By Eric Schweibenz
On April 21, 2014, ALJ David P. Shaw issued Order No. 15, in Certain Standard Cell Libraries, Products Containing or Made Using the Same, Integrated Circuits Made Using the Same, and Products Containing Such Integrated Circuits (Inv. No. 337-TA-906).

According to the Order, Complainant Tela Innovations, Inc. (“Tela”) filed a motion to compel discovery from Respondents Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC North America (collectively, “TSMC”).  Specifically, Tela sought an order compelling supplemental responses to certain interrogatories and requests for production.  Tela argued that TSMC was improperly limiting their discovery responses to only standard cell libraries, despite the Notice of Investigation stating that the scope of the investigation extends to “standard cell libraries, products containing or made using the same, integrated circuits made using the same, and products containing such integrated circuits.”

In opposition, TSMC asserted that information related to integrated circuits and design layouts cannot give rise to a Section 337 violation and is beyond the scope of the Notice of Investigation and the asserted patents.  Additionally, TSMC filed a motion for a protective order, which argued that the following three categories are beyond the scope of the investigation and asserted patents and/or cannot give rise to a Section 337 violation: chip design layouts, integrated circuits, and products containing chips.

As an initial matter, ALJ Shaw noted that many of the issues raised in the pending motions were addressed in Order No. 11.  See our March 25, 2014 post for more details.  ALJ Shaw determined that TSMC must supplement their discovery responses to include “products containing or made using such standard cell libraries, integrated circuits using the same, and products containing such integrated circuit.”  However, ALJ Shaw held that additional discovery should not extend beyond information relating to the standard cell libraries originating with TSMC.  Accordingly, ALJ Shaw granted-in-part Tela’s Motion to Compel and TSMC’s Motion for a Protective Order.