E-discovery -- the production of electronic records, such as e-mail, in a legal proceeding -- has become an expensive and time-consuming undertaking for parties involved in litigation before courts and in section 337 investigations before the U.S. International Trade Commission.Because of these concerns, some courts and litigants are exploring ways to limit e-discovery. Given that only a small percentage of electronic documents produced in discovery are ultimately admitted into evidence, many believe that a more focused approach to e-discovery may be warranted.

The USITC has been examining issues relating to e-discovery for nearly a year, gathering input from litigants, academics, district court judges, and bar associations.

In 2010, Chief Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit asked the Federal Circuit Advisory Council to study e-discovery issues and develop an e-discovery model order (suggested language and concepts outlining how e-discovery may be handled during the proceeding) for consideration by district courts in patent cases. On January 11, 2012, Chief Judge Rader and three members of the Council (Council Chairman Ed Reines of Weil, Tina Chappell of Intel Corporation, and John Whealan, Associate Dean of Intellectual Property Studies at the George Washington University School of Law) came to the USITC to present a proposal to streamline e-discovery in section 337 investigations.

The proposal tracks the approach of the district court e-discovery model order that is being adopted in contested matters in several district courts and portions of which are under consideration in others, according to Reines. He described the proposal as flexible, reasonably simple, and easy to administer. Generally speaking, litigants would:

• indicate whether electronic documents such as email are being sought or not;
• presumptively limit the number of custodians (individuals who may have documents that are the subject of discovery requests) whose files will be searched, the locations of those documents, and the search terms that will be used (if litigants exceed the specified limits, they would assume the additional costs);
• use focused search terms limited to specific contested issues; and
• allow privileged documents to be exchanged without losing privilege.

"My colleagues and I greatly appreciate Chief Judge Rader's and the Council's presentation, and it will be a topic of serious discussion within the agency," said USITC Chairman Deanna Tanner Okun. "Our challenge will be to find an optimal solution for our unique proceedings under section 337.

"The Commission recognizes that it is very important to take any reasonable measures we can to cut the costs of section 337 proceedings," she said. "The Commissioners and Administrative Law Judges will be looking at whether and how it might be possible to rein in the costs associated with e-discovery to foster the speed, fairness, and thoroughness of our investigations."

"Our colleagues on the federal bench have been grappling with e-discovery issues in patent cases, as we have, and the USITC ALJs have been following their experimental efforts with interest," said Chief Administrative Law Judge Charles E. Bullock.

"We are grateful to Chief Judge Rader and the Federal Circuit Advisory Council for taking the time to share their ideas with us," he said. "I am optimistic that the USITC will come up with a suitable approach to address litigants' legitimate discovery needs while balancing the costs associated with e-discovery in section 337 investigations."