ALJ Rogers Denies Motion To Compel Plant Inspection and Grants Protective Order In Certain Projectors With Controlled-Angle Optical Retarders (337-TA-815)
On June 28, 2012, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 11 (dated May 9, 2012) in Certain Projectors with Controlled-Angle Optical Retarders, Components Thereof, and Products Containing Same (Inv. No. 337-TA-815). In the Order, ALJ Rogers denied Complainant Compound Photonics U.S. Corporation’s (“Compound Photonics”) motion to compel Respondent Sony Corporation (“Sony”) to allow a plant inspection of Sony’s factory in Kosai, Japan. The ALJ also granted Sony’s motion for a protective order preventing Compound Photonics from inspecting the Kosai factory.
According to the Order, Compound Photonics was seeking a plant inspection of the Sony facility in Japan where Sony assembles the accused projector products. Compound Photonics asserted that the plant inspection would allow it to gain highly relevant information concerning Sony’s manufacturing process, as the patent claims at issue in the investigation are method claims. Compound Photonics argued that Sony’s document production had been insufficient, and that the only way to gain a complete understanding of Sony’s process was through a plant inspection.
Sony opposed the request and sought a protective order preventing Compound Photonics from being able to inspect the Kosai facility. Sony asserted that nothing would be gained by allowing Compound Photonics to inspect Sony’s facility. Sony further argued that the inspection would substantially disrupt the Kosai facility’s business. Sony additionally argued that Compound Photonics had not exhausted less burdensome means of discovery and that Sony was willing to provide photographs and/or a video of the accused process in lieu of a plant inspection. Lastly, Sony argued that if an inspection were ordered, Compound Photonics should be ordered to compensate Sony for the reasonable expenses incurred in the course of the inspection.
The Commission Investigative Staff (“OUII”) opposed Compound Photonics’s request for a plant inspection. OUII asserted that while the plant inspection would be directed to information that is relevant to Compound Photonics’s infringement claims, there were less burdensome means of obtaining the information. OUII also argued that Sony’s offer to produce photos and videos of the accused process would be sufficient to satisfy Compound Photonics’s request.
After considering the arguments, ALJ Rogers determined to deny Compound Photonics’s motion to compel the plant inspection and grant Sony’s motion for a protective order. The ALJ noted that the Commission Rules provide for plant inspections under some circumstances. However, under relevant case law, it is necessary to balance the degree to which the proposed inspection will aid the search for truthful information against the burdens and dangers created by the proposed inspection. Pursuant to this standard, ALJ Rogers determined to deny Compound Photonics’s request to inspect Sony’s Kosai facility and grant Sony’s motion for a protective order. However, the ALJ further ordered that the parties meet and confer to establish guidelines for Sony’s production of photographs and a video of the accused process.