By Eric Schweibenz
On January 28, 2010, ALJ Charles E. Bullock issued the public version of Order No. 29 (dated January 14, 2010) in Certain Flash Memory Chips and Products Containing the Same (Inv. No. 337-TA-664).

According to the Order, Complainants Spansion, Inc. and Spansion LLC (collectively, “Spansion”) moved to compel Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung International, Inc., Samsung Semiconductor, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”) to produce certain documents, witnesses, information, and samples relating to the manufacture and programming of Samsung’s accused flash memory chips.

In particular, Spansion argued that Samsung failed to produce information, including documents and testimony, relating to the actual voltages applied to Samsung’s flash memory device cores during programming, which Spansion claimed was relevant to the issue of infringement.  Samsung disagreed, arguing that Spansion’s request was moot, and that Samsung had already provided or agreed to provide the requested information.  The Commission Investigative Staff (the “Staff”) supported Spansion’s motion.  ALJ Bullock agreed with the Staff that the information sought by Spansion appeared reasonably calculated to lead to the discovery of admissible evidence, but noted that since the filing of the motion, Samsung had produced additional responsive documents and samples, and supplemented its interrogatory responses.  Accordingly, ALJ Bullock granted Spansion’s motion as to documents relating to applied voltage to the extent that Samsung had not yet produced responsive documents.  ALJ Bullock denied as moot Spansion’s motion to compel testimony given that Spansion took the deposition of two engineers on topics relating to applied voltage since the filing of Spansion’s motion.

Spansion also argued that Samsung failed to produce samples of certain accused chips.  Samsung pointed out that it in fact produced some samples of its 35 nm chips and 42 nm chips, and that it “will notify the ALJ when it is able to” produce samples of its 32 nm chips.  Given the late stage of discovery, however, ALJ Bullock ordered Samsung to provide by January 25, 2010 a date by which samples of the 32 nm chips will be available.  As to the remaining chips, to the extent that Samsung had not yet complied, ALJ Bullock granted Spansion’s motion, and in particular ordered Samsung to either produce the requested samples or advise Spansion that the samples already produced are representative of specific other products.

Spansion further moved to compel the testimony of the 19 Samsung employees that it noticed who were identified during 30(b)(6) depositions as persons with relevant knowledge, which Samsung had refused to make available.  Samsung responded that Spansion provided no basis for noticing the depositions beyond the mere fact that the individuals were employees of Samsung.  The Staff stated that because Samsung’s witnesses thus far were unable or unwilling to discuss the actual duties of these individuals, the witnesses should be produced or information sufficient to show they were redundant or unnecessary should be produced.  ALJ Bullock agreed with Spansion and the Staff, and granted Spansion’s motion to compel with respect to the noticed witnesses, but “strongly encourage[d] the parties to work together to narrow down the number of people to be deposed.”

Finally, Spansion requested an on-site inspection of Samsung’s wafer fabrication lines and computer systems.  Samsung argued that such a request was unduly burdensome and harassing.  The Staff asserted that an on-site inspection could potentially resolve the issue of obtaining actual voltages by providing access to the actual production line, and that Samsung should be able to produce representative samples of wafers and thus avoid having to produce hundreds of samples.  However, the Staff agreed with Samsung that Spansion’s request for remote access to Samsung’s computer systems was “an extraordinarily burdensome and broad request and is not one often seen in ITC cases.”  Citing Commission Rule 210.30(a)(2) and Rule 210.27(b), ALJ Bullock found that Spansion’s request was reasonable and likely to lead to the discovery of admissible evidence, but he was not convinced that Spansion needed remote access to Samsung's computer systems, finding such access unduly burdensome.  Thus, ALJ Bullock granted Spansion’s motion with respect to on-site inspection, but denied it with respect to remote access to Samsung’s computer systems.  Noting the disruption that Spansion’s request would likely cause Samsung’s normal course of business, ALJ Bullock ordered Spansion to pay for the costs and expenses incurred by Samsung and its counsel with respect to the inspection, including all costs and expenses incurred in closing Samsung’s commercial fabrication facilities for a limited inspection.