The Discovery Phase of ITC Investigations

Managing Intellectual Property

Earlier articles in this series have discussed investigations in the United States International Trade Commission related to importation into the US of products accused of patent infringement. An important and immediate discovery phase begins once the ITC has instituted an investigation.
In the discovery phase, each party requests materials and information from the opposing party to develop and to prove each party’s case. 
In the ITC, discovery is generally broad.  There are fewer limitations on the scope of discovery in the ITC than in other US district court litigations. The general position of the ITC is that all requested information should be produced. Discovery requests must be responded to accurately as the response may limit the party’s arguments in the investigation. 
There are three primary forms of discovery:
1. Interrogatories – written questions that must be answered under oath.
2. Requests for Production – requests for documents or objects.
3. Depositions – oral questions directed to a witness who must testify under oath.
Responding to Interrogatories
Interrogatories are usually focused on two areas. The first is to obtain basic information. One focus is the identity of engineers who have worked on the product accused in the investigation. The second focus of interrogatories is typically to obtain the opposing party’s position on legal issues. For example, an interrogatory may ask how the accused product infringes the asserted patent.
As the responses to interrogatories are under oath, the responses will limit the responding party’s arguments. The counsel for the responding party typically writes carefully drafted answers in consultation with and based on information from the responding party.  
Responding to Requests for Production
The ITC places few restrictions on the scope of requests for production. Document production and review is one of the most onerous and expensive aspects of discovery. A respondent for an ITC investigation may expect to be required to produce samples of the accused product and possibly other equipment related to its manufacture. A party should expect to be required to produce all technical documents related to the accused product and the patents at issue.
A party should also expect to produce email. Before gathering email, the parties will typically agree on a list of words. Each party must then search email servers, computers, back-up devices and other locations for email containing any of the agreed words. At the beginning of the discovery process, it is prudent to image the computers of all employees who may have relevant documents.
Once the documents are gathered, the non-electronic documents must be scanned into an electronic form. All documents then receive confidentiality markers and index numbers and are converted into an electronic form that is standard and searchable.
The requested documents may include documents that contain confidential business information. Confidential business information is not a ground to refuse to produce documents. The ITC will issue an order to restrict access to confidential information to only persons who absolutely require access.
The last major form of discovery is the deposition. At a deposition, an attorney for an opposing party asks a witness questions to which the witness must answer under oath. In an ITC investigation, a deposition continues for seven hours each day and may continue for several days.  
Before the deposition, the witness will meet with counsel to learn how to respond to questions, to review possible topics of questions. During the deposition, the witness has his attorney next to him at all times. Although the counsel may not instruct the witness on how to answer any particular question, the witness’ counsel will ensure the questioning does not cover improper topics.
Depositions typically are held near the place of business of the responding party. Depositions may require many weeks and may be quite onerous.
Discovery is expensive and burdensome. The ITC places few restrictions on the scope of discovery and generally requires disclosure of all requested information. Failure to complete discovery properly may have negative repercussions on the result of the investigation.  
By Xiang Wang and Michael Heafey
This article was originally published in Managing Intellectual Property in March 2010.​