The U.S. International Trade Commission (USITC) is proposing new rules and practices to address concerns raised by parties, the bar, and others regarding e-discovery – the production of electronic records, such as e-mail – in section 337 investigations.

The proposed rulemaking action was announced in a Federal Register notice published on October 5, 2012. The proposed rules also contain provisions regarding claims for privilege and work product protection. The Commission is seeking comments to its proposed new rules by December 4, 2012.

As discussed in an earlier web article on this site, e-discovery has become an expensive and time-consuming undertaking for parties involved in litigation before courts and in section 337 investigations before the USITC. Because of these concerns, some courts and litigants are exploring ways to limit e-discovery. Given that many times only a small percentage of electronically stored information produced in discovery may ultimately be admitted into evidence, a more focused approach to e-discovery may be warranted.

The USITC has been examining issues relating to e-discovery, gathering input from litigants, academics, district court judges, and bar associations. In January 2012, the U.S. Court of Appeals for the Federal Circuit Advisory Council provided the Commission with its proposed model order concerning e-discovery in section 337 investigations. Later that month, the ITC Trial Lawyers Association (ITCTLA) also submitted a proposal regarding e-discovery practices to the Commission.

In formulating its proposed new rules and practices, the Commission reviewed these proposals, as well as a draft e-discovery proposal of the American Bar Association Intellectual Property Section ITC Committee, the e-discovery practices of several district courts, the Federal Rules of Civil Procedure, and the Federal Rules of Evidence. It also consulted with all internal stakeholders, including the USITC Administrative Law Judges, on e-discovery proposals.

Through its proposed new rules and practices, the Commission seeks to mitigate unnecessary burdens and costs to the parties in section 337 investigations and to third parties, and to reduce motions practice before the ALJs. At the same time, the Commission is committed to preserving the rights of the parties to full and fair discovery of relevant non-privileged information.

The Commission notes that the proposed rule changes are part of a package of actions it is proposing to address e-discovery and case management concerns. Other elements include:

• establishing a pilot program to test a case management approach for ALJs to adopt voluntarily, including, among other features, meet and confer requirements, submission to the ALJ of a detailed discovery statement, and an optional preliminary conference to resolve issues identified in the discovery statement.
• creating a USITC model Administrative Protective Order (APO) for the ALJs to use, which includes a source code provision proposed by the ITCTLA; while the model APO could be tailored to address specific circumstances that may arise in a particular investigation, the Commission hopes that a model APO will provide more consistency among investigations and provide parties more certainty as to protections afforded for confidential information in Section 337 proceedings.
• encouraging the ALJs, at their discretion, to incorporate into the ground rules they issue at the beginning of each investigation the ITCTLA proposal regarding production of metadata.

The Commission welcomes comments on the proposed rules through the process outlined in its Federal Register notice.