October 26, 2012
Previously published on October 23, 2012
On October 18, 2012, ALJ E. James Gildea issued the public version of Order No. 29 (dated August 22, 2012) granting-in-part Respondents Funai Electronic Co., Ltd., Funai Corporation, Inc., and P&F USA, Inc.’s (collectively “Funai”) motion to compel production of itemized records in Certain Blu-Ray Disc Players, Components Thereof and Products Containing Same (Inv. No. 337-TA-824). According to the Order, Funai alleged that Complainant Walker Digital, LLC (“Walker Digital”) relies on its licensing program to support the domestic industry requirement. Funai asserted that Walker Digital claims to have incurred litigation fees and other cost related to licensing the asserted patent. According to Funai, Walker Digital has produced only checks and payment records, which provide no details on how these expenses relate to licensing the asserted patent. Accordingly, Funai requested any records providing an itemization of the litigation fees and other costs related to Walker Digital’s licensing program as it pertains to the assert patent. Funai argued that the requested records are not privileged and discoverable, or, in the alternative, Walker Digital has waived any privilege by asserting its litigation expenses to meet the domestic industry requirement. In opposition, Walker Digital alleged that it has produced, or logged as privileged, all relevant records in its possession, custody, and control. According to Walker Digital, the only records that it has not produced or logged are the internal timesheets of counsel, which are not in Walker Digital’s possession, custody, or control. Walker Digital argued that the documents logged as privileged reflect counsel’s mental impressions and attorney-client communications. Further, Walker Digital asserted that it will not be relying on any of the privileged communications in establishing the domestic industry requirement and, therefore, has not waived any privilege. The Commission Investigative Staff (“OUII”) opposed the motion, arguing that Walker Digital provided sufficient discovery to allow Funai to make a determination of whether or not a nexus exists between the litigation expenses and the asserted patent’s licensing program. OUII further argued that the additional records would be unnecessary and unduly burdensome. In conclusion, OUII noted that billing records that did not disclose attorney-client communications were not privileged. ALJ Gildea found that Walker Digital must produce any non-privileged document in its possession, custody, or control that it intends to rely on to support its domestic industry arguments. Further, Walker Digital must produce redacted copies of all relevant records containing both privileged and non-privileged information. Additionally, ALJ Gildea found that the itemized billing records of Walker Digital’s outside counsel are not discoverable because they are not in Walker Digital’s possession, custody, or control. Accordingly, the motion was granted-in-part.
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