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Will Patent Infringement Litigation Cost Less Under the ITC’s New E-Discovery Rule?

Here’s something new and different in the patent world: a recent rule established by the U.S. International Trade Commission (ITC) that creates limits on e-discovery in Section 337 patent infringement investigations before the agency.

Last month the ITC published a new e-discovery rule that aims to reduce “expensive, inefficient, unjustified, or unnecessary discovery practices.” Currently, the ITC’s rule contains no limitations on e-discovery and provides little guidance on when it would be appropriate for an administrative law judge to limit discovery. The rule, which will go into effect on June 20, closely resembles the limitations on discovery in the Federal Rules of Civil Procedure.

The new ITC rule tracks Rule 26(b), by allowing parties to challenge a request on the grounds that the data sought is not reasonably accessible because of undue burden or cost. The rule also permits administrative law judges (ALJs) to limit e-discovery where the information sought is duplicative or can be obtained through less costly means. Furthermore, ALJs have discretion to shift costs “in appropriate circumstances” to condition discovery “upon payment by the requesting party of part or all of the reasonable costs of obtaining information from sources that are not reasonably accessible.” Additionally, the amended rule requires parties claiming privilege or work product protection to produce a privilege log within 10 days and provides a mechanism for parties to claw back inadvertently produced privileged documents.

While the new rule meets the agency’s aim of limiting e-discovery, it falls short of the cost-effective restrictions recently set forth in several federal courts’ model orders: provisions in those orders limit requests for e-mail; exclude voicemails, PDAs, and mobile phones from discovery without a showing of good cause; restrict the number of custodians; and, limit the number of search terms to be applied. In fact, comments the ITC received after publishing its proposed rule in October 2012 argued for similar restrictions; the exclusion of disaster recovery media, forensic data, archival electronic media, instant messages, text messages, and data from personal computers. However, the ITC rejected these proposals because the amended rule allows ALJs “appropriate flexibility” to control discovery.  There seems to be an understanding that the ALJs will serve as gatekeepers to ensure that appropriate and reasonable limits are set in the discovery arena.

Overall the new rule should make pursuing Section 337 claims before the ITC more efficient. Still, as with the Federal Rules of Civil Procedure, controversies are likely to arise as to what data is “reasonably accessible” and what level of cost or burden is unreasonable. Although the final rule could have defined these areas more clearly by incorporated additional limitations, and delineating certain boundaries on discovery, parties should be able to achieve similar results through joint discovery stipulations.

Gabriela P. Baron is senior vice president at Conduent. She can be reached at