Rules of Adjudication and Enforcement, 29618-29624 [2013-11998]

Agencies

• INTERNATIONAL TRADE COMMISSION

[Federal Register Volume 78, Number 98 (Tuesday, May 21, 2013)]
[Rules and Regulations]
[Pages 29618-29624]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2013-11998]


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INTERNATIONAL TRADE COMMISSION

19 CFR Part 210


Rules of Adjudication and Enforcement

AGENCY: International Trade Commission.

ACTION: Final rule.

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SUMMARY: The United States International Trade Commission 
(``Commission'') amends its Rules of Practice and Procedure concerning 
adjudication and enforcement. The amendments address concerns that have 
arisen about the scope of discovery in Commission proceedings under 
section 337 of the Tariff Act of 1930. The intended effect of the 
amendments is to reduce expensive, inefficient, unjustified, or 
unnecessary discovery practices in agency proceedings while preserving 
the opportunity for fair and efficient discovery for all parties.

DATES: Effective Date: June 20, 2013.
    Applicability Date: This regulation is applicable to investigations 
instituted after June 20, 2013.

FOR FURTHER INFORMATION CONTACT: Cathy Chen, telephone 202-205-2392, or 
Clark S. Cheney, telephone 202-205-2661, Office of the General Counsel, 
United States International Trade Commission. Hearing-impaired 
individuals are advised that information on this matter can be obtained 
by contacting the Commission's TDD terminal at 202-205-1810. General 
information concerning the Commission may also be obtained by accessing 
its Internet server at https://www.usitc.gov.

SUPPLEMENTARY INFORMATION: 

Background

    Section 335 of the Tariff Act of 1930 (19 U.S.C. 1335) authorizes 
the Commission to adopt such reasonable procedures, rules, and 
regulations as it deems necessary to carry out its functions and 
duties. This rulemaking was undertaken to address concerns that have 
arisen about the scope of discovery in Commission proceedings under 
section 337 of the Tariff Act of 1930 (19 U.S.C. 1337) (``section 
337''). The Commission is amending its rules governing investigations 
under section 337 in order to increase the efficiency of its section 
337 investigations.
    For some time, the Commission has been considering proposals to 
improve procedures relating to discovery in proceedings under section 
337 generally and to improve procedures relating to the discovery of 
electronically stored information (``e-discovery'') specifically. On 
July 19, 2011, The George Washington University Law School hosted a 
forum on e-discovery in section 337 investigations. Presenters at the 
forum stated that parties to section 337 investigations often search 
and produce large volumes of information stored in electronic format to 
satisfy discovery obligations in section 337 proceedings but that only 
a small fraction of that information is admitted into the investigation 
record. Presenters questioned whether the potential benefit of 
discovered materials outweighs the costs associated with current 
discovery obligations. Presenters also compared e-discovery procedures 
in various district courts with discovery procedures at the Commission 
and made various proposals for improving the Commission's procedures.
    The Commission has considered, inter alia, e-discovery proposals 
from the International Trade Commission Trial Lawyers Association; a 
draft proposal on e-discovery from the International Trade Commission 
Committee of the American Bar Association Intellectual Property 
section; a model e-discovery order prepared by the Federal Circuit 
Advisory Council; e-discovery provisions in a pilot program underway in 
the U.S. District Court for the Southern District of New York; e-
discovery standards promulgated by the U.S. District Court for the 
District of Delaware; a model order regarding e-discovery in patent 
cases issued by the U.S. District Court for the Eastern District of 
Texas; ground rules promulgated by administrative law judges at the 
Commission; and analogous portions of the Federal Rules of Civil 
Procedure that concern limitations on discovery and that concern e-
discovery.
    Some of the materials considered by the Commission describe a risk 
of inadvertent disclosure of privileged information or attorney work 
product during the production of electronically stored information. 
Accordingly, the Commission has also considered provisions in the 
Federal Rules of Civil Procedure and the Federal Rules of Evidence 
concerning the discovery of privileged or protected information.
    After reviewing the foregoing materials and other information, the 
Commission published a notice of proposed rulemaking (NOPR) in the 
Federal Register at 77 FR 60952 (Oct. 5, 2012), proposing to amend the 
Commission's Rules of Practice and Procedure to adopt certain rules 
relating to discovery generally, to e-discovery specifically, and to 
the discovery of privileged information and attorney work product.
    Although the Commission considered the proposed rules to be 
procedural rules which are excepted from notice-and-comment under 5 
U.S.C. 553(b), the Commission invited the public to comment on all of 
the proposed rules. The NOPR requested public comment on the proposed 
rules within 60 days of publication of the NOPR. The Commission 
received a total of eight (8) sets of comments, one each from the 
American Bar Association, Section of Intellectual Property Law 
(``ABA''); the American Intellectual Property Law Association 
(``AIPLA''); Aderant; the law firm of Adduci, Mastriani & Schaumberg 
LLP (``AMS''); the law firm of Weil, Gotshal & Manges LLP on behalf of 
Cisco Systems, Inc., Dell Inc., Ford Motor Company, Hewlett-Packard 
Company, Intel Corporation, Micron Technology, Inc., and Toyota Motor 
Corporation and its U.S. subsidiary Toyota Motor Sales, U.S.A., Inc. 
(collectively, ``the Submitting Companies''); the Association of 
Corporate Counsel (``ACC''); Ms. Rosa Concepcion; and the ITC Trial 
Lawyers Association (``ITC TLA'').
    The Commission carefully considered all comments that it received. 
The Commission's response is provided below in a section-by-section 
analysis. The Commission appreciates the time and effort the 
commentators devoted to providing comments on the NOPR.

