On July 22, 2016, ALJ MaryJoan McNamara issued the public version of Order No. 25 (dated July 12, 2016) in Certain Radio Frequency Identification (“RFID”) Products and Components Thereof (Inv. No. 337-TA-979).

By way of background, this investigation is based on a December 4, 2015 complaint filed by Neology, Inc. (“Neology”) of Poway, California alleging violation of Section 337 in the importation into the U.S. and sale of certain RFID products and components thereof that infringe one or more claims of U.S. Patent Nos. 8,325,044; 8,587,436; and 7,119,664. See our December 4, 2015 and January 7, 2016 posts for more details on the complaint and Notice of Investigation, respectively.

According to the Order, Respondents moved to compel Neology to promptly cure its “significant discovery deficiencies,” including continued depositions of particular witnesses, prohibiting arguments related to an earlier conception date by another inventor for failing to provide adequate contact information, and providing documents related to licensing the patents-in-suit. Neology opposed the motion.

Specifically, Respondents argued that continued depositions were necessary because Neology produced more than 76,000 pages of documents three days before these depositions, the vast majority from the files of the deponents, as well as additional document production during and after the depositions. Respondents asserted that this production denied “any chance of fully and adequately preparing for the depositions of three of the Investigation’s most important witnesses.” Neology essentially conceded that Respondents should have more time with these deponents, and the ALJ agreed, granting the request for continued depositions and granting the auxiliary request to supplement expert reports with resulting testimony if necessary.

With regard to earlier conception by an another inventor, Respondents argued that contact information was not fully provided, although Neology countered that it had provided an accurate address in Thailand (though not a telephone number). The ALJ concluded that any delay in obtaining discovery is due to the Thai government’s failure to act on the Letter of Discovery served rather than Neology’s failure to provide a telephone number. Nonetheless, the ALJ also agreed that Neology “has not fully complied with its discovery obligations in this Investigation,” ordering them to supplement the pertinent interrogatory with the earlier inventor’s email and phone number because he is likely to be a significant witness.

Finally, Respondents sought to compel Neology to provide documents and communications relating to settlement and licensing of the patents-in-suit, pointing to specific requests for production. Neology objected to these requests as seeking confidential information that is subject to privilege, and noted that non-privileged documents will be produced. The ALJ ordered Neology to produce all non-privileged documents, and ordered the parties to file separate motions regarding privilege disputes requiring in camera review if necessary.