The International Trade Commission recently proposed to amend its rules of practice and procedure concerning discovery, including electronic discovery, to address concerns that have arisen about the scope of discovery in ITC investigations.1
Background – Why Are Changes Being Proposed?
For some time, the Commission has been aware of concerns about the scope of electronic discovery in ITC investigations and the attendant costs that come with it. At a July 2011 forum at the George Washington Law School, presenters stated that parties often search and produce large volumes of information stored in electronic format to satisfy discovery obligations, but that only a small fraction of the information is admitted into the record. Comparisons between e-discovery procedures in various district courts and discovery procedures at the Commission were provided that demonstrated the breadth of the ITC's current discovery rules. Before issuing its own proposal, the Commission considered electronic discovery procedures in various district courts and analogous portions of the Federal Rules of Civil Procedure concerning limitations on discovery and the discovery of electronically stored information, and proposals and model orders from various bar associations and other organizations.
What Are The Proposed Changes?
The proposed changes fall into three categories: specific limitations on electronically stored information, general limitations on discovery, and claims to privilege or work product protection.
Electronically Stored Information. The proposed changes provide that a person need not provide discovery of electronically stored information from sources that the person identifies as not reasonably accessible because of undue burden or cost. The party seeking discovery may file a motion to compel, and in turn the party withholding discovery must show that the information is not reasonably accessible because of undue burden or cost. Discovery may be ordered by the administrative judge if good cause is shown.
General Limitations. These changes will prove helpful to parties defending against what they believe to be unreasonable electronic discovery requests. The administrative law judge may order the frequency or extent of discovery to be limited if any of the following conditions are satisfied:
- • The discovery sought is unreasonably cumulative or duplicative, or can be obtained from another source that is more convenient, less burdensome, or less expensive;
- • The party seeking discovery has had ample opportunity to obtain the information by discovery in the investigation;
- • The responding person has waived the legal position that justified the discovery or has stipulated to the facts pertaining to the issue to which the discovery is directed; or
- • The burden or expense of the proposed discovery outweighs its likely benefit, considering the needs of the investigation, the importance of the discovery in resolving the issues to be decided by the Commission, and the public interest.
Privilege And Work Product. These proposed rules, similar to FRCP 26(b)(5)(A), require that a claim of privilege be made, and that the nature of the information be described. Unlike the federal rules, the Commission has proposed specific privilege log requirements: privilege logs must include dates; authors; recipients; employers and positions for each author, speaker, or recipient; general subject matter; and type of privilege claimed, and must be prepared within 10 days of making the claim of privilege. A specific procedure is set forth to resolve the privilege dispute. Of note, the Commission considered, but ultimately rejected, a categorical "claw-back" rule. To the extent that parties may consider "document dumps" in future ITC investigations, if this rule is enacted in its current form such behavior could have adverse consequences.
Where Does This Leave Us?
The new proposed rules, if enacted, provide an opportunity to rein in the cost and burden of discovery for litigants in ITC investigations. Reaction to date has been positive. In a November 16 letter the American Bar Association Section of Intellectual Property Law signalled its approval of the proposed rules by stating that "the Section supports the Commission's efforts to implement limitations on discovery." Indeed, the ABA's specific comments are intended to further strengthen the proposed limits. Although the pace, risk, and intensity of ITC investigations is unlikely to abate, these rules should at least help in lessening the burdens associated with electronic discovery. The proposed rules, subject to a notice and comment period until December 4, 2012, if enacted will also help to bring discovery procedures in ITC investigations more in line with those of district courts.