On April 8, 2015, Chief ALJ Charles E. Bullock issued the public version of Order No. 36 (dated March 23, 2015) in Certain Laser Abraded Denim Garments (Inv. No. 337-TA-930).
By way of background, this investigation is based on an August 18, 2014 complaint filed by RevoLaze, LLC and TechnoLines, LLC (collectively, "Complainants") alleging violation of Section 337 in the importation into the U.S. and sale of certain laser abraded denim garments that infringe one or more claims of U.S. Patent Nos. 5,990,444; 6,140,602; 6,252,196; 6,664,505; 6,819,972; and 6,858,815. See our August 19, 2014 and September 19, 2014 posts for more details on the complaint and Notice of Investigation, respectively.
According to the Order, Respondents Abercrombie & Fitch Co., American Eagle Outfitters, Inc., The Buckle, Inc., Diesel S.p.A., The Gap, Inc., Guess?, Inc., H&M Hennes & Mauritz LP and H&M Hennes & Mauritz AB, Koos Manufacturing, Inc., Levi Strauss & Co., Lucky Brand Dungarees, Inc., Roberto Cavalli S.p.A., and VF Corp. (collectively, "Respondents") filed a motion seeking to compel Complainants to re-produce documents that had been clawed back as privileged. Respondents alleged that Complainant's seven privilege logs did not support their claim of privilege and were just as "piece-meal" as the clawbacks. Respondents also sought an order compelling Complainants to produce documents exchanged with a nonparty.
Respondents argued that the requested materials were relevant because they concerned the asserted patents and were not entitled to attorney-client privilege, common interest privilege, or work product protection. Specifically, Respondents claimed that the nonparty and Complainants had only shared commercial interest, which was insufficient to create a common interest privilege. Complainants argued that the agreement at issue was irrelevant and protected by work product protection. Additionally, Complainants argued that some of the documents could not be produced because Complainants had not yet located or identified them.
In the Order, ALJ Bullock determined that the agreement and attached exhibits were not protected by the work product doctrine because the agreement was an arm's length contract that was prepared for a business purpose, and not by a party or party representative in anticipation of litigation. Additionally, ALJ Bullock found that the agreement was relevant to the issue of standing and therefore discoverable. Accordingly, ALJ Bullock granted this portion of Respondents' motion to compel. ALJ Bullock, however, found that Respondents had not adequately explained the relevance of the drafts of the agreement and denied this portion of the motion.
With respect to the remaining nonparty documents, ALJ Bullock determined that ruling on their production was premature, but noted that work product protection is generally not waived when it is shared with a third party. More specifically, ALJ Bullock noted that the parties had agreed to delay e-mail discovery and therefore, it would be premature to rule on the production of e-mails. ALJ Bullock also directed Complainants to provide an update as to the status of the documents that had not yet been located (Perfection Documents, Matter Monitoring Documents, Diligence Materials) within 10 days of the Order.
Regarding the financial projection documents, ALJ Bullock found that while they were relevant to the Investigation, they were appropriately considered to be work product because they were projections made by a party solely in anticipation of litigation. With respect to the domestic industry document, ALJ Bullock found that while it was also relevant to the investigation, it was considered work product. ALJ Bullock found, however, that the factual information underlying the financial projection documents and the domestic industry document was discoverable and should be provided either by producing a redacted version of the document or by providing the facts in response to discovery requests.