Regulatory Analysis of the Amendments to the Commission's Rules

    The Commission has determined that the final rules do not meet the 
criteria described in section 3(f) of Executive

[[Page 29619]]

Order 12866 (58 FR 51735, Oct. 4, 1993) and thus do not constitute a 
significant regulatory action for purposes of the Executive Order.
    The Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is 
inapplicable to this rulemaking because it is not one for which a 
notice of final rulemaking is required under 5 U.S.C. 553(b) or any 
other statute. Although the Commission chose to publish a notice of 
proposed rulemaking, these rules are ``agency rules of procedure and 
practice,'' and thus are exempt from the notice-and-comment requirement 
imposed by 5 U.S.C. 553(b).
    These final rules do not contain federalism implications warranting 
the preparation of a federalism summary impact statement pursuant to 
Executive Order 13132 (64 FR 43255, Aug. 4, 1999).
    No actions are necessary under the Unfunded Mandates Reform Act of 
1995 (2 U.S.C. 1501 et seq.) because the final rules will not result in 
expenditure in the aggregate by State, local, and tribal governments, 
or by the private sector, of $100,000,000 or more in any one year, and 
will not significantly or uniquely affect small governments, as defined 
in 5 U.S.C. 601(5).
    The final rules are not major rules as defined by section 804 of 
the Small Business Regulatory Enforcement Fairness Act of 1996 (5 
U.S.C. 801 et seq.). Moreover, they are exempt from the reporting 
requirements of the Contract With America Advancement Act of 1996 (Pub. 
L. 104-121) because they concern rules of agency organization, 
procedure, or practice that do not substantially affect the rights or 
obligations of non-agency parties.
    The amendments are not subject to section 3507(d) of the Paperwork 
Reduction Act (44 U.S.C. 3507(d)) because no new collection of 
information is being conducted.

Overview of the Amendments to the Commission's Rules

    Many of the final rules set forth in this notice are identical to 
the correspondingly numbered proposed rules published in the NOPR on 
October 5, 2012. For many of the proposed rules, only positive comments 
were received or no comment was received. The Commission found no 
reason to change those proposed rules on its own (except for certain 
technical, non-substantive changes) before adopting them as final 
rules. Thus, the preamble to those unchanged proposed rules is as set 
forth in the section-by-section analysis of the proposed rules found in 
the Federal Register at 77 FR 60952 (Oct. 5, 2012).
    The final rules contain eight changes from those proposed in the 
NOPR. These changes are summarized here.
    First, with regard to Sec.  210.27(d)(3), relating to general 
limitations on discovery, the Commission has determined to replace the 
phrase ``the responding person . . . has stipulated to the facts 
pertaining to the issue'' with ``the responding person . . . has 
stipulated to the particular facts pertaining to a disputed issue.''
    Second, with regard to Sec.  210.27(d)(4), relating to general 
limitations on discovery, the Commission has determined to replace the 
phrase ``the public interest'' with ``matters of public concern.''
    Third, the Commission has determined to limit Sec.  210.27(e)(2), 
relating to claiming privilege or work product protection, to 
``document[s] produced in discovery.'' Accordingly, the word 
``information'' has been replaced with ``document'' where appropriate.
    Fourth, also with regard to Sec.  210.27(e)(2), relating to 
claiming privilege or work product protection, the Commission has 
determined to replace the phrase ``[w]ithin five 5 days after the 
conference'' with the phrase ``[w]ithin 5 days after the conference,'' 
and replace all other phrases ``within 5 days '' and ``[w]ithin five 5 
days after the notice'' with the phrase ``[w]ithin 7 days of service of 
the notice.''
    Fifth, with regard to Sec.  210.27(e)(2)(i), relating to claiming 
privilege or work product protection, the Commission has determined to 
replace the phrase ``[t]he notice shall identify the information 
subject to the claim using a privilege log'' with ``[t]he notice shall 
identify the information in the document subject to the claim, 
preferably using a privilege log.''
    Sixth, with regard to Sec.  210.27(e)(2)(ii), relating to claiming 
privilege or work product protection, the Commission has determined to 
add the sentence: ``In connection with the motion to compel, the party 
may submit the document in camera for consideration by the 
administrative law judge.''
    Seventh, with regard to Sec.  210.27(e)(3), relating to claiming 
privilege or work product protection, the Commission has determined to 
replace the phrase ``[t]he administrative law judge may deny any motion 
to compel information claimed to be subject to the agreement'' with 
``[t]he administrative law judge may decline to entertain any motion 
based on information claimed to be subject to the agreement.''
    Eighth, with regard to Sec.  210.27(e)(4), relating to claiming 
privilege or work product protection, the Commission has determined to 
explicitly clarify that: ``Parties may enter into a written agreement 
to set a different period of time for compliance with any requirement 
of this section without approval by the administrative law judge unless 
the administrative law judge has ordered a different period of time for 
compliance, in which case the parties' agreement must be approved by 
the administrative law judge.''
    A comprehensive explanation of the differences between the final 
rules and the proposed rules is provided in the section-by-section 
analysis below. The section-by-section analysis includes a discussion 
of all modifications suggested by the commenters. The commentary in the 
NOPR published on October 5, 2012, is considered part of the preamble 
to these final rules, to the extent that such commentary is not 
inconsistent with the discussion below. This notice concludes with 
amendatory language to effect the amendments to the Commission rules. 
The amendatory language includes certain technical, non-substantive 
changes required for formal purposes by the Office of the Federal 
Register.

