On September 9, 2013, ALJ E. James Gildea issued Order No. 23 in Certain Microelectromechanical Systems (“MEMS Devices”) and Products Containing the Same (Inv. No. 337-TA-876). 

According to the Order, Respondents filed a motion to compel Complainant STMicroelectronics, Inc. (“STM”) to produce foreign inventor documents in time for inventor depositions.  In support of their motion, Respondents argued that despite STM’s prior representations that all inventor documents for the asserted patents were produced, STM told the U.S. Patent & Trademark Office (“USPTO”) in response to an office action in a reexamination proceeding for one of the asserted patents that they have not collected and produced all inventor documents.  In response, STM argued that it produced all non-privileged documents that it was able to produce as a result of a reasonable and diligent search.  STM further argued that the statement made in the reexamination proceeding was taken out of context because counsel identified at least six separate bases for its requested extension of time.

In the Order, ALJ Gildea first noted that STM’s statement to the USPTO unequivocally stated that “a number of potentially relevant documents that are in the possession of these inventors, as well as the prior assignee, may not be accessible during this holiday period.”  According to ALJ Gildea, “[e]ither the statement to the USPTO lacked candor, or [STM’s] counsel in this Investigation did not conduct their claimed ‘reasonable and diligent search.’”  Accordingly, ALJ Gildea granted Respondents’ motion to compel the foreign inventor documents.