On October 16, 2012, ALJ James E. Gildea issued Order No. 13 (dated September 20, 2012) denying a motion to quash a deposition by a nonparty in Certain Consumer Electronics, Including Mobile Phones and Tablets (Inv. No. 337-TA-839).

 By way of background, this investigation is based on a complaint filed by Pragmatus AV, LLC alleging violation of Section 337 in the importation into the U.S. and sale of certain consumer electronics, including mobile phones and tablets, that infringe one or more claims of U.S. Patent Nos. 5,854,893; 6,237,025; 7,054,904; 7,185,054; and 7,206,809.  See our March 15, 2012 post for more details.

According to the order, Dr. Nathan P. Myhrvold, a nonparty to the investigation, filed a motion to quash certain subpoenas issued at the request of Respondents Research in Motion, Ltd. and Research in Motion Corp. (collectively, “RIM”).  Dr. Myhrvold argued that he has already produced two documents to RIM and that RIM “should not be permitted to ‘further’ burden” him as a “busy executive” with a deposition unlikely to provide admissible or even relevant information.

RIM opposed the motion, noting that Dr. Myhrvold gave an interview only a few months ago on the subject of the deposition, a digital wallet he developed in 1991 that may be relevant prior art.  RIM also argued that Dr. Myhrvold is in a unique position to answer questions about the confidentiality, etc. of the two documents he provided in relation to the digital wallet, as he is also the author.

ALJ Gildea stated that nonparties have a “particularly heavy burden to show that subpoenas are unreasonable and oppressive,” and concluded that Dr. Myhrvold had failed to meet that burden here.  Specifically, the ALJ noted the recent interview given by Dr. Myhrvold resulted in an article that portrays him “as a person who ‘savors’ telling the story of his inventions” and was contrary to Dr. Myhrvold’s unsupported assertions in his motion.  In light of RIM’s demonstration that Dr. Myhrvold has personal and unique knowledge of the prior art, the motion to quash the deposition was denied.  However, ALJ Gildea warned that the scope of the deposition is to be limited to the digital wallet and the two documents produced.