Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 904

EXHIBITS re #903 Exhibit 1 to Apples Status Update Regarding Compliance With April 12 Order filed by Apple Inc.. (Related document(s) #903 ) (Bartlett, Jason) (Filed on 5/7/2012) Modified text on 5/8/2012 (dhm, COURT STAFF).

Exhibit 1

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.

In the Matter of
CERTAIN ELECTRONIC DEVICES WITH
MULTI-TOUCH ENABLED TOUCHPADS AND
TOUCHSCREENS

Inv. No. 337-TA-714

In the Matter of
CERTAIN WIRELESS COMMUNICATION
DEVICES, PORTABLE MUSIC AND DATA
PROCESSING DEVICES, COMPUTERS AND
COMPONENTS THEREOF

Inv. No. 337-TA-745

In the Matter of
CERTAIN MOBILE DEVICES AND RELATED
SOFTWARE

Inv. No. 337-TA-750

In the Matter of
CERTAIN PORTABLE ELECTRONIC
DEVICES AND RELATED SOFTWARE

Inv. No. 337-TA-797

RESPONSE OF THE OFFICE OF UNFAIR IMPORT INVESTIGATIONS
TO APPLE’S MOTION TO PRODUCE CONFIDENTIAL INFORMATION
IN DISTRICT COURT PROCEEDINGS
The Office of Unfair Import Investigations (“OUII”) respectfully submits this response to
the Motion Pursuant to Commission Protective Orders for Authorization to Produce Confidential
Information in District Court Proceedings (“Motion”), filed by Apple, Inc. (“Apple”) on April
26, 2012. Apple alleges that in a U.S. District Court proceeding between Apple and Samsung
Electronics Co., Ltd. (“Samsung”), Apple has been ordered to produce various documents
designated as “confidential business information” in four Commission Investigations: Inv. No.

-2337-TA-714; Inv. No. 337-TA-745; Inv. No. 337-TA-750; and Inv. No. 337-TA- 797.1 Apple
alleges that it has it has attempted to, but has been unable to, obtain consent from the parties to
those investigations to produce the requested documents. Apple therefore seeks permission from
the Commission to produce the documents. OUII recognizes that Apple is “between a rock and a
hard place” with respect to this issue. Nevertheless, Section 337, by its terms, appears to
prohibit disclosing other entities’ confidential information (i.e., confidential information of
entities other than Apple and Samsung) in the manner requested by Apple. OUII therefore
opposes the motion.
More specifically, Section 337 states that: “Information submitted to the Commission or
exchanged among the parties in connection with proceedings under this section which is
properly designated as confidential pursuant to Commission rules may not be disclosed (except
under a protective order issued under regulations of the Commission which authorizes limited
disclosure of such information) to any person (other than a person described in paragraph (2))
without the consent of the person submitting it.” 19 U.S.C. § 1337(n)(1). The exceptions in
Section 337(n)(2) do not apply to this situation (because the disclosure would not be to an
employee of the Commission, an employee of the U.S. government, or an employee of Customs
and Border Protection). 19 U.S.C. § 1337(n)(2). Similarly, this situation does not fall into the
exception which authorizes the Commission to transmit the record of an investigation to U.S.
District Court in certain circumstances. 28 U.S.C. § 1659. OUII is therefore of the view that
disclosure of the documents by Apple is not permitted by Section 337.

1

Inv. No. 337-TA-745 has been designated for non-participation by OUII under the the
Commission’s Supplement to the Strategic Human Capital Plan 2009-2013 (issued Jan. 2011).
OUII is a party to the other three investigations.

-3Turning to the Protective Orders in place in the four investigations at issue, OUII is of the
view that these Orders similarly do not authorize the relief sought by Apple. Each of the
Protective Orders states that “[i] the absence of written permission from the supplier or an order
by the Commission or the administrative law judge, any confidential documents or business
information submitted in accordance with the provisions of paragraph 2 above shall not be
disclosed to any person” other than those specifically listed in the Order (i.e., outside counsel
and experts, Commission employees, etc.). Inv. No. 337-TA-714, Order No. 2, ¶ 3 (April 26,
2010); Inv. No. 337-TA-745, Order No. 1, ¶ 3 (Nov. 3, 2010); Inv. No. 337-TA-750, Order No.
1, ¶ 3 (Nov. 30, 2010); Inv. No. 337-TA-797, Order No. 1, ¶ 3 (Aug. 12, 2011). Moreover, two
of the Protective Orders specifically state that “[i]nformation obtained pursuant to the
Commission’s protective order, however, may be produced to the district court under the district
court protective order only with the consent of the suppliers of that information.” Inv. No. 337TA-714, Order No. 2, ¶ 6; Inv. No. 337-TA-745, Order No. 1, ¶ 6. Here, Apple has apparently
been unable obtain the permission from all of the involved parties. OUII is therefore of the view
that the Protective Orders in the four investigations at issue do not allow disclosure of
confidential business information from those investigations in the District Court proceeding. Cf.
Viscofan S.A. v. United States Int’l Trade Comm’n, 787 F.2d 544, 547-48(Fed. Cir. 1986)
(describing Commission’s refusal to declassify confidential information for use in a foreign court
proceeding, noting the Commission’s statement that “‘[e]vidence in a section 337 is gathered
solely for the purposes of that proceeding.’”).
OUII further notes that the present situation is clearly distinguishable from the situation
at issue in In re International Trade Commission, 444 Fed. Appx. 480 (Fed. Cir. Aug. 2, 2002),

