On October 1, 2014, ALJ Dee Lord issued the public versions of Order Nos. 43 (dated March 26, 2014) and 61 (dated April 22, 2014) and on October 3, 2014 issued the public versions of Order Nos. 63, 64, and 67 (dated April 28, 2014, April 28, 2014, and May 1, 2014, respectively) in Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-897), all related to discovery.

By way of background, the investigation in this case is based on a September 3, 2013 complaint and September 20, 2013 letter supplementing the complaint filed by Optical Devices, LLC ("Optical") alleging violation of Section 337 in the importation into the U.S. and sale of certain optical disc drives, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,904,007; 7,196,979; 8,416,651; RE40,927; RE42,913; and RE43,681.  See our September 6, 2013 post for more details on the complaint and our October 23, 2014 post on instituting the investigation. 

According to Order No. 43, Optical requested that a subpoena be issued to third party International Business Machines ("IBM") to obtain information related to Optical's domestic industry.  Part of Optical's domestic industry allegations were based on a joint venture between Optical, IBM, and licensees to the patents at issue. IBM filed a motion to quash or significantly limit the subpoena, and alleged that most of the requested documents were in the possession of the licensees or did not exist.  Optical filed a response and argued that the motion should be denied in its entirety.  No other responses were filed.  ALJ Lord granted the motion, and determined that, since IBM is not a licensee or authorized to practice the patent, any information it may have was irrelevant.  Specifically, while a component manufactured by IBM is incorporated into the alleged domestic industry products, the component itself does not practice the patents, and thus any information IBM had was not deemed to be relevant.

According to Order No. 61, Optical filed a motion to compel several respondents to produce complete source code related to the control chips in the accused optical disc drives.  The respondents opposed the motion, and stated that all relevant and responsive code had been produced.  ALJ Lord denied the motion, as Optical had not shown that its request for complete source code was relevant to any claim or defense in the Investigation, and determined that the respondents had already produced all relevant and responsive source code in their possession, custody, or control, as required.

According to Order No. 63, Optical filed a motion to compel MediaTek, Inc. and MediaTek USA, Inc. (collectively, "MediaTek") to provide complete responses to numerous interrogatories, requests for production, and requests for admission related to the importation of MediaTek's products into the United States.  MediaTek argued that it had fully responded, and that Optical failed to meet and confer prior to filing the motion to compel.  ALJ Lord determined that MediaTek complied with its discovery obligations regarding the interrogatories and requests for production, but not with regard to the requests for admission.  As such, Optical's motion was granted-in-part, compelling MediaTek to provide amended answers with more than boilerplate objections and setting forth in detail why it cannot admit or deny the substance of the requested admissions.

According to Order No. 64, MediaTek filed a motion to compel Optical to provide full responses to several interrogatories related to infringement and domestic industry.  Optical opposed the motion, and alleged that it provided responses with extensive factual information in the form of citations to documentary support, and that this was the complete factual bases for its contentions.  ALJ Lord denied the motion, and determined that MediaTek may explore further via expert discovery, but that MediaTek was not entitled to discovery beyond the factual bases for Optical's contentions.

According to Order No. 67, numerous respondents filed a motion to strike Optical's "untimely identification of fact witnesses" and to preclude Optical from relying on these witnesses at trial, asserting that Optical did not have good cause to amend the witness list. Optical opposed the motion, and explained that it did have good cause, as it had worked diligently to identify the appropriate people, but met unforeseen complications when its licensee failed to cooperate as anticipated. In denying the motion, ALJ Lord determined that Optical's diligent efforts demonstrated good cause, and that respondents would not be prejudiced by the amended witness list as they had time to take discovery concerning these witnesses and to serve supplemental rebuttal expert reports based on any newly discovered facts if necessary.