By Eric Schweibenz
On April 10, 2014, ALJ E. James Gildea issued the public version of Order No. 18 (dated March 6, 2014) granting Complainants’ Motion to Compel Production of Documents in Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof (Inv. No. 337-TA-879).

By way of background, this advisory opinion proceeding was initiated by Respondents Apex Medical Corp. and Apex Medical USA Corp. (collectively, “Apex”).  Apex sought an advisory opinion in order to confirm that their redesigned sleep-disordered breathing treatment systems are not covered by the consent order which they previously entered into.  See our December 16, 2013 post for more details on the ITC’s decision to institute this advisory opinion proceeding.    

According to the Order, Complainants ResMed Inc., ResMed Ltd., and ResMed Corp. (collectively, “ResMed”) filed a motion to compel Apex to produce certain photographs.  According to ResMed, these photographs were produced several times by Apex.  ResMed also asserted that one of the photographs was marked as an exhibit during the deposition of an Apex fact witness and that the witness was questioned about the photograph without objection of Apex’s U.S. or Taiwanese counsel.  Additionally, ResMed asserted that Apex did not assert a claim of privilege with respect to these photographs until after the deposition, and that Apex cannot establish that the photographs are protected by the attorney-client privilege or work product doctrine.  ResMed further argued that Apex had waived any privilege by producing the documents multiple times without objection and permitting their use during a deposition.

Apex opposed the motion arguing that the photographs were protected by both the attorney-client privilege and the work product doctrine because they reflect the mental impressions of Apex’s in-house patent adviser, were prepared for the purpose of seeking advice of counsel, and were prepared in anticipation of Apex’s Request for Advisory Opinion and the pending District Court action between the parties.  Apex also argued that it had not waived any privilege because the disclosure was inadvertent, because Apex took reasonable steps to prevent disclosure, and because Apex took reasonable steps to rectify its error.

ALJ Gildea found that Federal Circuit precedent and Federal Rule of Evidence 502 both supported a finding that any applicable privilege was waived by Apex’s repeated disclosure of the photographs.  ALJ Gildea determined that what may have been inadvertent production in one case could not reasonably be deemed to be inadvertent after three subsequent productions as well as Apex’s failure to object to the use of the photographs during a deposition.  ALJ Gildea further determined that the subsequent productions undermined Apex’s argument that it took reasonable steps to prevent disclosure of the photographs.  Accordingly, ALJ Gildea granted ResMed’s motion to compel.