On October 15 and October 16, 2012, ALJ E. James Gildea issued the public versions of Order No. 22 (dated August 23, 2012) and Order No. 28 (dated September 25, 2012), respectively, in Certain Electronic Devices for Capturing and Transmitting Images, and Components Thereof (Inv. No. 337-TA-831).

According to Order No. 22, complainant Eastman Kodak Co. (“Kodak”) sought to compel respondents HTC Corp. and HTC America, Inc. (collectively, “HTC”) to provide complete responses to certain discovery.  Specifically, Kodak argued that HTC improperly limited the scope of its discovery responses to only those accused products named in the Complaint, and did not provide complete document production and interrogatory responses for belatedly disclosed Android and Windows-based products.  Kodak also asserted that HTC’s witnesses were not prepared to testify regarding the aforementioned products and therefore must be re-deposed.  Other disputed discovery related to HTC’s alleged failure to produce certain requested emails and respond to certain other interrogatories.  HTC countered that it need not produce the requested discovery because Kodak failed to produce timely claim charts for the Windows-based products, and argued that many of the other issues Kodak raised are moot because the requested discovery has or will be produced.  ALJ Gildea noted that the scope of the investigation is defined by the Notice of Investigation and encompasses electronic devices for capturing and transmitting images and components thereof, not just specific products identified in the Complaint.  The ALJ then stated that it is unacceptable for HTC to unilaterally limit the scope of discovery to solely those products identified in the Complaint, or to refuse to produce discovery on the basis that the requesting party has not provided related contention interrogatory responses.  Accordingly, ALJ Gildea ordered that HTC (1) supplement or complete its responses to the interrogatories at issue; (2) produce witnesses prepared to testify regarding HTC’s late-identified products; (3) produce the requested emails to the extent HTC has not done so; and (4) to the extent it has not done so, respond to all discovery requests related to all accused products, not just those specifically named in the Complaint.

According to Order No. 28, HTC moved to strike Kodak’s supplemental responses to Interrogatory No. 1 (requesting infringement claim charts for the accused products), Interrogatory No. 2 (requesting claim charts for Kodak’s domestic industry products), and Interrogatory No. 17 (requesting facts establishing a nexus between Kodak’s alleged licensing activity and the asserted patents) on the grounds that they were untimely and contained information that Kodak allegedly possessed at the time of the deadline for initial contention interrogatory responses.  In opposition, Kodak argued that its supplemental responses were necessitated by HTC’s refusal to respond to Kodak’s discovery requests.  Kodak also asserted that HTC suffered no prejudice, both because of the timing of the supplementation and because HTC received ample notice of Kodak’s position from the allegations in the Complaint.  ALJ Gildea agreed with Kodak that HTC was not prejudiced, noting that HTC had the opportunity to respond to Kodak’s supplemental contentions (but declined to do so) since they were provided prior to the deadline for HTC’s own contentions, and that Kodak’s supplementation was approximately six weeks before the close of fact discovery.  The ALJ also observed that HTC shouldered “no small part of the responsibility for Kodak’s delayed infringement contentions, considering HTC’s decision to withhold discovery on various accused products” as discussed in Order No. 22.  Finally, the ALJ “decline[d] to grant HTC any ‘do-overs’” in response to HTC’s “unusual request that, after having refused to respond to Kodak’s supplemental contentions, it be granted ‘three weeks’ to respond after this motion is resolved.”  Thus, the motion to strike was denied.