09
Mar
By Eric Schweibenz
On March 4, 2011 ALJ E. James Gildea issued the public version of Order No. 22 (dated February 17, 2011) in Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software (337-TA-724).  The order denied Respondent Apple, Inc.’s (“Apple”) motion to compel.

According to the Order, Apple sought to compel Complainants S3 Graphics Co., Ltd and S3 Graphics, Inc. (collectively, “S3G”) to produce a description of the business of an unidentified company, and details about the relationship between the unidentified company and S3G’s other parent corporation, Via Technologies, Inc. (“Via”).  Apple also sought to compel S3G to supplement its response to an interrogatory seeking identification of all patents owned by S3G, including patents not asserted in the investigation.  Apple argued that this information was central to issues in the case including S3G’s alleged domestic industry.  Specifically, Apple argued that the unidentified company and Via were “foreign interests” “who are directing Complainants’ activities” and that the S3G entitites were “merely shell organizations that have not engaged in a domestic industry.”  S3G argued in opposition that the information sought by Apple was neither responsive to a timely discovery request nor relevant to the investigation.  The ALJ agreed with S3G, denying the motion.

Regarding the discovery related to the unidentified company, ALJ Gildea determined that the information Apple sought did not concern a legally relevant claim or defense and did not appear reasonably calculated to lead to the discovery of admissible evidence.  Specifically, the information was not relevant to domestic industry and even if Apple were to discover that the parent corporations to S3G were “foreign interests,” Apple had not shown that such evidence would negate any activity that would otherwise satisfy Section 337.  In addition, the ALJ stated that Apple had not proven that the information it sought to compel was timely requested.

With respect to the discovery related to S3G’s patent portfolio, the ALJ determined that S3G provided Apple enough information that Apple’s request was moot.  ALJ Gildea also noted that “Apple’s overall behavior belies its assertion that the requested discovery is ‘highly relevant.’”  Specifically, ALJ Gildea noted that Apple apparently believed that it had sufficient discovery on domestic industry to move for summary determination on that issue.  Likewise, the ALJ noted that Apple did not request that S3G’s summary determination motion on domestic industry be continued pending the outcome of its motion to compel, nor did it argue in its opposition that additional discovery would affect the outcome of S3G’s summary determination motion.