Section-by-Section Analysis of the Amendments to the Commission's Rules

Part 210

Subpart E--Discovery and Compulsory Process

Section 210.27
    The current section 210.27(b) is similar to Federal Rule of Civil 
Procedure 26(b)(1) and provides that the scope of discovery in section 
337 investigations includes any matter, not privileged, that is 
relevant to a claim or defense of any party. The current rule also 
provides that a person may not object to a discovery request as seeking 
inadmissible evidence if the request appears reasonably calculated to 
lead to the discovery of admissible evidence. Unlike Federal Rule of 
Civil Procedure 26(b), however, the current rule contains no 
limitations on e-discovery and provides little guidance on when it 
would be appropriate for an administrative law judge to limit discovery 
generally. Therefore, the NOPR proposed to amend section 210.27(b) to 
state that the scope of discovery in a Commission investigation may be 
limited in certain ways, as discussed further in the amendments. Only 
positive comments were received regarding this amendment and, 
therefore, the final rule is unchanged from the proposed rule.
    The NOPR proposed to add to section 210.27 new paragraphs (c), (d), 
and (e),

[[Page 29620]]

which address certain concerns associated with discovery generally, 
with e-discovery specifically, and with the discovery of privileged 
information and attorney work product. The NOPR, therefore, proposed to 
renumber current paragraphs (c) and (d) as paragraphs (f) and (g).
    Paragraph (c) provides specific limitations on electronically 
stored information. As discussed in the Committee Notes on the 2006 
Amendments to Federal Rule of Civil Procedure 26(b)(2), electronic 
storage systems often make it easier to locate and retrieve 
information. These advantages are properly taken into account in 
determining the reasonable scope of discovery in a particular case. But 
some sources of electronically stored information can be accessed only 
with substantial burden and cost. In a particular case, these burdens 
and costs may make the information on such sources not reasonably 
accessible.
    Similar to Federal Rule of Civil Procedure 26(b)(2)(B), paragraph 
(c) states that a ``person need not provide discovery of electronically 
stored information from sources that the person identifies as not 
reasonably accessible because of undue burden or cost.'' Nevertheless, 
if electronically stored information is withheld from discovery because 
it is not reasonably accessible, the party seeking the information may 
file a motion to compel discovery of the electronically stored 
information. Paragraph (c) provides that a person from whom discovery 
is sought must show, in response to a motion to compel discovery or in 
a motion for a protective order, that the information is not reasonably 
accessible because of undue burden or cost. If that showing is made, 
the proposal would allow the administrative law judge to order 
discovery from such sources if the party seeking the discovery shows 
good cause, considering certain limitations found in paragraph (d). 
Paragraph (c) also allows the administrative law judge to specify 
conditions for e-discovery.
    The AIPLA, the ITC TLA, and the ABA generally support the adoption 
of proposed paragraph (c). Ms. Rosa Concepcion is concerned that the 
new rule will delay the discovery process and increase the inefficiency 
of section 337 investigations if parties are forced to file motions to 
compel under proposed paragraph (c). As with Federal Rule of Civil 
Procedure 26(b)(2)(B), the ``good cause'' requirement in paragraph (c) 
will encourage the parties to focus their discovery requests on 
information that is available from accessible sources and that is 
relevant to the issues in Rule 210.27(b)(1)-(4). The ``good cause'' 
requirement will also encourage the parties to evaluate potential 
benefits against any burdens and costs before burdensome e-discovery is 
requested. Therefore, the final rule is unchanged from the proposed 
rule (except that the word ``paragraph'' has been substituted for the 
word ``section'' and vice versa).
    The Submitting Companies support the Commission's adoption of the 
``not reasonably accessible'' standard for objecting to discovery 
requests, but argue that more explicit limitations are also necessary 
to ensure that e-discovery is appropriately focused. Specifically, the 
Submitting Companies suggest that the proposed rule should be modified 
