• ALJ Gildea Rules On Nonparties’ Motions To Quash In Certain Portable Electronic Devices (337-TA-797)
  • April 12, 2012 | Authors: John F. Presper; Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On April 3 and 4, 2012, ALJ James E. Gildea issued Order No. 48 and Order No. 49, respectively, ruling on motions to quash and/or limit subpoenas served by Complainant Apple Inc. (“Apple”) on nonparties AT&T Wireless (“AT&T”) and TPK Holding Co., Ltd. (“TPK”) in Certain Portable Electronic Devices and Related Software (Inv. No. 337-TA-797).

    By way of background, this investigation is based on a complaint filed by Apple alleging violation of Section 337 in the importation into the U.S. and sale of certain portable electronic devices and related software that infringe various U.S. patents.

    According to Order No. 48, Apple sought documents and testimony from AT&T regarding its testing and use of accused products.  AT&T argued that even as limited by agreement with Apple, the document requests and deposition topics are overly broad and unduly burdensome (insofar as they are not limited to specific applications on the accused products and are unlimited in time), and that it would be cheaper and less burdensome for Apple to obtain the requested documents and information directly from Respondents HTC Corporation, HTC America, Inc., and Exedea, Inc. (collectively, “HTC”).  AT&T also asserted that Apple has not exhausted all avenues of relief to obtain discovery from HTC before seeking it from AT&T.  Apple countered that the subpoenas are narrowly focused on information regarding AT&T’s own testing and use of the features and applications in the accused products (and are necessarily limited in time because of the limited lifespan of the products) that is unlikely to be in HTC’s possession, that it would agree to further narrow the subpoenas to exclude communications between AT&T and HTC, and that AT&T produced no evidence of undue burden.  ALJ Gildea agreed with Apple that it need not file a motion to compel against HTC before it can seek information from a nonparty, and that the requested discovery is relevant to indirect infringement of the asserted method claims, unlikely to be in HTC’s possession, and not unreasonably burdensome.  Accordingly, the ALJ granted-in-part the motion based on the representations made by Apple during negotiations with AT&T and in its opposition to AT&T’s motion.

    According to Order No. 49, TPK argued that Apple improperly attempted to serve the subpoenas on TPK by sending them to the registered agent for a domestic subsidiary rather than serving the subpoenas through the Hague Convention since (1) TPK is incorporated in the Cayman Islands with a principal place of business in Taiwan, (2) the registered agent is not authorized to accept service on behalf of TPK, and (3) TPK maintains a separate corporate entity from its domestic subsidiary.  No response to the motion was submitted.  Therefore, ALJ Gildea granted the motion, noting that Section 1333(b) sets forth the Commission’s authority to compel witnesses and the production of documents “from any place in the United States” and does not extend anywhere in the world, and that service on a subsidiary corporation does not effectuate service on the parent corporation absent a showing that the subsidiary has control of the subpoenaed information.