On September 30, 2015, ALJ David P. Shaw issued the public version of Order No. 30 (dated September 17, 2015) in Certain Electronic Devices, Including Wireless Communication Devices, Computers, Tablet Computers, Digital Media Players, and Cameras (Inv. No. 337-TA-952).

By way of background, this investigation is based on a February 26, 2015 complaint filed by Ericsson Inc. alleging violation by Apple Inc. a/k/a Apple Computer Inc. of Section 337 in the importation into the U.S. and sale of certain wireless standard compliant electronic devices, including communication devices and tablet computers that infringe one or more claims of U.S. Patent Nos. 8,717,996; 8,660,270; 6,058,359; 6,301,556; 8,102,805; 8,607,130; 8,837,381; and 8,331,476.  See our March 2, 2015 and April 2, 2015 posts for more details on the complaint and Notice of Investigation, respectively. 

According to the Order, Complainants Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively, “Ericsson”) filed a motion to compel Apple to produce its “agreements with the carriers in response to Ericsson Requests for Production Nos. 10, 13, 114, 118, 119, 121, 147, 152, 170, and 173.

Ericsson argued that it had been unable to reach an agreement with Apple about the agreements Apple has with certain third-party carriers and that Apple had deliberately thwarted Ericsson’s attempts to obtain the same relevant discovery from third parties, despite the carrier agreements’ relevance to the scope of cease and desist orders and enforcement of any remedy resulting from the Investigation.  In response, Apple argued that its agreements with wireless carriers were irrelevant because none of Ericsson’s requests for production actually called for the agreements, the parties had entered into a stipulation regarding the importation that mooted Ericsson’s alleged need for the agreements, the agreements had nothing to do with market share, and there was no time remaining to re-open discovery on this issue.

After reviewing the briefing, ALJ Shaw noted that while Ericsson identified Requests for Production Nos. 10, 13, 114, 118, 119, 121, 147, 152, 170, and 173 in its motion, Ericsson never actually discussed any of the Requests in its memorandum or explained how Apple’s carrier agreements fell under the Requests.  And, after reviewing the Requests, ALJ Shaw found that the Requests had nothing to do with the carrier agreements.  Additionally, ALJ Shaw found that Ericsson’s motion was overbroad as it requested the production of “all carrier agreements” when Ericsson, in its meet and confer letters, had only specifically raised agreements for carriers that Apple had subpoenaed.  ALJ Shaw also found that Ericsson’s argument that the agreements with carriers were relevant because they could contain provisions related to importation and inventory to be unpersuasive as Apple and Ericsson had already entered into a stipulation regarding importation and Apple had previously produced a list of its top customers, which provided unit volume sales information.  ALJ Shaw further found that Ericsson had not established a connection between the agreements and market share.

Accordingly, ALJ Shaw denied Ericsson’s motion to compel.