UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN NOISE CANCELLING HEADPHONES
`
`Inv. No. 337-TA-626
`
`I
`
`’
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`
`
`ORDER NO. 2: NOTICE OF GROUND RULES AND TARGET DATE AND 0
`SETTING DATE FOR SUBMISSION OF DISCOVERY STATEMENTS
`
`’ ^
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`I . -
`- -
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`(January 4,2008)
`
`Pursuant to Commission Rule 2 10.5 l(a), a target date for completion of the investigation in
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`the above-captioned matter must be set. Upon a review of the Complaint and the Notice of
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`Investigation, the Administrative Law Judge has determined that a target date of fifteen months from
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`publication of the Notice of Investigation in the Federal Register (see 73 Fed. Reg. 882, January 4,
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`2008) is appropriate. Accordingly, a target date of April 6,2009’ is set for this investigation.
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`In order that the proceeding in this matter may begin expeditiously, the parties are directed
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`to submit a discovery statement, in regards to the full investigation, on or before February 1 , 2008,
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`which includes the following (the discovery statement need not be filed with Office of the Secretary
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`of the Commission):
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`1. A description of information and evidence that each party intends to submit to prove its
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`own case.
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`2. A description of specific information and evidence that each party will be seeking from
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`other parties and third persons.
`
`* April 4,2009 falls on a Saturday.
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`

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`3. A description of information and evidence each party believes can be obtained only by
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`deposition, interrogatory, subpoena, or request for admissions.
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`4. A proposed procedural schedule that includes dates for each of the events set forth in
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`Ground Rule 2. Based on the target date for this investigation, and taking into consideration the
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`undersigned’s scheduling of other cases, along with courtroom availability, the undersigned
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`anticipates a hearing date to start on August 4, 2008. The parties shall take these dates into
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`consideration when proposing their procedural schedule.
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`The proposed schedule includes dates for three settlement meetings (which will not include
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`the Administrative Law Judge) at a time, date, and location of the parties’ choosing for the
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`exploration of settlement, by persons of requisite authority, of some or all of the issues in the case.
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`Unless the parties obtain the permission of the Administrative Law Judge, for good cause shown,
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`the settlement meetings should not occur by video-conferencing or by teleconferencing. The first
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`one of these dates should be relatively early in the investigation, the second should be approximately
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`midway through the period for discovery, while the last should be set for the period between the
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`close of discovery and before the commencement of the hearing. The parties should also include
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`dates in the proposed schedule for filing the joint settlement conference reports. The parties should
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`make intensive good faith efforts to agree to a procedural schedule. It is expected that in most
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`instances the parties should be able to submit a joint proposal on this matter.
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`SO ORDERED.
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`-2-
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`I 3
`
`n
`
`arles E. Bullock
`Administrative Law Judge
`
`

`
`GROUND RULES FOR SECTION 337 INVESTIGATION
`
`These Ground Rules supplement the Commission’s Rules of Practice and Procedure, 19
`C.F.R. Parts 201 and 210 (“Commission Rules”), in order to aid the Administrative Law Judge in
`the orderly conduct of the Section 337 investigation pursuant to the Administrative Procedure Act,
`5 U.S.C. 5 556(c).
`
`These Ground Rules govern a U.S. patent-based investigation pursuant to 19 U.S.C.
`tj 1337(a)(l)(B). In the case of an investigation based upon a registered copyright, registered
`trademark, or registered mask work pursuant to 19 U.S.C. 0 1337(a)(l)(B), (C) or (D), additional
`Ground Rules may also govern. In addition, in a case involving a motion for temporary relief
`pursuant to 19 U.S.C. 5 1337(e), additional Ground Rules may also govern.
`
`In case of any conflict between these Ground Rules and any subsequent order issued by the
`Administrative Law Judge or the Commission in this investigation, the subsequent order shall
`control.
`
`

