By Eric Schweibenz
On February 29, 2016, ALJ Dee Lord issued Order No. 10 in Certain Automated Teller Machines, ATM Modules, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-972).

By way of background, this investigation is based on an October 19, 2015 complaint filed by Diebold, Inc. and Diebold Self-Service Systems (collectively, “Diebold”) alleging violation of Section 337 in the importation into the U.S. and sale of certain automated teller machines, ATM modules, components thereof, and products containing same that infringe one or more claims of U.S. Patent Nos. 6,082,616; 7,121,461; 7,229,010; 7,249,761; 7,314,163; and 7,832,631.  See our October 20, 2015 and November 19, 2015 posts for more details on the complaint and Notice of Investigation, respectively.

According to Order No. 10, Diebold filed a motion to compel Respondents Nautilus Hyosung Inc., Nautilus Hyosung America Inc., and HS Global, Inc. (collectively, “Nautilus”) to provide a new witness to testify regarding certain corporate deposition topics after Nautilus’s original witness was unable to answer questions on two topics.  Nautilus did not commit to providing a witness but sought further discussion on the issue and thus Diebold filed the instant motion.  After the motion was filed, Nautilus offered several deposition dates for a witness to testify on the disputed topics.  Despite the offer, Diebold maintained that “an order compelling discovery is necessary to allow Diebold to pursue sanctions if Respondents fail to produce a satisfactory witness.”

ALJ Lord denied Diebold’s motion as moot and further noted that Diebold’s sanctions argument was unavailing.  Specifically, ALJ Lord held that “[s]anctions under Commission Rule 210.33 are intended for parties who refuse to cooperate in discovery, [and are] not to be used as a threat when parties disagree regarding the adequacy of discovery...[i]f Diebold believes that [Nautilus is] making representations in bad faith, Commission Rule 210.4(d) allows parties to seek sanctions if filings are made for an improper purpose.”