By John PresperOn December 6, 2012, ALJ James E. Gildea issued Order No. 18 granting-in-part a motion to quash or limit subpoenas served on nonparty Reed Smith LLP (“Reed Smith”) in Certain Consumer Electronics, Including Mobile Phones and Tablets (Inv. No. 337-TA-839).
By way of background, this investigation is based on a complaint filed by Pragmatus AV, LLC (“Pragmatus”) alleging violation of Section 337 in the importation into the U.S. and sale of certain consumer electronics, including mobile phones and tablets, that infringe one or more claims of U.S. Patent Nos. 5,854,893, 6,237,025, 7,054,904, 7,185,054 and 7,206,809. See our March 15, 2012 post for more details.
According to the Order, Reed Smith filed a motion to quash or limit he subpoenas served by Respondents Research in Motion Ltd. and Research in Motion Corp. (collectively, “RIM”). Reed Smith represented Pragmatus in various intellectual property matters in past, but is not representing Pragmatus in this investigation. Reed Smith argued that RIM’s subpoena duces tecum covers a voluminous amount of materials, requiring a highly burdensome privilege review. Further, Reed Smith asserted that although RIM offered to cover some of Reed Smith’s reasonable costs in complying with the subpoena, RIM should be required to pay for the privilege review. Reed Smith also argued that the subpoena ad testificandum would only divulge non-privileged information duplicative of what RIM could obtain from Pragmatus. In opposition, RIM argued that Reed Smith has a “strategic relationship” with Pragmatus based on Reed Smith’s involvement in prosecuting the asserted patents. Accordingly, RIM asserted that Reed Smith possesses discoverable information relevant to claim construction and understanding the patents’ technical disclosures.
ALJ Gildea began by noting that “[n]onparties have a particularly heavy burden to show that subpoenas are unreasonable and oppressive.” Regarding RIM’s motion to quash the subpoena ad testificandum, ALJ Gildea denied the motion because Pragmatus identified Reed Smith as knowledgeable with respect to discovery in this investigation. With respect to the subpoena duces tecum, ALJ Gildea determined that Reed Smith must produce all non-privileged, responsive documents not within Pragmatus’ control -- except for Document Request Nos. 10, 11 and 13 relating to patent prosecution, Reed Smith’s stake in the investigation, and licensing. The ALJ found that RIM failed to sufficiently explain why Reed Smith should be required to respond to these document requests. Additionally, ALJ Gildea determined that RIM is bound by its offer to pay for reasonable expenses associated with Reed Smith’s production of discoverable documents, but not required to pay for Reed Smith’s privilege review.