`
`TABLE OF CONTENTS
`
`1 .
`
`2 .
`
`Address; Requirements for Filing. Service. and Copies; Time .....................
`1
`1.1 Address of Administrative Law Judge ..................................
`1
`Filing Requirement .................................................
`1.2
`1
`Service Copy Requirements .......................................... 1
`1.3
`1.4 Word Processor Copy ............................................... 1
`Submission by Fax Disfavored ........................................
`1
`1.5
`Concurrent Service .................................................
`1.6
`2
`Computation of Time ...............................................
`2
`1.7
`Request for Extension of Time ........................................
`1.8
`2
`......................................................
`Procedural Schedule
`
`2
`
`4 .
`
`...........................................
`3 . Motions; Deadlines for Responses
`4
`Contents; In General ...............................................
`- 4
`3.1
`Contents; Certification .............................................. 4
`3.2
`Contents; Motion for Summary Determination ...........................
`4
`3.3
`Contents; Response to Motion for Summary Determination . . . . . . . . . . . . . . . . . 5
`3.4
`Contents; Discovery-Related Motions .................................
`- 5
`3.5
`Deadline for Filing Response to Motion .................................
`5
`3.6
`Request for Shortened Time to Respond to Motion ........................
`5
`3.7
`No Motion Stops Discovery Except Motion to Quash Subpoena . . . . . . . . . . . . . . 5
`3.8
`Discovery ...............................................................
`6
`Resolution of Disputes; Coordinated Discovery ..........................
`6
`4.1
`4.1.1 Discovery Committee .......................................
`- 6
`Stipulations Regarding Discovery Procedure ...........................
`- 6
`Service of Discovery Requests and Responses ...........................
`- 6
`Timing of Discovery Requests, Responses and Objections . . . . . . . . . . . . . . . . . . 7
`4.4.1 Depositions; Notice ...........................................
`7
`Interrogatories; Deadline for Responses and Objections . . . . . . . . . . . . ; . 7
`4.4.2
`4.4.3 Requests for Production of Documents or Things or
`for Entry Upon Land; Deadline for Responses and Objections . . . . . . . . . 7
`4.4.4 Request for Admission; Period for Service; Deadline for Responses
`and Objections .............................................. 7
`Discovery Cutoff and Completion ...............................
`4.4.5
`7
`Interrogatory Limitation ............................................. 8
`Subpoenas .................................... : . . . . . . . . . . . . . . . . . . . 8
`Issuance and Service ..........................................
`4.6.1
`8
`4.6.2 Motion to Quash Subpoena; Deadline ............................
`8
`Bates Numbering ..................................................
`- 8
`4.7
`Translations .......................................................
`8
`4.8
`Confidential Submissions ............................................
`8
`4.9
`4.10 Privileged Matter ..................................................
`9
`
`4.2
`4.3
`4.4
`
`4.5
`4.6
`
`

`
`4.10.1 Privileged Document List ......................................
`9
`4.10.2 Motion to Compel Production of Privileged Matter .................. 9
`
`5 .
`
`NoticeofPriorArt ....................................................... 9
`
`5A . Murkmun Hearing on Claim Construction ....................................
`.............................................
`.
`6
`
`10
`
`10
`
`Expert Witnesses and Reports
`Settlement ............................................................
`Pre-trial Submissions ....................................................
`11
`Pre-trial Statement ................................................ 11
`8.1
`Pre-trial Brief .................................................... 11
`8.2
`
`7 .
`
`8 .
`
`11
`
`9 .
`
`TrialExhibits .......................................................... 12
`9.1 Material To Be Received Into Evidence ................................
`12
`LegalExperts ....................................................
`9.2
`12
`9.3 Witness Testimony ................................................ 12
`Exhibits .........................................................
`12
`9.4
`9.4.1 Exchange of Proposed Exhibits Among Parties ....................
`12
`9.4.2 Service of Proposed Exhibits Upon Administrative Law Judge ...... .. 13
`9.4.3 Format of Original and Binder Exhibit Sets .......................
`13
`9.4.4 Maintenance and Filing of Final Exhibits and Final Exhibit List ....... 13
`9.4.5 Numbering and Labeling of Exhibits ............................
`14
`9.4.6 Public and Confidential Exhibits ...............................
`15
`9.4.7 Exhibit Lists ...............................................
`15
`9.4.8 Foreign Language Exhibits ....................................
`15
`9.4.9 One Document Per Exhibit; All Pages Bates-numbered . . . . . . . . . . . . . 15
`9.4.10 Witness Exhibit Binder .......................................
`16
`9.4.1 1 References for Exhibit .......................................
`16
`9.4.12 Authenticity ................................................
`16
`9.4.13 Sponsoring Witness .........................................
`16
`9.4.14 High Priority Objections for Pre-trial Conference . . . . . . . . . . . . . . . . . . 17
`9.4.15 Filing of Exhibits by CD/DVD Media ...........................
`17
`Introduction ................................... 17
`9.4.15.1
`Rules for Preparing Exhibit Files to be Submitted: . . . . . 18
`9.4.15.2
`Preparing the Electronic Media ....................
`9.4.15.3
`19
`Delivery to Administrative Law Judge .............. 20
`9.4.15.4
`10 . Trialprocedure .........................................................
`20
`10.1 Trial; Order of Examination .........................................
`20
`10.2 Closing Argument .................................................
`20
`10.3 Trial Hours ......................................................
`20
`10.4 Trial Decorum .................................................... 21
`
`

