht’s Opinions on Obviousness Combinations
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`Knowles seeks to strike Q/As 56, 310-ll, 320, 364-65, and 407 of Dr. Pecht’s Direct Witness
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`Statement, and Questions 7-8 in his Rebuttal Witness Statement. Knowles alleges these Q/As
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`should be excluded on the grotmd that these new opinions relating to obviousness combinations,
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`and alleged motivations to combine, were not disclosed in expert discovery. See Grotuid Rule
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`12.7.6.
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`Respondents’ introduction of RX-O112, as discussed within Q/As 364 and 365 of Dr. Pecht’s
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`Direct Witness Statement, is improper and hence these Q/As are struck. With regard to
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`RX-0112, Respondent’s logic shows a basic misunderstanding of the process. The key is
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`whether a document or line of testimony is fairly disclosed (adequate notice is given to the other
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`party) in an expert’s report or a deposition, not whether another party’s expert witness addressed
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`it in their expert report.
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`With regard to Q/A 56, the sentence in the first paragraph of Dr. Pecht’s answer starting
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`with “There is also an electrical connection” is struck since this sentence has nothing to do with
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`the expert report reference referenced by Respondents (RX-0186C) and is clearly motivated by
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`claim construction issues.
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`With regard to Q/As 310 and 311, I find the emphasis of the answers is far different from
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`the references to Dr. Pecht’s expert report cited by Respondents and thus Q/As 310 and 311 are
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`struck. Q/A 320 is struck because of the question asked and the contents of the second paragraph.
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`The first paragraph is undoubtedly referenced in RX-0186, paragraph 188, but not the second. In
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`addition, the question is clearly focused on getting the answer ir1the second paragraph. If the
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`question as whether there was an acoustic port and what does that mean, an answer consistent
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`with RX-0186 would have been acceptable, but not the combination used. The second paragraph
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`of the answer to Q/A 407 is struck as being non-responsive to the question and because there is
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`insufficient notice to this answer in Respondent’s cited reference.
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`Q/As 7 and 8 of Dr. Pecht’s rebuttal witness statement are struck. I do not agree that
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`RX-0186C provided adequate notice to Knowles of these questions or answers, especially with
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`respect to the testimony concerning MEMS microphones in the answer to Q/A 7 and the
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`transducer references in Q/A 8.
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`IV.
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`Dr. Pecht’s Anticipation Opinions Relating to Three-Package Housings
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`Knowles moves to exclude Dr. Pecht’s responses to Questions 540, 546, 547, 549, 551, and
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`553-558 of his Direct Witness statement to the extent that these answers discuss and rely upon
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`exhibits RPX~l and RX-202C. Knowles alleges Dr. Pecht did not rely or identify these
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`documents as support for his opinions dming the course of expert discovery. While it may be
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`true that Dr. Pecht did not use RPX-1, it is true he discussed Knowles’s SP0102BE3 (the RPX
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`microphone) and SPOl02ZE (paragraphs 482 and 483). Thus, it may be reasonably argued that
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`llespondents’ use of RPX-1 is meaningless. However, it is plainly wrong for Respondents to
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`utilize Dr. Loeppe1t’stestimony for any purpose in preparing Dr. Pecht’s testimony because it
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`cannot have been used in his expert report or deposition. Nevertheless, Respondents aver this
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`did not change the substance of his testimony and thus Knowles was not prejudiced. Therefore,
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`Knowles’s remedy is that all references to Dr. Loeppert must be removed from the Q/As in
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`question (540, 546, S47, 549, 551, and 553-558) and the answers must not reflect any substantive
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`use of Dr. Loeppert’s testimony.
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`V.
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`Dr. Pecht’s Opinions on Lack of Written Description
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`Knowles alleges that nowhere in Dr. Pecht’s expert reports, deposition testimony, or even his
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`direct witness statement did Dr. Pecht opine that elements in Kr1owles’sconstruction of “sealing
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`ring” —namely that the feature is metal and is used to seal the package to a higher-level assembly
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`—are not adequately supported by the written description of the ’6l6 patent. However, Knowles
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`now alleges that for the first time, in his rebuttal witness statement, Dr. Pecht has opined that the
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`“metal” and “higher-level assembly” elements in Knowles’s claim constructions would somehow
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`render the asserted claims of the ’6l6 patent invalid for lack of written description. RX-0912C
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`at Q/A 125. Knowles also asserts that because Respondents (1) bear the burden of proving lack
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`of written description, (2) were on notice of Knowles’s claim construction of “sealing ring” well
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`before the submission of expert reports; and (3) had access to the ’6l 6 patent (on which their
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`written description argument is based) since the inception of this Investigation, Dr. Pecht was
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`obliged to identify this opinion in his opening expert report. Accordingly, Knowles moves to
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`exclude Q/A 125.
