By Eric Schweibenz and Kate Cappaert
On August 7, 2014, ALJ David P. Shaw issued Order No. 28 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).

By way of background, this investigation is based on a December 23, 2013 complaint filed by Tela Innovations, Inc. ("Tela") alleging violations of Section 337 by Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC North America (collectively, "TSMC") in the importation into the U.S. and sale of certain standard cell libraries, products containing or made using the same, integrated circuits made using the same, and products containing such integrated circuits that infringe U.S. Patent No. 8,490,043.  See our December 31, 2013 and January 24, 2014 posts for more details on the complaint and notice of investigation, respectively.

According to Order. No. 28, TSMC filed a motion to compel non-privileged documents and further deposition time. Tela and non-parties Andrew Kahng and Puneet Gupta opposed the motion. TSMC sought an order (1) compelling Tela to produce two clawed-back documents because the claims of privilege with respect to the documents were "misguided and unsubstantiated," (2) allowing TSMC additional time to depose named inventors Andrew Kahng and Puneet Gupta due to a "last-minute dump of over 32,000 pages of documents on the evening before Mr. Kahng's deposition and days after Mr. Gupta's deposition," and (3) allowing TSMC additional time to depose Tela's Chief Technical Officer Dhrumil Gandhi because, while he was Tela's designated witness on more than 25 deposition topics, he was only able to testify for seven hours at deposition.

Regarding the documents at issue, ALJ Shaw noted that it was not clear from the parties' briefs whether or not the documents would be shielded from discovery due to privilege. Accordingly, ALJ Shaw requested the documents be provided for in camera review.

With respect to the requests for additional depositions of Mr. Kahng and Mr. Gupta, ALJ Shaw determined that further depositions were not warranted. Regarding Mr. Kahng, ALJ Shaw found that a further deposition of Mr. Kahng was not warranted under the circumstances because, while Mr. Kahng did produce 3,811 documents comprising over 30,000 pages the day before his deposition, Mr. Kahng complied with the agreement between counsel and had produced "the vast majority" of his documents five days prior to his deposition. ALJ Shaw determined that a further deposition of Mr. Gupta was not warranted because TSMC scheduled Mr. Gupta's deposition before Mr. Kahng's deposition and therefore ran the risk that Mr. Kahng might produce relevant documents after Mr. Gupta's deposition.

As to TSMC's request for more time to depose Mr. Gandhi, TSMC argued that Mr. Gandhi is "an inventor on a relevant prior art patent, a founder of Tela," a "central witness to this Investigation in his personal capacity," and was designated as Tela's corporate witness on 25 topics and was the de facto corporate witness for "multiple additional corporate topics" as the originally designated witnesses identified Mr. Gandhi as the key individual with knowledge of the relevant facts. Therefore, TSMC argued that the seven hours that Tela allowed for Mr. Gandhi's deposition was not enough time to explore the relevant topics. In opposition, Tela argued that the topics Mr. Gandhi was designated for encompassed only "six discrete areas of inquiry," and that it was TSMC's deposition approach and not the number of topics that resulted in TSMC's failure to question Mr. Gandhi about the topics for which he was designated. ALJ Shaw found that due to the breadth of topics that Mr. Gandhi was designated for and his alleged importance as a percipient witness, TSMC's request for additional time to depose Mr. Gandhi was reasonable. Accordingly, ALJ Shaw granted the motion in part.