`
`10.5
`
`10.4.1 Conversations at Trial ........................................ 2 1
`10.4.2 Reading Matter; Cell Phones and Beepers; Food and Beverages . . . . . . . 21
`10.4.3 Swearing of Witnesses .......................................
`21
`10.4.4 Arguments on Objection ......................................
`21
`Examination of Witnesses .......................................... 21
`10.5.1 Scope of Examination; In General ..............................
`21
`10.5.2 Scope of Cross-examination ...................................
`21
`10.5.3 Scope of Redirect and Re-cross Examination ......................
`22
`10.5.4 Coordination of Witnesses .................................... 22
`10.5.5 Documents Presented to Witnesses .............................
`22
`10.5.6 Scope of Expert Witness Testimony .............................
`22
`10.5.7 Coordination of Respondents’ Cross-examination .................. 22
`10.5.8 Requests for Clarification of a Question ..........................
`22
`10.5.9 Use of Translators ........................................... 22
`10.5.10 Conferring with Witness during a Break in Testimony ............. 23
`Post-trial Briefs and Proposed Findings of Fact and Conclusions of Law ........... 23
`Initial Post-trial Briefs; Filing and Content ..............................
`23
`11.1
`Proposed Findings of Fact; Form and Content ...........................
`23
`1 1.2
`Post-trial Reply Briefs; Filing and Content ..............................
`23
`1 1.3
`Objections and Rebuttals to Proposed Findings of Fact; Form and Content . . . . 24
`1 1.4
`.......................................................
`
`24
`
`24
`
`24
`
`1 1 .
`
`12 . Citation of Cases
`
`13 . Cooperation Among Parties
`.......................................................
`
`...............................................
`
`Ex Parte Contacts
`
`14 .
`
`

`
`JUDGE BULLOCK’S GROUND RULES
`
`1.
`
`Address; Requirements for Filing, Service, and Copies; Time
`
`1.1 Address of Administrative Law Judge.
`
`The Administrative Law Judge’s address is as follows:
`
`The Honorable Charles E. Bullock
`U.S. International Trade Commission
`500 E Street, S.W., Room 317
`Washington, D.C. 20436
`
`1.2
`
`Filing Requirement.
`
`All submissions shall be filed with the Office of the Secretary of the Commission in
`accordance with Commission Rules 20 1.15 and 2 10.4(f)(2) unless otherwise specifically provided
`for in these Ground Rules or by order of the Administrative Law Judge.
`
`1.3
`
`Service Copy Requirements.
`
`In accordance with the requirements of Commission Rules 2 10.4(f)(2) and (g), copies of each
`submission shall be served on all other parties, including the Commission Investigative Attorney.
`Also, two courtesy paper copies of each submission (excluding subpoenas, as noted in Ground Rule
`4.6.1) shall be submitted to the Administrative Law Judge at the address listed in Ground Rule 1.1
`on the same day that the submission is filed. In addition, a courtesy electronic copy in Word,
`Wordperfect, or PDF format, excluding attachments such as exhibits, shall be sent to the
`Administrative Law Judge’s attorney-advisor, Jennifer Whang, at the following e-mail address:
`Jennifer. Whang@usitc.gov.
`
`1.4 Word Processor Copy.
`
`In the case of any filing of 25 pages or more (excluding attachments), or in the case of any
`filing that contains lengthy quotations from a patent, transcript, treatise or other document, the
`courtesy paper copies delivered to the Administrative Law Judge shall, if possible, be accompanied
`by an electronic version of the filing in Microsoft Word or Wordperfect.
`
`1.5
`
`Submission by Fax Disfavored.
`
`Submissions to the Administrative Law Judge by fax are strondv disfavored and are not
`to be made without his prior approval.
`
`1
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`

