On December 7, 2012, ALJ James E. Gildea issued the public versions of Order No. 42 and Order No. 43 (dated November 14, 2012) and Order No. 44 and Order No. 45 (dated November 16, 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 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. 42:

According to the Order, Kodak filed a motion seeking to compel Respondents HTC Corp. and HTC America, Inc. (collectively, “HTC”) to supplement several interrogatories and to provide samples of four specific accused products.  Kodak argued that HTC had inappropriately responded or not responded as promised and refused to make samples available.  HTC opposed the motion, noting it has already made 28 devices available for inspection and will supplement interrogatory responses when its unreleased products are “sufficiently finalized.”

ALJ Gildea began by questioning “why Kodak and HTC were not able to arrive at a resolution” of discovery disputes where the parties agree as to the scope and relevance of the requested discovery, and ordered HTC to make samples available or provide a sworn affidavit that samples of the accused products are outside of its control.  The ALJ also ordered HTC to provide full, complete, and appropriate responses to the outstanding interrogatories.

Order No. 43:

According to the Order, HTC filed a motion seeking to compel six pieces of discovery:  (i) inventor emails; (ii) entries in the “invention database”; (iii) testimony and documents related to an alleged prior art device (the Sharp Zaurus); (iv) documents related to commercially available Kodak cameras; (v) materials from a related litigation; and (vi) responsive Bates ranges for particular interrogatories.

ALJ Gildea ordered Kodak to produce inventor emails and documents from the invention database to the extent it has not done so.  The ALJ specifically noted that an invention database is not akin to lab notebooks that should be produced in their entirety, and that only relevant entries and their associated attachments should be produced.  ALJ Gildea was persuaded by Kodak’s argument that documents and things related to the Sharp Zaurus are “intertwined with receiving legal advice from counsel” and therefore privileged, although he noted that attachments containing only facts and information may not be so protected and should be produced.  The ALJ sided with HTC regarding documents related to commercially available cameras, noting that Kodak’s responses as to its efforts were “vague,” and Kodak must search for and produce the requested documents.  Relevant and non-privileged documents from the related litigation were ordered to be produced.  HTC’s last request, that Kodak identify by Bates number the documents produced in response to each request for production of documents, was denied.  ALJ Gildea agreed that “HTC should inspect Kodak’s production itself” to determine whether key documents have been produced.

Order No. 44:

According to the Order, Kodak filed a motion to compel Respondent Apple Inc. (“Apple”) to provide responses to specific interrogatories and requests for documents alleged to be missing.

The first request, for identification of a particular witness in relation to testing functionality, was denied with ALJ Gildea noting that Apple has already designated witnesses and that Kodak did not assert that any were unprepared to testify as to functionality.  Kodak’s second request, for information proving that Apple employees contributed to the invention, was partially granted, with ALJ agreeing that Apple’s responses lack detail and should be supplemented with specific relevant answers.  However, in instances where Kodak was able to depose witnesses at length and failed to identify a particular deficiency, the request was denied.  Apple was ordered to produce non-privileged documents and things if it had not done so in response to the remaining requests indicated by Kodak, with ALJ Gildea specifically noting that the recent release of the iPhone 5 meant that supplementation was required.

Order No. 45:

According to the Order, Kodak filed a motion to compel HTC and Apple “to provide narrowed interrogatory responses relating to their invalidity contentions.”  Kodak argued that HTC and Apple have named large quantities of prior art “obscuring the real references” and have failed to provide detailed content.  Respondents opposed, stating Kodak is to blame by asserting a large number of patents.

ALJ Gildea began by noting “Respondents’ attempt to point the finger back at Kodak here is not effective.”  ALJ Gildea stated that it is reasonable that Apple and HTC should know at this stage of the investigation the specific prior art and combination they will rely on, and were ordered to supplement their responses with detailed claim charts.  In granting the motion, the ALJ gave specific warning that generic language such as “any of the references in the attached charts could be combined” or reservations that additional prior art may be identified in the future are not appropriate.