On February 2, 2016, ALJ Dee Lord issued the public version of Order No. 16 (originally dated December 30, 2015) in Certain Activity Tracking Devices, Systems, and Components Thereof (Inv. No. 337-TA-963).

By way of background, this investigation is based on a July 8, 2015 complaint filed by AliphCom d/b/a Jawbone and BodyMedia, Inc. (collectively “Jawbone”) alleging violation of Section 337 in the importation into the U.S. and sale of certain wearable fitness and activity tracker devices, systems, and components thereof that infringe one or more claims of U.S. Patent Nos. 8,446,275; 8,529,811; 8,793,522; 8,961,413; 8,073,707; and 8,398,546.  The complaint further alleges that the Proposed Respondents have engaged in unfair competition and unfair acts by their access and improper use of Jawbone’s trade secret confidential information related to Jawbone’s technology and wearable product development plans, roadmaps, and financial information.  See our July 8, 2015 and August 18, 2015 posts for more details on the complaint and Notice of Investigation, respectively. 

According to the Order, Jawbone moved to compel Respondents Fitbit, Inc. (“Fitbit”) and Flextronics International Ltd. and Flextronics Sales & Marketing (collectively, “Flextronics”) “to provide all non-privileged information responsive to the following discovery requests: Interrogatories 2-6, 12-15, 28, 33-34, 39, and 66-74 to Fitbit, Interrogatories 1, 4, 6-18, 33-34, 54, 57, and 69 to Flextronics[,] . . . the corresponding Requests for Production for each Respondent and Requests for Admission 1-222 to Flextronics.”  Fitbit also filed a motion for leave to file a sur-reply in response to Jawbone’s reply in support of its motion to compel, which Jawbone opposed.

Fitbit’s Motion for Leave to File a Sur-Reply

In its motion for leave to file a sur-reply, Fitbit argued that “extraordinary circumstances” existed, which warranted a sur-reply, because Jawbone’s reply brief mischaracterized the state of discovery and alleged for the first time that supplemental interrogatory responses, served after Jawbone’s motion was field, were deficient.  In response, Jawbone argued that Fitbit did not comply with Ground 3.2’s certification requirement regarding a parties’ duty to make a reasonable, good-faith effort to resolve the matter with the other parties prior to filing the motion.  Under the Rule, the certification statement must be placed at the beginning of the motion.  Because Fitbit’s Motion did not contain such a certification, ALJ Lord denied Fitbit’s motion for leave to file a sur-reply.

Jawbone’s Motion to Compel – Discovery Requests Directed to Fitbit

Jawbone’s motion sought to compel Fitbit to produce “all non-privileged information responsive to” Interrogatory Nos. 2-6, 12-15, 23-25, 28, 33, 34, 39, and 66-74 and the “corresponding Requests for Production.”  After filing the motion, and before ALJ Lord’s ruling, Jawbone indicated that the motion was rendered moot with respect to Interrogatory Nos. 39, 73, and 74.  Thus, the motion to compel was denied as moot with respect to those interrogatories.

For a significant number of the remaining interrogatories at issue in Jawbone’s motion, the main issue was whether the responses complied with Commission Rule 210.29(c), which provides a party responding to interrogatories with the option of identifying records from which an answer may be derived or ascertained, instead of providing a narrative response.  Specifically, in response to Interrogatory Nos. 2-6 and 25, Fitbit agreed to produce documents under Rule 210.29(c), yet, in violation of the Rule, did not identify any documents or supplement the response to identify such documents.  While Fitbit argued that Jawbone’s motion to compel was premature, it also stated that it aimed for production to be substantially complete by the end of November.  As that deadline had expired, ALJ Lord granted Jawbone’s motion as to Interrogatory Nos. 2-6 and 25.  ALJ Lord granted Jawbone’s motion as to Interrogatory Nos. 13, 14, 28, 33, 34, and 66-71 on similar grounds because Fitbit failed to affirm that the documents identified in Fitbit’s responses contained relevant information and/or failed to indicate where in the produced documents the responsive information could be found.

Regarding Interrogatory Nos. 15 and 72, Fitbit supplemented its responses after Jawbone filed its reply.  Jawbone did not seek leave to supplement its motion to address the response.  Accordingly, based on the current record, ALJ Lord found no basis for finding Fitbit’s response deficient and denied Jawbone’s motion with respect to these interrogatories.

Regarding Interrogatory Nos. 23 and 24, ALJ Lord found that while it was true that Fitbit’s responses only identified documents, the interrogatories at issue only requested the identification of documents.  Jawbone also complained that Fitbit’s supplemental responses were deficient because they identified non-responsive, as well as responsive documents, such as multiple revisions of the same specification or schematic, which masked the very information the interrogatories were seeking.  Jawbone also argued that Fitbit had cited several of the same documents in response to Interrogatory Nos. 23, and 24, even though product specifications and product schematics are different types of documents.  Even though Jawbone did not attack copies of the documents in question, ALJ Lord granted Jawbone’s motion to compel as to Interrogatory Nos. 23 and 24 and ordered Fitbit to supplement its responses to identify only responsive documents.

Jawbone also sought to compel the production of all non-privileged documents responsive to its requests for production corresponding to the interrogatories subject to the motion to compel.  However, Jawbone did not specifically identify the requests for production. Thus, ALJ Lord denied Jawbone’s motion to compel with respect to its requests for production.

Jawbone’s Motion to Compel – Discovery Requests Directed to Flextronics

Jawbone’s motion sought to compel Flextronics “to respond to Interrogatories 1,4, 6-18, 33-34, 54, 57, and 69 to Flextronics, the corresponding Requests for Production, and Requests for Admission 1-222.”  In its reply, Jawbone indicated that its motion was rendered moot with respect to Interrogatory Nos. 1, 6, 8, 10-14, 18, 33, and 34 and Requests for Admission 1-222.  Thus, the motion to compel was denied as moot with respect to those requests.

Regarding Interrogatory Nos. 4, 7, 9, 15-17, and 69, although Flextronics stated that it would provide responsive, non-privileged information after a reasonable search, it had not done so, arguing that its failure to do so was the result of Jawbone’s delay in disclosing its trade secret allegations.  ALJ Lord found, however, that while Jawbone should not have delayed trade secret discovery from Flextronics, Jawbone’s failure to provide discovery did not excuse Flextronics from its obligation to respond to discovery as Flextronics never sought an order delaying discovery and was thus obligated under the Rules to timely answer Jawbone’s interrogatories.  Additionally, ALJ Lord noted that responding to some of the interrogatories did not require Flextronics to have any knowledge of Jawbone’s trade secret allegations.  Moreover, Flextronics acknowledged that Jawbone had disclosed its trade secret allegations with sufficient specificity by at least November 13, 2015, removing any impediment in responding to the interrogatories.  Accordingly, ALJ Lord granted Jawbone’s motion with respect to these interrogatories.

Regarding Interrogatory Nos. 54 and 57, Flextronics indicated that it would produce information, to the extent it is relevant, in response to these interrogatories, yet had failed to provide such information.  Accordingly, ALJ Lord granted Jawbone’s motion to compel with respect to these interrogatories.

Jawbone also sought to compel the production of all non-privileged documents responsive to its requests for production corresponding to the interrogatories subject to the motion to compel.  However, Jawbone did not specifically identify the requests for production.  Thus, ALJ Lord denied Jawbone’s motion to compel with respect to its requests for production.