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`Respondents oppose and assert:
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`. Dr. Pecht’s opinions regarding the insufficiency of Knowles’s written
`.
`.
`description were thoroughly disclosed in Dr. Pecht’s rebuttal expert report, served
`on July 9, 2012. See, e.g., RX-0424C at 1118 (“It is my opinion that the asserted
`claims (1, 2, 8-12, 15-18) of the ‘616 patent lack sufficient description in the
`specification such that a person of ordinary skill in the art would understand that
`the inventor was in possession of the claimed technology”); 111]80-112 (discussing
`at length Dr. Pecht’s opinions regarding the lack of sufficient written description
`under Knowles’s construction of the term “sealing ring.”).
`
`Dr. Pecht’s written description arguments are properly within the scope of
`his rebuttal expert report because his opinions are in response to Knowles’s
`position that a “sealing ring” is an integral part of the substrate, which Knowles
`disclosed as part of its infiingement analysis, not as a part of its claim
`construction argument.
`Regardless,
`they could also be
`considered a
`supplementation to his initial expert report, also properly within the scope of
`expert discovery.
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`First, I note there is no paragraph beyond l4 in RX-0424C provided to me by the parties
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`Thus, I conclude Respondents must be referring to Exhibit RX-0425. That being true, I have
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`read the paragraphs in RX-0425 referred to and agree they provide adequate notice to Knowles
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`concerning the contents of Q/A 125.
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`VI.
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`Obviousness Opinions Regarding Glen ‘653 and Giasolli
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`Responses to Q/As 451, 452, and 705 in Dr. Pecht’s Direct Witness statement contain
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`additional opinions relating to obviousness. Knowles alleges these opinions were not disclosed
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`IIIDr Pecht’s expert reports or in deposition.
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`Respondents allege the opinions underlying Q/A 705 were disclosed in RX-0186C. I agree
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`the reference was disclosed but fmd no mention of the USPTO finding it to be prior art during a
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`reexamination. Nor did Respondents list Giasolli as prior art in answering Interrogatory No 30
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`Q/A 705 is struck.
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`Respondents allege Knowles was provided adequate notice Q/As 451 and 452 of
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`Dr. Pecht’s direct witness statement. I have examined RX—O186C,paragraph 409 and find no
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`suggestion, inference, or even a hint beyond Glenn. Nor do I find it relevant that Respondents
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`may have noted their belief of the combinations testified to in Q/As 451 and 452 existed
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`independent of Dr. Pecht. The key is the connection to Dr. Pecht. Accordingly, I strongly
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`disagree with Respondents and find Respondents did not provide adequate notice to Knowles
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`that Dr. Pecht had any opinion related to Glenn in combination with any additional patents.
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`Thus, Q/As 451 and 452 are struck.
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`VII. Dr. Pecht’s Construction of the term “Cover”
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`Knowles alleges that in an effort to support Respondents’ proposed construction of
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`“attaching a plurality of package covers” in claim 21 of the ’049 patent, Dr. Pecht provided new
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`testimony in his rebuttal witness statement, at Q/A 77, which modified his interpretation of the
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`term “cover” in the claims and specifications of the asserted patents to include the top portion 48
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`or top portion 48 and side walls 52. (RX-0912C at Q/A 77.) Knowles avers Dr. Pecht opined, in
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`his expert report and deposition, that the top portion 48 and side walls 52 of the three-piece
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`housing embodiments in the specification of the ’049 patent would not constitute a “cover” under
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`the asserted claims. Expert Report at paragraph 692-94; Pecht Deposition Transcript, Ex. F at
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`pp. 121-25. Thus, Dr. Pecht’s opinion on “cover” in his witness statements is not only new, but
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`also contradicted by the opinions he disclosed in expert discovery. RX-0720C at Q/A 689.
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`Respondents oppose and assert Dr. Pecht’s opinion is not new. In the alternative
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`Respondents aver there is no need to strike Q/A 77, but instead Knowles should raise it upon
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`cross examination if it believes it to be true.
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`'
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`9
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`My review of Dr. Pecht’s expert report, the patents and his new rebuttal statement reveals
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`substantial ambiguity. Dr. Pecht’s testimony in Q/A 77 is not clear, rather it is accusatory and
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`designed to accuse Knowles of modifying its position to suit its interests. Accordingly, While I
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`will not strike it, I do have questions about its probative value.
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`VIII. Dr. Pecht’s Opinions Seeking to Link the ‘695 and ‘825 Investigations
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`Knowles alleges that Respondents, in their Pre-hearing Brief, contend for the first time that
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`proceedings from an earlier Investigation (“the ’695 Investigation”) allegedly bar Knowles from
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`advancing a number of positions under the doctrine of issue preclusion. While opposing this on
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`various grounds, Knowles also seeks to exclude an opinion by Dr. Pecht in Q/A of his Rebuttal
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`Witness Statement attempting to link the investigations.
