On September 11, 2015, ALJ David P. Shaw issued the public version of Order No. 21 (dated August 28, 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. 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 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.  See our March 2, 2015 and April 2, 2015 posts for more details on the complaint and Notice of Investigation, respectively. 

According to the Order, Complainants Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively, "Ericsson") filed a motion to compel Apple Inc. ("Apple") to supplement its responses and document production with respect to the following categories:  

  • Apple's alleged failure to provide an answer regarding the status of products under development and selection of components therein (Ericsson Interrogatory No. 111) (Mem. at Section III.B)
  • Apple's alleged failure to provide answers and produce documents regarding battery functionality in the Accused Products (Ericsson Interrogatory Nos. 39–45 and 110, and Ericsson Request for Production Nos. 86-95 and 193) (Mem. at Section III.C)
  • Apple's alleged failure to produce "Product Documents" and "Procedures" expressly referenced in the produced bills of materials for the Accused Products (Ericsson Request for Production No. 15) (Mem. at Section III.D)
  • Apple's alleged failure to provide answers and produce documents regarding touch screen functionality for the Accused Products (Ericsson Interrogatory No. 109, and Ericsson Request for Production Nos. 13 and 74–78) (Mem. at Section III.E)
  • Apple's alleged failure to provide answers and produce documents relating to "Wi-Fi plus Cellular" functionality of the Accused products (Ericsson Interrogatory No. 53 and Ericsson Request for Production Nos. 110 and 111) (Mem. at Section III.F)
  • Apple's alleged failure to produce organizational charts (Ericsson Request for Production No. 10) (Mem. at Section III.G)

After filing the motion, Ericsson submitted a letter to ALJ Shaw stating that the issues addressed in Sections III.C, III.D, III.E, and III.G of the motion were moot.  Thus the only issues remaining in dispute relate to Apple's products under development and the alleged "Wi-Fi plus Cellular functionality."  Regarding these remaining issues, Ericsson argued that Apple has engaged in delay tactics including failing to respond to Ericsson correspondence regarding the outstanding discovery issues, which has unfairly and extensively delayed discovery.

With respect to the Apple products under development, Ericsson stated that its third set of discovery requests contain a narrowly tailored interrogatory request for Apple to identify any components selected for inclusion on next generation iPhones, iPads, or developmental prototypes, along with the status and testing of the next generation products.  Ericsson then argued that Apple should be ordered to fully comply with this interrogatory and, if relevant components have been selected, prototypes tested, or that a product will be released in the near future, Apple should be compelled to provide discovery for each product.  In response, Apple argued that it had already agreed to compromise with Ericsson on this issue in a related investigation that would provide Ericsson with discovery into components selected for inclusion in a product being developed that will be released prior to the hearing as well as discovery into beta version source code.  Ericsson, however, rejected the compromise and requested discovery into products and prototypes under development that would be released after the hearing date.

After reviewing the evidence, specifically the parties' agreement to "include in the Identification of Accused Products all products under development that (a) will have a sufficiently complete design by the close of fact discovery in this Investigation, and (b) are likely to be imported," ALJ Shaw denied the motion with respect to the Apple products under development because Ericsson had not shown that these products "will have a sufficiently complete design by the close of fact discovery."

With respect to the "Wi-Fi plus Cellular" functionality, Ericsson argued that Apple had failed to provide answers and produce documents concerning the "Wi-Fi plus Cellular" functionality in its accused products.  Ericsson argued that without this information it will be, and has been, handicapped in making its infringement case.  In response, Apple argued that it had agreed to produce non-privileged documents and information responsive to Ericsson's requests, to the extent any exist and that, therefore, Ericsson's requested relief should be denied as moot.  Additionally, both parties submitted letters to ALJ Shaw regarding the status of this aspect of discovery, however, the majority of the submissions were redacted.  After reviewing the evidence, ALJ Shaw determined that the pending motion could not be granted with respect to the dispute concerning the "Wi-Fi plus Cellular" functionality of Apple's products.