By Eric Schweibenz
On January 11, 2013, ALJ David P. Shaw issued the public version of Order No. 78 (dated October 23, 2012) in Certain Wireless Devices with 3G Capabilities and Components Thereof (Inv. No. 337-TA-800).

By way of background, this investigation is based on a complaint filed on behalf of InterDigital Communications, LLC, InterDigital Technology Corporation, and IPR Licensing (collectively, “InterDigital”) alleging violation of Section 337 by Respondents Huawei Technologies Co., Ltd., FutureWei Technologies, Inc. d/b/a Huawei Technologies (USA),  ZTE Corp., ZTE (USA) Inc., and Nokia (collectively, the “Respondents”) in the importation into the U.S. and sale of certain wireless devices with 3G capabilities and components thereof that infringe one or more claims of U.S. Patent Nos. 7,349,540; 7,502,406; 7,536,013; 7,616,970; 7,706,332; 7,706,830; and 7,970,127.  See our August 29, 2011 post for more details about this investigation.

According to Order No. 78, non-parties Research In Motion Limited and Research in Motion Corporation (collectively, “RIM”) filed a motion for an order prohibiting Respondents Nokia Corporation and Nokia Inc. (collectively, “Nokia”) from producing documents relating to prior licensing negotiations between Nokia and RIM.  Specifically, RIM sought to prevent Nokia from producing these documents in response to Order No. 70 (not yet publicly available), which ordered Nokia to produce discovery relating to Nokia’s licensing practices and FRAND affirmative defense.  InterDigital filed an opposition to RIM’s motion.

In support of its motion, RIM argued that Nokia’s imminent production of the licensing documents to InterDigital “would result in serious and irreparable harm to RIM” and that production “would allow RIM’s competitors to use RIM’s highly confidential licensing information in licensing negotiations adverse to RIM.”  RIM also argued that the ITC protective order “would not prevent this harm to RIM, because it does not bar counsel for RIM’s competitors from advising their clients in negotiations adverse to RIM.”  RIM also noted that Nokia already produced the final Nokia-RIM license and allowing production of additional licensing documents would permit RIM’s competitors to “use the Nokia-RIM licensing documents in their own licensing negotiations with Nokia to obtain terms more favorable than those afforded to RIM.”  InterDigital opposed the motion and argued that the documents should be produced because “they are relevant to defenses raised by Respondents and are clearly subject for discovery and production.”  InterDigital further noted that Nokia “sought the same types of material from InterDigital, thus recognizing that these materials are relevant and responsive.”

According to the Order, ALJ Shaw was “not persuaded that production of the Nokia-RIM licensing materials in this investigation as Confidential Business Information under the terms of the Protective Order would necessarily result in ‘serious and irreparable harm’ to RIM, or that the terms of the Protective Order that prohibit use of Confidential Business Information outside of this investigation are inadequate.”  ALJ Shaw further determined that the “licensing materials are relevant at least to the issue of Nokia’s FRAND defense, and RIM has not shown that an order prohibiting their production is warranted.”  Accordingly, ALJ Shaw denied RIM’s motion.