On June 12, 2013 ALJ Theodore R. Essex issued the public version of Order No. 9 (dated May 1, 2013) granting-in-part non-party Atlas Holdings LLC’s (“Atlas”) motion to quash multiple subpoenas filed by Respondents in Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (Inv. No. 337-TA-874).

By way of background, the investigation is based on a complaint and amended complaint filed by Lamina Packaging Innovations LLC (“Lamina”) alleging violation of Section 337 in the importation into the U.S. and sale of certain products having laminated packaging, laminated packaging and components thereof that infringe one or more claims of U.S. Patent Nos. 6,207,242 and 7,348,067.  See our February 21, 2013 and March 25, 2013 posts for more details on Lamina’s complaint and the ITC’s notice of investigation.

According to the Order, Respondents served two subpoenas on Atlas (including a personal deposition notice naming Mr. Jake Hudson) and two on a related party allegedly called AGI-Shorewood Group (“AGI”) seeking information on an unconsummated business deal relied upon by Lamina in its complaint as part of its allegations that a domestic industry is in the process of being established.  Specifically, Lamina asserted that it has been engaged in negotiations with AGI for eleven months as part of its licensing program.  Respondents served the subpoenas asserting that they were unable to obtain documents or deposition testimony confirming the contact with AGI.

Atlas filed a motion to quash the subpoenas, first arguing that the subpoenas are procedurally defective for failing to provide sufficient time to respond and for naming entities that do not exist.  Atlas also argued that the information sought by the subpoenas is irrelevant because no license was ever executed, and that the proper source for information on Lamina’s investments on licensing is within Lamina.  Last, Atlas asserted that the Respondents’ requests place an undue burden on Atlas to collect documents and create a privilege log.

Respondents and the Commission Investigative Staff (“OUII”) both opposed the motion.  Respondents’ primary argument is that Lamina’s representations have made AGI and Atlas relevant to this investigation, and that they need the information.  The OUII agreed that the discovery sought is highly relevant in relation to evaluating Lamina’s claims regarding domestic industry, and notes that documents from AGI and Atlas may support or contradict Lamina’s own documents, providing valuable information.

ALJ Essex dismissed Atlas’s procedural arguments, concluding that AGI and/or ASG are at least affiliated with Atlas, if not formal legal entities, and that any defects in the subpoena do not warrant quashing the subpoena.  The ALJ also noted that he had approved the shortened response time in light of the Commission’s mandate that the ALJ must issue an Initial Determination (“ID”) on the economic prong of the domestic industry requirement by July 5, 2013.  See the discussion in our June 27, 2013 post about this investigation’s inclusion in the ITC’s early disposition pilot program.