16
Jan
By Eric Schweibenz
On January 13, 2014, ALJ Charles E. Bullock issued the public versions of Order Nos. 16 (dated November 12, 2013) and 19 (dated November 26, 2013) in Certain Windshield Wiper Devices and Components Thereof (Inv. No. 337-TA-881).

According to Order No. 16, Complainants Federal-Mogul Corporation and Federal-Mogul SA (collectively, “Federal-Mogul”) moved to compel Respondents Trico Products Corporation and Trico Componentes SA de CV (collectively, “Trico”) to produce documents responsive to certain requests for production (“RFP”) which sought documents and things related to the design, conception, construction, testing, and manufacture of the spoilers, spline, heat stakes, and end caps of the accused products. 

Federal-Mogul argued that while Trico’s counsel maintained that all responsive documents had been produced, Trico’s own witnesses had “admitted they have responsive documents in their possession that they have not produced because no one asked for the documents.”  Federal-Mogul submitted that this testimony demonstrated that Trico had not put much effort into collecting responsive documents. 

In opposition, Trico argued that it had conducted a thorough sweep and review of all of its relevant custodians’ emails, and produced all responsive documents.  Trico also asserted that if Federal-Mogul believed that documents had not been produced, it should specifically identify what is missing.  Trico also submitted that the testimony relied on by Federal-Mogul merely showed that Trico employees have email accounts and emails, not that Trico failed to collect and produce responsive documents. 

ALJ Bullock found that the RFPs at issue seek documents relevant to the issues in the Investigation and are discoverable.  ALJ Bullock further found that the evidence indicated that Trico had not produced all relevant, responsive documents.  ALJ Bullock relied on the testimony of Trico employees’ statements that they had not collected any design documents, or weren’t asked to provide design drawings, assembly drawings, or emails in reaching his decision.  Accordingly, ALJ Bullock granted Federal-Mogul’s motion.

According to Order No. 19, Trico moved to compel Federal-Mogul to produce the entire TEAM ACTION LIST (“TAL”), sample wiper blades, including prior art blades and documents responsive to certain Trico RFPs.  Trico asserted that Federal-Mogul had not produced the entire TAL as evidenced by the fact that sections listed in the TAL master index were missing.  Additionally, Trico argued that many of the documents listed on the separate index page as having been produced were also missing.  Trico claimed that Federal-Mogul could not claim privilege over the TAL because it was created, maintained, and kept by an inventor of the patent-at-issue in this Investigation, and that the inventor told Trico that everything related to the patents was contained in the TAL binders.   

Trico also argued that it is entitled to discovery of prior art wiper blades because Federal-Mogul admitted that it created, manufactured, and sold wipers with detachable spoilers before the claimed priority date of the patent-at-issue.  Additionally, Trico asserted that Federal-Mogul has generally failed to produce requested documents such as instruction manuals, benchmarking studies, and documents related to product comparisons, testing, patentability, development, licensing, and communications between Federal-Mogul and Bosch.

In opposition, Federal-Mogul claimed that it could only locate 13 binders of the TAL and that it produced all of them except for two privileged binders.  Additionally, Federal-Mogul submitted that Trico already had samples of the X6, X5, X3, and J family blades, or that samples of the blades were made available for inspection.  Federal-Mogul contends that earlier versions of the blades are not relevant.  Finally, Federal-Mogul claimed that, with respect to Trico’s various document requests, to the extent that responsive documents exist, they had already been produced.

ALJ Bullock found that Trico’s arguments regarding the sample wiper blades were persuasive. While Federal-Mogul contended that the blades had not changed and that the samples that Trico already had were representative of the existing product, ALJ Bullock asserted that Federal-Mogul could not hide behind a unilateral determination that the blades were “representative” in order to avoid produce samples of blades that are relevant and responsive to Trico’s discovery requests.

ALJ Bullock also noted that Federal-Mogul had submitted a declaration averring that all non-privileged portions of the TAL and related test documents had been produced.  Additionally, ALJ Bullock found that Trico had not submitted evidence to contradict that the documents had been produced and declined to order Federal-Mogul to produce documents that Trico claimed were improperly designated as privileged because Trico failed to properly meet and confer regarding the alleged deficiencies of the privilege log before filing its motion.  ALJ Bullock further found that Trico had proffered no evidence, beyond conclusory allegations, to support its allegations that Federal-Mogul has not complied with its discovery obligations. Accordingly, ALJ Bullock granted Trico’s motion with respect to the sample blades, and denied Trico’s motion with respect to Federal-Mogul’s failure to produce relevant, responsive documents.