By Eric Schweibenz
On September 1, 2011, ALJ Theodore Essex issued Order No. 50 in Certain Semiconductor Chips and Products Containing Same (Inv. No. 337-TA-753).  In the Order, ALJ Essex granted-in-part a motion to compel filed by Respondents Broadcom and Mediatek (“Respondents”). 

The motion, filed on July 22, 2011, sought an order compelling Complainant Rambus to: (i) complete its production of prior litigation materials by a date certain; (ii) provide a comprehensive list of prior litigation documents withheld on the basis of third-party confidentiality; (iii) provide a list, identifying by production number, all prior litigation trial transcripts and exhibits; and (iv) provide a list, identifying by production number, all prior litigation deposition transcripts and exhibits.

Respondents alleged that based on Rambus’s document production, it was impossible to determine if they had produced all the requested documents.  Respondents also sought production of all prior litigation materials and to provide a list of all prior litigation transcripts and exhibits so that Respondents could determine what materials were related to the prior litigation.

Rambus argued that it was working diligently to produce documents and that certain materials could not be produced due to third-party confidentiality.  During the course of briefing, Rambus began a rolling production of certain documents.  As a result, Respondents narrowed their request to an order compelling Rambus to: (i) produce all remaining deposition exhibits listed as not yet produced, as well as any remaining unproduced prior litigation trial exhibits; (ii) produce a list that identifies the trial exhibits that correspond with the trial transcripts that Rambus has already listed in Exhibit 5 of its opposition; and (iii) provide a list of prior litigation materials being withheld on the basis of third-party confidentiality.

ALJ Essex granted the motion in part.  Regarding request 1, he found that Rambus had produced all the materials except for materials withheld due to third-party confidentiality with two different parties – Hynix and Micron.  ALJ Essex found there was nothing to compel regarding the Hynix materials as they had properly been withheld.  As for certain FTC exhibits, Rambus argued the FTC exhibits contained third-party confidential material.  ALJ Essex noted, however,  Rambus waited until after the close of discovery to contact Micron for permission to produce the materials.  Finding the delay unexplained and unacceptable, ALJ Essex permitted Rambus until September 5, 2011 to produce the FTC exhibits or provide a detailed statement to Respondents explaining why they can not produce the materials.

Rambus originally marked the prior litigation exhibits only by production number and then provided production number ranges for the exhibits.  Rambus argued they had no master list of exhibits.  ALJ Essex ordered Rambus to identify exhibits from the prior litigation by exhibit number.  ALJ Essex noted that if Rambus needed to identify its exhibits it would have no problem doing so.  Therefore, he ordered a list produced.

Finally, ALJ Essex ordered that Rambus provide a list of withheld trial exhibits.