On September 6, 2013, ALJ E. James Gildea issued the public version of Order No. 26 (dated August 23, 2013) granting Respondents LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A., Inc.’s (collectively, “LG”) motion seeking to compel Complainant Tela Innovations, Inc. (“Tela”) to fully answer certain interrogatories in Certain Integrated Circuit Devices and Products Containing the Same (Inv. No. 337-TA-873).
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, LG asserted that shortly before the close of fact discovery, Tela disclosed its belief that the inventorship of two of the asserted patents required correction, despite verified interrogatory responses to the contrary which Tela had provided to LG even though Tela had already apprised the USPTO of the inventorship issue. Therefore, LG argued that it needed discovery into the issue of when Tela first suspected and confirmed the inventorship of the patents in question, and that its efforts thus far have only been partially successful because Tela asserted attorney-client privilege on this issue. According to LG, neither the date when Tela “first suspected” nor the date when it “knew” two inventors needed to be added to the two asserted patents is privileged, and Tela is concealing that it knew prior to filing the complaint that the inventorship for two asserted patents required correction, despite its misleading interrogatory responses to the contrary. Tela opposed the motion, arguing that it made a mistake in its first set of interrogatory responses, which it corrected upon realizing the error. The Commission Investigative Staff did not oppose the motion.
ALJ Gildea granted the motion, finding that Tela’s response that it was aware of the inventorship issue when the documents submitted to the USPTO were executed in April of 2013 “is an evasion at best” given that the interrogatory in question asks for the date Tela “first became aware,” which the ALJ agreed is not a fact protected by the attorney-client privilege. Accordingly, ALJ Gildea held that LG is entitled to a verified interrogatory response that affirmatively states the date Tela first became aware that the named inventor of the ‘044 and ‘049 patents was not the sole inventor, as well as verified interrogatory responses providing a detailed explanation of the facts and circumstances behind the determination to add two additional inventors to those patents. The ALJ observed that “LG is not seeking the content of specific communications between Complainant and its counsel protected by the attorney-client privilege, such as the advice counsel may have provided to Complainant with respect to the underlying facts, and Complainant is not compelled to provide the content of such communications. However, Complainant may not hide information (fact) simply because it came from or was communicated by counsel.”