UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, DC
`
`In The Matter Of
`
`CERTAIN SILICON MICROPHONE
`PACKAGES AND PRODUCTS
`CONTAINING SAME
`
`337-TA-825
`
`ORDER NO. 17: GRANTING REQUEST FOR RECONSIDERATION OF ORDER NO. 15
`REGARDING COMPLAINANT’S MOTION IN LIMINE NO. 1 TO .
`EXCLUDE IMPROPERLY DISCLOSED TESTIMONY, EXHIBITS, AND
`ARGUMENT
`
`(October 5, 2012)
`
`During Opening Argument on September 28, 2012, I realized it was possible I had
`
`misunderstood certain aspects of Complainant’s Motion No. 825-020 and in particular
`
`Complainant’s Motion in Limine No. l. Accordingly, during the hearing I provided Complainant
`
`the opporttmity to brief the issue and request reconsideration. On October 2, 2012, Complainant
`
`submitted a bench memo seeking reconsideration of my ruling in Order No. 15 regarding Motion in
`
`Limine No. 1. On October 4, 2012, Respondents submitted a responsive bench memo in opposition
`
`to the request for reconsideration. What follows is my reconsideration of the issue, which I
`
`announced from the bench during the hearing.
`
`Respondents’
`
`affirmative defense was pled as follows:
`
`A
`
`Knowles is barred by the doctrines of res judicata and/or collateral estoppel from
`asserting any claim or making any argument contrary to, or at odds With, any
`argument or statement it made in any prior proceeding in which it asserted the ‘049,
`‘6l6, ‘23l, and/or ‘O89patents or in any prior proceedings in which the validity of
`the ‘049, ‘6l6, ‘213 and/or ‘O89patents was at issue.
`
`I find this allegation by Respondent falls far short of adequately pleading collateral estoppel / res
`
`judicata required by Commission Rule 210.13(b). Collateral estoppel bars litigation of issues
`
`previously decided. Res judicata bars litigation of previously decided claims. These doctrines
`
`differ from the doctrine of judicial estoppel that was noticed in Respondents’ fifth affirmative
`
`defense to prevent Knowles from taking inconsistent positions in this investigation.
`
`1
`
`
`WASHINGTON, DC
`
`In The Matter Of
`
`CERTAIN SILICON MICROPHONE
`PACKAGES AND PRODUCTS
`CONTAINING SAME
`
`337-TA-825
`
`ORDER NO. 17: GRANTING REQUEST FOR RECONSIDERATION OF ORDER NO. 15
`REGARDING COMPLAINANT’S MOTION IN LIMINE NO. 1 TO .
`EXCLUDE IMPROPERLY DISCLOSED TESTIMONY, EXHIBITS, AND
`ARGUMENT
`
`(October 5, 2012)
`
`During Opening Argument on September 28, 2012, I realized it was possible I had
`
`misunderstood certain aspects of Complainant’s Motion No. 825-020 and in particular
`
`Complainant’s Motion in Limine No. l. Accordingly, during the hearing I provided Complainant
`
`the opporttmity to brief the issue and request reconsideration. On October 2, 2012, Complainant
`
`submitted a bench memo seeking reconsideration of my ruling in Order No. 15 regarding Motion in
`
`Limine No. 1. On October 4, 2012, Respondents submitted a responsive bench memo in opposition
`
`to the request for reconsideration. What follows is my reconsideration of the issue, which I
`
`announced from the bench during the hearing.
`
`Respondents’
`
`affirmative defense was pled as follows:
`
`A
`
`Knowles is barred by the doctrines of res judicata and/or collateral estoppel from
`asserting any claim or making any argument contrary to, or at odds With, any
`argument or statement it made in any prior proceeding in which it asserted the ‘049,
`‘6l6, ‘23l, and/or ‘O89patents or in any prior proceedings in which the validity of
`the ‘049, ‘6l6, ‘213 and/or ‘O89patents was at issue.
`
`I find this allegation by Respondent falls far short of adequately pleading collateral estoppel / res
`
`judicata required by Commission Rule 210.13(b). Collateral estoppel bars litigation of issues
`
`previously decided. Res judicata bars litigation of previously decided claims. These doctrines
`
`differ from the doctrine of judicial estoppel that was noticed in Respondents’ fifth affirmative
`
`defense to prevent Knowles from taking inconsistent positions in this investigation.
`
`1
`
`
`
`Even if I were to consider Respondents’ fifth affinnative defense as adequately pleading
`
`collateral estoppel and res judicata, Respondents’ failure to disclose the specifics of these defenses
`
`in response to Knowles’ interrogatories seeking Respondents’ invalidity contentions, and in
`
`particular Interrogatory No. 30, is fatal. Contrary to Respondents’ argument in its opposition,
`
`Interrogatory No. 30 seeks more than just its broad invalidity contentions. The express language of
`
`Interrogatory No. 30 also requires Respondents “set forth the basis for Your contention that the
`
`claim is invalid, including a limitation-by-limitation claim chart identifying the basis ...” (emphasis
`
`added) Thus, Respondents had an obligation in answering Interrogatory No. 30 to disclose those
`
`limitations that Respondents assert are met by reason of collateral estoppel / res judicata.
`
`Respondents did not. Nor did Respondents supplement its responses to Interrogatory No. 30 under
`
`applicable Commission rules. (See 19 CFR § 2l0.27(c).) Because Respondents failed to
`
`adequately disclose the basis for their invalidity contentions arising from their collateral estoppel /
`
`res judicata arguments in response to Knowles interrogatory requests directed to the same,
`
`Respondents’ reliance on collateral estoppel / res judicata to support any of their invalidity
`
`contentions in their pre-hearing brief is improper.
`
`Thus, accordingly, while I am not precluding Respondent from proving invalidity, when it
`
`provided sufficient notice of the same to Complainant under Commission and applicable ground
`
`rules, I am ordering that all references to collateral estoppel or res judicata relied on by Respondents
`
`as support for any invalidity argument be struck from Respondents’ pre-hearing brief. As set forth
`
`above, Knowles request for reconsideration is hereby GRANTED.
`
`SO ORDERED.
`
`%W£/ZZ/~»
`
`Thomas B. Pender
`Administrative Law Judge
`
`2
`
`
`
`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. 17 has been served
`upon the following parties via first class mail and air mail where necessary on
`OEEEIH]; 5
`
`,20lZ. M'?Lisa R. B on, Acting Secretary
`
`U.S. International Trade Commission
`500 E Street, SW, Room 112A
`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
`
`OneInternationalPlace
`Boston, MA 021 10
`
`(
`(
`
`)Via Hand Delivery
`)Via Ovemight Mail
`
`wia
`(
`)
`
`First ClassMail
`ther:
`
`PUBLIC MAHJNG LIST
`
`Heather Hall
`LEXIS - NEXIS
`
`9443SpringboroPike
`Miamisburg, OH 45342
`
`Kenneth Clair
`THOMSON WEST
`
`1100 —13"‘Street NW
`Suite 200
`Washington, DC 20005
`
`(
`(
`
`)Via Hand Delivery
`)Via Overnight Mail
`
`W
`(
`
`)
`
`FirstClassMail
`ther:
`
`(
`(
`
`)Via Hand Delivery
`)Via Overnight Mail
`
`2\)?\;ia First Class M ail
`(
`)
`her:
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
