UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before The Honorable Theodore R. Essex
`Administrative Law Judge
`
`
`
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
`
`
`
`
`
`Investigation No. 337-TA-750
`
`
`
`
`COMPLAINANT APPLE INC.’S MOTION IN LIMINE NO. 3 TO PRECLUDE
`RESPONDENT MOTOROLA MOBILITY, INC. FROM OFFERING THE
`TESTIMONY OF DR. ANDREW WOLFE [RX-1885C] THAT CONCERNS
`OPINIONS FIRST EXPRESSED IN HIS SUPPLEMENTAL EXPERT REPORT
`[RX-1233C]
`
`
`Pursuant to Commission Rule 210.15, Complainant Apple Inc. (“Apple”) hereby
`
`respectfully moves
`
`in
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`limine
`
`to preclude Respondent Motorola Mobility, Inc.
`
`(“Mobility”) from offering testimony concerning opinions first expressed the August 8,
`
`2011, Supplemental Expert Report on Invalidity and Non-Infringement of, and Lack of
`
`Domestic Industry in, the Asserted Claims of U.S. Patent Nos. 7,663,607 and 7,812,828
`
`of Andrew Wolfe, Ph.D. Apple has moved to strike Dr. Wolfe’s Supplemental Expert
`
`Report [RX-1233C] in its entirety as untimely and containing opinions that are
`
`unreliable. (Mot. No. 750-018). Should this motion be granted, Motorola should also be
`
`precluded from offering testimony relying on the opinions expressed in the report.
`
`Pursuant to Ground Rule 3.1, a Memorandum is attached in support of this
`
`motion. Pursuant to Ground Rule 3.2, Apple certifies that it has made reasonable, good-
`
`faith efforts to contact and resolve the matter presented in this motion with counsel for
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`Motorola and the OUII Staff Attorney at least two business days prior to filing this
`
`
`
`

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`motion. Motorola indicated that it will oppose this motion. The OUII Staff indicated that
`
`it will state its position after reviewing the motion.
`
`Dated: September 6, 2011 (cid:9)
`
`Respectfully submitted,
`
`G ~
`Mark G. 1ivis
`Brian E. Ferguson
`Robert T. Vlasis
`Edward S. Jou
`Christopher T. Marando
`Weil, Gotshal & Manges LLP
`1300 Eye Street, N.W., Suite 900
`Washington, D.C. 20005
`Tel.: (202) 682-7000
`
`Anne M. Cappella
`Jill J. Ho
`Jacqueline T. Harlow
`Erin C. Jones
`Brian C. Chang
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3000
`
`Matthew D. Powers
`Steven S. Cherensky
`Paul T. Ehrlich
`Stefani C. Smith
`Robert L. Gerrity
`Tensegrity Law Group LLP
`201 Redwood Shores Parkway, Suite 401
`Redwood Shores, CA 94065
`Tel: (650) 802-6000
`
`Attorneys for Complainant Apple Inc.
`
`2
`
`

`
`
`
`
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before The Honorable Theodore R. Essex
`Administrative Law Judge
`
`
`
`
`
`
`
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
`
`Investigation No. 337-TA-750
`
`
`
`MEMORANDUM IN SUPPORT OF COMPLAINANT APPLE INC.’S MOTION
`IN LIMINE NO. 3 TO PRECLUDE RESPONDENT MOTOROLA MOBILITY,
`INC. FROM OFFERING THE TESTIMONY OF DR. ANDREW WOLFE [RX-
`1885C] THAT CONCERNS OPINIONS FIRST EXPRESSED IN HIS
`SUPPLEMENTAL EXPERT REPORT [RX-1233C]
`
`
`Complainant Apple Inc. (“Apple”) hereby respectfully moves in limine to
`
`preclude Respondent Motorola Mobility, Inc. (“Mobility”) from offering testimony
`
`concerning opinions first expressed in the August 8, 2011, Supplemental Expert Report
`
`on Invalidity and Non-Infringement of, and Lack of Domestic Industry in, the Asserted
`
`Claims of U.S. Patent Nos. 7,663,607 and 7,812,828 of Andrew Wolfe, Ph.D. (“Dr.
`
`Wolfe’s Supplemental Expert Report”) [RX-1233C]. Apple has filed a motion to strike
`
`Dr. Wolfe’s Supplemental Expert Report [RX-1233C] in its entirety as untimely and
`
`containing opinions that are unreliable (“Apple’s motion to strike”) (Mot. No. 750-018).
`
`Accordingly, if Apple’s motion to strike Dr. Wolfe’s Supplemental Expert Report is
`
`granted, the ALJ should also grant this motion in limine to preclude Motorola from
`
`offering the portions of Dr. Wolfe’s direct witness statement [RX-1885C] that rely on
`
`opinions first expressed in his Supplemental Expert Report [RX-1233C].
`
`
`
`

