On September 23, 2014, ALJ Dee Lord issued Order Nos. 9 and 12 (dated August 27, 2014 and September 9, 2014, respectively) in Certain Integrated Circuits and Products Containing the Same (Inv. No. 337-TA-920).
By way of background, this investigation is based on a May 12, 2014 complaint filed by Freescale Semiconductor, Inc. alleging violation of Section 337 in the importation into the U.S. and sale of certain integrated circuits and products containing the same that infringe one or more claims of U.S. Patent Nos. 5,962,926; 7,158,432; 7,230,505; 7,518,947; 7,626,276; and 7,746,716. See our May 14, 2014 and July 1, 2014 posts for more details on the complaint and Notice of Investigation, respectively.
According to Order No. 9, Complainant Freescale Semiconductor, Inc. ("Freescale") filed a motion to compel Respondents MediaTek, Inc. and MediaTek USA, Inc. ("MediaTek") to produce netlists and GDS files, as well other technical documents relating to the accused MediaTek chips. Freescale argued that it has been over five weeks since it requested the documents at issue and "simply has no more time to wait." Freescale asserted that MediaTek's failure to produce the relevant documents is due to MediaTek's refusal to sign Freescale's proposed source code addendum to the protective order. In opposition, MediaTek argued that it has agreed to produce the requested documents and is working on gathering all the requested information. MediaTek further asserted that it is close to working out an agreeable source code addendum to the protective order with Freescale. The Commission Investigative Staff argued that Freescale's motion failed to comply with Ground Rule 3.2 and that Freescale "did not even request the Staff's position."
ALJ Lord held that Freescale's motion failed to comply with Ground Rule 3.2. ALJ Lord further noted that "[t]his is an instance in which the matters in dispute should have been resolved by counsel, with the assistance of Staff." Accordingly, ALJ Lord denied Freescale's Motion to Compel.
According to Order No. 12, Respondents TPV Display Technology (Xiamen) Co., Ltd.; Trend Smart America, Ltd.; and Trend Smart Ce Mexico, S.r.l. de C.V. (collectively, "TPV") filed a motion to compel Freescale to provide full responses to TPV's Interrogatories Nos. 18, 23, and 28. TPV's Interrogatory No. 18, 23, and 28 sought information concerning the priority dates of the claims of the asserted patents, the last known contact information of the inventors of the asserted patents, and identification of all licenses and agreements regarding the asserted patents, respectively. TPV argued that Freescale's response to Interrogatories No. 18 improperly qualifies the disclosed dates with open-ended terms such as "at least as early as" or "prior to." TPV asserted that the inventor contact information is relevant to the conception and reduction to practice of the asserted patents. TPV further argued that all the licenses to the asserted patents are relevant to at least the issues of patent exhaustion and bonding. In opposition, Freescale argued that it has provided full responses to Interrogatory No. 18 and the qualifying language simply reflects that discovery is ongoing. As to Interrogatory No. 23, Freescale asserted that it has already provided the contact information requested by TPV. Lastly, Freescale argued that it provided every license agreement related to the asserted patents for which it has obtained permission.
Regarding Interrogatory No. 18, ALJ Lord held that TPV's motion is premature because Freescale provided specific dates based on the discovery that has occurred to date. ALJ Lord noted that Freescale is under a duty to supplement as discovery continues. As to Interrogatory No. 23, ALJ Lord determined that TPV's motion is moot because Freescale's supplemental provided all the information requested by TPV. ALJ Lord granted TPV's motion as to Interrogatory No. 28 because all the licenses to the asserted patents are relevant to the issues of domestic industry, patent exhaustion, and bonding. ALJ Lord held that Freescale must produce all licenses to the asserted patents and not just the licenses agreements identified in Appendix P of the Amended Complaint. Accordingly, ALJ Lord granted-in-part TPV's Motion to Compel.