On April 19, 2012, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 12 (dated March 14, 2012) denying Respondents’ OSRAM AG, OSRAM Opto Semiconductors GmbH, and OSRAM Sylvania, Inc.’s (collectively “OSRAM”) motion to compel in Certain Light-Emitting Diodes and Products Containing Same (Inv. No. 337-TA-802).
According to the Order, OSRAM moved to compel Complainants LG Electronics, Inc. and LG Innotek Co. Ltd. (collectively “LG”) to produce licensing-related information responsive to OSRAM’s Requests for Production Nos. 22 and 111. Specifically, OSRAM sought production of “[a]ll documents concerning LG’s licensing of the Patents-In-Suit,” and “[a]ll documents concerning any licensing or sublicensing agreement for any of LG’s intellectual property rights concerning the Accused Products, including without limitation the Patents-In-Suit and any technology embodied therein… .” OSRAM argued that the requested documents are “relevant to determining: (1) the appropriate bond and (2) the validity of the asserted patents.” OSRAM also asserted that LG’s sole argument against production, that its licensing-related documents are not relevant because “LG does not intend to rely on licensing activities to prove domestic industry,” has been expressly rejected in other investigations. LG’s arguments in rebuttal were largely redacted from the public version of the Order.
ALJ Rogers denied OSRAM’s motion, finding LG’s argument that its licensing-related documents are not relevant to the issue of bonding to be persuasive. Further, the ALJ determined that OSRAM did not carry its burden to demonstrate that LG’s licensing-related documents are relevant to the issue of validity because OSRAM provided “no evidence indicating LG will rely on the licensing-related documents to show secondary considerations of non-obviousness, or that it will rely on the licensing-related documents for any other issue in this investigation.”