ALJ Pender Rules On Discovery Motions In Certain Electronic Digital Media Devices (337-TA-796)

On May 23, 2012, ALJ Thomas B. Pender issued the public versions of Order No. 12 (dated February 6, 2012), Order No. 14 (dated February 14, 2012), Order No. 15 (dated February 17, 2012), Order No. 18 (dated May 9, 2012), and Order No. 19 (dated May 11, 2012) in Certain Electronic Digital Media Devices and Components Thereof (Inv. No. 337-TA-796).  In Order No. 12, ALJ Pender denied Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc. (“SEA”), and Samsung Telecommunications America, LLC’s (“STA”) (collectively, “Samsung”) motion to compel Complainant Apple Inc. (“Apple”) to produce certain key witnesses for depositions in January 2012.  In Order No. 14, ALJ Pender granted Apple’s request that Samsung be compelled to identify each of its mobile phones, tablet computers, media players, and any other products responsive to Apple’s Interrogatory No. 1 and to supplement its responses to Apple’s other interrogatories and document requests.  In Order No. 15, ALJ Pender ruled on a number of other requests that Apple had made in an omnibus motion to compel.  In Order No. 18, ALJ Pender denied Samsung’s motion for leave to file an amended notice of prior art and granted-in-part Apple’s motion to strike portions of Samsung’s expert reports.  In Order No. 19, ALJ Pender denied Apple’s motion for spoliation sanctions against Samsung.

According to Order No. 12, Samsung asserted that despite its noticing the depositions of Messrs. Jonathan Ive and Christopher Stringer in September 2011, Apple withheld their available deposition dates until January 2012 and would not offer them for deposition until February 2012.  Samsung contended that January depositions for Mr. Ive and Mr. Stringer were necessary to afford Samsung sufficient opportunity to pursue follow-up discovery and prepare contentions and expert reports.  Apple opposed Samsung’s motion, arguing that Mr. Ive is Apple’s senior vice president of Industrial Design and one of its most senior executives and that Mr. Stringer is a senior director of Industrial Design, and that Apple had made efforts to make Mr. Ive and Mr. Stringer available as early as their busy schedules permitted.  After considering the arguments, ALJ Pender determined to deny Samsung’s motion.  The ALJ noted that while Mr. Ive and Mr. Stringer had not provided a specific explanation as to why they were not available to sit for depositions in January 2012, Samsung’s delay in seeking relief until January 18, 2012 left insufficient time for Apple to respond to the motion or for the ALJ to grant the relief sought.  Accordingly, ALJ Pender denied the motion but noted that he expects Apple to provide prompt responses to any follow-up discovery after the February depositions.

According to Order No. 14, on February 1, 2012, Apple filed an omnibus motion to compel Samsung to comply with various discovery obligations.  As part of this omnibus motion, Apple requested that Samsung be compelled to identify each of its mobile phones, tablet computers, media players, and any other products responsive to Apple’s Interrogatory No. 1 and to supplement its responses to Apple’s other interrogatories and document requests to provide complete discovery concerning these products.  In particular, Apple asserted that Samsung had unilaterally attempted to narrow the scope of discovery to a subset of its mobile phones and tablet computers that run the Android operating system.  According to Apple, nothing in the Notice of Institution of Investigation, the Complaint, or Apple’s discovery requests limits the universe of accused products to mobile phone handsets or tablet computers running the Android operating system.  Samsung opposed the request, arguing that the parties understood the scope of discovery to be limited to Android-based mobile phones and tablets.  The Commission Investigative Staff (“OUII”) submitted a response supporting Apple’s request.  After considering the arguments, ALJ Pender determined to grant Apple’s request.  The ALJ noted that “Samsung fails to offer any explanation supported by the evidence as to why it believes the accused products are limited to Samsung’s Android-based mobile phones and tablet computers.”  Accordingly, ALJ Pender found that Samsung’s decision to unilaterally limit the scope of discovery was improper, and granted Apple’s request that Samsung be compelled to identify additional products and supplement its discovery responses.

