On December 22, 2011, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 9 (dated November 2, 2011) in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions (Inv. No. 337-TA-786) granting-in-part and denying-in-part respondent Funai Electric Co. Ltd.’s and Funai Corp., Inc.’s (“Funai”) motion to compel responses to Interrogatory Nos. 1, 5, and 6.

Funai previously filed a motion for summary determination, alleging that complainant Freescale Semiconductor, Inc.’s (“Freescale”) allegations were barred under the doctrines of issue preclusion and bar based on related Investigation No. 337-TA-709 (“Integrated Circuits I”).  Freescale successfully opposed, alleging there were disputed facts as to whether the claims are the same as those decided in Integrated Circuits I, pointing to paragraph 56 of the complaint.  Soon after, Funai issued its First Set of Interrogatories (1-6) to Freescale.  Interrogatory No. 1 requested the factual basis for paragraph 56 of the complaint, and Interrogatories 5 and 6 requested information regarding Freescale’s pre-filing investigation.  Freescale served its responses to Funai’s First Set of Interrogatories on September 9, 2011 providing the names of those involved in the pre-filing investigation, stating that investigation continues in order to confirm its factual basis, and claiming that all other information is protected by attorney-client privilege and/or the work product doctrine.

According to the Order, Funai filed a motion to compel Freescale to provide full and complete responses to Funai’s Interrogatory Nos. 1, 5, and 6.  Funai argued that Freescale failed to provide full and complete answers because Freescale waived any attorney-client privilege or work product immunity related to paragraph 56 of the complaint by relying on the statements in this paragraph in support of its opposition to Funai’s motion for summary determination.  Funai argued “that Freescale may not use the allegations in the complaint offensively as a ‘sword’ to defeat summary determination, and then use attorney client privilege defensively as a ‘shield’ to defeat Funai’s discovery into what support Freescale possesses for those allegations.”  The Commission Investigative Staff filed a motion agreeing with Funai for the reasons set forth therein.

Freescale opposed the motion, arguing that the motion violated Ground Rule 4.10.2 and the parties’ agreement regarding privileged information in that it sought identification of documents that would not appear on a privilege log.  Freescale maintained that it did not waive privilege on its pre-filing activities by referencing paragraph 56 in its opposition to summary determination because paragraph 56 does not disclose privileged information, and thus the implied waiver doctrine cannot apply.  Freescale also argued that “Funai has demonstrated no substantial need for the information it seeks that outweighs Freescale’s privilege protections.”  Lastly, Freescale asserted that the motion should be denied “because it improperly seeks to advance an ulterior motive unrelated to the merits of the investigation--sanctions against Freescale for instituting this investigation.”

ALJ Rogers commenced his analysis by laying out two principles:  (i) “factual information, as a general rule, is not subject to the protections of the attorney client privilege or work product immunity, and therefore is not privileged” and (ii) “if a party asserts a claim that in fairness requires examination of protected communications…he may waive the privilege if he makes actual assertions the truth of which can only be assessed by examination of the privileged communication.”  With that background, ALJ Rogers determined that “Funai may properly seek information concerning the facts surrounding Freescale’s statement in paragraph 56 of the complaint and its pre-filing investigation without crossing the line into the attorney-client privilege or work product doctrine” and that while Interrogatory No. 1 seeks only factual information, the scope of Interrogatory Nos. 5 and 6 go beyond the facts and seek work product information.  ALJ Rogers also held that “Funai fails to identify facts to support a finding of waiver.”  As such, ALJ Rogers ordered Freescale to “supplement its responses to Interrogatory Nos. 1, 5, and 6 to provide the factual information sought by these interrogatories” but denied the motion to compel production of any information protected by attorney-client privilege or the work product doctrine because these immunities were not waived.