On September 26, 2012, ALJ Theodore R. Essex issued Order No. 17 denying Complainant Graphics Properties Holdings, Inc.’s (“GPH”) motion to take certain discovery from third party Qualcomm, Inc. (“Qualcomm”) after the close of fact discovery and to seek permission to supplement its initial expert report to incorporate discovery provided by Qualcomm upon completion of Qualcomm depositions in Certain Consumer Electronics and Display Devices and Products Containing Same (Inv. No. 337-TA-836).

According to the Order, GPH sought discovery from Qualcomm relating to infringement because Qualcomm is the supplier of the microprocessor chipsets that are incorporated into the accused products.  GPH argued for an extension of fact discovery on the grounds that despite good faith efforts by Qualcomm and continued negotiations between GPH and Qualcomm, GPH was unable to complete review of the source code produced by Qualcomm and has yet to schedule the depositions of designated Qualcomm employees.  GPH further asserted that it was not to blame for the fact that Qualcomm did not timely produce discovery or that Qualcomm cannot fully comply with the June 2012 subpoena in time for GPH to make use of the discovery in its initial expert report (which GPH sought permission to supplement within ten days of completing the deposition of Qualcomm witnesses).  Respondents countered that GPH did not demonstrate good cause to justify the extension or supplementation of its expert report because GPH failed to act diligently in obtaining discovery from Qualcomm, and because the delay was the result of GPH’s own litigation strategy.  Respondents also argued that they would be prejudiced by the relief sought by GPH since it would effectively permit GPH to continue to withhold its infringement contentions and modify its expert reports after seeing Respondents’ own expert reports, and because it would leave Respondents with less time to prepare their own rebuttal reports.  Respondents also noted that GPH had already received almost 29,000 pages of Qualcomm documents.  The Commission Investigative Staff did not oppose the motion.

ALJ Essex agreed with Respondents that GPH did not act diligently in seeking to obtain discovery from Qualcomm, finding that GPH knew that discovery from Qualcomm would be necessary as early as November 2011 when it filed its complaint containing infringement analysis based partly on Qualcomm chipsets.  The ALJ also found GPH’s reason for not subpoenaing Qualcomm until June 2012 – protracted negotiations over protective order addendums covering Respondents’ source code – inadequate.  Finally, ALJ Essex stated that allowing GPH to supplement its initial expert report would unfairly prejudice Respondents because it would give GPH the unfair advantage of additional time.  Accordingly, ALJ Essex denied GPH’s motion.