By Eric Schweibenz
On March 10, 2011, ALJ Charles E. Bullock issued the public version of Order No. 34 (dated February 17, 2011) and Order No. 36 (dated March 1, 2011) in Certain Portable Electronic Devices and Related Software (Inv. No. 337-TA-721).

According to Order 34, Complainant HTC Corp. (“HTC”) moved to compel Respondent Apple, Inc. (“Apple”) to produce an end-user customer list for each of the accused Apple products (i.e., the iPhone, iPod Touch and iPad), asserting that Apple refused to identify end-user customers in response to HTC’s interrogatories despite HTC’s numerous attempts to narrow the scope of such discovery, which HTC claims is relevant to its indirect infringement allegations.  Apple and the Commission Investigative Staff (“OUII”) argued in opposition that HTC’s interrogatories requesting identification of each Apple customer in the U.S. that received an accused product are not only overly broad and unduly burdensome, but also raise privacy concerns, and that HTC should be able to identify domestic users without burdening Apple given the ubiquitous nature of the accused products.  ALJ Bullock agreed with Apple and the OUII and denied HTC’s motion.

According to Order 36, Apple sought an order compelling HTC to produce documents and testimony relating to an HTC product that allegedly constituted prior art.  Apple conceded that HTC produced some relevant documents regarding the product in question, but did not produce other documents “relating to either the technical operation and function of the product, or information relating to sales, offers for sale, public demonstrations, use and marketing of the product in the United States.”  Apple also argued that HTC promised to provide a deposition witness on these topics, but withdrew its promise after Apple’s counsel had already travelled to Taiwan for the deposition.  HTC responded that: (1) it produced all relevant documents in its possession, custody or control; (2) any further response would be attorney work product because HTC’s counsel would have to undertake a legal analysis to determine with HTC products fell within the asserted patent claims since Apple’s document requests are phrased in terms of products “covered” by the claims; (3) HTC withdrew its agreement to produce a deposition witness on the aforementioned topics after deciding that Apple’s deposition notice did not cover them, and that Apple suffered no prejudice as a result; and (4) the product in question is not prior art as a matter of law.  The OUII took no position on Apple’s motion.  ALJ Bullock agreed with HTC that Apple’s document requests and deposition topics were not artfully phrased, but nevertheless found that Apple timely and sufficiently narrowed its document requests, and that HTC produced discovery in response thereto, indicating that it understood the scope of Apple’s refined requests.  The ALJ also found that information concerning the operation and sale of HTC’s product were properly within Apple’s document requests, and ordered HTC to produce all documents in its control relating to the use, shipment, sale, offer for sale, or marketing thereof.  However, ALJ Bullock denied Apple’s motion insofar as HTC already produced technical documents describing the design and operation of its product, and HTC’s counsel stated categorically that there is “nothing else to produce.”  As to deposition testimony, the ALJ agreed with Apple and ordered HTC to produce a witness or witnesses in California for seven hours of testimony at HTC’s expense.  Finally, ALJ Bullock noted that HTC’s argument that its product is not prior art is not a sufficient reason to resist discovery.