07
Jan
By Eric Schweibenz
On December 20, 2013, ALJ E. James Gildea issued the public versions of Order Nos. 43 (dated December 4, 2013), 44 (dated December 5, 2013), 45 (dated December 5, 2013) and 46 (dated December 6, 2013) in Certain Consumer Electronics with Display and Processing Capabilities (Inv. No. 337-TA-884).

According to Order No. 43, Respondent Vizio, Inc. (“Vizio”) moved to compel Complainant Graphics Properties Holdings, Inc. (“GPH”) to respond to Interrogatory No. 52 regarding the identification of non-infringing alternatives which Vizio alleged is relevant to its non-infringement defense and to one of the Commission’s public interest factors.  Vizio also argued that GPH waived privilege by asserting that products with “advanced ARM cores” infringe the asserted patents.  In opposition, GPH asserted that it does not have the requested information, and that Vizio’s waiver arguments are “incomprehensible.”  ALJ Gildea denied the motion, finding that (1) Vizio’s interrogatory is not limited to GPH’s contentions with respect to whether non-infringing alternatives exists that can supply demand in the U.S. market, but instead is designed to elicit GPH’s legal contentions as to what products do not infringe the asserted patents; and (2) Vizio failed to articulate that GPH has waived any privilege, and appears to have misunderstood the standards involved.

According to Order No. 44, GPH sought to compel Vizio to produce (1) documents sufficient to show the process by which each product is transferred from the manufacturer to Vizio, and to identify each party involved in the process; (2) a witnesses to testify on topic 13 of GPH’s deposition notice to Vizio; (3) all supply agreements between Vizio and third party manufacturers of the accused products; and (4) supplemental responses to certain requests for admissions.  GPH argued that the requested discovery is relevant to the issue of whether Vizio imports or sells the accused products, and the identity of the parties that manufacture key parts of same, and that deposition testimony of Vizio’s corporate witness indicates that Vizio possesses, but has not produced, the relevant information.  Vizio countered that it does not manufacture or import any products and does not hold title to the accused products during importation.  ALJ Gildea granted the motion, finding that it is not enough for Vizio to allege it lacks title in the accused products during importation for the inquiry to end, and that GPH “should be permitted to reasonably explore the facts relating to Vizio’s role in, e.g., the manufacture, importation and sale of the accused products; whether the products were made to order, were purchased fully made, or incorporate ‘off the shelf’ components; the degree of control Vizio had over the products’ manufacture or importation, etc.”

According to Order No. 45, GPH moved to compel the Respondents to produce additional documents, witnesses, and interrogatory responses related to Respondents’ affirmative defenses concerning GPH’s participation in standards-setting organizations (“SSOs”), arguing that since Respondents raised the issue, they should have to produce discovery with respect to their own standard setting and reasonable and non-discriminatory (“RAND”) licensing activities.  In opposition, Respondents asserted that (1) GPH seeks discovery regarding SSOs beyond those at issue in the investigation, and that they have already provided discovery into the relevant SSOs and standards; (2) in addition to being irrelevant, producing discovery into all possible SSOs and standards would be “staggeringly burdensome”; and (3) RAND may not be appropriately calculated in a Section 337 investigation.  ALJ Gildea denied the motion on the grounds that GPH has not persuasively demonstrated that sweeping discovery into Respondents’ ties to all SSOs and standards (beyond what Respondents have already produced) is relevant or warranted.  In particular, the ALJ noted that GPH’s statement in its brief that it “does not believe the issues should even be reached …” indicates that GPH seeks “tit for tat” discovery instead of reasonably tailored discovery into the claims and defenses in the investigation.

According to Order No. 46, Respondents sought to compel GPH to produce supplemental responses to Interrogatory Nos. 70-76 related to GPH’s participation in specific SSOs which Respondents allege is necessary to develop their affirmative defenses.  Respondents argued that GPH referred indiscriminately to over 30,000 pages of documents and provided “limited narrative responses.”  GPH countered that (1) its December supplementation rendered the issue moot; (2) the responsive information is solely derived from the documents GPH identified for Respondents, and therefore the burden to obtain the information is equally on GPH and Respondents pursuant to Commission Rule 210.29(c); and (3) that Respondents’ underlying affirmative defenses lack merit.  ALJ Gildea granted the motion in part, ordering GPH to provide full and complete written responses to Interrogatory Nos. 72 and 74-76 which seek GPH’s position on specific issues, rendering inappropriate GPH’s expectation that Respondents will derive GPH’s stance from a large group of documents.  The ALJ also noted his inability to review GPH’s alleged December supplementation to determine whether the issue has in fact been mooted since GPH failed to attach the supplementation to its brief in violation of Ground Rule 2.5.