On October 8, 2015, ALJ David P. Shaw issued the public version of Order No. 31 (dated September 22, 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. and Telefonaktiebolaget LM Ericsson (collectively, “Ericsson”) 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 electronic devices, including wireless communication devices, computers, tablet computers, and digital media players that infringe one or more claims of U.S. Patent Nos. 6,633,550, 6,157,620, 6,029,052, 8,812,059, 6,291,966, and 6,122,263.  See our March 2, 2015 and April 2, 2015 posts for more details on the complaint and Notice of Investigation, respectively. 

According the Order, Ericsson filed a motion to compel Apple to supplement its responses and document production with respect to “certain categories of documents.”  Ericsson argued that Apple had been deficient with respect to the following “categories of documents”:

  • Apple's failure to produce missing technical specifications as repeatedly requested by Ericsson (Ericsson's Request for Production Nos. 13, 24, 47-63, 68-71, and 74-112)
  • Apple's failure to produce documents from prior litigations concerning touch screen functionality (Ericsson's Request for Production Nos. 195-244, 247-258, and 260-294)
  • Apple's failure to produce documents and information relating to Apple's responses to requests from proposals from municipalities and schools, documents relating to the bidding process for education-related contracts, and documents regarding how Apple markets its products to municipalities and schools (Ericsson's Request for Production Nos. 295-300, Interrogatory No. 112)
  • Apple's failure to produce its contracts and agreements with the contract manufacturers for the Accused Products (Ericsson's Request for Production No. 165)
  • Apple's failure to provide any information concerning its lobbying or governmental relations efforts regarding the U.S. International Trade Commission (Ericsson's Interrogatory No. 115)

Ericsson also argued that it should be afforded the opportunity to take additional depositions, supplement its contentions and expert reports if needed.  In response, Apple argued that Ericsson failed to make any legally or factually supported arguments as to why its requested relief should be granted, stating that Apple had complied with every discovery request in the investigation.

With respect to the documents from prior litigation, Ericsson argued that it had propounded numerous discovery requests regarding prior Apple litigation materials concerning related technology and touch screen functionality that are relevant to Apple’s positions previous positions regarding touch screen functionality, and thus relevant to U.S. Patent No. 8,812,059 (the ‘059 patent).  In response, Apple argued that the investigations and District Court cases involve unrelated patents, unaccused products and functionalities, and third-party confidential materials.  Apple also argued that Ericsson had not deposed any witness regarding prior transcripts and thus Ericsson’s argument that the prior litigations are relevant is not persuasive.  After considering the evidence, ALJ Shaw found that Ericsson’s discovery requests regarding documents from prior litigations were irrelevant, overly broad, and unduly burdensome.

Regarding the documents concerning municipalities and schools, Ericsson argued that Apple had failed to cite or produce documents to support its contentions that its devices were extensively used in schools across the country.  ALJ Shaw found, however, that Ericsson was incorrect as Apple had produced documents regarding municipalities and schools.  With respect to the requests Ericsson served directed to the bidding process for sales to schools, ALJ Shaw found that Ericsson had not shown how the bidding process is relevant to the usage of Apple’s devices by students.  Additionally, ALJ Shaw noted that Apple identified a representative of a school district in its original witness list and Ericsson chose not to depose him.

With respect to Apple agreements with its contract manufacturers, Ericsson sought all documents and things sufficient to show Apple’s business relationships, contractual or otherwise, with past or current manufacturers of the accused products.  Ericsson argued that these agreements were relevant to Apple’s contention that switching capacity from one manufacturer to another takes time.  In response, Apple argued that it believed it would take months to years for other device manufacturers to ramp up production to try to replace any Apple excluded devices and that if Ericsson wanted to investigate Apple’s contention that manufacturing equipment is unique and not easily transferred it should have sought information on the actual machines Apple uses to manufacture devices.  After considering the evidence, ALJ Shaw noted that Apple had provided Ericsson with a list of its contract manufacturers and the parts they manufacture and that it made available for deposition its Director of Wireless Development, who testified regarding Apple’s manufacturing process.  ALJ Shaw found, however, that the discovery Apple had provided did not show the “business relationships” with past or current manufacturers, particularly whether Apple’s agreements would facilitate or hinder Apple’s ability to shift from the manufacture of accused products to substitute devices.  Accordingly, ALJ Shaw ordered Apple to supplement its document production by producing the agreements to show Apple’s ability to shift from the manufacture of accused products to substitute devices.

Regarding Ericsson’s interrogatory concerning Apple’s lobbying activities, Ericsson argued that it was entitled to “narrative responses” identifying “each contact by date, person involved, and a detailed summary of communication” for all communications “(a) regarding ITC proceedings and exclusion orders, (b) referencing the electronics or telecommunications industry or products, and (c) involving contacts with the International Trade Commission, Federal Trade Commission, Department of Justice, U.S. Customs and Border Protection, or the U.S. Trade Representative (including the U.S. Trade Representative Industry Trade Advisory Committees.”)  Ericsson also requested that Apple “produce[] all non-privileged documents relating to those contacts.” Ericsson argued that this information was relevant to the public interest issues in the investigation and enforcement of any eventual Commission remedial order.  After considering Ericsson’s argument, ALJ Shaw found that Apple’s public interest allegations deal with the harm to the consumers and US economy if Apple’s devices are excluded, but that Apple’s prior lobbying activities do not change the current regulations or the facts that ALJ Shaw has to consider in evaluating Ericsson’s requested remedy.

Accordingly, ALJ Shaw granted the motion in part.