University of Denver

ITC Proposes New Rules to Limit E-Discovery in Patent Infringement Cases

IAALS Intern

The U.S. International Trade Commission (ITC) has published a Notice of Proposed Rulemaking in the Federal Register. The ITC's proposed rules apply to 337 investigations, which involve allegations that a competitor is importing patent-infringing goods. The proposed rules closely follow the Federal Rules of Civil Procedure and  seek to "make patent-infringement disputes more affordable by placing limitations on electronic discovery."

Under the current rules, a responding party must produce all requested information, no matter the cost or time this would take. However, under the ITC's proposed new rules, a responding party would be able to forego production of information which the party identifies as “not reasonably accessible because of undue burden or cost.” The requesting party could then file a motion to compel, which would require the responding party to show that the information is not reasonably accessible.

Additionally, the new rules address inadvertent privilege waiver by creating a set of procedures that permit parties to make claims of attorney-client privilege. The new rules also incorporate Fed. R. Civ. P. 26(a)(2)(C)'s procedure for protective orders, which allows an administrative judge to limit discovery if the judge decides a request is duplicative or can be obtained from other, less-burdensome sources.