On July 17, 2013, ALJ E. James Gildea issued the public version of Order No. 16 (dated July 10, 2013) in Certain Integrated Circuit Devices and Products Containing the Same (Inv. No. 337-TA-873).  In the Order, ALJ Gildea granted Complainant Tela Innovations, Inc.’s (“Tela”) motion to compel certain Respondents (LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A., Inc. (collectively, “LG”)) to provide discovery responses and sample products while simultaneously denying LG’s motion for a protective order. 

By way of background, the investigation is based on a complaint filed by Tela alleging violation of Section 337 in the importation into the U.S. and sale of certain integrated circuit devices and products containing the same that infringe one or more claims of U.S. Patent Nos. 8,264,049, 8,264,044, 8,258,550, 8,258,547, 8,217,428, 8,258,552, and/or 8,030,689.  See our February 11, 2013 post for more details on the complaint.

According to the Order, Tela filed a motion to compel LG to provide “full responses” to several interrogatories and requests for production and for samples of all LG products within the scope of the Notice of Investigation.  Tela argued that this discovery was relevant to infringement and claimed that it had unsuccessfully tried to work with LG to lessen the burden on LG.  The Commission Investigative Staff (“OUII”) supported the motion, and suggested that some manner of staged discovery may be appropriate.

LG opposed the motion and simultaneously filed a motion for a protective order, arguing that Tela’s discovery should be limited to “Qualcomm integrated circuits manufactured at 28 nm process nodes and mobile devices containing the same” as recited in the Complaint.  LG also asserted that it was not in possession of information about the size of the process nodes in its devices. 

ALJ Gildea stated that the Notice of Investigation broadened the scope of the investigation beyond the example recited in Tela’s complaint, and thus discovery is also broader than the particular 28 nm process nodes.  The ALJ also stated that “LG’s lack of diligence…is telling.”  ALJ Gildea also questioned the idea that LG did not have or could not obtain information about the process nodes in its devices, rhetorically asking if “its own chip suppliers [are] somehow beyond LG’s control?”  As such, the ALJ granted the motion to compel and denied the motion for a protective order.  The ALJ also dismissed OUII’s suggestion of staged discovery, pointing out that LG did not take this opportunity when offered by Tela and concluding that any additional delay at this late date would prejudice Tela.