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`1.6 Concurrent Service.
`
`Parties are encouraged to agree upon a method of service so that the parties will receive all
`submissions at the same time the submissions are received by the Commission.
`
`1.7 Computation of Time.
`
`In addition to the requirements of Commission Rules 201.14, 201.16(d) and 210.6 for
`computation of time, if the last day of the period of time for making a submission falls on a day on
`which weather or other conditions have made the Office of the Secretary of the Commission
`inaccessible, the period shall run until the end of the next business day which is not one of the
`aforementioned days.
`
`1.8 Request for Extension of Time.
`
`Any request for extension of time must be made by written motion the dav before the due
`date and good cause for such extension must be established.
`
`2.
`
`Procedural Schedule
`
`The Administrative Law Judge will promulgate a procedural schedule for the investigation.
`Modifications of the procedural schedule by any party shall be made by written motion showing
`good cause. The event and deadline dates in the procedural schedule will generally adhere to the
`following chronological order:
`
`I
`I
`
`I
`
`I First settlement conference
`I Submission of first settlement conference joint report
`
`File identification of expert witnesses, including their expertise
`and curriculum vitae
`
`I Second settlement conference
`
`Submission of second settlement conference joint report
`File notice of prior art
`
`Exchange of initial expert reports (identify tests/surveys/data) .
`File tentative list of witnesses a party will call to testify at the
`hearing, with an identification of each witness’ relationship to
`the party
`Exchange of rebuttal expert reports
`
`2
`
`

`
`Fact discovery cutoff and completion
`
`Deadline for motions to compel discovery
`
`~ Expert discovery cutoff and completion
`
`~ Third settlement conference
`
`~~
`
`Submission of third settlement conference joint report
`Deadline for filing summary determination motions
`Exchange of exhibit lists among the parties
`~~~ Submit and serve direct exhibits (including witness statements),
`with physical and demonstrative exhibits available --
`Complainant(s) and Respondent(s)
`Submit and serve direct exhibits (including witness statements),
`with physical and demonstrative exhibits available -- Staff
`~ File pre-trial statements and briefs -- Complainant(s) and
`Respondent(s)
`
`File requests for receipt of evidence without a witness
`File objections to direct exhibits (including witness statements)
`Submit and serve rebuttal exhibits (including witness
`statements), with rebuttal physical and demonstrative exhibits
`available -- all parties
`Deadline for motions in limine
`File pre-trial statement and brief -- Staff
`File responses to objections to direct exhibits (including witness
`statements)
`File objections to rebuttal exhibits (including witness
`statements)
`
`File high priority objections statement
`File responses to objections to rebuttal exhibits (including
`witness statements)
`File responses to high priority objections statement
`
`File responses to motions in limine
`
`3
`
`

