On January 13, Judge Lord issued the public version of Order 50 in Certain Semiconductor Devices, Semiconductor Device Packages, And Products Containing Same, Inv. 337-TA-1010, granting-in-part Respondents’ motion to compel production of factual materials underlying pre-suit testing.
Pursuant to Commission Rule 210.12(a)(9) subsections (viii) and (ix), Complainants Tessera Technologies, Inc., Tessera, Inc., and Invensas Corporation (collectively, “Tessera”) attached claim charts to the complaint in this investigation, applying the limitations of each asserted independent claim to certain accused devices and third-party domestic industry products. Tessera cited to these claim charts when it responded to the first set of discovery requests from Respondents Broadcom Limited, Broadcom Corporation, Avago Technologies Limited, and Avago Technologies U.S. Inc. (collectively, “Broadcom”) regarding an identification of accused products, infringement contentions, and domestic industry contentions. Tessera subsequently served supplemental responses to Broadcom’s contention interrogatories regarding infringement and domestic industry purporting to replace its previous responses, attaching new claim charts that did not rely on evidence from the complaint. On November 3, 2016, Tessera produced its privilege log, identifying numerous documents related to its pre-filing testing of Broadcom products. On November 15, 2016, Respondents Broadcom Limited, Broadcom Corporation, Avago Technologies Limited, and Avago Technologies U.S. Inc. (collectively, “Broadcom”) filed a renewed motion to compel the production of factual materials underlying the testing of Broadcom products and asserted third-party domestic industry products.
Judge Lord granted Broadcom’s motion in part and denied in part, explaining that Tessera’s initial interrogatory responses represent a waiver of work-product protection for the documents cited therein, and Tessera should not be permitted to use its pre-filing investigation as a “sword” in answer to interrogatory responses while relying on the “shield” of the work-product doctrine. However, Judge Lord noted that Tessera’s waiver of work-product protection only applies to the pre-filing testing of products that are specifically identified in the cited exhibits to the Complaint, and not to every product that may have been tested. Therefore, Judge Lord ordered Tessera to produce the subset of documents from its privilege log that relate to the preparation of claim charts in complaint exhibits, excluding documents that constitute legal advice and analysis or are protected by the attorney-client privilege. Per Judge Lord’s order, Tessera’s production of documents should include all images and test results for the products identified in the complaint exhibits, even if these results were not used. Specific examples of such documents discussed in the order include photographs, optical images, scanning electron microscope results, X-ray images, and X-ray spectroscopy reports. In addition, Tessera was ordered to identify the protocols and processes used for testing and analysis (including any equipment and software used) and the individuals involved in the testing of the products identified in the complaint exhibits.
Commission Rule 210.12 requires complainants to conduct significant pre-suit investigation before filing a complaint. One of the requirements is the inclusion, when practicable, of claim charts showing how the accused and domestic industry products practice claims of the asserted patents. Based on ALJ Lord’s order, complainants should be careful not to cite to these charts in discovery responses. Citation to these claim charts can waive work product privilege, and could render details about pre-suit testing (including test results, technical analysis, equipment and software used, and personnel involved) discoverable by respondents.