By Eric Schweibenz
On November 19, 2012, ALJ Theodore R. Essex issued Order No. 12 granting-in-part Complainant FlashPoint Technology, Inc.’s (“FlashPoint”) motion for a protective order to limit the discovery of electronically stored information in Certain Electronic Imaging Devices (Inv. No. 337-TA-850).

By way of background, the investigation is based on a complaint filed by FlashPoint alleging violation of Section 337 in the importation into the U.S. and sale of certain electronic imaging devices that infringe one or more claims of U.S. Patent Nos. 6,400,471, 6,222,538, 6,504,575, and 6,223,190.  See our May 25, 2012 post for more details.

According to the Order, FlashPoint filed a motion to limit the number of custodians from which Respondents can request emails to 15.  In opposition, Respondent HTC Corporation and HTC America, Inc. (“HTC”) argued that the proposed limit on email discovery would severely impact its ability to prove its on-sale bar and implied license defenses.  In particular, HTC noted that it had already identified more than 15 custodians relevant to its defenses.  Many of these individuals were alleged to have knowledge of a FlashPoint patent previously invalidated on the basis of an on-sale bar and directed to the same general technology underlying the asserted patents.  HTC argued that it would be prejudiced by having to exclude any custodian having knowledge of the events leading to the previous on-sale bar.

Having considered the parties’ arguments, ALJ Essex determined to grant-in-part FlashPoint’s motion.  Specifically, the ALJ found that HTC’s relatedness theory was too attenuated ­merely relying on relatedness of general technology and not relatedness of claimed subject matter ­to sidestep the Commission’s recent directive to limit electronic discovery.  See Notice of Proposed Rulemaking, 77 Fed. Reg. 60952, 60953 (Oct. 5, 2012) (explaining the need to consider limitations on electronic discovery due to its disproportionately high cost and limited value); see also our October 6, 2012 post for more details on the proposed rules.  Further, the ALJ reasoned that discovery from 15 custodians would be sufficient for HTC to either find the information it suspects, or find enough information to support a good faith request for additional discovery.