`
`Tutorial on technology (if necessary)
`
`Pre-trial conference
`
`I Trial
`
`File initial post-trial briefs, proposed findings of fact and
`conclusions of law, and final exhibit lists
`
`File reply post-trial briefs, objections and rebuttals to proposed
`findings of fact
`
`Initial Determination due
`Target date for completion of investigation
`
`3.
`
`Motions; Deadlines for Responses
`
`3.1
`
`Contents; In General.
`
`All written motions shall consist of: (1) the motion; (2) a separate memorandum of points
`and authorities in support of the motion;' (3) an appendix of declarations, affidavits, exhibits, or
`other attachments in support of the memorandum of points and authorities; and (4) a Certificate of
`Service as required by Commission Rule 201.16(c). All responses to motions shall consist of: (1)
`a memorandum of points and authorities in response to the motion; (2) an appendix of declarations,
`affidavits, exhibits, or other attachments in support of the memorandum of points and authorities;
`and (3) a Certificate of Service as required by Commission Rule 201.16(c).
`
`3.2
`
`Contents; Certification.
`
`All motions shall include a certification that the moving party has made reasonable, good-
`faith efforts to contact and resolve the matter with the other parties at least two business days prior
`to filing the motion, and shall state, if known, the position of the other parties on such motion.
`
`3.3 Contents; Motion for Summary Determination.
`
`In addition to the foregoing requirements for all motions, motions for summary determination
`shall be further accompanied by a separate statement of the material facts as to which the moving
`party contends there is no genuine issue and which entitle the moving party to a summary
`determination as a matter of law. The statement shall consist of short numbered paragraphs with
`
`' For procedural motions, such as motions for extensions of time, a separate memorandum
`is not necessary.
`
`4
`
`

`
`specific references to supporting declarations, affidavits or other materials.
`
`3.4 Contents; Response to Motion for Summary Determination.
`
`In addition to the foregoing requirements for all responses to motions, each party opposing
`a motion for summary determination shall append to the response a separate statement responding
`individually to the numbered paragraphs of the motion statement required by Ground Rule 3.3 with
`which the party disagrees, with specific references to supporting declarations, affidavits or other
`materials. The responsive statement shall also include any similarly numbered paragraphs of
`additional facts, similarly referenced and supported, which the opposing party believes warrant
`denial of summary determination. All material facts set forth in the moving party’s statement may
`be deemed admitted by a nonmoving party unless so specifically controverted in the nonmoving
`party’s responsive statement.
`
`3.5
`
`Contents; Discovery-Related Motions.
`
`Any discovery-related motion must have appended to it the pertinent parts of the discovery
`request and all objections and answers thereto. Additionally, if a party serves supplemental
`responses subsequent to the filing of a motion to compel, that party must provide copies of the
`supplemental responses, or where documents are produced, a detailed accounting of what additional
`documents were produced.
`
`3.6 Deadline for Filing Response to Motion.
`
`In addition to the requirements of Commission Rules 201.16 and 2 10.15(c) governing the
`time period for a nonmoving party’s response to a written motion, the date of service of a motion on
`a nonmoving party by electronic mail, hand-delivery or by an express-type mail or courier service
`is the date of delivery. The additional time provided under Commission Rule 201.16(d) after service
`by mail does not apply in such instances, unless service by electronic mail, hand-delivery or by an
`express-type mail or courier service is to a nonmoving party in a foreign country, in which event the
`additional time allowed for responses to motions shall be five (5) days.
`
`3.7
`
`Request for Shortened Time to Respond to Motion.
`
`A motion shall include any request to shorten the period of time during which other parties
`may respond to the motion. The fact that a shortened response time is requested shall be noted in
`the title of the motion and the motion shall include an explanation of the grounds for such a request.
`A request for a shortened response time shall not be made through a separate motion.
`
`3.8
`
`No Motion Stops Discovery Except Motion to Quash Subpoena.
`
`No motion stops discovery except a timely motion to quash a subpoena.
`
`5
`
`