to limit the number of document custodians to five per party with 
narrowly-tailored search term limitations, absent good cause shown. The 
Commission declines to adopt the suggested change. Paragraph (d) 
requires the administrative law judge to limit the frequency or extent 
of discovery if, for example, the discovery sought is duplicative, the 
discovery can be obtained from a less burdensome source, or the burden 
of the proposed discovery outweighs its likely benefit. When the 
circumstances of paragraph (d) are met, the mandatory limitations under 
that paragraph may take a variety of forms, including, as the 
Submitting Companies suggest, a limit on the number of document 
custodians whose electronic files will be searched and a limit on the 
search terms used in such a search. Furthermore, under paragraph (c), 
the administrative law judge may, by order, impose conditions for and 
limits on discovery as required by the specific circumstances of a 
given investigation. Thus, paragraphs (c) and (d) provide the 
administrative law judge with appropriate flexibility in setting 
conditions for and limits on discovery without tying those conditions 
to a specific number that may be inappropriate in some circumstances.
    The Submitting Companies also suggest that proposed paragraph (c) 
should be modified to explicitly define sources that are ``not 
reasonably accessible'' as including but not limited to the following: 
disaster recovery media; forensic data (such as slack space, deleted 
files, or fragments); archival electronic media, or other electronic 
information created or used by electronic media no longer in use, 
maintained in redundant electronic storage media, or for which 
retrieval otherwise involves undue burden of substantial cost; 
voicemails; instant messages (IMs); and cell phone text messages. The 
Submitting Companies further suggest that the proposed rule should be 
modified to prohibit discovery from personal computers, absent good 
cause shown. The Commission declines to adopt the suggested changes. 
The Commission does not believe an explicit identification of 
categories of sources that may be ``not reasonably accessible'' is 
necessary. As stated in the NOPR, it is difficult to define 
comprehensively in a rule the different types of technological features 
that may affect the burdens and costs of accessing electronically 
stored information. The Commission notes that even active electronic 
information typically stored on local hard drives, networked servers, 
and distributed devices can be unduly burdensome to discover under 
certain circumstances. The Commission intends that the discovery 
provisions in paragraph (c) will be utilized by parties and 
administrative law judges in a variety of circumstances.
    AMS suggests adding the requirement that responding persons 
specifically identify which sources of electronically stored 
information were not searched for responsive information because they 
are considered ``not reasonably accessible.'' The Commission believes 
the proposed rule and the associated commentary in the NOPR already 
address this concern and, therefore, the Commission declines to adopt 
this suggested modification. Paragraph (c) requires the person 
responding to the discovery request to ``identif[y] as not reasonably 
accessible'' the sources of electronically stored information. Like the 
Federal Rule of Civil Procedure 26(b)(2)(B), the rule does not spell 
out exactly when or how the identification must occur. However, as 
explained in the Committee Notes on the 2006 Amendments to Federal Rule 
of Civil Procedure 26(b)(2), the ``identification should, to the extent 
possible, provide enough detail to enable the requesting party to 
evaluate the burdens and costs of providing the discovery and the 
likelihood of finding responsive information on the identified 
sources.'' Identification of the sources of electronically stored 
information under paragraph (c) should likewise provide such detail.
    In addition, the ABA suggests that the commentary make clear than 
an administrative law judge has the authority to order cost-shifting. 
The commentary in the NOPR addresses this issue, explaining that the 
administrative law judge may, in appropriate circumstances, exercise 
his discretion to condition discovery upon payment by the requesting 
party of part or all of the reasonable costs of obtaining information 
from sources that are not reasonably accessible. Thus, while the