`
`
`
`I.
`
`BACKGROUND
`
`Pursuant to Order No. 8, initial expert reports were due on July 15, 2011, and
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`rebuttal expert reports were due on July 27, 2011. On July 15, Dr. Wolfe submitted an
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`initial expert report concerning the invalidity and unenforceability of the ’607 patent and
`
`the ’828 patent. On that same date, Dr. Vivek Subramanian submitted an initial expert
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`report regarding infringement of the ’607 patent, and Dr. Ravin Balakrishnan submitted
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`an initial expert report regarding infringement of the ’828 patent and U.S. Patent No.
`
`5,379,430 (“the ’430 patent”). On July 27, Dr. Wolfe submitted a rebuttal report
`
`concerning non-infringement and lack of domestic industry in the ’607 patent and the
`
`’828 patent. On that same date, Dr. Subramanian submitted a rebuttal report regarding
`
`validity of the ’607 patent and Dr. Balakrishnan submitted a rebuttal report regarding the
`
`validity of the ’828 patent and the ’430 patent.1
`
`Near midnight on the evening of August 8, 2011, nearly two weeks after rebuttal
`
`reports had been exchanged, Dr. Wolfe submitted a Supplemental Expert Report on
`
`Invalidity and Non-Infringement of, and Lack of Domestic Industry in, the Asserted
`
`Claims of the ’607 patent and ’828 patent [RX-1233C]. In Dr. Wolfe’s Supplemental
`
`
`1 Dr. Balakrishnan also submitted supplemental reports on August 4, 2011, but the
`differences between those supplemental reports and Dr. Wolfe’s supplemental reports are
`significant to this motion. Dr. Balakrishnan submitted a supplemental rebuttal report
`regarding the validity of the ’430 patent responding to a supplemental report submitted
`by Dr. C Douglass Locke, and Dr. Balakrishnan also submitted a supplemental report
`regarding infringement of the ’828 patent based on third party testimony from depositions
`that occurred after his initial report had been filed. Unlike Dr. Wolfe’s supplemental
`report, however, Dr. Balakrishnan’s supplemental report only provided additional support
`for opinions he had offered in his initial reports, and he explicitly explained how the
`testimony he relied on was directly relevant to the operation of the Accused Products for
`which he was offering infringement opinions.
`
`
`
` 2
`
`

`
`
`
`Expert Report, Dr. Wolfe’s supplemental opinions as to invalidity are based on the
`
`Quantum Research Group QMatrix products and U.S. Patent No. 5,648,642 (“Miller
`
`’642”). Dr. Wolfe’s Supplemental Expert Report also relies on the deposition testimony
`
`of Joshua Strickon
`
`to supplement his opinions regarding claim construction,
`
`infringement, and domestic industry. Because Dr. Wolfe’s Supplemental Expert Report
`
`expresses opinions that are untimely and unreliable, on August 25, 2011, Apple filed a
`
`motion to strike Dr. Wolfe’s Supplemental Expert Report. (Mot. No. 750-018).
`
`Pursuant to the amended procedural schedule set forth in Order No. 9, Motorola
`
`provided the Direct Witness Statement of Dr. Andrew Wolfe [RX-1885C] on August 22,
`
`2011. Since filing its motion to strike, Apple has identified several statements in Dr.
`
`Wolfe’s Direct Witness Statement [RX-1885C] that refer to opinions first expressed in
`
`Dr. Wolfe’s Supplemental Expert Report [RX-1233C]. Specifically, Apple has identified
`
`references to the Miller ’642 patent, Quantum Research Group QMatrix products, and/or
`
`the deposition testimony of Joshua Strickon in the following questions and answers—
`
`Question and Answer 138, 139, 172, 173, 280, 281, 282, 283, 284, 285, 286, 287, 288,
`
`289, 332, 333, 485, 547, 548, and 549. Further, Appendices B7 and A4 are claim charts
`
`relying on the Miller ’642 patent and the Quantum Research Group QMatrix products,
`
`respectively. These questions and answers along with Appendices B7 and A4 are the
`
`subject of the present motion.
`
`II.
`
`ARGUMENT
`
`As fully set forth in Apple’s motion to strike, ALJs have routinely granted
`
`motions to strike expert reports that are untimely and unreliable such as Dr. Wolfe’s
`
`Supplemental Expert Report [RX-1233C]. Further, because expert reports are not
`
`
`
` 3
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`

