Discovery Before the ITC: The Higher the Stakes, the Higher the Burden

Discovery Before the ITC: The Higher the Stakes, the Higher the Burden

When the U.S. International Trade Commission (ITC) starts a patent-infringement investigation, you’d better buckle up and brace yourself for the ride. ITC investigations under 19 U.S.C. § 1337 (Section 337 investigations) focus on any unfair act in the importation of products into the U.S. These investigations proceed at a fast pace, with trials often occurring within a year after the investigation commences—more than twice as fast as typical cases in U.S. federal courts. Plus, the ITC has a labyrinth of specific rules and regulations governing its procedures.

These rules include an eDiscovery rule enacted in 2013 with the goal of reducing “expensive, inefficient, unjustified, or unnecessary discovery practices.” Specifically, the rule permits parties to challenge discovery requests if the data sought is not reasonably accessible because of undue burden or cost, if it is duplicative, or if it can be obtained through less costly means. However, discovery is still quite broad under the rules. There are no limits on the number of custodians or the number of search terms that parties can request.

The timeline and breadth of ITC investigations mean parties have little time to amass their resources for discovery—particularly their electronic ones. And in patent matters, that can be perilous. Section 337 investigations may threaten a party’s ability to import critical products or to sell those imported products, if the ITC finds the products infringe on a competitor’s patent.

Here are two considerations to keep in mind if you anticipate a patent investigation before the ITC.

  1. Consider where your data is stored.

Given the cross-border nature of these disputes, you need to consider whether the import of data from other locations to the United States will trigger any data privacy laws. Particularly if you’re importing data from the European Union or Asia, you’ll need to consider the potential issues. The European Union’s General Data Protection Regulation (GDPR) can hamper your ability to transfer data if it involves personally identifiable information. Data transfer can be even more challenging if your data is located in China, where you’ll face state secrets laws and other complex laws that might make it nearly impossible to get the data you need.

It’s always a good step to take an inventory of your data now—well before a matter is filed—to avoid running into these issues on a compressed discovery deadline. Then engage the expertise of a seasoned eDiscovery professional who can help you navigate these hurdles.

  1. Use tools to curb the volume of data for export and review.

One way to limit the burden—and potential violations—of moving data between locations is to reduce its volume. Technologies such as near-deduplication , email threading, text extraction and indexing, predictive categorization, and other data analytics tools can accelerate your review.

The time to prepare for an ITC patent infringement investigation is now.

One final note: be aware that ITC investigations are on the rise. In the last decade, filings have nearly doubled, from 37 in 2009 to between 70 and 80 from 2016 to 2018. iDiscover has extensive experience helping parties prepare for these harrowing investigations. For more information on how we can help you meet your eDiscovery obligations before the ITC or any other tribunal, please get in touch.


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