On April 10, 2014, ALJ E. James Gildea issued the public version of Order No. 29 (dated March 20, 2014) granting in part Complainant’s motion to compel and/or strike in Certain Silicon Microphone Packages and Products Containing Same (Inv. No. 337-TA-888).

By way of background, the Commission instituted this investigation on July 23, 2013 based on a complaint filed by Knowles Electronics, LLC (“Knowles”) alleging a violation of Section 337 by Respondents GoerTek, Inc. and GoerTek Electronics, Inc. (collectively, “GoerTek”) in the importation into the U.S. and sale of certain silicon microphone packages and products containing the same that infringe, or that are made by a process that infringes, one or more claims of U.S. Patent Nos. 7,439,616, 8,018,049, and 8,121,331.  See our June 25, 2013 and July 24, 2013 posts for more details on the complaint and notice of investigation, respectively.

According to Order No. 29, Knowles filed a motion to compel GoerTek to complete certain categories of discovery.  Knowles also moved to strike certain contentions and sought leave to supplement its contentions based on alleged late discovery.  Specifically, Knowles requested the following:

  • Reopening the depositions of GoerTek Chairman Bin Jiang and Vice Chairman Long Jiang and either the complete production of responsive electronically stored information from these custodians, or specific facts from GoerTek demonstrating that the materials were provided;
  • Technical drawings including bills of material, assembly drawings, metal case drawings, and PCB drawings for the accused products;
  • Signed, official versions of product design specifications for the accused products;
  • Reopening GoerTek’s corporate deposition regarding late-produced technical documents;
  • Responses to Knowles’ Interrogatory Nos. 76-87, requesting basic discovery from GeoerTek regarding whether and how GoerTek contends that particular models of MEMS microphones differ for the purposes of infringement;
  • Production of missing GoerTek monthly IP Department reports or identification of which reports are being withheld on a privilege log;
  • Information regarding GoerTek’s collaboration with the Chinese government and third parties to attempt to develop a package for a MEMS microphone;
  • The correction of GoerTek’s response to Interrogatory No. 29; and
  • Striking GoerTek’s “State of the Art” chart and/or ordering GoerTek to state its contentions with specificity and allowing Knowles to respond.

With respect to the Depositions of Bin Jiang and Long Jiang, ALJ Gildea found that Knowles had not made a sufficient showing to burden the witnesses with further deposition time.  More particularly, ALJ Gildea noted that Knowles did not attempt to argue that the witnesses were unprepared to testify on the matter of copying during their two-day depositions and did not identify any specific documents reflecting a need for additional testimony.  As such, ALJ Gildea found that Knowles had not shown any need that outweighed the burden of producing the witnesses for further deposition and that Knowles had not identified any gaps in the document production indicating that GoerTek improperly withheld responsive documents.  Accordingly, ALJ Gildea denied this portion of the motion.

Concerning the production of technical documents, ALJ Gildea found that while GoerTek argued that it had already produced the requested documents or confirmed that they do not exist, GoerTek had not provided any evidence to support those representations.  Therefore, ALJ Gildea noted that he had no basis to conclude that GoerTek had fulfilled its discovery obligations regarding the requested technical documents.  Accordingly, ALJ Gildea granted this portion of the motion.

Regarding the request for signed copies of product specifications, ALJ Gildea found that GoerTek had provided evidence that signed versions had already been produced, and that Knowles had provided evidence showing that the product specifications had been signed electronically.  Accordingly, ALJ Gildea denied this portion of the motion.

As to reopening GoerTek corporate depositions, ALJ Gildea found that Knowles had not shown that GoerTek’s corporate witnesses were unprepared to testify regarding the technical subject matter at issue in the investigation, and had not identified any specific need for further testimony regarding the allegedly late-produced documents beyond the need to authenticate them.  As with the depositions of Bin Jiang and Long Jiang, ALJ Gildea found that Knowles’ need for additional testimony did not outweigh the substantial burden of requiring GoerTek to produce witnesses for additional depositions in the U.S.  ALJ Gildea also noted that he expected the parties to work in good faith to enter a stipulation regarding the authenticity of the documents.  Accordingly, ALJ Gildea denied this portion of the motion.

With respect to supplementing interrogatory responses, ALJ Gildea found that GoerTek’s argument that it should not be required to rebut contentions that were not timely provided was previously addressed in GoerTek’s earlier motion to strike the supplemental contentions.  Accordingly, ALJ Gildea granted the motion in part to the extent that GoerTek was ordered to provide substantive supplemental responses to Knowles’ Interrogatory Nos. 76-87 by the close of business on March 28, 2014.  ALJ Gildea also found that Knowles’ request to supplement its contention interrogatory responses was denied as moot in light of Order No. 24.

Regarding the IP Department Reports, ALJ Gildea found that while GoerTek represented that it had completed its production and updated its privilege log regarding these materials, GoerTek did not provide any evidence that it had done so, instead providing only attorney argument.  Accordingly, ALJ Gildea granted this portion of the motion.

Concerning information regarding collaboration with the Chinese government and third parties, ALJ Gildea found that some of the information Knowles was requesting had already been determined by ALJ Gildea to be overly broad and burdensome.  ALJ Gildea also found, however, that GoerTek again made an unsupported argument regarding its representation that it performed a reasonably diligent search and had produced documents that it had regarding collaboration.  Accordingly, ALJ Gildea granted in part this portion of the motion.  

Regarding correcting GoerTek’s response to Interrogatory No. 29, ALJ Gildea found that GoerTek established that its response to the interrogatory was satisfactory.  Accordingly, ALJ Gildea denied this portion of the motion.

As to GoerTek’s “state of the art” chart, ALJ Gildea found that GoerTek’s claim charts provided, on a limitation-by-limitation basis, a description of what GoerTek believed the state of the art was at the time the asserted patents were filed and how the state of the art could allegedly be combined with additional prior art references to render the asserted claims invalid.  Based on the contents of the chart, ALJ Gildea found that the chart appropriately responded to Knowles’ interrogatory and provided adequate notice of GoerTek’s invalidity positions regarding the state of the art.  Accordingly, ALJ Gildea denied this portion of the motion.