By Eric Schweibenz and Kate Cappaert
On September 24, 2014, ALJ Thomas B. Pender issued the public versions of Orders No. 15 (dated February 4, 2014) and 16 (dated February 20, 2014) in Certain Opaque Polymers (Inv. No. 337-TA-883).

By way of background, the investigation is based on a complaint filed by Rohm and Haas Company, Rohm and Haas Chemicals, and The Dow Chemical Company (collectively, “Dow”) alleging violation of Section 337 in the importation into the U.S. and sale of certain opaque polymers that infringe one or more claims of U.S. Patent Nos. 6,020,435; 6,252,004; 7,435,783; and 7,803,878.  See our May 22, 2013 and June 20, 2013 posts for more details on the complaint and notice of investigation, respectively.

According to Order No. 15, non-party Dilip M. Nene moved to quash a subpoena duces tecum.  Dow opposed the motion.  On January 23, 2014, ALJ Pender’s attorney-advisor held a teleconference with counsel for Dow and counsel for Dr. Nene during which the parties were informed that ALJ Pender intended to deny Dr. Nene’s motion permitting the inspection of Dr. Nene’s computers but was sensitive to Dr. Nene’s concerns regarding protecting Dr. Nene’s confidential and privileged information and that the parties should submit agreed-to protocols to be included in the Order.  On January 30, 2014, ALJ Pender received letters from Dow and Dr. Nene stating that they had reached agreement on a number of protocols but still had remaining disagreements.

Dr. Nene argued that the subpoena duces tecum ordering the production of any personal computer used by him from November 2007 through December 31, 2012 for forensic copying was unduly burdensome and served as a form of harassment that would not advance discovery.  Dr. Nene also argued that there was no justification for the subpoena as the documents could be obtained directly from the Respondent, Organik Kimya (“Organik”), that there was insufficient evidence to support the subpoena, and that the subpoena did not protect Dr. Nene’s personal and privileged communications.

Dow argued that Dr. Nene could not meet his burden to show the subpoena should be quashed because the subpoena was based on discrepancies between Organik’s documents and Dr. Nene’s testimony, the discrepancies provided a reasonable basis to seek documents and emails from Dr. Nene, and the proposed imaging protocol of Dr. Nene’s hard drive did not present a sufficient burden.  Dow also argued that the inspection request was supported by emails detailing Rohm & Haas process information, inconsistencies in Dr. Nene’s testimony, and invoices obtained from Organik.  Further, Dow argued that Ms. Altinok, Respondents’ 30(b)(6) witness, revealed during her deposition additional details regarding documents possessed by Dr. Nene that supported the inspection request.   

ALJ Pender found that the subpoena duces tecum was narrowly tailored and that the inconsistencies in the evidence were sufficient to deny the motion to quash the subpoena duces tecum.  ALJ Pender found that the evidence sought by Dow regarding whether Dr. Nene revealed or provided information regarding Dow’s opaque polymers and opaque polymer processes to Organik was relevant to both Dow’s infringement and trade secret misappropriation claims.  ALJ Pender noted that the evidence presented by Dow strongly suggested that Dr. Nene’s relationship with organic was one of providing more than merely general advice on chemistry and safety protocols as Dr. Nene stated in his deposition and also suggested that Dr. Nene’s email exchanges with Organik included information of a technical nature and were more than discussions regarding scheduling visits, paying invoices, and general advice on chemistry and safety protocols.  For this reason, ALJ Pender found that the subpoena request for forensic inspection of Dr. Nene’s computers was well supported.