-4wherein the Federal Circuit authorized the use of confidential information in a parallel district
court proceeding. In that case, the parties were the same in both proceedings, and the decision
“did nothing more than allow a few attorneys, who are bound by protective orders, to review
documents that the vast majority of attorneys involved in the case already may review.” Id. at
482. Here, however, the District Court action does not involve the same parties or (apparently)
the same attorneys as the Commission investigations, and thus it is not simply a matter of
allowing a few additional attorneys to view the information. Moreover, the District Court
protective order, even assuming that the information is designated as “highly confidential –
attorneys’ eyes only,” does not offer the same protections as the Commission Protective Order
(for example, at least jurors, mediators, and other any person designated by the court, would be
able to see the confidential information). (Motion, Ex. 4, ¶ 9). Simply put, the Commission has
always viewed its ability to gather and protect confidential business information as crucial to its
ability to perform its mission. See generally Akzo N.V. v. United States Int’l Trade Comm’n, 808
F.2d 1471, 1482-85 (Fed. Cir. 1986). When it was conducting the four investigations at issue in
this Motion, the Commission represented to the entities that submitted confidential business
information that, unless they gave permission, it would only be used for purposes of that specific
investigation. Information has been submitted in reliance on that guarantee, and the Commission
should not now allow that information to be used for other purposes.
Finally, OUII is not unsympathetic to Apple’s problem – the District Court has
apparently directed Apple to produce information that the Commission (through the Protective
Orders) has directed it not to produce. Nevertheless, this same information may be available to
the District Court through alternative methods (e.g., by subpoena directly from the entities that

-5originally supplied the information (who are free to disclose their own information regardless of
the Protective Orders)). In addition, OUII notes that three of the four investigations at issue are
still pending,2 and it would be possible for the Commission to order the parties in those
investigations to set forth any objections they may have to allowing their confidential
information to be used in the District Court proceeding (although there would still potentially be
questions about third party CBI). At base, however, OUII submits that the Commission should
not, without more, allow Apple to use confidential information gathered solely for purposes of a
Commission investigation in a U.S. District Court case involving different parties.
For all of the above reasons, Apple’s motion should be denied.
Respectfully submitted,
/s/ David O. Lloyd
___________________________________
Lynn I. Levine, Director
David O. Lloyd, Supervisory Attorney
OFFICE OF UNFAIR IMPORT INVESTIGATIONS
U.S. International Trade Commission
500 E Street, S.W., Suite 401
Washington, D.C. 20436
[phone]
[phone] (Fax)
May 7, 2012

2

Inv. No. 337-TA-714 has been terminated. Under the terms of the protective order, all
confidential information from that investigation should have been returned or destroyed. See
337-TA-714, Order No. 2, ¶ 18.

Investigation No. 337-TA-797
Investigation No. 337-TA-714
Investigation No. 337-TA-750
Investigation No. 337-TA-745

CERTIFICATE OF SERVICE
The undersigned certifies that on May 7, 2012, he caused the foregoing RESPONSE OF THE
OFFICE OF UNFAIR IMPORT INVESTIGATIONS TO APPLE’S MOTION TO
PRODUCE CONFIENTIAL INFORMATION IN DISTRICT COURT PROCEEDINGS to
be filed with the Secretary (in electronic format), served by hand upon Chief Administrative Law
Judge Charles E. Bullock and Administrative Law Judge E. James Gildea (2 copies each), and
served upon the parties (1 copy each) in the manner indicated below:
For Apple, Inc.:
G. Brian Busey, Esq.
Morrison & Foerster LLP
2000 Pennsylvania Ave., NW, Suite 6000
Washington, D.C. 20006
[phone]
[phone] (Fax)
[e-mail]

BY E-MAIL & FIRST-CLASS MAIL

Sonal N. Mehta
Weil Gotshal & Manges
201 Redwood Shores Pkwy
Redwood Shores, CA 94065
[phone]
[e-mail]

BY E-MAIL & FIRST-CLASS MAIL

Mark G. Davis, Esq.
Weil, Gotschal & Manges
1300 Eye Street, NW
Washington, D.C. 20005
[e-mail]
[e-mail]

BY E-MAIL & FIRST-CLASS MAIL

Mark D. Fowler, Esq.
DLA Piper LLP (US)
2000 University Avenue
East Palo Alto, CA 94303
[e-mail]

BY E-MAIL & FIRST-CLASS MAIL

For Elan Microelectronics Corporation:
Sean DeBruine, Esq.
Alston & Bird LLP
275 Middlefield Road
Suite 150
Menlo Park, CA 94025-4008
[phone]
[e-mail]

BY E-MAIL & FIRST-CLASS MAIL

For Motorola Mobility, Inc.:
Charles F. Schill, Esq.
Steptoe & Johnson LLP
1330 Connecticut Avenue, NW
Washington, DC 20036
S&[e-mail]
[e-mail]

BY E-MAIL & FIRST-CLASS MAIL

For HTC Corporation, HTC America, Inc. and Exedea, Inc.:
Amy H. Candido, Esq.
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
[e-mail]

BY E-MAIL & FIRST-CLASS MAIL

/s/ David O. Lloyd
David O. Lloyd
Supervisory Attorney
OFFICE OF UNFAIR IMPORT INVESTIGATIONS
U.S. International Trade Commission
500 E Street, SW, Suite 401
Washington, DC 20436
[phone]
[phone] (Facsimile)