By Eric Schweibenz
On November 9, 2011, ALJ Thomas B. Pender issued Order Nos. 16 and 17 granting-in-part Complainant OSRAM AG’s (“OSRAM”) motions to compel Respondents to supplement interrogatory responses and produce documents in Certain Light-Emitting Diodes and Products Containing the Same (Inv. No. 337-TA-785).

According to Order No. 16, OSRAM sought an order compelling Respondents LG Electronics, Inc., LG Innotek Co., Ltd., LG Electronics U.S.A., Inc., and LG Innotek U.S.A., Inc. (collectively, “LG”) to supplement certain interrogatory responses, produce technical documents identified by OSRAM, and respond to certain document requests because LG “has neither provided substantive responses to OSRAM’s interrogatories seeking basic information, e.g., sales, distribution, and importation, nor produced the technical documents central to OSRAM’s infringement claims.”  LG opposed the motion, asserting that the breadth of OSRAM’s discovery requests are “staggering” (i.e., 120 claims from seven patents), that LG has already promised to provide responses, that LG has produced over 40,000 pages of documents to date, that OSRAM has not explained what discovery requests are deficient, and that OSRAM served overly broad requests, or requests not reasonably calculated to lead to the discovery of relevant evidence.  Having reviewed the parties’ motion papers, ALJ Pender ordered OSRAM to serve LG with “a simple, but thoughtful analysis, by interrogatory and document request, explaining why LG’s responses-to-date are deficient/absent and explaining what it is looking for,” and also to explain why what OSRAM is looking for will lead to the discovery of admissible evidence.  The ALJ ordered LG to specifically respond to OSRAM’s analysis and/or respond fully to OSRAM’s discovery requests, and to diligently provide supplemental discovery responses as required by the Commission’s rules.  With respect to OSRAM’s Interrogatory No. 20, ALJ Pender determined that LG need not comply “unless and until the unlikely event OSRAM can explain to my satisfaction how information regarding the internal allocation of income and expense for LED Products sold by LG can lead to the discovery of admissible evidence.”

According to Order No. 17, OSRAM sought an order compelling Respondents Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, “Samsung”) to supplement certain interrogatory responses and produce technical documents concerning the accused Samsung products.  OSRAM argued that Samsung refused to comply with OSRAM’s discovery requests by asserting that the definitions associated with OSRAM’s interrogatories are overly broad, and by unilaterally interpreting the scope of the asserted claims to block discovery as to Samsung products.  Samsung countered that OSRAM wants to “take discovery on every LED ‘under the sun’” given the ubiquitous nature of LEDs and consumer electronics products.  ALJ Pender agreed with OSRAM, noting that the party promulgating a discovery request has the right to define its terms (provided the request is within the scope of the investigation and reasonably calculated to lead to the discovery of admissible evidence), and that a party who believes that certain matters are outside the scope of discovery may move for a protective order.  According to the Order, Samsung never sought a protective order, opting instead to practice “self-help” while providing only unsubstantiated assertions that OSRAM’s discovery requests are overly broad.  The ALJ also observed that the ubiquitous nature of LEDs appears to be precisely OSRAM’s point in the investigation, i.e., that Samsung has “massively infringed” through a wide variety of products.  ALJ Pender agreed with Samsung, however, that information concerning products supplied by licensed suppliers is not reasonably calculated to lead to the discovery of admissible evidence (because there can be no infringement as to products sold by Samsung that are licensed by OSRAM), and ordered that Samsung would not be required to identify such products unless OSRAM can explain why such information is relevant (e.g., if OSRAM can show that specific licensees are being used as a conduit by unlicensed suppliers of items covered by the asserted claims).