Last week, the ITC released the public version of Order No. 42 in In the Matter of Certain Audiovisual Components and Products Containing the Same, Inv. No. 337-TA-837.  In this order (the confidential version of which issued back in October 2012), Administrative Law Judge David P. Shaw granted respondent Realtek Semiconductor’s motion to compel complainants LSI Corp. and Agere Systems to provide certain RAND-related discovery.  This includes information regarding LSI and Agere’s activities in standard-setting organizations, as well information about licensing and third-party products that practice the asserted patents.  This order provides some incremental guidance on the type of evidence that ALJs consider relevant to RAND-based affirmative defenses in Section 337 ITC actions.

The complaint in this investigation was filed back in March 2012.  In it, LSI and Agere accused Realtek and others of infringing various patents essential to certain technology standards, including the IEEE 802.11a and 802.11b wireless networking standards.  The patents at issue in the motion to compel related the 802.11 standards.

SSO Activities

In its motion, Realtek sought to compel discovery from complainants about SSO-related activities that they have engaged in with respect to the asserted patents, but the complainants appear to have agreed only to provide information regarding the IEEE 802.11 standards.  Realtek asserted that the complainants’ participation in other SSO activities is relevant to the scope of the asserted patents, as well as the domestic industry and bonding issues.  ALJ Shaw agreed with Realtek, finding the the complainants’ SSO activities is relevant to the their interpretation of the scope of the patents-in-suit, the prosecution of the patents, and whether the claimed subject matter was disclosed prior to filing.  However, given the number of SSOs that the complainants are involved in, ALJ Shaw ordered Realtek to provide complainants with a set “reasonable” number of SSOs.

Covered Products

Realtek also sought discovery of the details of all products that practice the asserted patents, claiming that these are relevant to non-infringement, invalidity, and RAND-based defenses.  For example, Realtek asserted that identification of third-party products could lead to discovery of licensing offers to others, which is relevant to whether the offers made to Realtek were RAND-compliant.  But LSI and Agere only agreed to provide this information regarding the products that they intended to rely on to satisfy the domestic industry requirement of Section 337.  ALJ Shaw again agreed with Realtek, finding that despite the fact that LSI and Agere were not relying on older products for domestic industry, information about these products would be relevant to Realtek’s defenses.


Finally, Realtek also sought to compel LSI and Agere to produce additional financial information regarding licensing of the patents-in-suit and related patents, arguing that LSI and Agere only provided limited information on licensing activities since January 1, 2011 that related to the domestic industry products.  Again, Realtek urged that this information is relevant to its RAND defenses.  And again, ALJ Shaw agreed, finding that the requested licensing information is relevant to Realtek’s defenses and that LSI and Agere’s response was too narrow and compelling the complainants to produce a witness to testify about its licensing activities.