On August 13, 2012, ALJ James E. Gildea issued the public versions of Order No. 43 (dated March 12, 2012) and Order No. 45 (dated March 21, 2012) in Certain Portable Electronic Devices and Related Software (Inv. No. 337-TA-797).

By way of background, the investigation is based on a July 8, 2011 complaint filed by Apple, Inc. (“Apple”) alleging violation of Section 337 in the importation into the U.S. and sale of certain portable electronic devices and related software that infringe various U.S. patents by Respondents HTC Corp., HTC America, Inc., and Exedea, Inc. (collectively, “HTC”).  See our August 10, 2011 post for more details.

Order No. 43

According to Order No. 43, HTC filed a motion to strike Apple’s infringement contentions to the extent they widen the scope of the Investigation beyond the Complaint.  Specifically, HTC asserted “Apple may not accuse non-Android [operating system] devices of infringing” because Apple was aware of HTC Windows [operating system] products when it filed its Complaint and could have accused theses devices of infringement at that time.  Apple opposed the motion, arguing that it “properly characterized the accused HTC products listed in the Complaint as exemplary” without limiting the scope to a particular operating system. 

ALJ Gildea noted that the scope of an Investigations is defined by the Notice of Investigation, and, in this case, the notice did not limit the scope of the investigation to products with a particular operating system.  While the ALJ acknowledged that HTC is correct that a complaint can limit the scope of an investigation with affirmative limiting statements or a failure to accuse certain products, since the language of Apple’s Complaint did not exclude non-Android operating system devices that provision is inapplicable here.  Thus, the motion was denied.

Order No. 45

According to Order No. 45, HTC filed a motion to compel Apple to produce relevant documents from litigation between Apple and Elan Microelectronics Corp. (“Elan”).  HTC specifically requested discovery of Apple’s statements regarding the prior art at issue in the litigation including pleadings that address invalidity, contention interrogatory responses, expert reports, and the like.  HTC asserted that Apple should be compelled to produce these documents because some of the prior art from the litigations is at issue in this Investigation and these documents may include admissions contrary to Apple’s positions in this Investigation.

Apple opposed the motion, stating that it has already produced all relevant documents from the Elan cases.  Apple also argued that HTC overstated the relevance of the remaining documents because of differences in parties, the patents at issue, the priority dates, the claims at issue, and the prior art.

While agreeing that the differences noted by Apple exist, ALJ Gildea began by stating that any party may obtain discovery regarding “‘any matter, not privileged’ that is relevant to the ‘claim or defense of any other party.’”  Although the context of Apple’s statements made “may affect the ultimate admissibility of these statements or the weight afforded them if admitted,” the ALJ determined that the scope of discovery under the Commission Rules was sufficiently broad to require Apple to produce the documents.  Thus, the requested documents should be considered relevant and the motion to compel was granted.