On September 26, 2013, Chief ALJ Charles E. Bullock issued the public version of Order No. 59 (dated August 26, 2013) granting in part Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (“Samsung”), Respondents Huawei Technologies Co., Ltd., Huawei Device USA, Inc., and Futurewei Technologies, Inc. (“Huawei”), Respondents Nokia Corporation and Nokia Inc. (“Nokia”) and Respondents ZTE Corporation and ZTE (USA) Inc.’s (“ZTE”) (collectively, “Respondents”) motion to compel discovery in Certain Wireless Devices With 3G And/Or 4G Capabilities (Inv. No. 337-TA-868).

According to the Order, Respondents argued that Complainants InterDigital Communications, Inc., InterDigital Technology Corporation, IPR Licensing, Inc., and InterDigital Holdings , Inc. (“InterDigital”) should be compelled to produce certain categories of documents related to the prosecution of the ‘151 patent.  Respondents had previously asserted the defense of inequitable conduct, based on the failure to disclose “the Siemens reference” during the patent’s prosecution, to support the claim that the ‘151 patent is unenforceable.  In response, InterDigital argued that the failure to disclose the reference was unintentional as the reference was inadvertently omitted by a paralegal for InterDigital’s outside prosecution counsel. 

In their motion to compel, Respondents argued that InterDigital supported its argument by relying on two privileged communications – (1) an invention disclosure form sent to InterDigital’s outside prosecution counsel with the Siemens reference attached, and (2) an instruction by InterDigital’s outside prosecution counsel to a paralegal asking her to review the physical file regarding the patentees’ prior art.  Respondents’ claim that the invention disclosure form requested legal advice, and that InterDigital’s use of these privileged communications to respond to the assertion of inequitable conduct resulted in a waiver of the attorney-client privilege.  Respondents, therefore, sought an order compelling InterDigital to produce all communications with or among InterDigital’s outside prosecution counsel related to (1) any consideration of the Siemens reference, the invention disclosure form, or the information disclosure statement, (2) information regarding the patentability of the claimed invention disclosed in the invention disclosure form, including its patentability over the Siemens reference, and (3) any consideration regarding whether to disclose the Siemens reference to the USPTO.  Respondents also argued that the waiver extended to other communications, and sought discovery regarding InterDigital’s attorneys’ knowledge of other prior art to the ‘151 patent, and of the steps that the outside patent prosecution counsel took to discover and disclose prior art. 

In response, InterDigital argued that the two communications were not privileged, and that if they were, the scope of the waiver was narrow.  InterDigital argued that the communication to the paralegal was not a privileged communication, and that the invention disclosure was a record of the invention, not a communication for the purpose of securing legal advice or services.  The Commission Investigative Staff (“OUII”) supported the motion in part, agreeing that the invention disclosure form fell under attorney-client privilege, and that the privilege was waived.  OUII, however, argued that the waiver was narrower than Respondents claimed.

ALJ Bullock agreed, finding that the invention disclosure form was privileged, and that privilege was waived.  ALJ Bullock found that the completed form was a communication to patent counsel that was communicated for the purpose of receiving legal advice regarding the patentability of the inventions contained in the information disclosure form, based on the Siemens reference and earlier disclosures.  Although InterDigital waived privilege, however, ALJ Bullock found that, based on the limited nature of the form, the waiver was narrower then Respondents contended and only ordered InterDigital to produce documents containing communications with InterDigital’s prosecution counsel regarding the patentability of the invention in light of the Siemens reference and earlier disclosures, and documents regarding the decision about disclosing the Siemens reference to the USPTO.  ALJ Bullock found that the other documents requested by Respondents did not have to be produced as Respondents had not shown why the communication to the paralegal was privileged and, therefore, had not shown that privilege was waived.