On November 14, 2012, ALJ E. James Gildea issued the public version of Order No. 29 (dated November 8, 2012) granting-in-part Respondent Apple Inc.’s (“Apple”) motion to strike in Certain Electronic Devices with Graphics Data Processing Systems, Components Thereof, and Associated Software (Inv. No. 337-TA-813).
According to the Order, Apple sought to strike the declaration of Daniel L. Regard II (the “Regard Declaration”) and the late-produced native files and associate metadata relied on in the Regard Declaration. Apple argued that Complainants S3 Graphics Co., Ltd and S3 Graphics, Inc. (collectively, “S3G”) and the Regard Declaration rely on the native files-at-issue and associated metadata to establish the date of conception and, accordingly, an earlier priority date for U.S. Patent No. 5,945,997. Apple asserted that S3G produced the files-at-issue in only TIFF format, without metadata. Despite producing only the TIFF format, the Regard Declaration, which S3G produced two days before the end of discovery, relied on the native version of the files-at-issue and their associated metadata. Apple then argued that following the production of the Regard Declaration, despite its production request, S3G never produced the native versions and associated metadata for all the files-at-issue relied on in the Regard Declaration. The Commission Investigative Staff supported Apple’s motion finding that S3G failed to meet its production obligations and acted inappropriately by stating that all responsive files had been produced.
In opposition, S3G argued that it acted in good faith by supplying all responsive files early in the discovery process in TIFF format, the format required in the parties’ Discovery Stipulation. Further, S3G asserted that the metadata is merely superfluous because all the dates of conception relied on by S3G and the Regard Declaration are provided in the produced TIFF format files.
ALJ Gildea granted-in-part Apple’s motion to strike. ALJ Gildea determined that Apple was on notice that S3G would rely on certain files-at-issue and their associated metadata early in discovery as documented in S3G’s Second Supplemental Response, claiming conception based on documents and associated metadata within the production range of S3G00186606–S3G00222484. Therefore, ALJ Gildea held that it was Apple’s duty to inspect these files and, if too cumbersome, request that S3G provide more specificity. However, regarding files not included in the above reference production range, ALJ Gildea held that these files should be stricken from the record. Additionally, any reference to the files outside the disclosed production range should be stricken from the Regard Declaration. Based on the large number of files-at-issue, ALJ Gildea left it to the parties to determine the specific files and the specific portions of the Regard Declaration that are to be stricken by the Order.