03
May
By Eric Schweibenz
On April 30, 2010, ALJ E. James Gildea issued the public version of Order No. 16 (dated April 19, 2010) in Certain Ceramic Capacitors and Products Containing the Same (Inv. No. 337-TA-692) granting in part Respondents motion to compel Complainants to respond to interrogatory nos. 5 and 54 and request for production nos. 1, 13, 27, 53, 79, 105, 132-157 and 159-161.

According to the Order, Respondents Samsung Electro-Mechanics Co., Ltd. and Samsung Electro-Mechanics America, Inc. (collectively, “Samsung”) asserted that the requested discovery relates to the testing of its products by Complainants Murata Manufacturing Co. Ltd. and Murata Electronics North America, Inc. (collectively, “Murata”) before the institution of this investigation.  Samsung argued that the information is discoverable, despite Murata’s claim that it is protected work product, because Murata waived its privilege by relying on the information in its expert’s declaration to support its Complaint.  Samsung further argued that the waiver extends to all other pre-suit testing, results and analysis of the Samsung capacitor products completed by Murata or its expert.  Murata argued that evidence submitted to the ITC before the institution of an investigation is treated differently than evidence that a complainant will rely on to prove a violation of Section 337, and that it does not intend to rely on or otherwise support its case with its expert’s pre-Complaint analysis, which Murata “merely pointed to . . . to identify products accused of infringement and the basis therefore in the Complaint.”  The Commission Investigative Staff supported Samsung’s motion to the extent it sought discovery limited to the expert declaration, but noted that Samsung’s motion sought discovery regarding aspects of Murata’s pre-filing investigation that were unrelated to the declaration.

In the Order, ALJ Gildea found that although Murata claimed it had no intention of relying on the testing done by its expert to prove its case against Samsung, Murata’s responses to the interrogatories in question indicated that at least at some point in time Murata relied on the declaration of its expert in support of its domestic industry and infringement contentions.  Thus, ALJ Gildea found that:
Murata inextricably injected the Burn’s declaration into this investigation to serve its ends and thus waived any work-product privilege thereto.  However, contrary to Samsung’s argument that the waiver should extend to any and all pre-institution testing of Samsung’s products by Murata, . . . the waiver should only apply to the Burn declaration and the testing on which it is based.  Subject to those restrictions, Samsung’s motion to compel is hereby granted.

ALJ Gildea noted that any documents compelled under the order may be redacted to the extent they contain specific mental impressions, conclusions, or legal theories of Murata’s attorneys.
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