On April 13, 2009, the public version of Order No. 14 (which was issued by Chief ALJ Paul J. Luckern on February 27, 2009) was made available in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern denied third-party James D. Richards III’s motion for sanctions and for a new protective order, and denied his motion to quash a subpoena duces tecum and ad testificandum, ordering Richards to comply with the subpoena.

According to the 17-page order, Richards moved for sanctions against respondents Nintendo Co., Ltd. and Nintendo of America Inc. (“Nintendo”) because Nintendo violated the protective order by disclosing Richards’ confidential trade secrets by including information obtained from its expert witness, Donald Odell, and by retaining Odell as an expert.  Odell is the named inventor on a patent that Nintendo asserted as prior art.  Odell was formerly employed at Selectech, Inc. under the supervision of Richards.  Richards also requested removal of two Nintendo attorneys for their disclosure of this supposed confidential business information, which included customer identities.

ALJ Luckern denied the motion for sanctions, finding that Richards did not maintain the customer identities as confidential.  ALJ Luckern noted that the documents and information sought related to technology that is 15-20 years old and that the information represents the efforts of a company, Selectech, that filed for bankruptcy and stopped operating over 10 years ago.  Accordingly, he found that Nintendo was not precluded by the protective order from disclosing certain information obtained from Odell.

According to the order, Richards also proposed a new protective order which sought to broaden the definition of confidential business information and to require that any party seeking to obtain confidential business information from Richards to post a bond in the amount of $1 million.  ALJ Luckern denied this portion of Richards’ motion.

Richards also moved to quash the subpoena because it was unduly burdensome and it would be “exceedingly difficult” and “unduly expensive” to produce documents and travel from Vermont to Washington, D.C. for a deposition.  Richards also contested service.  ALJ Luckern weighed the factors for determining whether to quash a subpoena as set forth in Certain Probe Card Assemblies, Components Thereof and Certain Tested DRAM and NAND Flash Memory Devices and Prods. Containing Same (337-TA-621) and concluded that Richards failed to meet his burden to quash the subpoena.  ALJ Luckern concluded that the information was not publicly available and that the respondents showed a need for the information since he found it may relate to their invalidity defenses.  He noted that respondents offered to compensate Richards for his time and costs, and offered to travel to Vermont to obtain responsive documents and depose Richards there, which alleviated any potential hardship to Richards.  ALJ Luckern also found that the subpoena had been effectively served.  Richards was ordered to respond to the discovery requests and appear for deposition.