Proposed Changes in Patent Litigation E-discovery Rules

The United States International Trade Commission (ITC) is an independent federal agency who provides information and data to the Executive Branch, the Office of the United States Trade Representative, and Congress to assist with U.S. trade policy.   One of the areas that the ITC focuses on is patent litigation.  Electronic discovery, or E-discovery, has been the forefront of proposed changes with the ITC rules of practice and procedure.  Perhaps more than any other part of the law, E-discovery is a major part of patent litigation.  After researching and analyzing the process of E-discovery, the ITC came up with a proposed set of rule changes involving E-discovery in an attempt to stop the unnecessary requests from opposing parties which are rarely used at trial and are financially and time costly to the party providing the discovery.

The current rule on discovery lists the scope of discovery as any matter, not privileged, that is relevant to a claim or defense of any party.  Making the process even more arduous for parties is that even if the request from the opposing party is concerning inadmissible evidence, no objection may be made as long as the request appears “reasonably calculated to lead to the discovery of admissible evidence.”  The commission notes that while most electronic information is easy to access, there is some electronically stored information that is difficult and costly for the party to obtain.  For this reason, the proposed rule change would be that a party does not have to provide the requested discovery if it “is not reasonably accessible because of undue burden or cost.”  While this may seem as a disadvantage to parties requesting information, the ITC included a section where parties who are denied the information can file a motion to compel the information that is being denied.  The party whom the information is being requested from must then show that the information is not reasonably accessible because of undue burden or cost.  After this the administrative judge will then decide the issue on whether to order discovery or deny the request.  The judge also has the power to order the party requesting the information to pay the cost reasonably necessary for the other party to obtain the information.

Another aspect of the proposed rule changes deals with the attorney-client privilege and electronic communication.  From the beginning of a lawsuit until a settlement is reached or the jury reads the verdict, the attorneys on both sides of the case are in constant communication.  With electronic communication between opposing counsel becoming increasingly more common, the concept of inadvertent disclosure has also become increasingly more common in recent years.  Inadvertent disclosure is where an attorney, in the process of communicating electronically with the opposing attorney, inadvertently sends information to the opposing attorney that is privileged and cannot be used at trial.  However, when that information is sent to a third party the privilege may be waived and the information can then be used at trial.  Jurisdictions have taken one of three approaches to this issue; the privilege is always waived, never waived, or the most recent trend among jurisdictions is that it depends on the facts of the specific case.  If the proposed rule changes applied, the Commission would expect administrative judges to apply an approach similar to the third approach discussed above in which the judge would examine the circumstances and analyze factors such as steps the party took to reasonably prevent disclosure of the information, how important the information was and several other factors.

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