On August 23, 2012, ALJ E. James Gildea issued the public version of Order No. 18 (dated August 3, 2012) and Order No. 19 (dated August 6, 2012) Certain Electronic Devices for Capturing and Transmitting Images, and Components Thereof (Inv. No. 337-TA-831).
According to Order No. 18, respondents HTC Corp. and HTC America, Inc. (collectively, “HTC”) sought to compel complainant Eastman Kodak Co. (“Kodak”) to provide all non-privileged discovery in response to Interrogatory Nos. 11 and 31 and Request for Production Nos. 130 and 214 relating to corroboration of Kodak’s conception dates for the asserted patents, invention dates for Kodak prior art patents, and inventor contributions or notebooks for the asserted patents. HTC argued that Kodak’s assertion of “tentative” privilege over conception discovery is improper, and that Kodak should not be permitted to wait until its contention interrogatories are due to decide whether it intends to waive privilege, but instead must make the decision when the requested discovery is due. Respondent Apple Inc. (“Apple”) supported the motion, contending that Kodak should not be allowed to shield conception documents from discovery under a claim of privilege and then later attempt to rely on them after respondents have taken binding positions on invalidity. Kodak countered that (1) HTC seeks discovery of privilege documents as well as documents not relevant to a claim or defense in the investigation, and (2) with respect to the inventor notebook at issue, Kodak only produced relevant sections of the notebook.
ALJ Gildea agreed with HTC and Apple that it is improper for a party to withhold conception discovery until the deadline for contention interrogatories. Since it appeared that Kodak only withheld documents for which it claimed attorney-client privilege, the ALJ found that it would be premature to act unless Kodak decides to waive that privilege. In denying this portion of HTC’s motion, however, ALJ Gildea noted that if Kodak reverses its position with respect to privilege in its responses to contention interrogatories, then he would entertain a motion to strike or exclude. With respect to prior art documents, the ALJ found that the discovery requested in response to Request No. 214 is relevant to respondents’ invalidity defenses, and ordered Kodak to produce non-privileged responsive documents to the extent it has not done so already. Regarding the inventor notebook, ALJ Gildea found that Kodak improperly withheld portions of the notebook at issue, noting that it is not for Kodak to make partial redactions by withholding pages even of some of the notebook is not relevant to the investigation (citing Commission Rule 210.30). Hence, this portion of HTC’s motion was granted. Finally, as to Interrogatory No. 31, the ALJ rejected Kodak’s argument that HTC could more easily obtain the information sought by deposing the inventors, noting the cost and inconvenience to nonparty witnesses. Accordingly, ALJ Gildea ordered Kodak to provide a response to this interrogatory to the extent it has not yet done so already.
According to Order No. 19, Kodak sought a protective order limiting any waiver of attorney-client privilege solely to the documents ordered to be produced should HTC’s motion to compel be granted. HTC opposed Kodak’s motion, arguing that Kodak has asked for an “advisory opinion” about a “potential decision to waive privilege” in a waste of public and private resources, and that Kodak seeks affirmation of the use of privilege as both a sword and shield. Apple opposed Kodak’s motion, agreeing with HTC and asserting that Kodak is asking the ALJ to “condone its misbehavior: that it affirmatively withheld as privilege information allegedly supporting its conception and reduction to practice claims while Respondents took positions on invalidity.” ALJ Gildea denied the motion, reiterating his warning to Kodak that although it is premature to act unless Kodak decides to waive privilege, the ALJ will entertain further motion practice should the situation change. ALJ Gildea further observed that tactically waiting until the respondents commit to certain invalidity positions before determining whether to respond to requested discovery (that is long overdue) could potentially be an abuse of the privilege and waiver rules, as well as an end run around the ALJ’s Ground Rules and Procedural Schedule.