By Eric Schweibenz
On March 1, 2011, ALJ Robert K. Rogers, Jr. issued the public version of Order Nos. 16 and 17 (dated January 31, 2011) denying Respondent Samsung Electronics Co., Ltd’s (“Samsung”) motion to amend the protective order and granting Complainant Spansion, LLC’s (“Spansion”) motion to compel discovery, respectively, in Certain Flash Memory Chips and Products Containing Same (Inv. No. 337-TA-735).

According to Order 16, Samsung sought to amend the protective order to provide additional protection for electronic files generated using a tool called the Graphic Database System (“GDS”), arguing that the GDS files contain a level of detail regarding the design and implementation of Samsung’s accused flash memory products beyond what can be ascertained from other documents produced in the investigation, and that a competing semiconductor manufacturer could replicate Samsung’s flash memory devices with precision using only Samsung’s GDS files.  Spansion opposed the motion, asserting that (1) Samsung unnecessarily delayed producing such files, (2) the additional protections are unnecessary and unduly burdensome, and (3) in district court litigation between the two parties, Samsung opposed a request to provide heightened protection for similar documents.  The Commission Investigative Staff also opposed the motion, arguing that the GDS files are not the type of documents generally afforded heightened protection, and that the existing protective order is adequate.  ALJ Rogers found that Samsung failed to demonstrate good cause to amend the protective order by not showing that the standard protective order was inadequate, observing that (1) this was the third attempt by a party to amend the protective order in this investigation, (2) Samsung did not raise the issue until after the parties’ joint motion to amend the protective order was filed and granted, and (3) the district court litigation did not involve GDS files and was therefore irrelevant.

According to Order 17, Spansion moved to compel Samsung to produce certain chip samples, geometric design rule (“GDR”) files, and GDS files for 56 different chip models accused of infringement.  Samsung produced samples of only 30 of the requested chip models, no GDS files and “apparently one GDR file.”  Samsung opposed the motion, arguing that (1) it agreed to produce the available discovery but needed more time to do so, (2) Spansion did not specifically request any of the materials disputed in the motion until December 2010, (3) the 26 chip samples it has not produced are no longer stocked or are only available on expensive full wafers, (4) Spansion agreed to forego the 26 unavailable chip samples in lieu of 12 alternate chip models, and (5) it will agree to produce GDS files if the protective order is amended.  ALJ Rogers granted Spansion’s motion, rejecting Samsung’s contention that Spansion never specifically requested any of the information until December 2010 and finding that Samsung had been on notice since September 2010 that it had to produce the disputed materials.  The ALJ also noted that Spansion would be satisfied by the production of alternate chip models in lieu of the unavailable models, and therefore ordered them promptly produced by Samsung.