By Eric Schweibenz
On August 12, 2011, ALJ Theodore R. Essex issued the public version of Order No. 5 (dated July 7, 2011) in Certain Handheld Electronic Computing Devices, Related Software, And Components Thereof (Inv. No. 337-TA-769).  In the Order, ALJ Essex granted-in-part and denied-in-part Complainant Microsoft Corporation’s (“Microsoft”) motion to declassify the names and roles of particular entities designated as confidential by Respondents Barnes & Noble, Inc. and barnesandnoble.com (collectively, “Barnes & Noble”) and requested a shortened response time.

By way of background, Microsoft initiated this investigation by filing a complaint alleging that Respondents Barnes & Noble; Hon Hai Precision Industry Co., Ltd. (“Hon Hai”); Foxconn Electronics, Inc., Foxconn Precision Component (Shenzhen) Co. Ltd., Foxconn International Holdings Ltd. (collectively, “Foxconn”); and Inventec Corporation (“Inventec”) violated Section 337 by importing into the U.S. and selling certain handheld electronic computing devices (including the Nook and Nook Color), related software, and components thereof that infringe one or more claims of U.S. Patent Nos. 5,778,372, 5,889,522, 6,339,780, 6,891,551, and 6,957,233.

According to the Order, Microsoft argued that Barnes & Noble had improperly designated the names and roles of Amtek, Inc. (“Amtek”), Pegatron Corp. (“Pegatron”), and Maintek Computer Co. Ltd. (“Maintek”) as Confidential Business Information (“CBI”), and sought to have information regarding those names and roles declassified.  Specifically Microsoft requested that the ALJ declassify information relating to the identity of the entities that manufacture the Nook, the identity of the entities that sell the Nook in the US, the identity of the entities that manufacture the Nook Color, and the identity of the entities that sell the Nook Color in the US.  Microsoft argued that this information was necessary in order for Microsoft to make an informed decision about naming Amtek, Pegatron, and Maintek as respondents, and to obtain complete relief in the investigation.  Barnes & Noble opposed the motion arguing that its business relationships with Amtek, Pegatron, and Maintek are commercially valuable, and that given Microsoft’s pattern of anticompetitive conduct in the marketplace, disclosure of these business relationships would be harmful.  Barnes & Noble suggested that because these entities might need to be made public to provide a remedy, they could be added confidentially as respondents, with their identities disclosed only if necessary to provide remedy.  The Commission Investigative Staff (OUII) argued that the identities of Amtek, Pegatron, and Maintek did not meet the criteria for CBI, but that the business relationships between Barnes & Noble and those entities did.  Thus, it asserted that those relationships should not be declassified.

As to Amtek, Pegatron, and Maintek’s identities, ALJ Essex determined it would be inappropriate to treat these identities as confidential, especially when such treatment could frustrate the ITC’s ability to grant effective relief.  As to the business relationships between Barnes & Noble and Amtek, Pegatron, and Maintek, however, the ALJ determined that these relationships should be maintained as CBI, ruling that all public pleadings and papers be drafted so as not to reveal such relationships.