Hopefully this formats and I'm looking for another set of eyes on this. It does say further down that Judge Gildea dis not adopt anyone's proposed claim construction for ring oscillator or entire ring oscillator, I'm not sure. Someone take a look. This is the entire brief that gcduck posted portions. UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C. Before the Honorable E. James Gildea Administrative Law Judge In the Matter of CERTAIN WIRELESS CONSUMER ELECTRONICS DEVICES AND COMPONENTS THEREOF Investigation No. 337-TA-853 COMPLAINANTS’ OPPOSITION TO RESPONDENTS’ MOTION TO STRIKE THE SUPPLEMENTAL EXPERT REPORT OF DR. OKOLBDZIJA (MOT. DKT. 853-046) AND REQUEST FOR SHORTENED RESPONSE TIME 1 Introduction Respondents have filed yet another baseless motion with the clear purpose of needlessly increasing the cost of this Investigation. They make unprincipled and unsupported arguments that there is no substantive difference between the ALJ’s construction of “ring oscillator” and any of the parties’ when clearly there is such a difference. Specifically, Dr. Oklobdzija explained that the phrase “required to maintain an oscillating output” provides an important substantive clarification to the meaning of “ring oscillator”; namely that: “a ring oscillator generates a continuous periodic output as a direct result of the fact that it has an odd number of inversions arranged in a loop or ring.” Oklobdzija Supp. Report, ¶¶ 10, 11. Dr. Oklobdzija further explained (as also referenced in his September 2012 Declaration), that this characteristic of ring oscillators is not true of other types of oscillators (like LC oscillators and relaxation oscillators). This distinction is important, because at least Respondents Acer and HTC had previously argued – incorrectly – that the relaxation oscillator in the Talbot prior art reference was a ring oscillator. See, generally, 9/14/12 Oklobdzija Decl. The ALJ’s construction of “entire ring oscillator . . .” was also substantively different from any party’s because that phrase includes the term “ring oscillator.” Respondents dishonestly argue that there is no distinction between the ALJ’s construction of ring oscillator and either Complainants’ or Staff’s construction of the same term. Mot. at 4-5. And during the parties’ meet and confer on this motion, Respondents even argued that their own construction was substantively the same as the ALJ’s. Say what? If that were the case, why was it even necessary to engage in claim construction at all? Respondents’ constant motion practice is unnecessary, unprincipled and arguably sanctionable. Dr. Oklobdzija provided his expert opinion as to why the ALJ’s constructions were substantively different than any parties’, and Respondents have offered no expert opinion to rebut that. They even declined to take his deposition. For all of these reasons, Respondents’ motion should be denied. Argument I. DR. OKLOBDZIJA’S SUPPLEMENTAL REPORT IS PROPER BECAUSE THE ALJ’S CONSTRUCTION OF THE TERMS HE DISCUSSED WERE SUBSTANTIVELY DIFFERENT THAN THOSE PROPOSED BY ANY PARTY. Respondents incorrectly argue that Dr. Oklobdzija’s supplemental expert report should be stricken because it allegedly exceeds the bounds of the ALJ’s claim construction order (Order No. 31). Respondents are wrong. As Dr. Oklobdzija acknowledged in his supplemental report, the ALJ’s construction of “ring oscillator” – “an oscillator having a multiple, odd number of inversions arranged in a loop” – forms the core of each party’s proposed construction of the term. However, Dr. Oklobdzija recognized that Respondents’ proposed construction was substantively quite different from the ALJ’s construction. See Oklobdzija Supp. Report, ¶ 6. Specifically, Respondents attempted to import “non-controllable” and “variable based on the temperature, voltage, and process parameters in the environment.” The ALJ correctly recognized that those limitations would have improperly changed the ordinary meaning of “ring oscillator” that was clear to one of ordinary skill in the art based on the ’336 patent claims, specification and prosecution file history. Id. In addition, Dr. Oklobdzija recognized that the Staff’s proposed construction of “ring oscillator” improperly sought to import one of the same phrases as Respondents’ construction: “variable based on the temperature, voltage, and process parameters in the environment.” See Oklobdzija Supp. Report, ¶ 7. Dr. Oklobdzija further observed that the Staff’s proposed addition was superfluous and would have made the term “ring oscillator” more confusing. Id. Regarding Complainants’ proposed construction of “ring oscillator,” Dr. Oklobdzija provided a thoughtful and principled expert analysis. First, he acknowledged that the ALJ’s omission of the language “interconnected electronic components” did “not substantively impact the meaning of ring oscillator.” Oklobdzija Supp. Report, ¶ 8. He also agreed with the ALJ that “three or more inversions” means the same thing as “multiple, odd number of inversions.” Oklobdzija Supp. Report, ¶ 10. However, Dr. Oklobdzija pointed out that the ALJ’s omission of Complainants’ proposed phrase “required to maintain an oscillating output” did, in fact, lead to a substantive difference: The important point