`
`evidence, granting a motion to strike an expert report is essentially granting a motion
`
`in
`
`limine to preclude the expert's testimony concerning that subject matter at the hearing.
`
`See Certain Equipment for Telecommunications or Data Communications Networks,
`
`Including Routers, Switches, and Hubs, and Components, Thereof, Inv. No. 337-TA-574,
`
`Order No. 21, 2007 ITC LEXIS 492, at *1 n.1 (May 8, 2007). If Apple's motion to strike
`
`the Supplemental Expert Report of Dr. Wolfe is granted, therefore, Apple's motion
`
`in
`
`limine to preclude Motorola from offering Dr. Wolfe's testimony relying on the opinions
`
`expressed therein should also be granted.
`
`Accordingly, Motorola should be precluded from offering testimony as to the
`
`portions of the answers to questions 138, 139, 172, 173, 280, 281, 282, 283, 284, 285,
`
`286, 287, 288, 289, 332, 333, 485, 547, 548, and 549 in Dr. Wolfe's Direct Witness
`
`Statement [RX-1885C] that are based on opinions first expressed in Dr. Wolfe's
`
`Supplemental Expert Report [RX-1233C]. Further, Motorola should be precluded from
`
`offering Appendices B4 and A7 of Dr. Wolfe's Direct Witness Statement [RX-1885C]
`
`for receipt into evidence in their entirety.
`
`III. CONCLUSION
`
`Therefore, for the reasons more fully set forth above, Apple respectfully requests
`
`that the ALJ preclude Motorola from the testimony of Dr. Wolfe as set forth in his Direct
`
`Witness Statement [RX-1885C] that relies on opinions first expressed in Dr. Wolfe's
`
`Supplemental Expert Report [RX-1233C].
`
`Dated: September 6, 2011 (cid:9)
`
`Respectfully submitted,
`
`G!
`
`

`
`
`
`
`
`
`
`
`
`Mark G. Davis
`Brian E. Ferguson
`Robert T. Vlasis
`Edward S. Jou
`Christopher T. Marando
`Weil, Gotshal & Manges LLP
`1300 Eye Street, N.W., Suite 900
`Washington, D.C. 20005
`Tel.: (202) 682–7000
`
`Anne M. Cappella
`Jill J. Ho
`Jacqueline T. Harlow
`Erin C. Jones
`Brian C. Chang
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3000
`
`Matthew D. Powers
`Steven S. Cherensky
`Paul T. Ehrlich
`Stefani C. Smith
`Robert L. Gerrity
`Tensegrity Law Group LLP
`201 Redwood Shores Parkway, Suite 401
`Redwood Shores, CA 94065
`Tel: (650) 802–6000
`
`Attorneys for Complainant Apple Inc.
`
` 5
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing was served on September 6, 2011 as indicated, on
`the following:
`
`Via EDIS
`The Honorable James R. Holbein
`Secretary
`U.S. International Trade Commission
`500 E Street SW, Room 112
`Washington, D.C. 20436
`
`Via Email
`Lisa Kattan
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, S.W., Room 401
`Washington, D.C. 20436
`lisa.kattan@usitc. gov
`
`Via Hand Delivery & Email (2 copies)
`The Honorable Theodore R. Essex
`Office of the Administrative Law Judge
`U.S. International Trade Commission
`500 E Street SW, Room 317
`Washington, D.C. 20436
`gregory. moldafsky@usitc. gov
`
`Via Email and Hand -Delivery
`Charles F. Schill
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, N.W.
`Washington, DC 20036
`motorola750@steptoe.com
`
`Via Email
`Charles K. Verhoeven
`Quinn Emanuel Urquhart & Sullivan LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`
`Via Email
`Robert T. Haslam
`Covington & Burling LLP
`333 Twin Dolphin Drive, Suite 700
`Redwood Shores, CA 94065-1418
`
`David A. Nelson
`Quinn Emanuel Urquhart & Sullivan LLP
`500 West Madison Street, Ste. 2450
`Chicago, IL 60661
`
`Robert D. Fram
`Covington & Burling LLP
`One Front Street
`San Francisco, CA 941110
`
`Edward J. DeFranco
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`
`Moto-Apple-750@quinnemanuel .com
`
`AppleCov@cov.com
`
`Colleen Spha
`Paralegal