ITC Proposes Changes to Discovery Procedures in Section 337 Patent Cases
The International Trade Commission issued a proposed rule that would change the discovery provisions of its Rules of Practice and Procedure for Section 337 patent investigations. The proposal would limit discovery of electronically stored information, allow an administrative law judge to limit discovery in certain cases, and add new provisions on privileged information and attorney work product. The ITC said the proposal would reduce expensive, inefficient, unjustified, or unnecessary discovery practices in agency proceedings. Comments on the proposed rule are due Dec. 4.
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Legal associations and presenters at a law school forum in 2011 identified several problems with the discovery process in Section 337 investigations. Parties often search and produce large volumes of information stored in electronic form to satisfy discovery obligations, but only a small fraction of that information is admitted into the investigation record, they said. They also questioned whether the potential benefit of discovered materials outweighs the costs of current discovery obligations. Additionally, current procedures create a risk of inadvertent disclosure of privileged information or attorney work product during discovery of electronic information.
Proposed Limitations on Discovery, Procedures for Privilege & Work Product Claims
To fix these problems, the ITC would amend 19 CFR 210.27 (“General provisions governing discovery”) by adding new subsections (c), (d), and (e) on discovery of electronic information, general discovery procedures, and privileged communications or attorney work product, respectively. Current subsections (c) and (d) would be renumbered as subsections (f) and (g).
Proposed 19 CFR 210.27(c) would limit discovery of electronic information in cases where the information is not reasonably accessible because of undue burden or cost. It would also provide for motions to compel discovery even if the information is not reasonably accessible, and allow the administrative law judge to put conditions on discovery of electronic information.
Proposed 19 CFR 210.27(d) would require the administrative law judge to limit discovery in certain circumstances, including situations where: (1) the discovery is duplicative or can be obtained from a less burdensome source; (2) the party seeking discovery had the opportunity to get the information on its own; or (3) the burden of the discovery outweighs its benefit. It would also require the administrative law judge to limit discovery where the person from whom discovery is sought has waived the legal position that justified the discovery or has stipulated to the facts pertaining to the issue.
Proposed 19 CFR 210.27(e) would provide a set of procedures for claims of privilege or work product production using a privilege log, as well as procedures for determining the consequences of disclosure of information covered by attorney-client privilege or work-product protection. It would also set out deadlines for privilege disputes.