On December 16, 2014, ALJ Theodore R. Essex issued Order No. 7 in Certain Marine Sonar Imaging Systems, Products Containing the Same, and Components Thereof (Inv. No. 337-TA-926).

By way of background, this investigation is based on a July 18, 2014 complaint filed by Johnson Outdoors Inc. and Johnson Outdoors Marine Electronics, Inc. (collectively, "Johnson Outdoors") alleging violation of Section 337 in the importation into the U.S. and sale of certain marine sonar imaging systems, products containing the same, and components thereof that infringe one or more claims of U.S. Patent Nos. 7,652,952; 7,710,825; and 7,755,974.  See our July 23, 2014 and August 21, 2014 posts for more details on the complaint and Notice of Investigation, respectively. 

According to the Order, non-parties Fitzpatrick, Cello, Harper & Scinto ("Fitzpatrick"), Douglas Sharrott, Robert H. Fischer, and Andrew Kutas (collectively, "Complainants' litigation counsel") moved to quash subpoenas served on them by Respondents Garmin International, Inc., Garmin North America, Inc., Garmin USA, Inc., and Garmin Corporation (collectively, "Garmin") seeking testimony and documents related to the Asserted Patents.  Garmin contended that Fitzpatrick obtained material information regarding the patentability of the Asserted Patents during their representation of Johnson Outdoors in a district court litigation in Alabama (the "Alabama Lawsuit").  Garmin argued that Fitzpatrick learned the dimension and shape of the transducer component in Imagenex's prior art sonar systems by attending and asking questions at the third-party deposition of Mr. Kristensen of Imagenex, a Canadian sonar system manufacturer and seller.  Garmin asserted that Fitzpatrick cited and addressed Mr. Kristensen's documents and testimony in Johnson Outdoors' October 11, 2011 opposition to Navico's motion for summary judgment of invalidity, which was signed by Mr. Sharrott.

Before the "Alabama Lawsuit" settled, Navico requested reexamination of the Asserted Patents based on new prior art references, which were the subject of the third-party discovery of Imagenex in the "Alabama Lawsuit."  Garmin argued that during the reexamination proceedings, Johnson Outdoors' reexamination counsel made false statements that misrepresented their knowledge of the Imagenex prior art, which they were withholding.  Garmin also noted that in its Answer it asserted that Johnson Outdoors' reexamination counsel withheld Mr. Kristensen's deposition transcript from the Patent Office.

Fitzpatrick and Johnson Outdoors' litigation counsel ("Fitzpatrick Counsel") contended that Garmin's request for documents and testimony should be stricken in its entirety because it has minimal relevance to the dispute.  In response, Garmin argued that its subpoenas sought highly relevant information regarding Garmin's inequitable conduct defense.  ALJ Essex found that the information sought by Garmin is undoubtedly relevant to its inequitable conduct defense.

Fitzpatrick Counsel also noted that the Commission's rules prevent a party from obtaining discovery concerning privileged subject matter, and that the testimony and document sought by Garmin is privileged.  In response, Garmin argued that even if some of the information was privileged, Garmin was entitled to discovery regarding the facts surrounding how, when, and to what extent Messrs. Sharrott, Fischer, and Kutas had knowledge of Imagenex information.  Additionally, Garmin contended that just because some information is privileged does not excuse Complainant's reexamination counsel from having to provide discovery regarding responsive and non-privileged information.  ALJ Essex found that any alleged privilege did not preclude Garmin from seeking relevant, non-privileged information.  Additionally, ALJ Essex found that reviewing 1000 documents would not be overly burdensome for Fitzpatrick.

Fitzpatrick Counsel also submitted that Garmin had already sought information regarding its dealings with Imagenex from others, including Imagenex and Navico.  Fitzpatrick thus contended that there was no need for Garmin to obtain the information from Complainant's litigation counsel.  Fitzpatrick Counsel further submitted that Garmin's subponeas sought Complainant litigation counsel's knowledge and awareness of Imagenex systems and confidential Imagenex deposition testimony relating to such systems and that the public records of the Navico Lawsuit and reexaminations established that Imagenex documents were produced and a deposition took place and, accordingly, Garmin should use a less intrusive method to obtain the information.  Garmin argued that the information's availability from third-parties did not obviate the need for Complainant's reexamination counsel to provide it and that, as the information was highly relevant to inequitable conduct, Garmin was entitled to discover the information.  ALJ Essex found Fitzpatrick's arguments to be unpersuasive and accordingly denied the motion.