By: Yury Kalish and David Maiorana – Shortly before the evidentiary hearing, ALJ Lord granted Complainant’s motion in limine and excluded certain testimony in the witness statement of Respondents’ expert as precluded by her ground rules governing expert testimony.  In re Certain Solid State Storage Drives, Stacked Electronics Components, And Products Containing Same, Inv. No. 337-TA-1097, Order No. 38 (April 2, 2019).

As is often the case at the ITC, direct testimony for witnesses in this investigation was provided via witness statements.  Q/A 299 of Respondents’ expert witness statement related to the written description requirement for the asserted patents.  In his response, Respondents’ expert disagreed with the opinions provided by Complainant’s expert and offered “an opinion that the specification fails to disclose that power is supplied from another module in the stack, and offers a comparison between the specification” of one of the asserted patents and a prior art reference.  Complainant argued they did not have notice of this opinion.

Respondents explained that, during expert discovery, the expert opined that the asserted patents lacked written description and provided certain comparisons between the prior art and the specification of the asserted patents.  Specifically, the expert stated in his technical report that the asserted patents “lack written description for failing to describe a control circuit disposed to enable the routing path in response to a control input signal received from another module from the plurality of modules.”  The discussion of the prior art reference also focused on enabling a routing path.

In their motion in limine, Complainant pointed to ground rule 10.5.6, which limits an expert’s testimony “in accordance with the scope of his or her expert report(s), deposition testimony, or within the discretion of the Administrative Law Judge.”  ALJ Lord agreed with the Complainant.  She explained that although it may be appropriate for witness statements to include a short statement of disagreement, the ground rules do not permit the introduction new substantive opinions that were not previously disclosed.  She excluded the testimony because the substance of the testimony was not disclosed in his expert report or during his deposition.


The ground rules are a key resource for assisting ITC practitioners as they navigate the complex procedural requirements of ITC investigations.  When a practitioner masters the Ground Rules, they can become a powerful weapon in the arsenal of an ITC litigator.  In this case, Complainant was able to rely on the ground rules to exclude potentially perilous testimony of an opposing expert shortly from the evidentiary hearing.

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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a USPTO examiner along with 20 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the ITC. Dave has experience in diverse technology areas, including teeth whitening, diapers, fem care products, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.