[[Page 29621]]

ordinary practice is for the producing party to bear any costs 
associated with responding to a discovery request, there may be 
circumstances in which the administrative law judge may require the 
party requesting the discovery to bear the costs associated with 
responding to the request.
    The NOPR states that proposed paragraph (d) requires the 
administrative law judge to limit discovery otherwise allowed under the 
Commission's rules in certain circumstances. As with the Federal Rule 
of Civil Procedure 26(b)(2)(C), paragraph (d) requires limitations on 
discovery if the administrative law judge determines that the discovery 
sought is duplicative or can be obtained from a less burdensome source; 
the party seeking discovery has had ample opportunity to obtain the 
information; or the burden of the proposed discovery outweighs its 
likely benefit. The ITC TLA and AMS state that proposed paragraph 
(d)(2) should not be adopted because the compressed discovery schedule 
and speed of section 337 proceedings obviate the need for this new 
rule. The Commission responds that the prompt timeline of Commission 
investigations does not excuse wasteful discovery practices. The 
Commission believes paragraph (d)(2) will promote more efficient 
discovery practices in section 337 proceedings.
    The ITC TLA and AMS also believe the language of proposed paragraph 
(d)(2) is vague and could lead to unnecessary motions practice. As to 
these concerns, the Commission contemplates that the case law developed 
under Federal Rule of Civil Procedure 26(b)(2)(C) may provide guidance 
for the application of paragraph (d)(2) and aid in curtailing 
unwarranted motion practice. Since the Commission believes that 
paragraph (d)(2) will reduce undue costs and burdens of discovery in 
section 337 investigations, the final paragraph (d)(2) is unchanged 
from the proposed rule.
    The NOPR also states that proposed paragraph (d) differs from 
Federal Rule of Civil Procedure 26(b)(2)(C) in two respects. First, the 
NOPR states that proposed paragraph (d) requires the administrative law 
judge to limit discovery when the person from whom discovery is sought 
has waived the legal position that justified the discovery or has 
stipulated to the facts pertaining to the issue to which the discovery 
is directed. The AIPLA states that the Commission should clarify 
situations in which stipulations to certain facts would limit the scope 
or extent of discovery. In particular, the AIPLA suggests modifying the 
language of proposed paragraph (d) to recite: ``the responding person 
has waived the legal position that justified the discovery or has 
stipulated to the particular facts to which the discovery is 
directed.'' The AIPLA believes that its proposed change would clarify 
that a stipulation will obviate the need for discovery of a particular 
fact (e.g., that an accused product has been imported), but that it 
will not obviate the need for discovery of other facts pertaining to a 
disputed issue (e.g., the characteristics of that product at the time 
of importation). Similarly, the ITC TLA and AMS are concerned that a 
stipulation or a unilateral waiver of a legal position on a single 
issue will foreclose discovery that is common or relevant to more than 
one issue. The ITC TLA and AMS propose to add to proposed paragraph 
(d)(3) the requirement that ``the requesting party has failed to show 
good cause for pursuing the discovery.'' Having considered the 
suggested changes and concerns raised by the AIPLA, the ITC TLA and 
AMS, the Commission has determined to modify proposed paragraph (d)(3) 
to clarify that the restriction on discovery would be limited only as 
to the ``particular facts'' that are the subject of the stipulation and 
that pertain to a disputed issue to which the discovery is directed. 
The Commission notes that discovery as to other facts pertaining to the 
disputed issue or relevant to a different issue would not be restricted 
under subparagraph (d)(3) of the final rule.
    Second, proposed paragraph (d)(4) required the administrative law 
judge to limit discovery where the burden or expense of the proposed 
discovery outweighs its likely benefit, considering the needs of the 
investigation, the importance of the discovery in resolving the issues 
to be decided by the Commission, and the public interest. The ABA and 
AMS suggest deleting the clause ``considering the needs . . . public 
interest'' because, in their view, it is not clear what this clause 
adds to the proposed rule considering that the proposed rule already 
mandates consideration of whether ``the burden or expense of the 
proposed discovery outweighs its likely benefit.'' In the alternative, 
the ABA asks the Commission for guidance on interpreting and 
distinguishing between ``needs of the investigation'' and the 
``importance of the discovery in resolving the issues to be decided by 
the Commission.'' The AIPLA, the ABA and AMS also suggest that the 
Commission clarify the reference to the ``public interest'' in proposed 
paragraph (d)(4) because it is unclear whether the proposed paragraph 
would invoke the public interest factors identified in 19 U.S.C. 
1337(d) and (e).
    In response to the comments received, the Commission has determined 
to modify proposed paragraph (d)(4) to state that the administrative 
law judge must evaluate, inter alia, whether the burden or expense of 
the proposed discovery outweighs its likely benefit, considering 
``matters of public concern.'' This language is adopted to avoid 
confusion with the statutory public interest factors identified in 19 
U.S.C. 1337(d), (e), (f), and (g). Those statutory public interest 
factors may be relevant to an analysis under paragraph (d)(4), but the 
``matters of public concern'' in the adopted rule are not limited to 
the factors listed in section 337. Paragraph (d)(4), as proposed and as 
adopted, is similar to Federal Rule of Civil Procedure 
26(b)(2)(C)(iii). The Advisory Committee notes on the 1983 amendments 
to Federal Rule of Civil Procedure 26(b) state that Rule 26(b) is 
intended to address the problem of discovery that is disproportionate 
to the individual investigation as measured by such matters as its 
nature and complexity, the limitations on a financially weak litigant 
to withstand extensive opposition to its discovery requests, and the 
potential relationship between the substantive issues in the 
investigation and matters of public concern. The Commission anticipates 
that the 1983 Advisory Committee notes on Federal Rule of Civil 
Procedure 26(b) and relevant federal case law interpreting that Rule 
may inform the interpretation of ``matters of public concern'' in 
paragraph (d)(4).
    In response to other comments on proposed paragraph (d)(4), the 
Commission responds that the phrases ``the needs of the investigation'' 
and the ``importance of the discovery in resolving the issues to be 
decided'' are similar to phrases found in Federal Rule of Civil 
Procedure 26(b)(2)(C)(iii). Federal case law interpreting Rule 26 may 
therefore inform the interpretation of those phrases in adopted 
paragraph (d)(4). The Commission also adds that ``the needs of the 
investigation'' may include the procedural schedule and the 
investigation target date. Additionally, when evaluating ``the 
importance of the discovery in resolving the issues to be decided,'' 
the administrative law judge may consider whether a request seeks 
documents or information necessary for the disposition of the claims 
and defenses asserted in the investigation.
    The NOPR states that proposed paragraph (e) would add new 
provisions concerning privileged information and attorney work product. 
As explained in

[[Page 29622]]

