On December 30, 2014, Chief ALJ Charles E. Bullock issued the public version of Order No. 70 (dated December 15, 2014) in Certain Flash Memory Chips and Products Containing Same (Inv. No. 337-TA-893).

By way of background, the investigation is based on a complaint filed by Spansion LLC ("Spansion") alleging violation of Section 337 by Macronix International Co., Ltd.; Macronix America, Inc.; Macronix Asia Ltd.; Macronix (Hong Kong) Co., Ltd. (collectively, "Macronix"); Acer Inc.; Acer America Corporation; ASUSTek Computer Inc.; Asus Computer International (America); Belkin International, Inc.; D-Link Corporation; D-Link System, Inc.; Netgear Inc.; Nintendo Co., Ltd.; and Nintendo of America, Inc. in the importation into the U.S. and sale of certain flash memory chips and downstream products containing the same that infringe one or more claims of U.S. Patent Nos. 6,369,416; 6,900,124; 7,018,922; 6,459,625; 7,151,027; and 6,731,536.  See our August 5, 2013 and September 9, 2013 posts for more details on the complaint and Notice of Investigation, respectively. 

According to the Order, Macronix filed a motion for a protective order "limiting the materials to which Spansion claims it is entitled under Order No. 63 [] to the eight categories enumerated by the Chief Administrative Law Judge."  Macronix stated that it had sought to comply with the requirements of Order No. 83, but that Complainant's interpretation of the Order had a scope that was too burdensome and expensive for Macrnoix.  Additionally, Macronix argued that the discovery Complainant sought would not benefit Complainant because there was already enough evidence to establish that the accused products met the pertinent limitations of two asserted patents.  Macronix thus requested ALJ Bullock to issue a protective order "that Macronix is not required to (i) certify that 'all' documents existing at Macronix have been produced; (ii) produce email correspondence that under the Procedural Stipulation is outside the scope of discovery; or (iii) produce additional documents absent a further order by the Chief ALJ predicated on Spanion's showing of good cause."

Spansion opposed the motion, arguing that Macronix never sought reconsideration of Order No. 63 and instead waited a month before seeking a protective order.  Spansion thus argued that the motion was untimely and calculated to create a further delay.  Spansion further argued that Macronix's motion demonstrated its disregard for Order No. 63, cited to inapplicable rules, omitted key language, and provided additional misstatements.  Spansion also noted that when it sought documents it identified as missing, Macronix responded that Spansion had to show the relevance of the documents before Macronix would produce them.  Spansion argued that Macronix's motion showed that Macronix has withheld large quantities of responsive documents and that ALJ Bullock should impose sanctions.

ALJ Bullock found that Macronix's arguments were untimely and should have been made in response to Spansion's motion to compel.  ALJ Bullock also found that Macronix's failure to seek clarification regarding Order No. 63 undermined its arguments.  ALJ Bullock further noted that it was objectively unreasonable for Macronix to operate under the belief that an order compelling discovery would be circumscribed by private discovery stipulations not presented to the presiding ALJ for approval and that Macronix not attempting to search for and produce documents on that basis was inappropriate.

ALJ Bullock stated that any motions for sanctions should be filed as soon as practicable and before the end of December 2014.  ALJ Bullock also ordered Spansion and Macronix to undertake additional good faith attempts to settle the investigation.  ALJ Bullock stated that the parties should arrange for a settlement meeting to occur by no later than the close of business on January 9, 2015 and that by no later than the close of business on January 14, 2015, the parties should serve ALJ Bullock with two copies of a joint report disclosing what meetings took place, who attended, and what result was obtained.