According to Order No. 15, in Apple’s February 1, 2012 omnibus motion to compel, it also requested that Samsung be compelled to substantially complete its document production within one week after the ALJ rules on the motion, to continue the depositions of certain witnesses, to respond fully to Apple’s interrogatories relating to document collection and preservation, and to present certain design witnesses for deposition on Apple’s requested dates; and that STA be compelled to provide an adequately-prepared corporate witness for a deposition on document collection and preservation; and that SEA be compelled to designate a witness to testify on the full scope of Apple’s 30(b)(6) topic relating to SEA’s analysis, study, examination, reverse engineering, or copying of Apple’s products.  Samsung opposed these requests.  OUII generally supported Apple’s positions.  After considering the arguments, ALJ Pender determined to deny Apple’s requests that Samsung be compelled to substantially complete its document production within one week of the order and to continue depositions, but to grant Apple’s other requests to the extent that they were not already moot.

According to Order No. 18, Samsung sought leave to amend its Corrected Notice of Prior Art to add prior art references allegedly unavailable to Samsung at the time the notice was originally filed.  In particular, Samsung sought to amend its notice to include an archive of documents that Apple had donated to a university, a “Bloomberg Tablet and Bezel-less Electronic Display,” other design patent prior art references, a “Nokia Fingerprint Phone Design 2004” reference, “Samsung Yepp Prior Art,” and an academic paper produced by Oracle Corp.  Apple opposed the motion, arguing that Samsung had failed to show good cause to amend the notice.  After considering the arguments, ALJ Pender determined to deny Samsung’s motion.  In particular, ALJ Pender found that Samsung had failed to establish the requisite good cause for amending its notice because it had failed to persuasively show that it could not have discovered the prior art before the deadline.  Moreover, the ALJ found that in many instances where Samsung alleged that it had not learned of the prior art until after the deadline, it also failed to show that it diligently acted upon that knowledge in filing its motion to amend the notice, and that such delay also precluded a finding of good cause.  Accordingly, ALJ Pender denied Samsung’s motion for leave to amend.  Additionally, ALJ Pender granted-in-part a motion by Apple to strike portions of Samsung’s expert reports.  In particular, ALJ Pender granted Apple’s motion to the extent that it sought to strike portions of the expert reports that reference, for invalidity purposes, the additional prior art at issue in Samsung’s motion for leave to amend.  However, ALJ Pender denied the motion to the extent that it also sought to strike references to prior art beyond what was at issue in Samsung’s motion for leave to amend.

According to Order No. 19, Apple sought sanctions against Samsung for the alleged spoliation of discoverable material.  According to Apple, Samsung had deliberately failed to take “institutional steps to retain or back up emails sent or received using its [computer e-mail] system.”  Apple alleged that relevant Samsung e-mail is preserved only if an individual employee who sent or received the e-mail has been informed of Samsung’s litigation hold and decides, as a matter of his or her judgment, that the e-mail should be preserved.  Apple argued that Samsung’s conduct is completely insufficient to satisfy its duty to preserve evidence.  Apple also alleged that Samsung had improperly destroyed certain notebooks, diaries, and other hard copy documents.  According to Apple, Samsung’s alleged spoliation obstructed orderly discovery and prejudiced Apple’s preparation of its case.  Samsung opposed Apple’s motion, arguing that its obligation to preserve documents began when Apple filed its complaint on July 5, 2011, and that Apple had not shown that Samsung or any of its employees had destroyed relevant data after that date.  Samsung further argued that even if Apple could establish that Samsung had destroyed evidence after July 5, 2011, there was no proof that Samsung acted in bad faith or with any intent to impair Apple.  Samsung also disputed that it had destroyed any notebooks or other physical documents as alleged by Apple.  OUII opposed Apple’s motion, arguing that Apple had not sufficiently demonstrated that Samsung had not satisfied its duty to preserve evidence.  After considering the arguments, ALJ Pender determined to deny Apple’s motion.  In particular, the ALJ found that “beyond Apple’s rather speculative accusations, I can find no proof Samsung destroyed any potentially relevant emails after the institution of this Investigation.”  Thus, ALJ Pender found that Apple had not adequately established that Samsung had not satisfied its duty to preserve evidence, and denied Apple’s motion for sanctions.