• ALJ Gildea Denies Motion for Protective Order in Certain Silicon Microphone Packages (337-TA-888)
  • January 10, 2014 | Author: Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On December 19, 2013, ALJ E. James Gildea issued the public version of Order No. 14 (dated December 5, 2013) denying Complainant Knowles Electronics, LLC’s (“Knowles”) motion for the entry of a protective order in Certain Silicon Microphone Packages and Products Containing Same (Inv. No. 337-TA-888).

    By way of background, the Commission instituted this investigation on July 23, 2013 based on a complaint filed by Knowles alleging a violation of Section 337 by Respondents GoerTek, Inc. and GoerTek Electronics, Inc. (collectively, “GoerTek”) in the importation into the U.S. and sale of certain silicon microphone packages and products containing the same that infringe, or that are made by a process that infringes, one or more claims of U.S. Patent Nos. 7,439,616, 8,018,049, and 8,121,331.

    According to the Order, Knowles filed a motion for the entry of a protective order as to certain document requests from GoerTek seeking production of materials related to prior investigations regarding Knowles. Specifically, when its motion was filed, Knowles sought entry of a protective order (1) limiting Knowles’ obligations pursuant to the requests to the production of previously redacted materials from the Prior Investigations which do not contain non-Knowles confidential business information, to the extent they exist in Knowles’ business records; and (2) confirming that deposition transcripts, witness statements, and hearing transcripts for Knowles fact witnesses from the Prior Investigations need not be produced or, if they must be produced, that they be produced only under such terms as the Administrative Law Judge deems fair and equitable.

    Knowles and GoerTek later came to an agreement as to issue (1), rendering it moot. As to issue (2), Knowles asserted that GoerTek requested confidential witness statements, deposition transcripts, and portions of hearing transcripts for Knowles’ fact witnesses from prior investigations. Knowles argued that if GeorTek were permitted to obtain both this discovery and take an additional 20 depositions pursuant to Commission Rule 210.28, GoerTek would have the benefit of using testimony from more than three times as many depositions as Knowles. According to Knowles, this imbalance would flaunt the Commission’s rules and be manifestly inequitable. Knowles added that it had previously attempted to come to an agreement with GoerTek as to the transcripts, but GoerTek refused its terms.

    In response, GoerTek asserted that the transcripts and witness statements requested included testimony of Knowles’ employees that bear directly on the subject matter of, and issues to be addressed in, the present investigation. GoerTek added that production of these materials would not be unduly burdensome, as they include only 40 documents that had already been identified and could be immediately produced. Regarding Commission Rule 210.28, GoerTek asserted that its requests did not implicate this rule because the rule was adopted to prevent undue burden on the parties. As to the potential agreement between the parties, GoerTek argued that the conditions Knowles sought to impose were unwarranted, especially because GoerTek had not even seen the subject documents.

    In the Order, ALJ Gildea denied Knowles’ motion and determined that Knowles had not articulated a sufficient basis for granting a protective order, that the transcripts and witness statements contained relevant information, and that their production would not present undue hardship. ALJ Gildea found Knowles’ arguments with respect to Commission Rule 210.28 were unpersuasive and that the spirit of the rule was not violated by allowing GoerTek to discover relevant testimony previously provided by Knowles’ fact witnesses. Accordingly ALJ Gildea denied the motion, ordering Knowles to produce the transcripts and witness statements by December 10, 2013.