On April 16, 2009, ALJ Carl C. Charneski issued the public version of Order No. 48 (dated March 11, 2009) in Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same (337-TA-648).  In the Order, ALJ Charneski denied Complainants LSI Corporation’s and Agere Systems Inc.’s (“LSI”) motion for reconsideration of a ruling he made during a telephonic conference that a deposition witness appearing on behalf of respondent Cypress Semiconductor Corp. (“Cypress”) need not answer questions with respect to claim 4 of U.S. Patent No. 5,227,335 (the ‘335 patent”) since only claim 1 of the ‘335 patent was asserted against Cypress.  ALJ Charneski also denied LSI’s alternative request seeking leave for interlocutory review of the ruling.

By way of background, during a deposition, Cypress’ counsel instructed a Cypress engineer not to answer a question on the basis that the question only related to possible infringement of claim 4 of the ‘335 patent.  While claim 4 was asserted against other respondents, only claim 1 had been asserted against Cypress.  In response to Cypress’ counsel’s instruction, the parties contacted ALJ Charneski for a ruling as to whether Cypress’ counsel’s objection to the question was proper.  In addition to ruling that the objection was proper, ALJ Charneski went on to rule that questions regarding claim 4 were not permissible as to Cypress or to any other respondent that has not been asserted to have infringed claim 4.

In LSI’s motion, it argued that discovery regarding unasserted claim 4 was proper under Commission Rule 210.27(b), which provides “a party may obtain discovery regarding any matter not privileged, that is relevant to,” inter alia “[t]he claim or defense of the party seeking discovery or to the claim or defense of any other party.”

In denying LSI’s motion, ALJ Charneski found that “LSI’s request for discovery from Cypress fails to satisfy this fundamental, threshold rule [210.27(b)] setting forth the ‘scope’ of discovery.”  ALJ Charneski explained that under Rule 210.27(b), LSI may obtain discovery relevant to a “claim” that it asserts, but that since LSI did not assert claim 4 against Cypress, discovery as to claim 4 is beyond the scope of allowable discovery.  Regarding the “any other party” provision of Rule 210.27(b), ALJ Charneski ruled that this language “is not broad enough to cover the circumstances of this discovery dispute,” even though claim 4 was asserted against 5 of the 21 respondents in this investigation.

In its motion, LSI argued that under Rule 210.28(d), rather than instructing its witness not to answer questions regarding claim 4, Cypress’ counsel should have made an objection, and permit the deposition to proceed.  In response to this argument, ALJ Charneski stated that Rule 210.28(d) “does not prohibit a judge from ruling upon a specific deposition question, or line of questioning, to determine whether it is relevant or otherwise proper.”  Further, ALJ Charneski cited to Ground Rule 2(w), which provides for the parties to contact the ALJ by telephone when a witness testifying at a deposition is instructed not to answer, and the question is not withdrawn.  ALJ Charneski explained that the telephonic conference was not merely to settle the dispute regarding Cypress’ counsel’s objection, but also “to make a substantive ruling on the line of questioning at issue,” which “is consistent with the Ground Rules.”

Regarding LSI’s alternative request to seek interlocutory review, ALJ Charneski explained that under Rule 210.24(b)(1), for such leave to be granted, the ALJ would have to file a determination “in writing, with justification in support thereof, that the ruling involves a controlling question of law or policy as to which there is substantial ground for difference of opinion, and that either an immediate ruling may materially advance the ultimate completion of the investigation or subsequent review will be an inadequate remedy.”  ALJ Charneski then denied LSI’s request since it had not been shown how he could justify an appeal based on Rules 210.27(b) and 210.28(d), or “how there could be any difference of opinion concerning the need to advance this investigation in order to meet its modified procedural deadlines and extended target date.”