On June 5, 2012, ALJ E. James Gildea issued the public versions of Order No. 36 (dated April 11, 2012), Order No. 45 (dated May 17, 2012), and Order No. 46 (dated May 21, 2012) in Certain Dynamic Random Access Memory and NAND Flash Memory Devices and Products Containing Same (Inv. No. 337-TA-803). 

By way of background, this investigation is based on a July 12, 2011 complaint filed on behalf of Intellectual Ventures Management, LLC, Invention Investment Fund I, L.P., Invention Investment Fund II, LLC, Intellectual Ventures I LLC, and Intellectual Ventures II LLC (collectively, “IV”), against several manufacturers, distributors, and retailers of DRAM and NAND Flash memory devices for alleged infringement of U.S. Patent Nos. 5,654,932; 5,963,481; 5,982,696; 5,500,819; and 5,687,132.  See our July 13, 2011 post for more details.

According to Order 36, a group of respondents filed a motion seeking leave to amend their Notice of Prior Art to add 19 additional references.  IV and the Commission Investigative Staff (“OUII”) opposed the motion.  ALJ Gildea denied the motion, noting that the ground rules require parties to amend prior art notices by a particular point in the procedural schedule unless they submit a motion showing good cause.  The ALJ determined that the Respondents’ arguments failed to show good cause.  Specifically, the ALJ pointed out that most of the references to be added were publicly available, in contrast to situations found to constitute “good cause” such as “obsolete software on a CD that was part of an out-of-print book” or products that had been on sale in the past but were no longer available.  ALJ Gildea suggested that proof of specific facts may have been helpful, but Respondents’ “unsworn attorney argument is not evidence.”

According to Order 45, IV filed a motion seeking to compel Respondents Hynix Semiconductor America, Inc., SK Hynix Inc. f/k/a Hynix Semiconductor Inc. (“Hynix”) to produce additional corporate witnesses to address specific topics and to produce documents responsive to particular requests.  IV argued that they have corresponded with Hynix without success, and dispute Hynix’s version of events.  Hynix opposed the motion, stating that it has provided dates for depositions that were rejected and has produced all responsive documents and thus there is no impasse requiring judicial intervention.  The ALJ began by admonishing both sides for failing to “timely respond to each other’s issues.”  ALJ Gildea reviewed the evidence and determined that there is an impasse.  Thus, ALJ Gildea granted IV’s motion in part, limited to gaps the ALJ determined to explicitly be missing from the deposition testimony and document production. 

According to Order 46, the Respondents filed a motion seeking to compel IV to produce a revised privilege log.  Respondents primary assertion is that they have been provided with various versions of logs containing over 19,000 entries that are inappropriate and fail to comply with the ground rules.  Respondents note particular shortcomings in categories in light of the voluminous entries, including failure to identify authors or recipients, attorneys present, or reasons for the privilege.  IV opposed the motion, arguing that it “carefully and appropriately applied privilege.”  Notably, IV admitted “that there were a few instances where entries objected to by Hynix did reveal documents had been inappropriately withheld,” but that these would be produced. 

ALJ Gildea appeared to sympathize with both sides in relation to properly handling production of, and objections to, such a voluminous privilege log.  Regardless, the ALJ considered that further detail would be necessary in some cases, and required Respondents to identify particular entries of concern in the category requiring identification of an attorney, those communications made in the normal course of business, and third party communications.  The ALJ noted that neither party pointed to any applicable federal law supporting use of spousal privilege, and thus all documents withheld on this basis must be produced.  Similarly, documents redacted based must be produced in nonredacted form in view of the protective order being in place.  The ALJ determined that ListServ emails that did not specifically identify recipients were sufficient based on IV’s assertion that attorneys were always included, and thus would not be compelled.  ALJ Gildea denied all of Respondents’ other arguments, and thus the motion to compel was only granted in part.