Published on:

Administrative Law Judge Denies Request to Exclude Rebuttal Witness and States That the Request Did Not Merit a Motion that Expends the Resources of the ITC and the Parties

Complainant Knowles Electronics, LLC (“Knowles”) initiated an investigation with the ITC against Analog Devices, Inc. Amkor Technology, Inc. and Avnet, Inc. (collectively, the Respondents) over silicon microphone packages. During the proceeding, Knowles submitted a rebuttal witness statement from Mr. Phillip Green. The Respondents moved to exclude the rebuttal statement alleging that Mr. Green’s opinion of the commercial success of the asserted claims of the patents-in-suit and the commercial success of Knowles products was outside the scope of his expertise.

According to the Administrative Law Judge, “Respondents assert Mr. Green fails to provide any evidence to support the nexus between the asserted patents and the commercial success of the Knowles MEMS products and cannot do so because he is not qualified to opine on what features resulted in their commercial success.”

The Administrative Law Judge summarized Respondents’ motion as follows: “Essentially, Respondents argue that under Daubert (Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 597 (1993) and Kumho (Kumho Tire Company, Ltd., v. Carmichael, 525 U.S. 137, 141 (1999), I should act as gatekeeper and consider Mr. Green’s opinions to be unreliable because they will not help me as trier of fact even though the matter is not before a jury. Respondents argue Mr. Green’s testimony should be excluded under Rule 702 (Fed. R. Evid) because it is valueless. They assert he has no experience in the market relevant to the products at issue or the technology at issue. Instead, he is a CPA with experience in damages evaluation offering opinions on technical matters. Despite this, Respondents assert Mr. Green is offering opinions that Complainant’s MEMS microphones were successful primarily due to their patented packaging. Respondents also offer other criticisms of Mr. Green’s testimony and raise the collateral estoppel issue that was the subject of Respondents’ MIL 5. Regardless, the core of Respondents’ arguments is that Mr. Green is unqualified to offer the opinions he has offered on commercial success.”

Knowles responded that “Mr. Green’s opinion on the nexus between the commercial success of Knowles’s MEMS and the patented claims is based, in part, on the technical opinion of Complainant’s other witnesses, which informed his understanding of the technology at issue and his statement clearly supports that assertion . . . [and that] Mr. Green does not need to have technical experience to be able to offer an opinion about, based upon his financial and economic analysis of the record, which features were responsible for the success of the MEMS. Regardless, Mr. Green did rely on the technical experts to offer his opinion, which is permissible.”

As explained by the Administrative Law Judge, “Complainants also allege Respondents’ argument is inappropriate since it really goes to weight and not admissibility. Complainants avers that Daubert concerns are diminished in a hearing where the ALJ is the fact finder. In addition, complainant provides examples of testimony that it alleges Respondents’ ‘cherry picked’ to bolster their arguments and shows that Mr. Green usually did fully answer all questions asked of him. In addition, Complaint cites several examples of where Respondents arguably attempted to mislead the undersigned concerning what Mr. Green had said relevant to Respondents’ contentions.”

After reviewing these arguments, the Administrative Law Judge found in favor of Knowles and permitted the testimony: “After examining and analyzing the submissions of the parties and Mr. Green’s proffered rebuttal testimony, I find that MIL 6 is not well founded. It is my opinion that Respondents have crafted a convoluted argument addressing admissibility when the real issue is weight. In addition, I do have some concerns that Mr. Green’s testimony was not fully represented to me by Respondents. . . . Finally, I note the obvious. I know Mr. Green is not an engineer nor is he an expert on the MEMS device. He does not pretend to be.”

In conclusion, the Administrative Law Judge also found that the testimony of Mr. Green did not merit the type of motion brought by Respondents: “Therefore, it is patent to me he must be relying on the testimony of others to give an opinion on economic success he admitted in his deposition. This kind of reliance is very easy to establish during cross-examination and does not merit a motion that expends the resources of the ITC and the parties.”

In the Matter of Certain Silicon Microphone Packages and Products Containing Same, Inv. 337-TA-825 (ITC Sept. 24, 2012 (Administrative Law Judge Thomas B. Pender)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or