`
`4.
`
`Discovery
`
`4.1
`
`Resolution of Disputes; Coordinated Discovery.
`
`All parties shall make reasonable efforts to resolve among themselves disputes arising during
`discovery. Parties with similar interests must coordinate and consolidate depositions and all other
`discovery.
`
`4.1.1 Discovery Committee
`
`Commencing with the first full week after these Ground Rules are issued, a discovery
`conference committee (the “Discovery Committee”) consisting of the lead counsel of each party and
`the Commission Investigative Staff Attorney shall convene at least once every two weeks during the
`discovery phase of this investigation, either in person or by telephone, to resolve discovery disputes.
`The Discovery Committee shall confer in good faith to resolve every outstanding discovery disputes
`in a timely manner within the deadlines set forth in the Procedural Schedule. Within ten calendar
`days after the end of each calendar month during the discovery phase, the Discovery Committee shall
`report in writing to the Administrative Law Judge all disputes that were resolved during the
`preceding month and all disputes on which there is an impasse as of the end of that month. No
`motion to compel discovery may be filed unless the subject matter of the motion has first been
`brought to the Discovery Committee and the Committee has reached an impasse in resolving the
`matter.
`
`4.2
`
`Stipulations Regarding Discovery Procedure.
`
`Unless otherwise directed by the Administrative Law Judge, the parties may by written
`stipulation (1) provide that depositions may be taken before any person, at any time or place, upon
`any notice, and in any manner and when so taken may be used like other depositions, and (2) modi@
`other procedures governing or limitations placed upon discovery, except that stipulations extending
`the time provided in Ground Rules 4.4.2,4.4.3 and 4.4.4 for responses to discovery may, if they
`would interfere with the target date of the investigation or with any time set in the procedural
`schedule or in an order for completion of discovery, for hearing of a motion, or for the trial, be made
`only with the approval of the Administrative Law Judge upon a written motion showing good cause.
`
`4.3
`
`Service of Discovery Requests and Responses.
`
`Discovery requests and responses thereto shall be served upon all parties, including the
`Commission Investigative Attorney, but shall not be served on the Administrative Law Judge unless
`they are pertinent to a motion. Discovery documents need not be served on the Office of the
`Secretary of the Commission unless they are appended to motions.
`
`6
`
`

`
`4.4
`
`Timing of Discovery Requests, Responses and Objections.
`
`4.4.1 Depositions; Notice.
`
`In addition to the requirements of Commission Rule 210.28(c), unless otherwise ordered, any
`party desiring to take a deposition shall give notice in writing to every other party of not less than
`ten (10) days if the deposition is to be taken of a person located in the United States, or of not less
`than fifteen (15) business days if the deposition is to be taken of a person located outside the United
`States.
`
`4.4.2 Interrogatories; Deadline for Responses and Objections.
`
`In addition to the requirements of Commission Rule 21 0.29(b), unless otherwise ordered, the
`party upon whom interrogatories have been served shall serve a copy of the answers, and any
`objections, within ten (10) days after the service of the interrogatories.
`
`4.4.3 Requests for Production of Documents or Things or for Entry Upon
`Land; Deadline for Responses and Objections.
`
`In addition to the requirements of Commission Rule 210.30(b)(2) with respect to a request
`for the production of documents or things, or to permit entry upon land, unless otherwise ordered,
`the party upon whom a request has been served shall serve a written response within ten (10) days
`after the service of the request.
`
`4.4.4 Request for Admission; Period for Service; Deadline for Responses and
`Objections.
`
`In addition to the requirements of Commission Rule 210.31(a) and (b), unless otherwise
`ordered, a request for admission may be served at anytime twenty (20) days after the date of service
`of the complaint and notice of investigation. Unless otherwise ordered, a party upon whom a request
`for admission has been served, shall serve an answer or objection within ten (10) days after the
`service of the request, otherwise the matter may be deemed admitted.
`
`4.4.5 Discovery Cutoff and Completion.
`
`All discovery requests, including without limitation requests for admissions, must be initiated
`in sufficient time prior to the fact discovery cutoff and completion date so that the responses will be
`due prior to that date within the time periods set forth above. Discovery requests by any party that
`would require responses after the fact discovery cutoff and completion date must be approved in
`advance by the Administrative Law Judge upon a showing of compelling circumstances.
`
`7
`
`

