Complainant FlashPoint Technology, Inc. (“FlashPoint”) initiated an ITC proceeding against HTC Corporation, among others. FlashPoint filed a motion for a protective order seeking to limit the discovery of electronically stored information. FlashPoint proposed a limit of 15 custodians collectively for respondents to select, which included an option to negotiate for additional custodians if there was a good faith basis to add additional custodians from FlashPoint.
HTC asserted that a limit on email discovery would severely prejudice its ability to prove its on sale bar and implied license defenses. As explained by the Administrative Law Judge, “HTC is pursuing an on-sale bar because it believes there is a relationship between the asserted patents and FlashPoint’s invalidated U.S. Patent No. 6,163,816 (“the ‘816 patent”). The ‘816 patent was invalidated by an on-sale bar in ITC Investigation No. 337-TA-726 (“the 726 Investigation”). (Opp. At 5.) HTC further explains, “Flash Point is again claiming that HTC infringes patents arising from the FlashPoint project work conducted in the 1990s, and HTC is again raising the on-sale bar…” (Opp. At 6.) Thus it appears HTC’s motivation for the on-sale bar is its suspicion that because the asserted patents and the invalidated ‘816 patent were related to the same project work, the asserted patents might also be subject to the on-sale bar. HTC also briefly explains the motivation for its implied license defense, namely that HTC is a customer of a licensee of FlashPoint’s technology.”
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