On September 17, 2014, ALJ Theodore R. Essex issued the public version of Order No. 50 (dated August 21, 2014) granting Complainants InterDigital Communications Corp.'s and InterDigital Technologies Corporation's (collectively, "InterDigital") motion for a protective order relating to certain of Respondents' interrogatories and requests for production in Certain 3G Mobile Handsets and Components Thereof (Inv. No. 337-TA-613).

By way of background, the Commission instituted this investigation on September 11, 2007 based on a complaint filed by InterDigital. The complaint, as amended, alleged violations of Section 337 in the importation and sale of certain 3G mobile handsets and components thereof that infringed certain claims of U.S. Patent Nos. 7,117,004 (the '004 patent), 7,190,966 (the '966 patent), 7,286,847 (the '847 patent), and 6,693,579 (the '579 patent).  The notice of investigation named Nokia Corp. and Nokia, Inc. (collectively, "Nokia") as Respondents. 

On August 14, 2009, former Chief ALJ Paul J. Luckern issued his final Initial Determination ("ID") finding no violation of Section 337 on the grounds that the asserted claims of the patents-in-suit were not invalid and not infringed.  Additionally, the ALJ found that the '004, '966, and '847 patents were not unenforceable due to prosecution laches, and that the '579 patent also was not unenforceable.  See our September 23, 2009 post for more details on the ID.  The Commission reviewed the ID and, on October 16, 2009, issued a notice modifying the ALJ's construction of the term "access signal" in the asserted claims of the '847 and '004 patents and, inter alia, determining not to review the ALJ's construction of the terms "code" and "increased power level" in the asserted claims of the '966 and '847 patents.  See our October 19, 2009 post for more details.

InterDigital appealed the Commission's final determination, specifically regarding the unreviewed constructions of the "code" and "increased power level" limitations.  The Federal Circuit reversed the Commission's construction of these terms, reversed the Commission's determination of non-infringement as to the '966 and '847 patents, and remanded the case to the Commission for further proceedings.  See our August 3, 2012 and January 14, 2013 posts for more details on the Federal Circuit's rulings.  On February 12, 2014, the Commission issued an Order remanding the investigation to Chief ALJ Charles E. Bullock for assignment to a presiding ALJ.  See our February 18, 2014 and April 2, 2014 posts for more details. 

Regarding Order No. 50, InterDigital sought a protective order shielding it from discovery relating to domestic industry, validity and enforceability, and claim construction of the asserted patents as outside the scope of the Commission's remand order.  Respondents argued in opposition that the addition of Microsoft Mobile Oy ("MMO") to the investigation entitles MMO to seek all available discovery, even if duplicative to the discovery obtained previously by Nokia.

Having considered the parties arguments, ALJ Essex determined to grant InterDigital's motion, finding that "the remand investigation [is limited] to Nokia's currently imported products, public interest factors, the standard essential nature of the asserted patents, and whether there is a patent hold-up or reverse hold-up."  Similarly, the ALJ found that "there is nothing in the Remand Order ... that indicates the ALJ may receive any evidence related to domestic industry, validity and enforceability, or claim construction.  Rather, the Remand Order specifically states that the ALJ 'is not to reopen discovery except as indicated in paragraphs (2) and (3),' which are limited to the topics enumerated above."

ALJ Essex also found MMO's due process concerns to be unavailing. Specifically, the ALJ found that MMO made its motion for substitution with the understanding that it would step into the shoes of, and be substituted for, Nokia.  In making this motion, MMO did not indicate that it had any concerns over its own due process rights. ALJ Essex also noted that "the decision to add [rather than substitute MMO for Nokia] merely meant that Nokia would not be terminated from [the] investigation," but "does not create a new cause of action against MMO since MMO is assuming Nokia's liability, particularly its Devices and Services Business which are responsible for the products at issue."

Accordingly, the ALJ determined to grant InterDigital's motion for a protective order.