On March 25, 2013, Chief ALJ Charles E. Bullock issued Order No. 87 and the public version of Order No. 75 (dated March 11, 2013) in Certain Sintered Rare Earth Magnets, Methods of Making Same, and Products Containing Same (Inv. No. 337-TA-855).

By way of background, the investigation is based on a complaint filed by Hitachi Metals, Ltd. and Hitachi Metals North Carolina, Ltd. (collectively, “Hitachi”) alleging violation of Section 337 in the importation and sale of certain sintered rare earth magnets, methods of making same, and products containing same that infringe one or more claims of U.S. Patent Nos. 6,461,565; 6,491,765; 6,527,874; and 6,537,385.  See our August 22, 2012 post for more details on Hitachi’s complaint.

According to Order No. 75, Respondents Yantai Zhenghai Magnetic Material Co., Ltd., Anhui Earth-Panda Advance Magnetic Material Co., Ltd., and Ningbo Jinji Strong Magnetic Material Co., Ltd. (collectively, “Respondents”) filed a motion to compel discovery from Hitachi.  Specifically, Respondents asserted that Hitachi inappropriately asserted privilege with respect to information responsive to certain discovery requests as the requested materials were relied upon to support Hitachi’s infringement allegations, and thus privilege was waived.  This argument was based on the principle that privilege cannot be used as both a “sword” and a “shield.”  Hitachi responded that privilege had not been waived because, although the materials were referenced in its complaint, they were not cited in Hitachi’s claim charts and will not be relied on by its experts; thus, the materials have not been used as a “sword.”  Hitachi also asserted that some of the requested information was directed to knowledge it does not possess.

ALJ Bullock determined that Hitachi’s responses to interrogatories either identified all requested information, or that the requested information was not in Hitachi’s possession.  Relying on Hitachi’s statements that it will not use the privileged documents to support its infringement position, the ALJ also determined that Hitachi had not waived privilege by referring to the subject materials in its complaint.  ALJ Bullock also concluded that Respondents had not made a sufficient showing of their substantial need for the documents, and thus, the motion to compel was denied. 

According to Order No. 87, Hitachi filed a motion to compel responses to certain requests for production from Respondents MicroMo Electronics, Inc. and Dr. Fritz Faulhaber GmbH & Co. KG (“Faulhaber”).  Hitachi asserted that it provided a deficiency letter to at least Faulhaber, and met and conferred regarding the alleged deficiencies.  Faulhaber opposed Hitachi’s motion and asserted both that no particular deficiencies were identified, and that Hitachi refused to identify the unresolved issues.  In light of these comments, ALJ Bullock determined that Hitachi failed to comply with Ground Rule 3.2 and “failed to make a good-faith effort to resolve the matter before fling the present motion,” denying the motion to compel.