By Eric Schweibenz
On May 2, 2011, Chief ALJ Paul J. Luckern issued public versions of Orders Nos. 10, 25, 28, and 30 in Certain Electronic Devices With Multi-Touch Enabled Touchpads and Touchscreens (Inv. No. 337-TA-714).

In Order No. 10 (dated June 23, 2010), ALJ Luckern ruled that the stipulation filed by Respondent Apple Inc.’s (“Apple”) on June 15, 2010 would be in effect for the investigation.  According to the Order, this stipulation indicated that at least one unit of the iPhone 3G, iPhone 3GS, iPad, iPod Touch, MacBook, MacBook Air, MacBook Pro, Magic Mouse, and iPhone 4 products (collectively, “the accused products”) had been imported or sold after importation into the U.S. by Apple, or will be imported or sold after importation by Apple as of the time of the evidentiary hearing in the investigation.

In Order No. 25 (dated January 13, 2011), ALJ Luckern denied Apple’s motion for summary determination of noninfringement of U.S. Patent No. 5,825,352 (the “patent at issue”).  Apple’s motion asserted that none of the products accused in the investigation “identif[ies] the lowest value in the finger profile taken on said straight line that occurs after the first peak value, and before another peak value is identified,” which is a requirement of each of the asserted claims under the ALJ’s claim construction.  Apple argued that the accused products did not infringe because although Complainant Elan Microelectronics Corp. (“Elan”) had access to Apple’s source code, it did not cite to the source code or to any evidence reflecting the operation of the accused products.  Rather, Apple argued, Elan only presented unsupported assertions that under a particular hypothetical, Apple’s devices would infringe.

Elan opposed the motion, asserting that the accused products “clearly perform the function of identifying the minima” as construed by the ALJ.  The Commission Investigative Staff (“OUII”) argued that Elan’s expert acknowledged but attempted to gloss over the missing claim step.

ALJ Luckern determined that Elan’s expert’s declaration did in fact make reference to Apple’s source code and denied Apple’s motion.

In Order No. 28 (dated January 31, 2011), ALJ Luckern requested that the parties and the OUII file written submissions answering various questions relating to claim construction and infringement of the asserted patents.  ALJ Luckern posed five questions to Elan and four questions to Apple.  The ALJ asked that each party respond to the opposing parties submissions and asked the OUII to respond to all of the private parties’ submissions.  The ALJ also set due dates for the required submissions and ordered that the private parties meet and confer and prepare a joint stipulation regarding the patent and the technology at issue in the investigation.

In Order No. 30 (dated February 9, 2011), ALJ Luckern ruled on Apple’s motion to exclude Elan’s attorney billing records, or alternatively compel the production of documents and testimony regarding Elan’s communications with its counsel.  According to the Order, Apple argued that Elan waived attorney-client privilege by producing, as part of its domestic industry case, partially redacted copies of billing records from its outside counsel.  In view of this production, Apple contended it was entitled to discovery of all of Elan’s communications with its attorneys in order to test the veracity and reasonableness of the redactions, and therefore test Elan’s litigation-expense domestic industry case.

Elan opposed the motion, arguing that attorney invoices and billing records are not inherently protected by attorney-client privilege or work product, and thus it did not waive privilege by producing redacted copies of such records.  Elan contended that the invoices were produced merely to document the cost of its licensing activities and that the existence of its licensing activities would be demonstrated by non-privileged testimony and documents.  OUII supported Apple’s motion in-part, arguing Elan waived privilege in the work performed by those attorneys.

ALJ Luckern determined that it was Elan’s burden to show that the invoices contained privileged information and that Elan had not done so.  Thus, the ALJ determined that the redacted billing records produced were not privileged and their disclosure did not constitute a waiver of privilege.  However, the ALJ ordered Elan to produce to Apple non-redacted copies of the invoices in order to allow Apple to pursue its theory that not all the work listed on the invoices should be attributed to domestic industry.