Assertion of Privilege as to Prior Settlements Precludes Use of Settlements to Show Nonobviousness

The ALJ reaffirmed on remand that complainant's electronic camera patent was invalid as obvious even in light of the secondary considerations of nonobviousness. "[Complainant] has not established a nexus between the [patent-in-suit] and [its] licensing program. . . . I also find it quite telling that [complainant] refused to answer [respondent’s] interrogatories about its settlement discussions with the various licensees that signed licenses resulting from litigation -- [complainant] asserted a Settlement Privilege. I agree with [respondent] that [complainant] cannot have it both ways. That is, [it] cannot assert settlement as a shield in one hand to deny information and then attempt to argue that same settlement as a sword to establish a secondary consideration when it refused to explain what actually went on."

Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof, 337-TA-703 (ITC June 27, 2012, Order) (Pender, ALJ).