On October 13, 2010, ALJ Robert K. Rogers, Jr. issued Order No. 10 denying Complainant Spansion LLC’s (“Spansion”) motion to amend the protective order in Certain Flash Memory Chips and Products Containing The Same (Inv. No. 337-TA-735).

According to the Order, Spansion sought to amend the protective order to give one designated in-house counsel from each party who is not involved in competitive decision making access to confidential business information, relying on the Federal Circuit’s recent ruling in In re Deutsche Bank Trust Co., 605 F.3d 1373 (Fed. Cir. 2010).  Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung International, Inc, Samsung Semiconductor, Inc., Samsung Telecommunications America, LLC, Apple, Inc., Nokia Corp., Nokia Inc., PNY Technologies, Inc., Research In Motion Ltd., Research in Motion Corporation, Transcend Information Inc., Transcend Information Inc. (US), and Transcend Information Inc. (Shanghai Factory) (collectively “Respondents”) and the Commission Investigative Staff (“OUII”) opposed the motion, arguing that Deutsche Bank does not control and that the Commission’s traditional three-part balancing test for determining treatment of confidential business information articulated in Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471 (Fed. Cir. 1986) weighs in favor of the Commission’s longstanding practice of preventing in-house counsel from viewing confidential business information.

ALJ Rogers agreed with Respondents and the OUII that Deutsche Bank, which dealt with the issue of whether to impose a patent prosecution bar on outside litigation counsel involved in district court litigation, was inapposite and did not mandate granting in-house counsel access to confidential business information.  ALJ Rogers also held that Spansion’s motion should be decided based on the above-mentioned three-part test, which includes the following factors:  (1) the party’s need for the confidential information sought in order to adequately prepare its case, (2) the harm that disclosure would cause the party submitting the information, and (3) the forum’s interest in maintaining the confidentiality of the information sought.  Regarding the first factor, ALJ Rogers found that Spansion is represented by competent outside counsel and that it is unnecessary for Spansion’s in-house counsel to have access to confidential business information.  With respect to the second factor, ALJ Rogers found that it would be harmful to Respondents if Spansion in-house counsel gains access to Respondents’ confidential business information, particularly since the Samsung Respondents compete directly with Spansion in the flash memory marketplace.  ALJ Rogers stated that Spansion failed to address the third factor, noting also that prior cases make clear that the Commission has a strong interest in maintaining the confidentiality of parties’ competitive business information.