On November 6, 2012, ALJ E. James Gildea issued the public version of Order No. 36 (dated October 25, 2012) and Order No. 38 in Certain Electronic Devices for Capturing and Transmitting Images, and Components Thereof (Inv. No. 337-TA-831).

Order No. 36 addressed a motion filed by Complainant Eastman Kodak Company (“Kodak”) seeking judicial enforcement of a subpoena against non-party Microsoft Corporation (“Microsoft”) for refusing to produce discovery on its Windows Phone 8 (“WP 8”).

On October 2, 2012, Microsoft filed a response opposing Kodak’s motion and arguing that Windows Phone 8X was insufficiently final and thus not discoverable, that WP 8 was outside the scope of the subpoena, that Kodak had not timely requested such discovery, and that, despite these facts, Microsoft allowed Kodak to depose its witnesses about WP 8.

ALJ Gildea found that although there was no basis to deny discovery on WP 8 based on the level of development, Kodak’s subpoena did not make it clear that WP 8 was within the scope of the requested discovery, and that Kodak’s own conduct showed it did not originally intend to include discovery with respect to products in development from Microsoft.  Thus, the ALJ denied Kodak’s motion.

On October 29, 2012, four days after ALJ Gildea’s decision, Microsoft announced the release of WP 8.  On October 31, 2012, Kodak filed a motion for reconsideration of Order No. 36.  Microsoft opposed arguing that no changes in fact or law had occurred which would expand Kodak’s subpoena.

In Order No. 38, ALJ Gildea found that, due to the official release of WP 8 and because of the release of an array of phones for WP 8 including certain phones by Respondent HTC, reconsideration was warranted.  Specifically, the ALJ stated that inherent in the previous decision was the characterization made by Microsoft that WP 8 was not facing imminent launch.  ALJ Gildea questioned Microsoft’s “lack of candor” and indicated that this release altered the landscape of the evidence.  Accordingly, the ALJ ordered that should Kodak and Microsoft not come to a reasonable resolution by November 8, 2012, by close of business November 9, 2012, each party would be required to submit a sworn declaration containing no attorney argument and setting forth detailed, factual accounts as to (i) the interactions and communications between Kodak and Microsoft through November 9, including Microsoft’s representations as to the level of completeness of WP 8, (ii) the level of completeness of WP 8 between the date of Kodak’s supplement to its motion and the issuance of Order No. 36, and (iii) Kodak’s and Microsoft’s agreement with respect to the WP 8 source code and the events subsequent to the issuance of Order No. 36.