On August 23, 2012, ALJ James E. Gildea issued the public versions of Order No. 18 (dated August 3, 2012) and Order No. 19 (dated August 6, 2012) in Certain Electronic Devices for Capturing and Transmitting Images and Components Thereof (Inv. No. 337-TA-831).

By way of background, the investigation is based on a January 10, 2012 complaint and January 11 and February 10, 2012 letters supplementing the complaint filed by Eastman Kodak Company (“Kodak”) alleging violation of Section 337 in the importation into the U.S. and sale of certain electronic devices for capturing and transmitting images and components thereof that infringe various patents.  See our January 13, 2012 post for more details.

Order No. 18:

According to Order No. 18, Respondents HTC Corp. and HTC America, Inc. (collectively, “HTC”) filed a motion seeking to compel Kodak to provide all non-privileged discovery responsive to Interrogatory Nos. 11 and 31 and Requests for Production Nos. 130 and 214, information related to corroboration of Kodak’s alleged conception dates for the asserted patents, invention dates for prior art patents, and inventor notebooks.  HTC argued that Kodak’s assertion of “‘tentative’ privilege over these materials” is improper and Kodak cannot wait until the due date for its contention interrogatory responses before deciding whether or not the documents are privileged.  Respondent Apple Inc. (“Apple”) filed a response in support of HTC’s motion, asserting that Kodak cannot shield conception documents in this manner and then later attempt to rely on them after Respondents “have taken binding positions on invalidity.”

Kodak opposed the motion, arguing that the documents HTC sought are privileged and/or not relevant to any claim or defense in the Investigation.

Regarding the conception documents, the ALJ began by noting “it is not appropriate for a party to withhold documents or other evidence it possesses that may support conception or reduction to practice until the deadline for contention interrogatory responses” and Kodak should have “long ago” produced any responsive non-privileged documents.  However, the ALJ determined that, since Kodak is withholding documents based on attorney client privilege, HTC’s motion to compel in relation to these documents is denied.  Regardless, the ALJ cautioned that “a party is not permitted to use privilege as both a sword and a shield” and that tactically waiting until parties commit to positions before determining a response could potentially be considered abuse of the privilege and waiver rules.  All other aspects of HTC’s motion were granted, and Kodak was ordered to produce prior art documents, inventor notebook documents, and information responsive to the interrogatories.

Order No. 19:

According to Order No. 19, Kodak filed a motion for a protective order limiting any waiver of attorney-client privilege solely to documents that may be ordered to be produced in case HTC’s motion to compel (discussed above) was granted.  HTC opposed the motion, asserting that a response by the ALJ would be an advisory opinion.  Apple also opposed the motion, arguing that a protective order merely asks the ALJ to condone Kodak’s misbehavior.

In light of the ALJ’s decision in Order No. 18 denying HTC’s motion to compel documents alleged to be privileged, ALJ Gildea denied Kodak’s motion for a protective order.