the Advisory Committee Notes concerning Federal Rule of Evidence 502, 
litigation costs necessary to protect against waiver of attorney-client 
privilege or attorney work product have become prohibitive due to the 
concern that any disclosure (however innocent or minimal) will operate 
as a subject matter waiver of all protected communications or 
information. This concern is especially troubling in cases involving e-
discovery. Adding to this uncertainty, no Commission rule requires the 
production of a privilege log when a person withholds materials from 
discovery based on an assertion of privilege or work product 
protection. Privilege log provisions are currently ordered by the 
administrative law judges in their respective ground rules.
    The NOPR also states that proposed paragraph (e) would mitigate 
these concerns by providing a uniform set of procedures under which 
persons can make claims of privilege or work product production using a 
privilege log. Paragraph (e)(1)(i) requires the person withholding 
information to ``expressly make the claim'' of privilege or work 
product protection at the time the person responds to the discovery 
request. Paragraph (e)(1)(ii) requires a person who has made a claim of 
privilege or work product protection to produce within 10 days of 
making the claim a written privilege log. The rule does not specify the 
format or style of the log, so long as it identifies the information 
that has been withheld sufficiently to enable the requester to assess 
the claim without revealing the information at issue.
    The AIPLA states that the language ``within 10 days of making the 
claim'' in proposed paragraph (e)(1)(ii) is potentially unclear and 
suggests modifying the language to recite ``within 10 days of the date 
on which the document is withheld or provided in redacted form.'' The 
ABA and AMS recommend amending paragraph (e)(1)(ii) to recite ``within 
10 days of withholding the information'' produce to the requester a 
privilege log in order to better comport with the realities of 
discovery practice. The Commission declines to adopt these changes. The 
Commission believes discovery will be most efficient when relevant 
privilege and work product issues are identified as soon as possible. 
The temporal requirements found in proposed paragraph (e) are 
unambiguous. The claim of privilege or work product protection under 
paragraph (e)(1)(i) must be express and must be made at the time that a 
person responds to a discovery request. When a person responds to a 
discovery request in writing, such as in a response to written 
interrogatories or a response to written requests for admission, the 
claim of privilege or work product protection should be made in the 
same writing. When a person responds to a discovery request orally, 
such as in a deposition, the claim of privilege or work product 
protection should be made orally. Claims of privilege or work product 
protection should not be made frivolously. A claim of privilege or work 
product protection under paragraph (e)(1)(i) should be made with an 
appropriate amount of specificity considering the circumstances at the 
time of making the claim.
    The ITC TLA and AMS suggest amending proposed paragraph (e)(1)(ii) 
to state ``within 10 days of making the claim, or by such other time as 
the parties may agree, produce to the requester a privilege log . . . 
.'' The commentators' amendment permits the parties to enter into a 
procedural agreement or stipulation without the need for approval by 
the administrative law judge to produce a privilege log later than 10 
days after making a claim and/or jointly waive the obligation to 
produce privileged documents generated or obtained after the filing of 
the complaint. The Commission declines to adopt this suggested 
modification. Paragraph (e)(3) allows the parties to enter into an 
agreement to waive compliance with proposed paragraph (e)(1) for 
documents, communications, and items created or communicated within a 
time period specified in the agreement without the need for approval by 
the administrative law judge. Should parties wish the assistance of the 
administrative law judge in resolving privilege disputes, however, the 
Commission believes that parties should be required to promptly present 
their disputes to each other and to the administrative law judge as 
required under the rule.
    The NOPR states that some proposals considered by the Commission 
contained a so-called ``claw-back'' rule that would categorically 
preclude a finding of a waiver of privilege or work product protection 
when otherwise protected materials are inadvertently produced in 
discovery. The ``claw-back'' proposals considered by the Commission 
left some question as to whether, in order to avoid a finding of 
waiver, the holder of the privilege or protection must take reasonable 
steps to prevent disclosure, as is required by Federal Rule of Evidence 
502. Paragraph (e) is not a categorical ``claw-back'' rule, and would 
not supplant any applicable waiver doctrine. The Commission expects 
administrative law judges to apply federal and common law when 
determining the consequences of any allegedly inadvertent disclosure. 
That law would include consideration of whether the holder of the 
privilege or protection took reasonable steps to prevent disclosure of 
the information and other considerations found in Federal Rule of 
Evidence 502.
    Proposed paragraph (e)(2) outlines procedures for addressing 
information that is produced in discovery but is later asserted to be 
privileged or protected work product. As proposed, paragraph (e)(2) 
does not distinguish between information produced in documents or 
information given in answer to a question during an oral deposition. 
The AIPLA believes that it may not always be practical at the time when 
the privilege or attorney work product issue is first discovered (e.g., 
in a deposition) for the person making the claim to provide notice 
using a privilege log as required by proposed paragraph (e)(2). While 
the AIPLA agrees that the notice should include at least the same level 
of detail of information as defined under proposed paragraph (e)(1), 
the AIPLA suggests modifying proposed paragraph (e)(2) to recite that 
the notice is ``preferably in writing when the circumstances permit'' 
and that use of a privilege log is not required so long as the notice 
provides ``a reasonably detailed description of the information subject 
to the claim in sufficient detail to allow the person(s) who received 
the information to understand the basis for the claim and facts 
surrounding whether waiver occurred.''
    In response to the comments received, the Commission has determined 
to limit paragraph (e)(2) to apply only to documents produced in 
response to a discovery request. As stated in the NOPR, the Commission 
proposed paragraph (e)(2) in response to concerns from the public that 
privilege or work product protection may be waived when an otherwise 
privileged or protected document is allegedly inadvertently produced in 
response to a request that requires searching and producing a large 
volume of information. Those concerns are not usually justified when a 
deponent answers a question at an oral deposition or when counsel 
prepares written answers to interrogatories or requests for admission. 
Accordingly, the Commission has determined that the procedures in 
paragraph (e)(2) will only apply to documents produced in discovery. In 
addition, paragraph (e)(2) provides that the notice is preferably made 
using a privilege log as defined under paragraph (e)(1). When 
circumstances do not permit using a privilege log, the notice should be 
made

