On December 22, 2016 ALJ David P. Shaw issued Order No. 21 in Certain Personal Transporters, Components Thereof, and Packaging and Manuals Therefor (Inv. No. 337-TA-1007/1021) granting a motion to compel.

By way of background, the 337-TA-1007 investigation is based on a May 18, 2016 complaint filed by Segway Inc., DEKA Products Limited Partnership, and Ninebot (Tianjin) Technology Co., Ltd. (“Segway”) alleging violation of Section 337 by way of unlawful importation into the U.S., selling for importation, and/or selling within the U.S. after importation certain personal transporters, components thereof, and packaging and manuals therefor that infringe one or more claims of U.S. Patent Nos. 6,302,230; 6,651,763; 7,023,330; 7,275,607; 7,479,872; and 9,188,984 and/or infringe certain U.S. registered trademarks owned by Segway. See our May 18, 2016 and June 28, 2016 posts for more details on the complaint and Notice of Investigation, respectively. The 337-TA-1021 investigation is based on an August 16, 2016 complaint filed by Segway alleging violation of Section 337 by way of unlawful importation into the U.S., selling for importation, and/or selling within the U.S. after importation certain personal transporters, components thereof, and packaging and manuals therefor that infringe one or more claims of U.S. Patent Nos. 6,302,230 and 7,275,607. See our August 18, 2016 and September 22, 2016 posts for more details on the complaint and Notice of Investigation, respectively. These investigations were subsequently consolidated.

According to Order 21, Segway filed a motion to compel discovery from Respondents for specific non-public documents filed or served by Respondents in Investigation No. 337-TA-1000 and the circumstances of when Respondent Hangzhou Chic Intelligent Technology Co., Ltd. (“Chic”) became aware of the patents in the investigation. The latter request was withdrawn when Chic voluntarily agreed to produce this information.

Respondents argued that the request regarding Investigation No. 337-TA-1000 was too broad and burdensome and that Segway had not demonstrated any relevance to the current investigation.

But, ALJ Shaw noted that Segway sufficiently narrowed their discovery requests to a limited number of documents provided by respondents, and concluded that the discovery appears relevant because the same products are at issue in both investigations. As such, ALJ Shaw granted the motion.