On March 20, 2009, ALJ Robert K. Rogers, Jr. issued the public version of his March 12, 2009 Order No. 12 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers granted-in-part and denied-in-part complainant Qimonda AG’s motion to compel respondent LSI Corporation to (1) identify information regarding its 100 best-selling products and (2) produce “critical processing and technical documents.”

In its motion, Qimonda asked ALJ Rogers to compel LSI to produce a complete list of its 100 best-selling semiconductor integrated circuits, a complete list of all downstream products containing any of these 100 integrated circuits, a complete list of all foundries producing any of these integrated circuits or downstream products, and an identification of which foundries produced which circuits and/or downstream products.

LSI argued that this request was arbitrary and overly broad and sought information that was not relevant because “such products are top-selling…does not mean that they infringe the [Qimonda] patents,” and Qimonda “is not entitled to discovery related to a randomly selected subset of LSI ICs simply because others have been accused.”

ALJ Rogers denied this part of Qimonda’s motion and held that “the request by Qimonda is arbitrary in that it chooses a group of products not by comparing them to the asserted patents, but by how well such products have sold.  The LSI products that are relevant to the investigation are the products that have been accused of infringement.  The 100 best-selling LSI products have not been shown to have any reasonable likelihood of a connection to Qimonda’s infringement allegations.”

In its motion, Qimonda also sought various LSI processing and technical documents.  Qimonda asserted that LSI had only produced some documents related to two particular foundries despite working with additional foundries to make its products.  Moreover, it argued that LSI had not produced all of the documents in its possession, custody or control related to the first two foundries.

LSI argued that since the additional foundries did not produce any of the allegedly infringing products, any documents related to those foundries were not relevant.  Additionally, it argued that it had already produced all of the relevant documents in its possession, custody, or control related to the first two foundries but that many documents were in the foundries’ possession and thus LSI could not produce them. 

ALJ Rogers found that LSI had no obligation to produce documents relating to the foundries that had not been producing any allegedly infringing products.  However, with respect to the two foundries that were producing allegedly infringing products, the ALJ found that while some documents were not in LSI’s possession, custody, or control and therefore did not need to be produced, other as-yet-unproduced documents were in fact in LSI’s possession, custody, or control – and these did need to be produced.