`
`4.5
`
`Interrogatory Limitation.
`
`Without leave of the Administrative Law Judge or written stipulation, any party may serve
`upon any other party written interrogatories not exceeding 175 in number including all discrete
`subparts. Leave to serve additional interrogatories shall be granted by the Administrative Law Judge
`upon a written motion showing good cause.
`
`4.6
`
`Subpoenas.
`
`4.6.1 Issuance and Service.
`
`Subpoenas under Commission Rule 21 0.32 shall follow form (samples attached in Appendix
`A hereto). Applications for issuance of a subpoena shall be submitted to the office of the
`Administrative Law Judge (courtesy copies are not required), and the application shall identifl the
`relation of the subpoena recipient and the requested information to the investigation. Upon issuance
`of the subpoena, the subpoena applicant shall serve a copy of the subpoena on each of the other
`parties to the investigation.
`
`4.6.2 Motion to Quash Subpoena; Deadline.
`
`In addition to the requirements of Commission Rule 21 0.32(d), any motion to limit or quash
`a subpoena shall be filed within ten (10) days after receipt thereof, or within such other time as the
`Administrative Law Judge may allow.
`
`4.7
`
`Bates Numbering.
`
`If documents produced by any supplier in response to a document request are furnished to
`the requester as copies of original documents, every page of every such document shall be numbered
`sequentially by a unique number (commonly known as a “Bates number”). The Bates number shall
`appear stamped on the lower right-hand corner of the page.
`
`4.8
`
`Translations.
`
`All documents produced in response to a document request shall be the original or true
`complete copies of originals. If an English translation of any document produced exists, the English
`translation shall be produced.
`
`4.9 Confidential Submissions.
`
`The confidential nature of any filing with the Office of the Secretary of the Commission or
`of any submission to the Administrative Law Judge shall be conspicuously noted on the top page of
`any filing or other submission. No cover letter or other document shall be stapled or otherwise
`attached to a filing or other submission so as to obscure the confidential marking on the top page.
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`4.10 Privileged Matter.
`
`In order to expedite discovery, the following procedure shall be followed with respect to
`those documents for which counsel claims privilege (attorney-client or work product).
`
`4.10.1 Privileged Document List.
`
`If production of any document is withheld on the basis of a claim of privilege, each withheld
`document must be separately identified via a privileged document list.2 The privileged document
`list shall be supplied, unless otherwise ordered, within ten (10) days after objections based on
`privilege to the underlying document requests are due. The privileged document list must identify
`each document separately, specifying for each document at least the following: (1) the date; (2) the
`author(s)/sender(s); (3) the recipient(s), including copy recipient(s); and (4) the general subject
`matter of the document. The sender(s) and recipient(s) shall be identified by position and entity
`(corporation or firm, etc.) with which they are employed or associated. If the authodsender or
`recipient is an attorney or foreign patent agent, he or she shall be so identified. The type of privilege
`claimed must also be stated, together with certification that all elements of the claimed privilege
`have been met and not waived with respect to each document.
`
`4.10.2 Motion to Compel Production of Privileged Matter.
`
`Any party seeking production of allegedly privileged documents shall file an appropriate
`motion only after examining the privileged document list.
`
`The Administrative Law Judge is aware that, often times, parties agree that production of a
`privilege log is not necessary. The Administrative Law Judge finds such an agreement to be
`acceptable; however, if such an agreement is in force, the Administrative Law Judge will not
`consider any motions involving privileged documents.
`
`5.
`
`Notice of Prior Art
`
`Parties must file on or before the date set in the procedural schedule, notices of any prior art
`consisting of the following information: country, number, date, and name of the patentee of any
`patent; the title, date and page numbers of any publication to be relied upon as anticipation of the
`patent in suit; or as showing the state of the art, and the name and address of any person who may
`be relied upon as the prior inventor or as having prior knowledge of or as having previously used or
`offered for sale the invention of the patent in suit.
`
`If a trademark is involved, the parties must filed on or before the date set in the procedural
`schedule, notices of any art on which a party will rely at the hearing regarding the functionality or
`
`See Duplan Corp. v. Deering Millikin, Inc., 397 F. Supp. 1 146, 184 U.S.P.Q. 775 (D.S.C.
`
`1974).
`
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`non-hctionality of any trademarks at issue.
`
`In the absence of such notice, proof of the said matters may not be introduced into evidence
`at the trial except upon a timely written motion showing good cause.
`
`5A. Markman Hearing on Claim Construction
`
`If the undersigned determines that a Markman hearing would be beneficial to the
`investigation, the undersigned may conduct a Markman hearing on the date set forth in the
`procedural schedule for the purpose of construing any disputed claim terms of the patents at issue
`in the investigation. The parties and Commission Investigative Staff shall meet and confer on these
`issues no later than ten (1 0) days before the Markman hearing in order to reduce the number of
`disputed claim terms to a minimum. Before the Markman hearing, each party and Commission
`Investigative Staff s