On December 15 and 16, 2015, ALJ MaryJoan McNamara issued Order Nos. 17 and 18, respectively, in Certain Touchscreen Controllers and Products Containing the Same(Inv. No. 337-TA-957).

By way of background, this investigation is based on an April 21, 2015 complaint filed by Synaptics Inc. alleging violation of Section 337 in the importation into the U.S. and sale of certain touchscreen controllers and products containing the same, e.g., smart phones, that infringe one or more claims of U.S. Patent Nos. 7,868,874; 8,338,724; 8,558,811; and 8,952,916.  See our April 24, 2015 and May 1, 2015 posts for more details on the complaint and Notice of Investigation, respectively. 

According to Order No. 17, Complainant Synaptics Incorporated (“Complainant”) filed a motion to compel Respondents Shenzhen Huiding Technology Co., Ltd., a/k/a Shenzhen Goodix Technology Co., Ltd. and Goodix Technology Inc. (collectively “Respondents”) to produce certain updated documents for all accused products’ touchscreen controllers as well as to produce a deposition witness (or witnesses) who would testify with regard to the controllers.  Complainant requested that Respondents be ordered to produce any deposition witnesses for deposition in the United States, or alternatively, that Respondents be ordered to pay Complainant’s costs associated with any depositions in Hong Kong.

In opposition, Respondents argued that Complainant’s request for the updated documents was moot because they already produced the updated documents.  Additionally, Respondents argued that no additional depositions of Respondents’ witnesses were necessary because the changes in the controllers were only minor, with no change in “basic principles.”

The Commission Investigative Staff (“OUII”) submitted a response in partial support of Complainant’s motion.  OUII argued that the updated documents sought by Complainants were relevant and should be produced.  OUII noted that Respondents appeared to produce some of the documents requested by Complainant, but not others.  Additionally, OUII asserted that Complainant is also entitled to take the deposition of someone who is familiar with the updated documents.  Lastly, OUII noted that Complainants request that Respondents pay for Complainant’s expenses in taking depositions in Hong Kong would be the imposition of sanctions under 19 C.F.R. §210.33, which is not justified in this situation.

ALJ McNamara held that Respondents must produce the updated documents and a knowledgeable witness with respect to the updated documents.  With respect to the updated documents, ALJ McNamara determined that the requested documents were relevant and should have been produced.  ALJ McNamara did not order a location for the deposition; instead, she ordered the parties to meet and confer to determine when and where the deposition would occur.  Accordingly, ALJ McNamara granted in part Complainant’s motion.

According to Order No. 18, Respondents filed a motion to compel additional depositions of Complainant’s employees related to “new” and relevant discovery information.  Specifically, Respondents sought depositions with respect to three categories of information: (1) testing of accused and domestic industry related products, (2) Complainant’s supplemental contentions regarding new domestic industry product-related allegations, and (3) additional firmware/source code.  With respect to the first category of information, Respondents asserted that “Complainant’s technical expert, Mr. Dezmelyk, disclosed that he himself did not conduct either the testing or the necessary measurements for the product testing that is integral to Complainant's accused product and domestic product contentions.”  Respondents further argued that they would be prejudiced if the Complainant is not compelled to produce a witness who can testify to the belatedly disclosed source code, which Complainants intend to rely on for its domestic product contentions.  OUII submitted a response in support of Respondents’ motion.

In opposition, Complainant argued that Respondents are seeking a “second bite at the apple for discovery they knew of or should have known of for the vast majority of this Investigation.”  With respect to the testing information, Complainant contended that the Respondents should be satisfied with Mr. Desmelyk’s deposition testimony since the testing was performed at his direction and according to his protocol.  As to the newly identified source code, Complainant asserted that it is no more than a “few lines” of code.

ALJ McNamara held that Complainant must produce for deposition “one or more fact and/or corporate witnesses who will testify knowledgably about” the three categories of information Respondents’ sought in their motion to compel.  Specifically, ALJ McNamara determined that “the qualifying language that Complainant used with regard to source code that it was ‘similar to’ and ‘representative of’ does not satisfy the requirements for exactitude on such critical matters as product or firmware identification and testing.”  Additionally, ALJ McNamara held that “there is no legal support for Complainant’s contention that Mr. Dezmelyk’s testimony was adequate when he did not conduct the product testing.”  Accordingly, ALJ McNamara granted Respondents’ motion to compel.