[[Page 29623]]

in writing and identify the same level of detail of information as 
required in a privilege log.
    The AIPLA also states that given the international character of 
section 337 proceedings, five days is insufficient time to address 
privilege or attorney work product issues relating to documents that 
have already been produced. Furthermore, Aderant and AMS comment that 
clarity is needed with respect to the event triggering the five day 
deadlines in proposed paragraph (e)(2) (e.g., the date of the notice 
itself, the date the notice is received, or the date of service of the 
notice). The Commission has determined to amend proposed paragraph 
(e)(2) to clarify that ``service of the notice'' triggers the deadlines 
by which a party must ``return, sequester, or destroy the specified 
information and any copies,'' ``take reasonable steps to retrieve the 
information if the person disclosed it to others before being 
notified,'' and by which ``the claimant and the parties shall meet and 
confer.'' In addition, the final rule changes these deadlines from 
within 5 days to ``[w]ithin 7 days of service of the notice.''
    In connection with proposed paragraph (e)(2), the AIPLA also states 
that the person who received the information subject to the claim 
should be permitted to use the content of the information to challenge 
the claim before the administrative law judge to the extent permitted 
by applicable rules and the laws of professional responsibility, 
privilege, and protection for trial preparation material. In the 
alternative, the AIPLA suggests that the person who received the 
information subject to the claim be able to submit the information in 
camera for consideration by the administrative law judge in connection 
with a motion for compel. The Commission has determined to adopt in the 
final rule the AIPLA's suggestion of allowing the already-produced 
document subject to the claim to be submitted in camera for 
consideration by the administrative law judge in connection with a 
motion to compel.
    Proposed paragraph (e)(3) would allow parties to enter into a 
written agreement to waive compliance with paragraph (e)(1), including 
the requirement of producing a privilege log. The AIPLA believes that 
the exemption from proposed paragraph (e)(1) provided in proposed 
paragraph (e)(3) is too narrow, and suggests revising the proposed rule 
to allow the parties to agree in writing to exempt specified categories 
of documents. Relatedly, the ITC TLA and AMS are concerned that 
proposed paragraph (e)(3) would eliminate any claw-back of privilege 
documents that are not logged on a party's privilege log by agreement 
among the parties. The Commission has determined to modify the proposed 
rule in response to the comments received. When appropriate precautions 
are taken, documents and information protected by privilege or work 
product protection are generally not discoverable. Established state 
and federal laws require a claimant to take reasonable steps to prevent 
disclosure of privileged or protected information. The Commission 
considers the maintenance and production of a privilege log to be a 
reasonable requirement for those who (1) wish to maintain privilege or 
work product protection for withheld materials, and (2) wish the 
assistance of an administrative law judge in resolving privilege or 
work product disputes. In view of these underlying principles, the 
Commission determined that administrative law judges should have the 
discretion to find a waiver of privilege or work product protection 
when allegedly privileged or protected information is produced and the 
parties have agreed to relieve themselves of the duty to maintain a 
privilege log. The Commission notes that nothing in the final rule 
prohibits the parties from implementing their own claw-back procedure 
for privileged documents that are not logged on a party's privilege log 
as part of the parties' agreement. The final rule clarifies, however, 
that when parties have agreed among themselves to relieve themselves of 
the duty of maintaining a privilege log, the administrative law judge 
has the discretion to decline to entertain motions based on disputes 
over information that should otherwise be logged under paragraph 
(e)(1).
    The AIPLA states that the Commission should adopt an additional 
provision that would allow the parties to enter agreements, and/or the 
administrative law judge to enter orders, specifying times for 
compliance with the requirements of paragraph (e) that may differ from 
the proposed rule. To that end, the Commission has determined to 
clarify in the final paragraph (e)(4) that parties may enter into a 
written agreement regarding deadlines for resolving privilege disputes. 
The parties' written agreement would not need the approval of the 
administrative law judge unless the judge has ordered a different 
period of time for compliance. In the absence of an agreement or order, 
the deadlines specified in the rule control.
    Finally, the ACC suggests that further guidance may be necessary as 
to (1) whether the use of advanced analytical software applications 
could be characterized as ``reasonable steps'' to avoid inadvertent 
disclosure; (2) how inadvertent disclosures should be treated as a 
matter of waiver doctrine; (3) how the costs of discovery should be 
imposed on the requestor of the information; and (4) whether the 
objectives of the Commission's discovery reform are being met by 
conducting regular, transparent reviews. With respect to the first and 
second topics, the NOPR states that the Commission expects 
administrative law judges to look to established federal and common law 
regarding waiver of privilege when deciding specific waiver disputes. 
Each dispute should be decided on its own facts. The Commission 
believes it would be inappropriate to state in a rule that a specific 
technological practice is reasonable, particularly as information 
technology changes rapidly. With respect to the third topic, the 
Commission believes that administrative law judges are in the best 
position to determine how cost shifting should be implemented, if at 
all, based on the specific facts of a particular discovery dispute. 
Accordingly, the Commission declines to mandate a particular cost-
shifting paradigm by rule. With respect to the fourth topic, the 
Commission has determined that the ACC suggestion is beyond the scope 
of the proposed rule, which may be a topic for a future rulemaking.

List of Subjects in 19 CFR Part 210

    Administration practice and procedure, Business and industry, 
Customs duties and inspection, Imports, Investigations.

