On November 7, 2012, ALJ David P. Shaw issued the public version of Order No. 43 (dated October 2, 2012) in Certain Audiovisual Components and Products Containing the Same (Inv. No. 337-TA-837).  In the Order, ALJ Shaw granted-in-part Respondents MediaTek Inc., MediaTek USA Inc., MediaTek Wireless, Inc., Ralink Technology Corporation, and Ralink Technology Corporation (USA)’s (collectively, “MediaTek”) motion to compel Complainants LSI Corporation and Agere Systems LLC (collectively, “Complainants”) to provide supplementary discovery responses.

According to the Order, MediaTek argued that Complainants had refused to provide the following information:  (1) a complete response to requests to identify prior litigation materials involving the patents-in-suit; (2) factual information relating to Complainants’ domestic industry assertions, and information on whether Complainants’ own products practice the asserted patents; and (3) a complete response to requests for information on Complainants’ interactions with standards bodies.  In particular, with respect to (1), MediaTek argued that Complainants had only produced a small number of documents from two previous litigations even though they had been involved in at least five previous litigations, and that Complainants’ response was facially deficient in view of public records of the prior litigations.  With respect to (2), MediaTek argued that Complainants had not responded to multiple interrogatories regarding domestic industry with sufficient detail to comply with Commission Rule 210.29(c), which states that the responding party must “specify the records from which the answer may be derived or ascertained.”  With respect to (3), MediaTek argued that Complainants had not provided a complete response to an interrogatory requesting information regarding the possible existence of licenses to Complainants’ patents on reasonable and non-discriminatory (RAND) terms.

Complainants opposed the motion.  With respect to (1), Complainants stated that they were currently working to collect documents from their prior litigations and would supplement their interrogatory response.  With respect to (2), Complainants argued that certain of their responses were already sufficient, and that they would supplement certain other responses.  Complainants further argued that certain interrogatories relating to domestic industry were premature because they called for expert testimony.  With respect to (3), Complainants argued that they had “produced all documents concerning requests for licenses made by third parties” and that “Respondents can determine as readily as LSI from a review of these documents whether the third party was requesting a RAND license or some other form of license.”

After considering the arguments, ALJ Shaw determined to grant the motion in part.  In particular, with respect to (1), the ALJ ordered that Complainants supplement their discovery responses regarding the prior litigations by October 9, 2012.  He further ordered that, to the extent that Complainants are withholding documents on the basis of third-party confidentiality obligations, Complainants must identify in writing any documents they continue to withhold on that basis and what steps they are taking to obtain consents from applicable third parties.  With respect to (2), ALJ Shaw found that one of Complainants’ interrogatory responses was deficient and not in compliance with Commission Rule 210.29(c), and that it needed to be supplemented by October 9, 2012.  However, the ALJ also found that certain other interrogatories on domestic industry were indeed premature in that they covered subject matter as to which Complainants intended to rely on expert testimony.  Lastly, with respect to (3), ALJ Shaw ordered Complainants to “respond fully” to the interrogatory regarding RAND licenses by October 9, 2012.