On August 14, 2012, ALJ Theodore R. Essex issued Order No. 20 granting-in-part Respondents Brother Industries, Ltd., Canon, Inc., Dell, Inc., Fujitsu Limited, Hewlett-Packard Company, HiTi Digital, Inc., Kingston Technology Company, Inc., Micron Technology, Inc., Lexar Media, Inc., Newegg Inc., Rosewill, Inc., Shuttle Inc., Seiko Epson Corporation, and Systemax Inc.’s (collectively, “Respondents”) motion to compel Complainant Technology Properties Limited, LLC (“TPL”) to produce certain information from a prior investigation in Certain Computers and Computer Peripheral Devices and Components Thereof and Products Containing the Same (Inv. No. 337-TA-841).
According to the Order, Respondents sought an order that TPL produce the following information from Investigation No. 337-TA-807: (1) discovery responses from any party; (2) expert reports and expert witness deposition transcripts; (3) infringement and invalidity contentions; and (4) any other requested documents that TPL withheld solely on the basis of third-party confidentiality. Respondents argued that the requested information is relevant because TPL is a party to the current investigation as well as the previous investigation, both of which include the same asserted patents. TPL opposed the motion in part, refusing to produce categories (1) and (2) only because they are subject to a protective order in the prior investigation, and objecting to categories (3) and (4) only to the extent they are unclear. In particular, TPL noted that the only infringement and invalidity contentions it is aware of are included in category (1), and argued that category (4) is overly broad. Transcend Information, Inc., a party to the prior investigation (but not the current investigation), submitted a letter to the ALJ opposing the motion.
ALJ Essex found good cause for ordering TPL to produce documents in categories (1) and (2), and found that category (3) was redundant of category (1). The ALJ agreed with TPL that category (4) was overly broad and vague, but granted Respondents’ request with respect to prior art documents that were designated confidential by third parties, which he deemed a sufficiently specific and relevant request. Mindful of the protective order in the prior investigation, ALJ Essex ordered TPL to request the consent of the parties in that investigation and produce any documents for which it obtains the consent of a party to produce. The ALJ further ordered TPL to produce written evidence documenting its request for consent and any disagreeing party’s refusal.