• ALJ Gildea Denies Motion To Compel Discovery From Nonparty In Certain Wind And Solar-Powered Light Posts And Street Lamps (337-TA-736)
  • May 10, 2011 | Authors: Alexander B. Englehart; Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On April 28, 2011, ALJ E. James Gildea issued the public version of Order No. 9 (dated April 13, 2011) in Certain Wind and Solar-Powered Light Posts and Street Lamps (Inv. No. 337-TA-736).  In the Order, ALJ Gildea denied Respondents Gus Power Incorporated, Efston Science, Inc., The StressCrete Group, and King Luminaire, Inc.’s (collectively, “Respondents”) motion to compel nonparty Infographics to provide documents and testimony relating to the preparation of drawings for asserted U.S. Patent No. D610,732S (the ‘732 patent).

    According to the Order, Respondents argued that the discovery they sought from Infographics was relevant to their allegation that Complainants Duggal Dimensions LLC, Duggal Energy Solutions, LLC, and Duggal Visual Solutions, Inc. (collectively, “Duggal”) intentionally withheld the identity of the true inventors of the design described in the ‘732 patent from the Patent Office.  Respondents had subpoenaed Infographics for documents and testimony relating to the preparation of drawings for the application that matured into the ‘732 patent; however, Respondents were not satisfied with Infograhics’ document production and objected to the claims of privilege raised by Duggal and/or Infographics in response to the subpoena.

    Duggal opposed the motion, arguing that it had standing to object to discovery aimed at a nonparty where the discovery “seeks Duggal’s attorney-client privileged communications.”  Duggal argued that the privilege log from Infographics reflected “communications from Duggal Dimensions to its attorneys, and thereafter relayed to Infographics for purposes of assisting Duggal Dimensions in providing it with legal advice regarding the preparation of a patent application.”  Duggal argued that the attorney-client privilege extended to such communications and that therefore Respondents’ motion to compel should be denied.

    After considering the arguments, ALJ Gildea determined to deny Respondents’ motion as procedurally deficient.  According to the Order, “[a]n administrative law judge cannot compel a nonparty to provide documents or testimony in response to a subpoena.”  Rather, “[t]he proper procedure for enforcing a subpoena at the Commission is found in Commission Rule 210.32(g).”  Since Respondents had not requested subpoena enforcement pursuant to Rule 210.32(g), ALJ Gildea declined to initiate subpoena enforcement proceedings sua sponte, and denied the motion to compel.