ITC Amends Discovery Procedures in Section 337 Patent Cases
The International Trade Commission issued a final rule to amend the discovery provisions of its Rules of Practice and Procedure for Section 337 patent investigations. The rule adopts an October 2012 proposed rule with minor changes (see 12100423). Under the new procedures, discovery of electronically stored information will be limited, administrative law judges will be allowed to limit discovery in certain cases, and new provisions are added on privileged information and attorney work product. The final rule is effective June 20.
Sign up for a free preview to unlock the rest of this article
If your job depends on informed compliance, you need International Trade Today. Delivered every business day and available any time online, only International Trade Today helps you stay current on the increasingly complex international trade regulatory environment.
The ITC began this rulemaking process after 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.
After issuing its proposed rule in October, the ITC received mostly favorable comments, it said. As such, it only made minor changes to the proposed provisions that were “technical” and “non-substantive.”
Limitations on Discovery, Procedures for Privilege & Work Product Claims
The ITC is amending 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. Previous subsections (c) and (d) are being renumbered as subsections (f) and (g).
New 19 CFR 210.27(c) limits discovery of electronic information in cases where the information is not reasonably accessible because of undue burden or cost. It also provides for motions to compel discovery even if the information is not reasonably accessible, and allows the administrative law judge to put conditions on discovery of electronic information.
New 19 CFR 210.27(d) requires 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 also requires 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.
New 19 CFR 210.27(e) provides 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 also sets forth deadlines for privilege disputes.