By Eric Schweibenz
On August 5, 2009, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 21C (dated July 14, 2009) in Certain Electronic Devices, Including Handheld Wireless Communications Devices (Inv. No. 337-TA-667/337-TA-673).  In the Order, ALJ Rogers denied Respondent Palm, Inc.’s (“Palm”) motion for protective order to preclude Complainant Saxon Innovations, LLC (“Saxon”) from accusing the Palm Pre phone of infringement in this investigation.

By way of background, the procedural schedule in this investigation required the parties to serve responses to contention interrogatories on June 10, 2009.  Saxon served contention interrogatory responses on June 10, including a response to Palm’s interrogatory seeking identification of the accused Palm products.  On June 18, 2009, Saxon served a supplemental interrogatory response alleging for the first time that Palm’s Pre phone infringed U.S. Patent No. 5,530,597.

In its motion, Palm moved for a protective order to preclude Saxon from accusing the Palm Pre of infringement in this investigation.  According to the Order, Palm argued (1) the protective order is justified because Saxon had information regarding the Pre prior to the applicable June 10 deadline; (2) Saxon was not diligent in obtaining third party discovery relevant to the Pre; and (3) that it would be prejudiced if Saxon were allowed to accuse the Pre of infringement.  For its part, the Commission Investigative Staff (the “Staff”) argued that Saxon’s June 18 interrogatory supplement constituted a new and untimely infringement contention.  However, Staff did not support the imposition of a protective order at the current time and suggested that Saxon should first be given the opportunity to file a motion for leave to supplement its contention interrogatories.

In the Order, ALJ Rogers determined that “Palm has failed to show good cause for issuance of a protective order to protect it from ‘annoyance, embarrassment, oppression, or undue burden or expense.’”  ALJ Rogers further determined that in its original complaint, Saxon accused Palm of infringing its patents and its initial discovery requests included the Pre in its definition of “accused products.”  According to ALJ Rogers, “Palm was therefore on notice in January that Saxon believed the Pre was relevant to this investigation.”  Regarding Palm’s argument that Saxon was not diligent in obtaining third party discovery relevant to the Pre, ALJ Rogers stated that “Saxon has been working with ARM since February to obtain the necessary information, and it served its subpoenas and conducted the depositions well before the close of discovery.”  Further, ALJ Rogers determined that there “is no evidence that there was any unreasonable delay on the part of Saxon in obtaining discovery, especially in light of the fact that ARM is a third party based in England.”  Finally, ALJ Rogers determined that “Palm will not be prejudiced by the inclusion of the Pre in the investigation” since “Palm has been on notice since January of Saxon’s interest in the Pre” and “[e]xpert reports have not yet been served, and discovery does not close until August 3.”