On October 16, 2015, ALJ Dee Lord issued the public version of Order No. 28 granting Apple’s Motion for a protective order and ordering the parties to refile discovery motions in Certain Wireless Standard Compliant Electronic Devices, Including Communication Devices and Tablet Computers (Inv. No. 337-TA-953).

By way of background, this investigation is based on a February 26, 2015 complaint filed by Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively, “Ericsson”) alleging violation by Apple Inc. a/k/a Apple Computer Inc. (“Apple”) 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 (collectively, “the asserted patents”).  See our March 3, 2015 and April 3, 2015 posts for more details on the complaint and notice of investigation, respectively. 

According to the Order, Apple filed a motion seeking a protective order as to Requests for Production (“RFPs”) Nos. 321-325 served by Ericsson. In its Motion, Apple argued that the discovery sought by Ericsson of four Apple in-house attorneys and a “high-level” Apple executive would be onerous, without significantly contributing to the development of the record.  Additionally, Apple alleged that the RFPs were overbroad, encompassing many unrelated license negotiations and that they violated the parties’ previous agreements regarding discovery.  Apple also stated that it had already provided deposition dates for each witness whose email Ericsson requested.

In response, Ericsson contended that (1) the individuals whose email had been requested had important knowledge that was directly relevant to Apple’s claims and defenses, including Apple’s “FRAND” defense, (2) these individuals played a role in licensing negotiations, (3) its RFPs were reasonable and narrowly tailored to FRAND-related issues, and (4) it never had an agreement with Apple precluding the discovery sought. Ericsson also maintained that it was Apple who introduced FRAND issues into the investigation and that Ericsson simply sought discovery to rebut the allegations.  Ericsson also alleged that Apple sought the same type of discovery from Ericsson.

After reviewing the evidence, ALJ Lord found that Ericsson’s RFPs were broad, including search terms like “license & rate,” “policy or guide” and “Royalt!,” which would generate a large number of emails for Apple to review, including many unrelated to the investigation.  Additionally, ALJ Lord noted that the RFPS were targeted to produce some information that would be protected under the attorney-client privilege and/or work product doctrine, which often requires extensive litigation.  ALJ Lord also found that the RFPs were not reasonably calculated to, and were unlikely to lead to, the discovery of evidence that would be useful in the investigation.  Accordingly, ALJ Lord granted Apple’s request for a protective order.

ALJ Lord also stated that pursuant to Order No. 20, Apple’s allegations concerning FRAND licensing terms had largely been stricken as affirmative defenses, that Apple’s Eighth Affirmative Defense is grounded on Ericsson’s alleged failure to disclose to ETSI its intellectual property interests in the patents-in-issue and not on Ericsson’s alleged failure to offer a FRAND rate, and that none of the discovery requested in RFP Nos. 321-325 related to the question of whether Ericsson should be estopped on equitable grounds from enforcing its patents due to non-disclosure.

ALJ Lord also noted that Ericsson had invoked FRAND obligations and ETSI rules in response to Apple’s Eighth Affirmative Defense, and that while ALJ Lord had previously stated that Ericsson’s contention would await further factual development, ALJ Lord had concluded that Ericsson’s position was based on an erroneous legal premise.  ALJ Lord stated that the issue raised by Apple’s Eight Affirmative Defense is not whether Ericsson violated ETSI rules as the issue of non-disclosure sounds in equity.  Accordingly, ALJ Lord found that Ericsson’s RFPs were not likely to lead to the discovery of admissible evidence on the issue of non-disclosure.

Additionally, while the Commission Investigative Staff (“OUII”) argued that there is a need for a complete record, ALJ Lord found that in this case the immense body of extraneous information that the parties sought to inject into the investigation is not harmless and threatened to overwhelm the proceedings with matters extending far beyond the purview of Section 337.

ALJ Lord also noted that on October 15, 2015, the parties had filed voluminous motions to compel and ordered the parties to confer pursuant to Ground Rule 3.2 and to refile the motions by October 22, 2015, deleting any requests to compel discovery inconsistent with Order No. 28.  ALJ Lord further noted that failure to do so may result in the denial of the entire motion.