ITC Denies Request to Modify Protective Order

by Jones Day

In a recent Notice, the Commission denied Respondents’ motion to modify the administrative protective order (APO) to permit them to use a third party’s confidential business information in related European proceedings.


Certain Semiconductor Devices, Semiconductor Device Packages, And Products Containing Same, Inv. No. 337-TA-1010, instituted on June 24, 2016, pursuant to a complaint filed by Tessera Technologies, Inc.; Tessera, Inc.; and Invensas Corporation, all of San Jose, California (collectively, “Tessera”).  The Complaint alleges that Respondents Broadcom Limited of Singapore and Broadcom Corporation of Irvine, California (collectively, “Broadcom”), and 22 manufacturers and importers of products containing Broadcom’s semiconductor devices, infringe certain claims of U.S. Patent No. 6,856,007 (“the ’007 patent”); U.S. Patent No. 6,849,946 (“the ’946 patent”); and U.S. Patent No. 6,133,136 (“the ’136 patent”).

The ’136 patent was filed in 1999 and originally assigned to a third party.  Ten years later, the third-party assigned certain rights in these patents to Tessera.  In response to a subpoena in this Investigation, the third party produced certain documents which were designated as Confidential Business Information (CBI) under the terms of the administrative protective order (APO) (Order No. 1, amended by Order Nos. 38 and 42).

In parallel with this Investigation, Tessera is also currently asserting European Patent No. 1,186,034 (“EP ’034”)—the European counterpart to the ’136 patent—in infringement proceedings in Germany and the Netherlands.  EP ’034 claims priority to and includes the same disclosure as the ’136 patent.  Respondents moved to amend the protective order to permit disclosure in the European action of documents produced by the third party in the ITC investigation.  Respondents relied on Certain Two-Way Global Satellite Communication Devices, Inv. No. 337-TA-854, Order No. 23, at 6-7 (Nov. 7, 2013) (permitting cross-use of third-party material where such “third parties are notified and can object”) and Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof, Inv. No. 337-TA-868, Order No. 46, at 4 (permitting the cross-use of “confidential materials produced by a third party, provided that the third party gives permission for such cross-use in writing”).

On September 29, 2017, the Commission issued a Notice, which, inter alia, denied Respondents’ motion to amend the APO.  Generally speaking, a supplier of confidential business information “may consent to the disclosure of their confidential business information to persons other than those qualified under the protective order to receive confidential business information.”  Certain Digital Video Receivers & Hardware & Software Components Thereof, Inv. No. 337-TA-1001, Comm’n Order at 2 (June 30, 2017).  The Commission here, however, stated that neither the supplier of information, nor a party (here, the Respondents) may seek to amend the APO to allow only “carefully circumscribed usage of information in certain specified European patent proceedings.”  Certain Semiconductor Devices, Semiconductor Device Packages, And Products Containing Same, Inv. No. 337-TA-1010, Comm’n Notice at 3 (Sep. 29, 2017).  The Commission explained that “[t]o modify the APO in this manner would require the Commission to police the use of information outside the scope of Commission proceedings, which would be unduly burdensome for the Commission and unfair to other tribunals whose proceedings may be governed by different laws and rules.”  Id.


The ITC treats the parties’ confidential business information very seriously.  Typically, the first order in a new investigation is a protective order.  Oftentimes, specific circumstances of the investigation may require multiple amendments to the protective order.  When a third party discloses confidential business information under the terms of the protective order, that third party may allow that information to be disclosed to parties other than the ones qualified by the protective order.  But the Commission is unlikely to agree to a selective use of such information in non-ITC proceedings, especially where it would require the Commission to oversee such use outside its jurisdiction.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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