Yesterday you read the ITC Staff Attorney's response to "RESPONDENTS’ MOTION TO STRIKE ARGUMENTS FROM INTERDIGITAL’S POST-HEARING REPLY BRIEF". Below is IDCC's response to the motion.
Complainants InterDigital Communications, Inc., InterDigital Technology Corporation, IPR Licensing, Inc., and InterDigital Holdings, Inc. (collectively “InterDigital”) respectfully oppose Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively “Samsung”) and ZTE Corporation, and ZTE (USA) Inc.’s (collectively “ZTE”) (collectively “Respondents”) April 2, 2014 Motion to Strike Portions of InterDigital’s Post-Hearing Reply Brief. (Motion Docket No. 868-116). Respondents erroneously contend that InterDigital’s citation to recent legal authority from a parallel case in the United States District Court for the District of Delaware is improper because InterDigital did not seek leave to supplement the record to include the legal authority as evidence. Respondents are wrong.
On March 12, 2014, Judge Andrews of the United States District Court for the District of Delaware presided over a Markman hearing to construe certain claim terms, including claim terms in U.S. Patent No. 7,286,847 (“the ‘847 patent”) and 7,190,966 (“the ‘966 patent”). The ‘847 and ‘966 patents are also at issue in this Investigation. After oral argument from the parties, Judge Andrews ruled from the bench that he expects to construe the three disputed terms as InterDigital has proposed.
THE COURT: All right. Well, so, basically, the way I expect to construe these
three disputed terms, as I expect to construe the code, is a sequence of chips or
bits, which I think is what the Federal Circuit said, which is the plain meaning.
And I think the defendants argument is, essentially, based on the preferred
embodiment, and the Federal Circuit did say that the preferred embodiment is not
all there is here.
On the second one, the generated, I think I'm going to construe as
produced.
And on the third one, successively transmitted signals, I think I'm going to
construe that as a successively transmits sequences of chips or bits.
(Ex. A, Hearing Tr. at 61-62 in InterDigital Commc’ns, Inc. et al v. ZTE Corp. et al., C.A. No.
1:13-cv-00009-RGA). Judge Andrews’ expected constructions of the same terms from the same
patents addressing the same disputes at issue in this Investigation are proper for the ALJ to
consider as persuasive authority.1
Respondents seek to conceal the on point Markman transcript from the ALJ.
Respondents argue that (1) Samsung and the Staff were not represented during the proceedings,
(2) the Judge’s oral rulings constitute “outside-the-record evidence,” and (3) the District of
Delaware’s Markman procedures are deficient. Respondents are wrong on all three points.
First, Respondents contend that InterDigital’s citation to legal authority is
improper because “neither Samsung nor the OUII Staff was represented during the proceedings.” (Mem. at 4.) Respondents misunderstand the law. It is axiomatic that legal authority or
precedent need not involve the same parties to be persuasive or relevant to a later court deciding
similar legal issues. See BLACK'S LAW DICTIONARY (9th ed. 2009) (Persuasive authority is “precedent that is not binding on a court, but that is entitled respect and careful consideration.”);
See generally, e.g., Respondents’ Reply Post-Hearing Brief at vii-x (citing numerous legal
authorities in which no parties to this Investigation were involved).
Second, Respondents contend that InterDigital’s citation to Judge Andrews’ oral
rulings constitutes “outside-the-record evidence” and that InterDigital should have sought leave
to supplement the record. (Mem. at 4.) Respondents are wrong.
Legal authority is not evidence, and need not be admitted into evidence for a party
to rely on it. Respondents know this. During a meet-and-confer before the hearing in this
Investigation, InterDigital proposed introducing as evidence several legal opinions on which it
intended to rely. Respondents opposed, noting that “judicial and administrative opinions may be
exhibits, but are not themselves admissible as evidence.” (Ex. B, Jan. 16, 2014 S. Rosenman
email to J. Link.) Respondents cited to Mendenhall v. Cedarapids, 5 F.3d 1557, 1569-70 (Fed.
Cir. 1993), where the Federal Circuit held that “for use as legal precedent, a prior decision need
not be admitted into evidence but will be given ‘weight’ merely by its citation in a brief to the
second court” and that “[a] copy may, of course, be given as an exhibit for the court to consider.”
InterDigital’s citation to Judge Andrews’ oral rulings in its Reply Post-Hearing Brief is thus
precisely in line with the procedure delineated by the Federal Circuit in Mendenhall.
Respondents also contend that the transcript is “just that—a transcript of oral comments, and not a judicial determination,” and therefore “is not a ruling or order.” (Mem. at
6.) Respondents are wrong. Courts often issue rulings from the bench, and those oral rulings are
no less judicial authority than written rulings. ALJs have relied on such oral rulings in past
investigations. See, e.g., Certain Network Communications Systems For Optical Networks And
Components Thereof, Inv. No. 337-TA-535, Order No. 5 (May 6, 2005) (relying on a District Court’s oral ruling as legal authority); Certain Steel Rod Treating Apparatus and Components
Thereof, Inv. No. 337-TA-97, Commission Action and Order (February 1982) (relying on “an
oral ruling from the bench” made by a U.S. District Court in a related case). Moreover,
Respondents’ apparent argument that oral rulings should be given less weight than written
rulings goes to the weight that the ALJ should give Judge Andrews’ ruling, not its
appropriateness as legal authority.
Respondents contend that InterDigital’s citation to Telcordia Techs., Inc. v. Cisco
Sys., Inc., 612 F.3d 1365 (Fed. Cir. 2010) in an earlier filing supports Respondents’ argument
that Judge Andrews’ oral ruling is not legal authority. Respondents are wrong. As InterDigital
explained then, the “stray comment by a single judge at oral argument” referred to a comment
made by a Federal Circuit judge during an appellate argument that conflicted with the panel’s
written decision. (InterDigital’s Motion For Leave To File a Reply In Support of Its Motion for
Summary Determination at 11.) This stands in stark contrast with the facts here. Judge
Andrews’ ruling during the Markman hearing are far from “stray comments”—they are the most
recent authority from the District Court on claim construction.
Lastly, Respondents argue that the District of Delaware’s claim construction
procedure was deficient. Although Respondents may hope that Judge Andrews allows them to
re-argue claim construction, speculation about what Judge Andrews might do is no reason to
withhold persuasive legal authority from the ALJ. As of today, Judge Andrews has not issued
any orders that contravene or otherwise supplant what he said during the Markman hearing. If
any such order issues, Respondents are free to bring them to the ALJ’s attention.
For the foregoing reasons, InterDigital respectfully requests that Respondents’
Motion be denied, and for any other relief the ALJ deems just.
