- ALJ Essex Rules On Motion To Compel And For Adverse Inferences In Certain Acousto-Magnetic Electronic Article Surveillance Systems (337-TA-904)
- July 29, 2014 | Authors: Eric W. Schweibenz; Thomas C. Yebernetsky
- Law Firm: Oblon, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
On July 17, 2014, ALJ Theodore R. Essex issued the public version of Order No. 10 (dated July 8, 2014) in Certain Acousto-Magnetic Electronic Article Surveillance Systems, Components Thereof and Products Containing the Same (Inv. No. 337-TA-904).
By way of background, the investigation is based on a December 11, 2013 complaint filed by Tyco Fire & Security GmbH, Sensormatic Electronics, LLC, and Tyco Integrated Security, LLC (collectively, “Tyco”) alleging violations of Section 337 in the importation into the U.S. and sale of certain acousto-magnetic electronic article surveillance devices that infringe one or more claims of U.S. Patent Nos. 5,729,200 and 6,181,245. See our December 13, 2013 post for more details on the complaint. According to the Notice of Investigation, the Commission has identified Ningbo Signatronic Technologies, Ltd.; All-Tag Security Americas, Inc.; All-Tag Security Hong Kong Co. Ltd.; All-Tag Europe SPRL; All-Tag Security UK, Ltd.; Best Security Industries; and Signatronic Corporation (collectively, the “Respondents”) as the Respondents in the investigation. See our January 10, 2014 post for more details on the Notice of Investigation.
According to Order No. 10, Tyco filed a motion to compel Respondents to produce additional documents, including opinions of counsel disclosed to customers, and Dr. Li for a continued deposition in the United States. Additionally, Tyco requested three adverse rebuttable inferences. Tyco argued that a third day to depose Dr. Li is needed because he is the only knowledgeable witness provided by the Respondents.
In opposition, Respondents argued that the document requests are moot because the requested documents have already been produced. Additionally, Respondents asserted that the opinions of counsel were not relevant and that they did not waive privilege. Lastly, Respondents argued that Tyco’s motion to depose Dr. Li for a third day should be denied because Tyco should have covered the relevant topics during the two days of Dr. Li’s deposition.
Regarding the additional documents requested by Tyco, ALJ Essex held that Tyco’s motion was moot because the documents have already been produced. However, ALJ Essex ordered that Respondents must provide a sworn affidavit that that all relevant documents have been produced. With respect to the opinions of counsel, ALJ Essex denied Tyco’s request for the opinions because Tyco has not shown that they are relevant and Respondents have averred that they will not rely on these document in the investigation. ALJ Essex held that Dr. Li must be made available for a third day of deposition, but is not required to travel to the United States for the additional deposition. Lastly, ALJ Essex denied Tyco’s requests for adverse inferences because the sole basis for the adverse inferences was Respondents failure to produce documents, which Respondents have already produced. Accordingly, ALJ Essex granted-in-part and denied-in-part Tyco’s Motion to Compel and for Adverse Inferences.