On May 29, 2009, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 23 (dated April 28, 2009) in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers granted-in-part and denied-in-part Complainant Qimonda AG’s (“Qimonda”) motion to compel Respondent LSI Corporation (“LSI”) to produce certain documents and witnesses and granted-in-part and denied-in-part non-party Chartered Semiconductor Manufacturing Inc.’s (“Chartered USA”) motion to quash and/or limit a subpoena served by Qimonda.

As an initial matter, ALJ Rogers analyzed Qimonda’s and Chartered USA’s motions together because they both related to the definition of the term “Relevant Products” used in Qimonda’s discovery requests.  Qimonda’s definition of the term “Relevant Products” included seven defined categories.

According to the Order, Qimonda asserted that the term “Relevant Products” was sufficiently detailed to comply with Commission Rules.  In opposition, LSI and Chartered USA argued that Qimonda’s definition of “Relevant Products” was overly broad and that each of the seven categories merely listed features common to all semiconductor chips.

ALJ Rogers determined that Qimonda’s definition of “Relevant Products” failed to result in discovery requests that satisfied the requirements of Commission Rules 210.27(b), 210.30(b)(1), and 210.32(a)(2).  Specifically, ALJ Rogers found that the evidence offered by Qimonda failed to demonstrate that all seven categories specified “precisely as possible” the material to be produced.  Additionally, as to five of the seven categories, ALJ Rogers found that Qimonda’s evidence failed to demonstrate that such categories were reasonably tied to the asserted patents or accused products.  Accordingly, with respect to these five categories, ALJ Rogers found Qimonda’s requests were improper because they were overly broad and would require the production of irrelevant documents.  As to the remaining two categories, ALJ Rogers found that they would otherwise comply with Commission Rules if certain “including without limitation” language contained in the categories was eliminated.  Thus, for these two categories, ALJ Rogers determined that Qimonda was entitled to discovery from LSI and Chartered USA under this modified definition.

Despite finding that Qimonda was entitled to discovery from LSI and Chartered USA, ALJ Rogers noted that “Qimonda’s multiple attempts to gather information about Chartered USA’s and LSI’s non-accused products demonstrate that Qimonda launched this investigation without a clear view of what products allegedly infringe the asserted patents.”  ALJ Rogers further noted that “[a]t the outset of this investigation, Qimonda should have had clear beliefs regarding which LSI products infringe the asserted patents and factual bases for those beliefs, and it should have focused its discovery accordingly.”

Regarding Chartered USA’s motion to quash, Chartered USA argued that as a sales and marketing company it did not have access to certain Chartered Singapore technical documents sought by Qimonda.  In response, Qimonda argued that Chartered USA’s attempt to obtain the documents from Chartered Singapore was insufficient.  ALJ Rogers determined that Chartered USA did not have control over certain of the Chartered Singapore technical documents sought by Qimonda.  Accordingly, ALJ Rogers granted-in-part Chartered USA’s motion to quash to the extent Qimonda’s document requests sought technical documents not in Chartered USA’s possession, custody, or control.