• ALJ Gildea Rules On Motions To Compel In Certain Dynamic Random Access Memory And NAND Flash Memory Devices (337-TA-803)
  • May 18, 2012 | Authors: Alexander B. Englehart; Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On May 14, 2012, ALJ E. James Gildea issued Order No. 42 and Order No. 44 in Certain Dynamic Random Access Memory and NAND Flash Memory Devices and Products Containing Same (Inv. No. 337-TA-803).  In Order No. 42, ALJ Gildea granted Respondents Hynix Semiconductor America, Inc. and SK Hynix Inc. f/k/a Hynix Semiconductor Inc.’s (collectively, “Hynix”) motion to compel Complainants to search for and produce relevant discovery from the custodial file of Joseph Chernesky, Complainants’ employee.  In Order No. 44, ALJ Gildea denied without prejudice Respondents Hynix, Acer Inc., Acer America Corp., ADATA Technology Co., Ltd., ADATA Technology (U.S.A.) Co., Ltd., ASUSTek Computer Inc., Asus Computer International, Inc., Best Buy Co., Inc., Dell, Inc., Hewlett-Packard Company, Kingston Technology Co., Inc., Logitech International S.A., and Logitech, Inc.’s (collectively, “Respondents”) motion to compel non-party Enhanced Memory Systems (“Nonparty”) to re-produce a document that Nonparty had produced but later clawed back as privileged.

    According to Order No. 42, Hynix argued that Mr. Chernesky, Complainants’ Vice President of Global Licensing Sales, was someone with relevant and responsive information in the investigation.  Accordingly, Hynix argued that is was improper for Complainants to refuse to search for and produce relevant discovery from Mr. Chernesky’s custodial file.  Hynix explained that it had not learned that Complainants had never searched for Mr. Chernesky’s documents until his deposition was being scheduled.  Hynix further explained that it was Complainants’ position that, pursuant to a private stipulation, Complainants did not need to produce Mr. Chernesky’s documents.

    Complainants opposed Hynix’s motion, arguing that Hynix was improperly seeking to avoid a private stipulation regarding discovery procedures.  Complainants also argued that Hynix had failed to identify what discovery was in issue pursuant to the ground rules.  Complainants further argued that Hynix “applied a very different standard to itself in applying” the stipulation.

    After considering the arguments, ALJ Gildea determined to grant Hynix’s motion.  ALJ Gildea noted that the parties appeared to have privately set limits as to the scope of discovery, but that “a stipulation such as the one at issue that would allow a party to so extensively avoid producing responsive discovery would essentially overturn the discovery system set forth in the Commission Rules and Ground Rules.”  Accordingly, ALJ Gildea declined to enforce the stipulation.  The ALJ also found that Hynix was not obligated to identify what specific discovery was in issue because Complainants had failed to search for any documents from Mr. Chernesky, and only Complainants had knowledge as to which topics Mr. Chernesky might possess responsive documents.  Accordingly, ALJ Gildea granted Hynix’s motion to compel and ordered Complainants to search for and produce responsive discovery from Mr. Chernesky’s custodial file by May 21, 2012.

    According to Order No. 44, Respondents stated that Nonparty had produced a document bearing Bates No. EMS0322-323 (the “EMS document”), but had later clawed this document back as privileged.  Respondents explained that Nonparty had only produced ten documents and a privilege log, and pointed out that Nonparty had not identified the EMS document as privileged until the day before Respondents were scheduled to depose Nonparty’s witness.  Respondents stated that they had destroyed all copies of the EMS document pursuant to a discovery stipulation, but had not been provided with a redacted version and were unable to question the witness about the document.

    Nonparty opposed the motion, arguing that the EMS document was privileged and that Respondents had violated the discovery stipulation.  Nonparty explained that it had reviewed all documents produced, but that “through an inadvertent oversight” it had failed to notice that the EMS document is privileged.

    After considering the arguments, ALJ Gildea determined to deny Respondents’ motion without prejudice.  ALJ Gildea first declined to enforce the claw-back provision in the parties’ discovery stipulation after noting that “the Administrative Law Judge does not incorporate ‘claw back’ procedures into the ground rules or protective order of an investigation, and has denied requests to enforce such provisions.”  Accordingly, ALJ Gildea found that Respondents’ request that Nonparty re-produce the EMS document had merit, and would be granted if it were properly before the ALJ.  ALJ Gildea noted, however, that the Commission Rules do not provide him with the authority to compel a non-party.  Rather, a motion to compel a non-party must be brought before a U.S. District Court.  Accordingly, ALJ Gildea denied Respondents’ motion without prejudice and ordered that if Nonparty has not voluntarily re-produced the EMS document by May 18, 2012, Respondents shall have until May 23, 2012 to bring a motion for judicial enforcement.  ALJ Gildea also recommended “that Nonparty and Respondents resolve this issue amicably to conserve the time and resources of all involved.”