As part of a patent complaint before U.S. International Trade Commission, entitled In the Matter of Certain Electronic Imaging Devices, Inv. NO. 337-TA-850 (Nov. 19, 2012), one issue was the scope of eDiscovery. This is an administrative proceeding and the parties are not bound by the federal rules of evidence. The International Trade Commission (ITC) has a similar balancing test for discovery disputes: Does the need for broad discovery outweigh the high cost of litigation at the ITC?
In this case, Administrative Law Judge (ALJ) Theodore Essex answered no, and instead entered a protective order with certain limitations on electronically stored information (ESI).
The disagreement was regarding the number of employee custodians that must respond to ESI requests. The complainant (the plaintiff in a judicial court) sought to limit the custodians to 15 key employees, while the respondent sought information from an unlimited amount of custodians. The respondent claims that it already is aware of over 15 custodians who hold information relevant to their defenses.
In reviewing the respondent’s requests, the ALJ noted that one of their arguments for more than 15 custodians initially rested on speculation and inference that an additional invalidated patent was at issue. The ALJ allowed 15 custodians to respond to the ESI requests, and allowed leave to request further good faith discovery from additional custodians after the initial production.