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`(RX-0912, Q/A 19.) Knowles moves to
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`exclude upon the grounds that these are new opinions that should have been disclosed pursuant
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`to Ground Rule 12.7.6.
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`Respondents oppose and assert Dr. Pecht addressed the matter in his Rebuttal Expert Report
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`at paragraph 19. Although Respondent’s incorrectly cite to Exhibit RX-0912C in support of
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`their argument, Exhibit RX-0425C, paragraph 19 does provide sufticient notice of Dr. Pecht’s
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`opinion and hence I will not strike Q/A 19.
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`IX.
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`Dr. Pecht’s Testimony Concerning the Henning and Ohta Combination
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`Knowles alleges Respondents, in their Pre-Hearing Brief, did not argue that any of the
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`asserted claims of the ’616 patent would have been obvious over a combination of the Henning
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`and Ohta references. Thus, under Ground Rule 9.2, Respondents waived the argument. Because
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`that combination is no longer at issue, testimony in Dr. Pecht’s direct witness statement
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`explaining why that combination allegedly renders the asserted claims of the ’616 patent obvious
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`is irrelevant and should be stricken. (Reference Q/A 616-618, 611-13.) Respondents replied and
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`10
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`say they do not challenge this request and accordingly, these paragraphs are stricken or
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`withdrawn. In addition, any exhibit supported by these Q/As may not be admitted unless it is
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`sponsored by a witness unrelated to these references.
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`X.
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`Dr. Pecht’s Testimonv Advancing Alleged Untimely Invalidity Theories, Etc.
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`This aspect of this part of the MiL involves Knowles contention that Respondents failed to
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`timely serve invalidity contentions according to the procedural schedule. In this part of the MiL
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`Knowles admits it has already filed a motion to strike portions of Dr. Pecht’s testimony that
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`Respondents allegedly did not disclose (825-004).
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`Not surprisingly, Respondents oppose. Respondents assert they did timely disclose all of the
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`validity arguments made in their Pre-Hearing Brief. Regardless, I am going to decline to rule on
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`this aspect of this motion. Knowles is really asking me to sanction Respondents for allegedly
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`late discovery replies. I decline to do this for several reasons.
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`First, I fnd Knowles has failed to carry its burden of persuasion with respect to the
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`remainder of its motion. Specifically, Knowles does not say Dr. Pecht’s testimony is outside the
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`scope of his expert reports or deposition testimony. Hence, it is presumed to be admissible.
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`Second, with respect to this portion of its MiL, Knowles provides an insufficient justification
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`and an inadequate explanation as to why Dr. Pecht’s opinions should be struck on both
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`evidentiary and equitable grounds related to late discovery replies. Instead, I find Knowles
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`offers a series of conclusory assertions inadequate to sustain the remedy it requests.
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`Third, if Respondents were as dilatory as Knowles suggests, then it should have moved for
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`an order compelling discovery and if that failed, moved for sanctions. This would have made the
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`matters clear and there would have been significantly more accountable and timely resolution of
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`the issue ensuring a clearer record of what occurred.
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`ll
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`Accordingly, as stated, the remainder of Knowles MiL is denied.
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`SO ORDERED.
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`flfiéé. -~
`
`Thomas B. Pender
`Administrative Law Judge
`
`

`
`IN THE MATTER OF CERTAIN SILICON MICROPHONE
`PACKAGES AND PRODUCTS CONTAINING SAME
`
`337-TA-825
`
`CERTIFICATE OF SERVICE
`
`I, Lisa R. Barton, hereby certify that the attached PUBLIC ORDER NO. 15 has been served
`upon the following parties via first class mail and air mail where necessary on
`September 21
`, 2012.
`
`L
`
`”
`
`'
`"fir
`Lisa R. B on, Acting Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room l 12A
`Washington, DC 20436
`
`FOR COMPLAINANT KNOWLES ELECTRONICS LLC.:
`
`David A. Garr, Esq.
`COVINGTON & BURLING LLP
`1201 Pennsylvania Avenue, N.W.
`Washington, DC 20004
`
`)Via Hand Delivery
`(
`)Via Overnight Mail
`(
`(\)Via First Class Mail
`(
`)Other:
`
`FOR RESPONDENTS ANALOG DEVICES, INC., AMKOR TECHNOLOGY, INC. &
`AVNET INC.
`
`Steven Bauer, Esq.
`PROSKAUER ROSE, LLP
`One International Place
`Boston, MA 02110
`
`PUBLIC MAILING LIST
`
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`(
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`
`Heather Hall
`LEXIS - NEXIS
`9443 Springboro Pike
`Miamisburg, OH 45342
`
`Kenneth Clair
`THOMSON VVEST
`1100 - 13"‘Street NW
`Suite 200
`Washington, DC 20005
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