On December 16, 2016, Judge Lord issued Order No. 51 in Certain Semiconductor Devices, Semiconductor Device Packages, and Products Containing Same, Inv. No. 337-TA-1010, granting Respondent Broadcom’s motion to declassify infringement contentions marked as containing confidential business information by Complainant Tessera.
Tessera served supplemental responses to Broadcom’s contention interrogatories regarding infringement, attaching claim charts allegedly showing how the accused products infringe the asserted patents. Consistent with the Protective Order, Tessera designated each of these charts as containing “Confidential Business Information Subject to Protective Order.” When Broadcom sought clarification as to whether the confidential information in the charts was limited to Broadcom confidential information and thus could be shared with Broadcom’s foundries and customers, Tessera asserted that the charts contained Tessera’s confidential business information. Tessera argued that because it makes substantial investments in the analysis of accused products, and it treats these disclosures as proprietary and confidential when negotiating with potential licensees, that allowing Broadcom to disclose the claim charts to its foundries or customers would harm Tessera’s competitive position, because those parties would gain a tactical advantage during future licensing negotiations. In view of Tessera’s position, Broadcom moved to declassify the infringement charts pursuant to Commission Rule 210.20(a).
In granting Broadcom’s motion, Judge Lord held that “Tessera’s position on confidentiality is unfair to Broadcom and inconsistent with the Commission’s rules.” First, Judge Lord explained that Tessera’s position was inconsistent with its attaching public versions of claim charts to the complaint. Next, she noted that arguments that disclosure of legal contentions would harm a party’s position in future negotiations have been rejected by the Commission as being inadequate to demonstrate competitive harm under Commission Rule 201.6(a). Finally, citing a chilling effect on discovery, Judge Lord stated that respondents “might be less willing to produce confidential technical information in Commission proceedings if they knew that their own confidential information could be used against them in contentions that they would not be permitted to read.”
The Commission takes protection of confidential information in Section 337 investigations very seriously. Administrative protective orders issued in each investigation provide broad restrictions against who may have access to information designated as confidential and how that information must be handled. This is necessary as parties are often required to produce very sensitive documents in short time frames. However, there are limits as to what may be considered confidential business information. Here, Judge Lord held that legal contentions are not confidential merely because substantial resources were utilized in developing the contentions. Simply, a party cannot use the protective order to shield its infringement contentions from being viewed by the party being accused of infringement.
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