    For the reasons stated in the preamble, the United States 
International Trade Commission amends 19 CFR Part 210 as follows:

PART 210--ADJUDICATION AND ENFORCEMENT

0
1. The authority citation for part 210 continues to read as follows:

    Authority:  19 U.S.C. 1333, 1335, and 1337.

Subpart E--Discovery and Compulsory Process

0
2. Amend Sec.  210.27 by:
0
a. Adding one sentence at the end of paragraph (b);
0
b. Redesignating paragraphs (c) and (d) as paragraphs (f) and (g); and
0
c. Adding new paragraphs (c), (d), and (e).
    The additions and revisions read as follows:

[[Page 29624]]

Sec.  210.27  General provisions governing discovery.

* * * * *
    (b) * * * All discovery is subject to the limitations of paragraph 
(d) of this section.
    (c) Specific Limitations on Electronically Stored Information. A 
person need not provide discovery of electronically stored information 
from sources that the person identifies as not reasonably accessible 
because of undue burden or cost. The party seeking the discovery may 
file a motion to compel discovery pursuant to Sec.  210.33(a). In 
response to the motion to compel discovery, or in a motion for a 
protective order filed pursuant to Sec.  210.34, the person from whom 
discovery is sought must show that the information is not reasonably 
accessible because of undue burden or cost. If that showing is made, 
the administrative law judge may order discovery from such sources if 
the requesting party shows good cause, considering the limitations 
found in paragraph (d) of this section. The administrative law judge 
may specify conditions for the discovery.
    (d) General Limitations on Discovery. In response to a motion made 
pursuant to Sec. Sec.  210.33(a) or 210.34 or sua sponte, the 
administrative law judge must limit by order the frequency or extent of 
discovery otherwise allowed in this subpart if the administrative law 
judge determines that:
    (1) The discovery sought is unreasonably cumulative or duplicative, 
or can be obtained from some other source that is more convenient, less 
burdensome, or less expensive;
    (2) The party seeking discovery has had ample opportunity to obtain 
the information by discovery in the investigation;
    (3) The responding person has waived the legal position that 
justified the discovery or has stipulated to the particular facts 
pertaining to a disputed issue to which the discovery is directed; or
    (4) The burden or expense of the proposed discovery outweighs its 
likely benefit, considering the needs of the investigation, the 
importance of the discovery in resolving the issues to be decided by 
the Commission, and matters of public concern.
    (e) Claiming Privilege or Work Product Protection. (1) When, in 
response to a discovery request made under this subpart, a person 
withholds information otherwise discoverable by claiming that the 
information is privileged or subject to protection as attorney work 
product, the person must:
    (i) Expressly make the claim when responding to a relevant question 
or request; and
    (ii) Within 10 days of making the claim produce to the requester a 
privilege log that describes the nature of the information not produced 
or disclosed, in a manner that will enable the requester to assess the 
claim without revealing the information at issue. The privilege log 
must separately identify each withheld document, communication, or 
item, and to the extent possible must specify the following for each 
entry:
    (A) The date the information was created or communicated;
    (B) The author(s) or speaker(s);
    (C) All recipients;
    (D) The employer and position for each author, speaker, or 
recipient, including whether that person is an attorney or patent 
agent;
    (E) The general subject matter of the information; and
    (F) The type of privilege or protection claimed.
    (2) If a document produced in discovery is subject to a claim of 
privilege or of protection as attorney work product, the person making 
the claim may notify any person that received the document of the claim 
and the basis for it.
    (i) The notice shall identify the information in the document 
subject to the claim, preferably using a privilege log as defined under 
paragraph (e)(1) of this section. After being notified, a person that 
received the document must do the following:
    (A) Within 7 days of service of the notice return, sequester, or 
destroy the specified document and any copies it has;
    (B) Not use or disclose the document until the claim is resolved; 
and
    (C) Within 7 days of service of the notice take reasonable steps to 
retrieve the document if the person disclosed it to others before being 
notified.
    (ii) Within 7 days of service of the notice, the claimant and the 
parties shall meet and confer in good faith to resolve the claim of 
privilege or protection. Within 5 days after the conference, a party 
may file a motion to compel the production of the document and may, in 
the motion to compel, use a description of the document from the notice 
produced under this paragraph. In connection with the motion to compel, 
the party may submit the document in camera for consideration by the 
administrative law judge. The person that produced the document must 
preserve the document until the claim of privilege or protection is 
resolved.
    (3) Parties may enter into a written agreement to waive compliance 
with paragraph (e)(1) of this section for documents, communications, 
and items created or communicated within a time period specified in the 
agreement. The administrative law judge may decline to entertain any 
motion based on information claimed to be subject to the agreement. If 
information claimed to be subject to the agreement is produced in 
discovery then the administrative law judge may determine that the 
produced information is not entitled to privilege or protection.
    (4) For good cause, the administrative law judge may order a 
different period of time for compliance with any requirement of this 
section. Parties may enter into a written agreement to set a different 
period of time for compliance with any requirement of this section 
without approval by the administrative law judge unless the 
administrative law judge has ordered a different period of time for 
compliance, in which case the parties' agreement must be approved by 
the administrative law judge.
* * * * *

     Issued: May 15, 2013.

    By Order of the Commission.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2013-11998 Filed 5-20-13; 8:45 am]
BILLING CODE 7020-02-P