With respect to Dr. Nene’s claims of undue hardship in complying with the subpoena, ALJ Pender found that the hardship from the subpoena was minimal because the expense for the forensic inspection was being born by Dow and the time that Dr. Nene would not have access to his computers was negligible.  Additionally, ALJ Pender found that, in light of the protection protocols proposed by counsel for Dow and Dr. Nene, the subpoena was narrowly-tailored to ensure that Dr. Nene’s confidential and privileged information was protected.  ALJ Pender also found that the subpoena was not unreasonably burdensome and was justified because, even if the requested information could be obtained from Organik, due to the issues regarding the timing, nature, and extent of relationship between Organik and Dr. Nene Dow would still be entitled to the forensic inspection of Dr. Nene’s computers in order to confirm the veracity of the information already obtained. 

ALJ Pender found that the parties were able to agree on a number of protocols to protect Dr. Nene’s privileged and confidential information but noted that the following issues remained unresolved: (1) the timing for making Dr. Nene’s computer(s) available; (2) the timing for logging results of any search on a privilege log; and (3) the scope of the search terms.  ALJ Pender addressed each of these issues.  ALJ Pender (1) ordered Dr. Nene to make his computer available for inspection within three business days from the date of Order 15; (2) ordered that privileged materials had to be logged within seven business days after Dr. Nene’s counsel received the results of the search; and (3) found that Dr. Nene’s proposed five search terms was not appropriate and ordered that the search be conducted using the search terms proposed by Dow.  Additionally, ALJ Pender limited the subpoena by imposing the Electronic Inspection Protocol in order to ensure the protection of Dr. Nene’s confidential and privileged information.  Accordingly, the motion was granted-in-part.

According to Order No. 16, Dow moved to compel Organik to make certain computers available for forensic inspection, copying, and analysis.  Specifically, Dow requested that its forensic experts be permitted to:  (1) Inspect Organik Kimya's network to determine whether the "0 Drive" documents that used to reside in the deleted file path can be recovered, and, if so, copy those files; (2) Inspect Organik Kimya's email exchange server to determine whether Dr. Nene's deleted emails can be recovered, and, if so, copy those files; (3) Inspect, copy and search the hard drives of laptops and/or computers used by Organik Kimya employees Sibel Altinok, Nur Basak Ergun Ersen, Fatma Arslan, Guillermo Perez, and Bradley McPhee since November 1,2007; (4) Inspect one of Organik Kimya's "dummy terminals" to determine whether files can be saved locally, and, if so, inspect, copy and search the local files from dummy terminals used by Organik Kimya employees Sibel Altinok, Nur Basak Ergun Ersen, and Fatma Arslan since November 1, 2007; and (5) Inspect, copy and search the "personal folders" of Organik Kimya employees Sibel Altinok, Nur Basak Ergun Ersen, and Fatma Arslan that reside on Organik Kimya's network.  

Dow argued that the requested inspection was narrowly-tailored to obtain highly relevant documents regarding Dow’s allegation of trade secret misappropriation and that Organik would not be burdened by the requested inspection because Dow agreed to bear the cost of the inspection and Organik’s privileged information would be protected.  Organik argued that the motion should be denied because: (1) it was beyond the scope of Dow’s discovery requests; (2) it was overly burdensome in view of the likely futility of the request; (3) it sought non-existent information; and (4) it was baseless and not reasonably calculated to lead to the discovery of admissible evidence.  Organik also argued that the time frames provided in the forensic inspection protocol were unreasonable and that the search parameters proposed by Dow were too broad.

ALJ Pender found that most of the discovery sought by Dow were directly relevant to Dow’s claims of trade secret misappropriation or were reasonably calculated to lead to the discovery of admissible evidence related to Dow’s claims of trade secret misappropriation.        

With respect to inspection protocol, ALJ Pender ordered that within four days of Order 16 Organik had to meet with the forensic experts to “discuss specifications and logistics” and within seven days of Order 16 had to provide its electronic assets for inspection.  ALJ Pender also ordered that the time period for reviewing materials for privileged was seven days and that Organik did not have to log privileged or work product information created on or after the date of the original Complaint in the investigation.  With respect to search parameters, ALJ Pender found that Dow’s proposed search protocol was reasonable.  Accordingly, ALJ Pender granted the motion in part.