is that a ring oscillator can be used as both a clock and as an oscillator, because it constantly oscillates as a direct result of having at least three inversions arranged in a loop. This configuration allows a ring oscillator to generate an oscillating clock signal that can be used to pace functions in a microprocessor chip. As I explained in my earlier declaration dated September 14, 2012, a ring oscillator generates a continuous periodic output as a direct result of the fact that it has an odd number of inversions arranged in a loop or ring. See, e.g., 9/14/12 Oklobdzija Decl., ¶ 7. Each inverter simply changes its input signal from a 0 to a 1, or from a 1 to a 0. Thus, once the oscillator is started, it will continue indefinitely as long as power is provided to the inverters. As I also explained in my earlier declaration, this automatically generates an oscillating output that can be used as a clock signal. However, a ring oscillator must have a multiple odd number of inverters ( i.e., three or more). It will not oscillate with a single inverter, and the output of a ring with an even number of inverters will not oscillate, because it will latch a signal to the same value ( e.g., either 1 or 0, but not oscillating). Id. at ¶ 7. As is clear from this example, neither a control signal nor an external crystal is necessary for a ring oscillator to generate a clock signal. Oklobdzija Supp. Report, ¶¶ 10, 11 (emphasis in original). Dr. Oklobdzija went on to explain that unlike ring oscillators, “other types of oscillators ( e.g., LC oscillators and relaxation oscillators) oscillate based on very different principles. See, e.g., 9/14/12 Oklobdzija Decl., ¶¶ 8- 11.” Oklobdzija Supp. Report, ¶ 12. This is a critical distinction, because Respondents Acer and HTC had argued in a parallel district court action in Northern California that the Talbot prior art reference disclosed a ring oscillator, even though it was clearly a relaxation oscillator. See, generally , 9/14/12 Oklobdzija Decl. Finally, Dr. Oklobdzija explained that the ALJ’s constructions of the “entire ring oscillator . . .” terms were substantively different to the extent they incorporated the term “ring osciallator.” Oklobdzija Supp. Report, ¶ 17. In response to Dr. Oklobdzija’s expert analysis regarding the substantive differences between the proposed constructions and the ALJ’s construction, Respondents have offered no expert analysis – or indeed, any plausible explanation – to support their position that there is no substantive difference. Indeed, Respondents resort to misleading characterizations of Dr. Oklobdzija’s opinions to falsely argue that he never opined regarding “infringement under the Respondents’ constructions of the ‘entire’ limitations . . .” Mot. at 7. Not only is this statement false, it is contradicted by Respondents’ admission that Dr. Oklobdzija opined that “my initial view is that adoption of either Respondents’ or Staff’s proposed constructions would not change my overall opinion that the Accused Products infringe the ’336 patent.” Mot. at 5-6 (quoting Oklobdzija Opening Report at ¶ 165). Thus, Dr. Oklobdzija’s supplemental opinions relating to “ring oscillator” and the “entire” limitations was entirely consistent with Order No. 31. Respondents’ frivolous and unnecessary motion should be denied. Moreover, Dr. Oklobdzija’s supplemental expert report, like his initial expert report, is incorporated into a declaration in support of Complainants’ oppositions to Respondents’ pending motions for summary determination. As such, the supplemental expert report is now sworn testimony. See 4/23/13 Oklobdzija Decl. (in support of Complainants’ oppositions to motions for summary determination), at ¶ 3 (“I hereby incorporate my Supplemental Expert Report as if fully set forth herein.”) That declaration was expressly permitted by Commission Rule 210.18, and was executed by Dr. Oklobdzija on April 26, 2013—well before the May 1, 2013 “[e]xpert discovery cutoff and completion” date set in the procedural schedule. See Order No. 15; 19 C.F.R. § 210.18(b) (“Any nomoving party may file opposing affidavits within 10 days after service of the motion for summary determination.”). Indeed, under the Commission Rules, a party must file either affidavits or other evidence to support an opposition to a motion for summary determination. Id. at § 210.18(c) (“Supporting and opposing affidavits shall be made on personal knowledge . . . . When a motion for summary determination is made . . . a party opposing the motion may not rest upon the mere allegations or denials of the opposing party’s pleading, but the opposing party’s response, by affidavits, answers to interrogatories, or as otherwise provided in this section, must set forth specific facts showing that there is a genuine issue of fact. . . .”). Thus, regardless of whether Dr. Oklobdzija’s supplemental expert report exceeds the scope of Order No. 31 – which it does not – it is still proper evidence for consideration in opposition to Respondents’ summary determination motions, and should not be stricken. Conclusion For the foregoing reasons, Complainants respectfully request ask the ALJ to deny Respondents’ motion to strike the Supplemental Report of Dr. Vojin G. Oklobdzija.