By Eric Schweibenz
On December 14, 2011, ALJ Charles E. Bullock issued the public version of Order No. 28 (dated December 1, 2011) granting-in-part Complainants Creative Kingdoms, LLC and New Kingdoms, LLC’s (collectively, “Creative Kingdoms”) motion to compel discovery responses from Respondents Nintendo of America, Inc. and Nintendo Co., Ltd. (collectively, “Nintendo”) in Certain Video Game Systems and Wireless Controllers, and Components Thereof (Inv. No. 337-TA-770).

By way of background, this investigation was instituted on April 20, 2011 based on Creative Kingdom’s complaint.  The complaint alleged a violation of Section 337 by Nintendo for the importation into the U.S. and sale of certain video game systems and wireless controllers and components thereof including Nintendo’s Wii wireless game system and controllers.  See our March 23, 2011 and April 21, 2011 posts for more information.  

In its motion to compel, Creative Kingdoms’ sought production related to Nintendo’s pending patent applications and prosecution files.  Creative argued that Nintendo had only produced its public applications and prosecution histories, but that it was it was entitled to full discovery of all applications and files relating to the accused products. Creative Kingdoms argued that it was entitled to these documents because the applications were filed with declarations linking the patents to the commercial Wii system and because the applications include the same terms used Creative Kingdom’s patents.  Nintendo opposed the motion, arguing that it had already produced highly technical information as to the accused products and had provided and identified a variety of patent files and information.  As to the declarations, Nintendo asserted that the histories of the provided and identified patents contained declarations with the same statements regarding the commercial Wii system.  Nintendo indicated the only patent files not produced or identified as publicly available were unpublished applications neither discussing Creative Kingdom’s patents nor including the declaration.  The Commission Investigative Staff did not file a response.

In the Order, ALJ Bullock determined that Nintendo’s descriptions of its own products in its own patent applications were not relevant as to whether those products would infringe Creative Kingdom’s patents.  Thus, the ALJ stated that Creative Kingdoms had failed to show the information sought would be relevant in light of discovery already produced, with one exception.  ALJ Bullock determined that the pending patent applications and prosecution files might be relevant to the extent they discussed prior art asserted in the investigation.  The ALJ determined that Creative Kingdoms was entitled to establish whether Nintendo had taken a position during the patents’ prosecution which would be contrary to its position in the investigation.  Thus, ALJ Bullock granted Creative Kingdom’s motion in-part, ordering that any Nintendo patent applications and prosecution files containing statements as to prior art relied on by Nintendo in the investigation be produced.