On March 12, 2012 ALJ Thomas B. Pender issued Order No. 10 in Certain Electronic Devices With Communication Capabilities, Components Thereof, and Related Software (Inv. No. 337-TA-808).  In the Order, ALJ Pender denied non-party Openwave Systems, Inc.’s motion to quash subpoenas duces tecum and ad testificandum or to impose costs on Respondent Apple Inc., but granted Openwave’s request to limit the subpoenas’ scope.

Openwave argued that (1) the subpoenas imposed an unreasonable burden on them, (2) the subpoenas ignored Ground Rule 2.2 which requires subpoenas to accommodate the time for filing a motion to quash, and (3) costs for responding should be shifted to Apple because the requests are unduly burdensome and complex.  Apple and the Commission Investigative Staff opposed the motion.

Ground Rule 2.2, cited by Openwave as a reason to quash the subpoena, also requires all motions to contain a certification that the movant made a reasonable good-faith effort to resolve the issue.  ALJ Pender found that Openwave’s failure to comply with the ground rule justified denying the motion to quash, but also would deny the motion on the merits.  He found that Openwave failed to show that the discovery was irrelevant to the investigation.  Openwave was the original assignee to three patents at issue in the investigation and thus the requested discovery was relevant.  Second, the ALJ found Openwave failed to show that Apple did not need the discovery.  Openwave argued Apple failed to demonstrate that it needed the requested discovery, but it was Openwave’s burden to show the discovery was not needed and it produced no evidence to satisfy its burden.  Finally, Openwave failed to show the requests were burdensome.  Openwave argued the documents were inaccessible and traveling to the deposition would be costly.  The inaccessibility argument was based solely on the age of the documents and Openwave failed to provide any evidence that the documents were actually inaccessible.  As for travel costs, the subpoena offered to hold the deposition at an agreed upon place.

ALJ Pender also found Openwave failed to support its argument for cost-shifting.  Specifically, Openwave failed to provide any evidence that the documents are difficult or expensive to obtain.

Openwave’s motion to limit the subpoena found a more receptive audience.  More particularly, the subpoena requested documents relating to subject matter “described or claimed” in certain of the patents-in-suit.  Openwave argued this would require claim construction on their part in order to comply.  ALJ Pender agreed and limited the requests to the “the subject matter claimed” in certain of the patents-in-suit.