By Eric Schweibenz
On July 22, 2010, ALJ E. James Gildea issued the public version of Order 19 (dated June 28, 2010) in Certain Electronic Devices, Including Mobile Phones, Portable Music Players, and Computers (Inv. No. 337-TA-701).  In the Order, ALJ Gildea granted-in-part Respondent Apple, Inc.’s (“Apple”) motion to compel interrogatory responses, further production of documents, additional 30(b)(6) testimony, and identification of corporate designees of Complainants Nokia Corporation and Nokia, Inc. (collectively “Nokia”) on certain deposition topics.


With regard to Nokia’s interrogatory responses, several of Apple’s complaints were rendered moot by recent supplementation by Nokia, or denied because it appeared Nokia had fully responded with information under its custody or control.  However, with regard to Apple’s interrogatory requesting information on Nokia’s first manufacture, use, or offer for sale of products practicing the patents-in-suit, ALJ Gildea determined that Nokia’s responses were deficient for not identifying requested persons with knowledge of such information, and not providing the production numbers of documents when relying upon Rule 210.29(c) to specify records from which the interrogatory answers may be derived or ascertained.  ALJ Gildea ordered Nokia to produce such information, even though it appeared that Apple did not first meet and confer on Nokia’s response to this interrogatory.  ALJ Gildea similarly ordered Nokia to provide full responses to interrogatories regarding Nokia’s licensing activities, including production numbers of any documents relied upon pursuant to Rules 210.29(c).

With respect to interrogatories requesting claim charts on how Nokia’s products satisfy the technical prong of the domestic industry requirement, and requesting the bases for Nokia’s position that a domestic industry exists for its phones, Apple objected that Nokia relied upon incomplete information in its complaint.  Nokia responded that the information it provided was sufficient, and that Apple was not entitled to further information until responses to contention interrogatories were due.  ALJ Gildea determined that since the deadline for responding to such contention interrogatories had passed, Nokia should provide detailed and complete responses.

Apple also requested supplementation of an interrogatory on the first written description and first disclosure of each claimed invention.  Nokia provided the respective dates of the first written description and disclosure, but did not identify underlying documents or information in support of these dates on the grounds of attorney-client privilege and that this information was not relevant until Apple identifies invalidating prior art that would require Nokia to swear behind the priority dates of the patents-in-suit.  Apple argued that Nokia was using attorney-client privilege as both a “sword and shield,” and that Nokia waived the privilege by providing the dates of the first written description and disclosure.  ALJ Gildea first determined that contrary to Nokia’s allegations, “the dates of first written description and disclosure are relevant, because once Apple knows the earliest conception date of the patents at issue, it will know how far back it needs to go to locate prior art.”  Accordingly, ALJ Gildea ordered Nokia to provide a more complete response.  However, ALJ Gildea determined that Nokia did not waive its privilege over documents supporting the dates of first written description or disclosure, because the “only information Nokia has disclosed are dates, which are not privileged.”

As to interrogatories requesting detailed information on prices, dates of sale, and investments for products Nokia relies upon to satisfy the technical prong of the domestic industry requirement, ALJ Gildea found Nokia’s responses “wanting” and despite Nokia’s promises to produce business records, its responses remained incomplete due to an absence of production numbers disclosing where such documents could be found.  ALJ Gildea therefore ordered Nokia to provide more detailed and complete responses, including reference to production numbers where appropriate.

Apple also requested Nokia to supplement its response as to non-patent publications by the named inventors of the patents-in-suit.  ALJ Gildea determined that Nokia had produced patent-related publications by the named inventors, but that Nokia did not maintain non-patent related documents such as books or journal articles, and it could not be compelled to produce documents not in Nokia’s possession, custody, or control, and therefore denied Apple’s motion on this issue.

Document Requests

Apple’s request for Nokia to supplement technical documents for products on which Nokia relied upon to claim a domestic industry were determined by ALJ Gildea as substantially moot, in view of Nokia making source code for such products available for inspection, although ALJ Gildea ordered Nokia to produce any recently acquired documents relevant to this issue.

With respect to documents Nokia relied on for conception and reduction to practice, ALJ Gildea mirrored his analysis for the comparable interrogatory, determining that Nokia must produce “any non-privileged, responsive documents that would substantiate its disclosed dates of conception and reduction to practice for each of the patents-in-suit,” but that “Nokia has not waived its privilege to any of the underlying documents by disclosing the dates of conception and reduction to practice in its response to Apple's First Set of Requests for Production.”

ALJ Gildea further denied as moot Apple’s request for additional litigation documents concerning U.S. Patent No. 6,714,091 in district court and ITC proceedings against Qualcomm, given that Nokia produced all pleadings, and no depositions, discovery responses, expert reports, or document productions existed in those other proceedings.  ALJ Gildea similarly denied as moot Apple’s request for additional documents from named inventors relating to the subject matters of the patents-in-suit, since Nokia appeared to produce or agreed to produce all responsive documents that it could locate.

Although the parties’ arguments regarding the production of licenses relating to the patents-in-suit were heavily redacted, ALJ Gildea determined that sufficient time had passed such that Nokia could arrange to permit disclosure of its licenses and licensing activities relating to the patents-in-suit, and therefore ordered their production.

With respect to documents in support of the economic prong of the domestic industry, ALJ Gildea acknowledged that although Nokia apparently produced more that one million pages of documents regarding this issue, Nokia did not specifically identify how its production addressed the topics on which Apple currently demands supplementation.  ALJ Gildea therefore ordered Nokia, to the extent it did not already do so, to produce documents regarding sales data for its domestic products, R&D expense data, cost of production data for its domestic products, data on employment, expenditures for R&D for its domestic products, expenditures for testing its domestic products, and data showing the actual selling prices of its domestic products.

Additional 30(b)(6) Testimony and Identification of Corporate Designees

ALJ Gildea found Apple’s request for additional 30(b)(6) moot due to Nokia’s designation of an additional witness to testify on various technical issues relating to the patents-in-suit, and similarly found Apple’s request for corporate designees for various topics substantially moot through Nokia’s recent designations.  However, the parties continued to dispute the propriety of a deposition topic on the Nokia 6100, which Nokia asserted was irrelevant because it was not available until more than three years after the filing of U.S. Patent No. 6,518,957.  ALJ Gildea determined that “Apple provides no reason why the Nokia 6100 is relevant even though as the party seeking discovery it has the burden of so showing,” and he therefore denied Apple’s motion to compel Nokia to provide a corporate representative on that topic.