By Eric Schweibenz
On January 20, 2011, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 20 (dated November 19, 2010) in Certain Inkjet Ink Cartridges With Printheads and Components Thereof (Inv. No. 337-TA-723).

In the Order, ALJ Rogers granted a motion filed by Complainants Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (collectively, “HP”) to compel Respondent Asia Pacific Microsystems, Inc. (“APM”) with respect to producing sample wafers of the type incorporated into the devices accused in this investigation.  According to the Order, although HP had criticized a large number of APM’s discovery responses, HP provided specific arguments only with respect to its request for sample wafers, and thus ALJ Rogers denied HP’s motion as to all other requests.

Although the public version of the Order is heavily redacted, ALJ Rogers addressed four arguments raised by APM in opposition to HP’s motion to compel.  First, APM appeared to argue that HP’s request was outside the proper scope of discovery, at least in part because another named respondent (MicroJet) had been held in default, and therefore MicroJet’s products would be subject to an exclusion order.  ALJ Rogers determined that APM’s argument was premature, given that several additional events would need to occur before MicroJet’s products could be subject to an exclusion order, and even if they were, HP was still permitted to seek discovery from APM concerning MicroJet’s products, since APM is a separately named party, and comparing wafers made by APM could assist in determining whether the accused devices are connected to APM, MicroJet or other entities.

Second, ALJ Rogers determined that APM could not simply contest HP’s allegation of importation and define this as a threshold issue for withholding discovery.  Instead, APM would need to challenge the importation allegation from HP’s complaint through a motion for sanctions, summary determination, or through proof at trial.

Third, ALJ Rogers determined that the existence of a third-party confidentiality agreement is not a sufficient basis to withhold discovery that is otherwise allowable, and that even if it were, APM had not met its burden in this instance.  ALJ Rogers further held that the Protective Order should address concerns APM or MicroJet may have regarding HP’s potential misuse of information derived from sample wafers.

Finally, ALJ Rogers determined that with respect to the cost of producing the sample wafers, APM had not demonstrated that it is unable to produce the requested samples without incurring undue burden or expense, and HP’s request does not warrant a departure from the normal rule that the responding party bears the cost of production.  Therefore, for all of the above reasons, ALJ Rogers ordered APM to provide samples of wafers that it produces related to an accused product, and APM would bear the cost of production.