Feit Electric Company and Feit Electric Company, Inc. (collectively, “Feit”) filed a motion to enforce a subpoena for documents to non-parties Amerlux, LLC and Amerlux Exterior, LLC (collectively, “Amerlux”). The complainant in the ITC proceeding, Philips Lighting North America Corp. and Philips Lighting Holding B.V. (collectively, “Philips”) asserted U.S. Patent Nos. 6,586,890; 7,256,554; 8,070,328; 7,038,399 (“the ‘399 patent”); and 7,262,559 (“the ‘559 patent”) against Feit.

Philips had previously asserted two of the patent—the ‘399 and ‘559 patents—against Amerlux in a patent infringement action in the District of Massachusetts (Koninklijke Philips, NV et al. v. Amerlux, LLC et al., Case No. 1-15-cv-13086). This case was dismissed before Amerlux disclosed its invalidity contentions and, therefore, Amerlux never had to disclose the prior art that it had found.

Feit served a subpoena on Amerlux “seek[ing] all prior art to the Asserted Patents known to Amerlux.” Feit subsequently agreed to limit the subpoena to prior art relating to the ‘399 and ‘559 patents. Amerlux contended that the identity of the prior art—other than the references identified in its answer to the complaint—should be protected by the work-product doctrine.

The ALJ began his analysis of the work product doctrine as follows: “The work-product doctrine protects from discovery documents, tangible things, or compilations of materials that were prepared in anticipation of litigation by a party or its representative.” Waymo LLC v. Uber Techs, Inc., 870 F.3d 1350, 1362 (Fed. Cir. 2017) (United States v. Richey, 632 F.3d 559, 567 (9th Cir. 2011)) (applying Ninth Circuit law). Routine discovery of such materials would “contravene[] the public policy underlying the orderly prosecution and defense of legal claims.” Hickman v. Taylor, 329 U.S. 495, 510 (1947). In certain extraordinary circumstances, however, discovery of these materials is warranted. Id. at 511-12. For instance, an attorney’s notes from a witness interview may be discoverable if the witness is no longer available to be interviewed by the opposing counsel.

Amerlux represented in its opposition that the prior art at issue “was developed by Amerlux’s counsel because of the district court litigation. In response, as explained by the ALJ, Feit speculated that Amerlux may have also identified prior art “outside the contours” of the district court case. This speculation was not persuasive to the ALJ. “Feit’s speculation, however, is groundless given Amerlux’s counsel’s representation that the prior art at issue was identified in response to the district court litigation.”

As a result, the ALJ concluded “that the prior art sought by the subpoena was identified by Amerlux’s attorneys in anticipation of the district court litigation. Such a compilation of prior art is protected under the work-product doctrine, even if the references themselves are publicly available. Sawgrass Systems Inc. v. BASF Aktiengesellschaft, 1999 WL 358681, at *4 (E.D. Mich. 1999) (rejecting argument that prior art references identified in anticipation of ligation were not protected under the work-product doctrine because the references were publicly available); Certain Antivenom Compositions and Products Containing the Same, Inv. No. 337-TA-903, Order No. 22, 2014 WL 2334295, at *1-2 (May 8, 2014) (same). The identities of such references constitute factual work product and are discoverable only if Feit can demonstrate need and undue hardship. Seagate, 497 F.3d at 1375; Golden Trade, S.r.L. v. Jordache, 143 F.R.D. 508, 511-12 (S.D.N.Y. 1992).”

The ALJ also analyzed whether Feit could show need and undue hardship in order to overcome the work product doctrine. The ALJ found that Feit failed “to demonstrate that it has a need for the prior art identified by Amerlux or that it will suffer undue hardship if it is not disclosed. This is not a case in which the non-party is alleged to have access to prior art not publicly available, e.g., confidential information about one its own prior art products. This is also not a case in which the non-party’s knowledge of the prior art is alleged to be relevant, e.g., for an inequitable conduct defense. There is no evidence that Amerlux’s attorneys identified anything other than publicly available prior art references in the course of the previous litigation. Because such prior art is publicly available, Feit “should have no problem obtaining the information through its own prior art search.” Sawgrass, 1999 WL 358681 at *4. Although Feit argues that “it is limited by the short discovery schedule in this Investigation,” the discovery deadlines set forth in the scheduling order were proposed by the parties.”

Accordingly, the ALJ denied the motion to compel.

In the Matter of Certain LED Lighting Devices, LED Power Supplies, and Components Thereof, Inv. No.: 337-TA-1081 (ITC)(ALJ Dee Lord March 13, 2018)