On January 31, 2013, ALJ E. James Gildea issued the public version of Order No. 8 (dated January 10, 2013) granting nonparty Microsoft Corporation’s (“Microsoft”) motion to limit the subpoenas duces tecum and ad testificandum served by Complainant VirnetX, Inc. (“VirnetX”) in Certain Devices with Secure Communication Capabilities, Components Thereof, and Products Containing Same (Inv. No. 337-TA-858).

According to the Order, Microsoft argued that:  (1) it already provided extensive, costly discovery to VirnetX in Inv. No. 337-TA-818 concerning the same patent and Respondent (dismissed for lack of standing in the expert report phase); (2) VirnetX limited the scope of its discovery to certain products, and agreed that its discovery from Microsoft was complete; (3) it should not have to expend additional time and money providing VirnetX with additional discovery as to previously unasserted (in the 818 Investigation) domestic industry products, particularly since the ALJ barred new contentions; (4) VirnetX’s new discovery requests are duplicative and unnecessary in light of its domestic industry allegations and the discovery already provided by Microsoft; and (5) VirnetX’s new discovery requests are overly broad and would require production of irrelevant material.  Microsoft also pointed out that it provided updated financial data to VirnetX with respect to the pertinent domestic industry products asserted in the 818 Investigation.

In opposition, VirnetX asserted that:  (1) the licensed products it now wishes to assert to support the domestic industry requirement in this investigation are indisputably relevant; (2) there was no private agreement with VirnetX on the completion of discovery as asserted by Microsoft; (3) Microsoft overstates the burden it incurred in producing discovery in the 818 Investigation; (4) the other domestic industry products VirnetX sought to rely on in the 818 Investigation may be discontinued; and (5) Microsoft has not shown that the subpoenas are unreasonable or oppressive.

ALJ Gildea agreed with Microsoft that VirnetX’s additional discovery requests with respect to domestic industry products not asserted in the 818 Investigation are unreasonable, especially in light of the fact that the ALJ stated previously that this was an atypical investigation since the parties were expected to already have seasoned positions with respect to the asserted patent, and that advance permission from the ALJ was required before a party could add new contentions.  Further, ALJ Gildea found VirnetX’s argument that adding new products to its domestic industry allegations is not adding new “contentions” unpersuasive.  Accordingly, Microsoft’s motion to limit the subpoenas solely to supplementation of discovery with respect to those products asserted in support of the domestic industry requirement in the 818 Investigation was granted.