By Eric Schweibenz and Lisa Mandrusiak
On December 21, 2016 ALJ David P. Shaw issued Order No. 31 in Certain Marine Sonar Imaging Devices, Including Downscan and Sidescan Devices, Products Containing the Same, and Components Thereof (Inv. No. 337-TA-921) denying a motion to compel.

By way of background, the underlying investigation is based on a complaint filed by Navico Inc. and Navico Holding AS (“Navico”) alleging violation of Section 337 in the importation into the U.S. and sale of certain marine sonar imaging devices, including downscan and sidescan devices, products containing the same, and components thereof that infringe one or more claims of U.S. Patent Nos. 8,305,840 (the '840 patent); 8,300,499; and 8,605,550 (the '550 patent). See our July 11, 2014 post for more details on the underlying investigation. On December 1, 2015, the Commission issued its final determination finding a violation of Section 337 by Respondents based on infringement of certain claims of the ‘840 and ‘550 patents, and issued a limited exclusion order and cease and desist order (“CDO”) directed at Garmin International, Inc. and Garmin USA, Inc. (“Garmin”). On August 18, 2016, the Commission issued a modified limited exclusion order clarifying that certain components being imported by Garmin are covered by the original limited exclusion order.

Navico filed an enforcement complaint on August 31, 2016 alleging that Garmin violated the CDOs issued in the underlying investigation. See our September 2, 2016 post for more details.

According to the order, Navico filed a motion to compel discovery from Garmin, alleging that Garmin has yet to produce a single document although the close of fact discovery is less than six weeks away. Navico asserted that, although Garmin acknowledged it had responsive documents, it was withholding them in exchange for Navico’s agreement that third party documents from the concurrent district court litigation can be deemed produced. The Commission Investigative Staff filed a response in support of Navico’s motion.

In opposition, Garmin argued that the motion is unnecessary because Garmin has already made substantial productions, agreed to produce responsive documents, and would make sure that documents produced in other litigations would be available to Navico in this investigation. Garmin also alleged that the parties agreed to complete their document production by the week of December 12.

ALJ Shaw noted that if Garmin’s representation was accurate, document production should be complete by this time. Accordingly, the ALJ deemed the motion moot and it was denied. ALJ Shaw requested that the parties meet and confer and file a joint statement addressing any outstanding issues by December 23, 2016.