By Eric Schweibenz
On September 20, 2013, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 37 (dated March 8, 2013) granting-in-part and denying-in-part complainant SI Group, Inc.’s (“SI Group”) motion to compel discovery from Respondents in Certain Rubber Resins and Processes for Manufacturing Same (Inv. No. 337-TA-849).

By way of background, this investigation is based on a May 21, 2012 complaint filed by SI Group alleging violation of Section 337 in the importation into the U.S. and sale of certain rubber resins made using misappropriated SI Group trade secrets.  See our June 22, 2012 post for more details on this investigation.

According to the order, SI Group filed a motion to compel Respondents to provide the depositions of two individuals and to provide answers and documents in response to numerous requests for production related to development and experimental work of particular products.  In particular, SI Group argued that Respondents have relied on development activity carried out by Mr. Qijun Pu, but have not made him available for depositions or provided documents concerning his work.  SI Group asserted that Respondents’ arguments, that Mr. Pu is generally unavailable as he is retired and in poor health, were called into question by other testimony.  SI Group also requested the re-deposition of Mr. Quanhai Yang together with related documents, and asserted that this witness refused to answer or was instructed not to answer questions related to SI Group’s allegations that Sino Legend copied SI Group’s process parameters for making particular resins.

Respondents opposed the motion to compel, and stated that Mr. Pu should not be compelled to testify in light of his age and health, noting that he has not worked for Respondents “regularly” for several months.  Respondents stated that any testimony to the contrary was mistranslated or misspoken, and, although Respondents acknowledged that Mr. Pu has relevant knowledge, asserted that any information he has is cumulative to other evidence SI Group obtained.  In relation to document production, Respondents argued that the requests are related to products that are outside the scope of the investigation or unrelated to the allegedly misappropriated trade secrets.

The Commission Investigative Staff (“OUII”) supported SI Group’s motion, and agreed that the deposition of Mr. Pu should be compelled, as well as the production of relevant and related documents in light of the broad scope of discovery and Respondents’ reliance on Mr. Pu’s developmental work.  OUII also stated that it was improper for Mr. Yang to refuse to answer questions related to particular products.

According to the Order, ALJ Rogers determined that Respondents must provide Mr. Pu for deposition within one week of the order, together with all related documents that were not yet produced.  Although Respondents provided some evidence of Mr. Pu’s illness, the ALJ determined that it should not preclude his deposition being taken, and compared it to case law where the proposed deponent was hospitalized, and thus unavailable.  As such, this portion of SI Group’s motion was granted.

ALJ Rogers determined that Respondents are not required to provide the deposition of Mr. Yang or respond to document requests related to products other than those specifically at issue in the investigation, dismissing SI Group’s arguments that making products with the same parameters may be probative of the misappropriation of trade secrets.  Therefore, this portion of SI Group’s motion was denied.

Since this order was issued, ALJ Rogers issued an initial determination (“ID”) finding violation of Section 337.  As summarized in our June 28, 2013 post, the ALJ determined that valid trade secrets were misappropriated and that SI Group showed that it had a valid domestic industry that was injured as a result of importation of resins made using the misappropriated trade secrets.  The International Trade Commission decided to review the ID.  See our September 12, 2013 post for details.