By Eric Schweibenz
On April 10, 2013, ALJ David P. Shaw issued the public versions of Order No. 128 (dated November 1, 2012) and Order No. 129 (dated November 7, 2012) in Certain Personal Data and Mobile Communications Devices and Related Software (Inv. No. 337-TA-710).

According to Order No. 128, Complainant Apple Inc. (“Apple”) moved to strike Respondents High Tech Computer Corp. and HTC America Inc.’s (collectively, “HTC”) invalidity/unenforceability, written description, and prosecution history estoppel defenses on the ground of issue preclusion, arguing that the products at issue in the enforcement proceeding infringe the asserted claims for the very same reasons and based on the very same claim constructions that the ALJ and the Commission relied on in the violation investigation to conclude that HTC’s products infringe, and that HTC litigated and lost on each of the aforementioned defenses.  HTC argued that Apple was asserting new theories of infringement in the enforcement proceeding that depend on a broader claim scope than previously reviewed by the Commission and which implicate claim constructions and prior art that were not at issue during the violation phase.  The Commission Investigative Staff (“OUII”) agreed with Apple, contending that neither party can seek to broaden (or narrow) the scope of the asserted claims in the enforcement proceeding, and that HTC had a full and fair opportunity to litigate its defenses in the violation phase.  ALJ Shaw agreed with Apple and the OUII, and granted the motion under the doctrine of collateral estoppel.

According to Order No. 129, nonparty Zone Solutions, LLC (“Zone Solutions”) and Kevin Morris and Larry Sutton of nonparty Brightpoint, Inc. (collectively, “Brightpoint”) moved to quash subpoenas directed to Zone Solutions, Morris and Sutton, arguing that their testimony would be cumulative of testimony provided by Brightpoint’s corporate representative and that the timing of the subpoenas presented an undue burden.  Apple countered that the information sought was relevant to whether HTC engaged in misconduct in its effort to circumvent the Commission’s limited exclusion order, and that Brightpoint’s corporate witness could not answer numerous highly relevant questions, repeatedly referring to Morris as the individual most knowledgeable.  The OUII agreed with Apple and opposed the motion.  ALJ Shaw found that Zone Solutions and Brightpoint failed to establish that the relevance of the discovery sought, the needs of the requesting party, and the potential hardship in responding to the subpoenas weighed in favor of quashing the subpoenas.  Thus, the motion was denied.