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International Trade Commission ALJ Holds that Relying on Pre-Suit Testing Waives Privilege Protection

A recent order from International Trade Commission Administrative Law Judge Elliott provides helpful guidance regarding a common ITC discovery dispute: whether a party may withhold from discovery as work product pre-suit test results and methods where those results and methods were relied upon in forming the pleaded allegations of the complaint or to support a party’s contentions.  ALJ Elliott concluded that relying on pre-suit testing constitutes a waiver of privilege and that such materials are discoverable. 

In Certain Multi-Stage Fuel Vapor Canister Systems and Activated Carbon Components Thereof, the complainants withheld various test details from the respondents on the basis of privilege.  On July 15, 2019, the respondents filed a motion to compel the production of the test details.  The respondents made three arguments. First, attorney work product protection does not apply because facts, such as “test results[,] are not privileged.”  Second, even if a privilege existed, the complainants waived it when they relied on the testing as a sword to show that the products at issue met claim elements in the complaint and contentions.  Third, even if the work product protection applied, the discovery was still appropriate due to the respondents’ “substantial need for, and undue burden in obtaining, materials” related to the subject test methods and results. 

These arguments were partially successful.  ALJ Elliott rejected the idea that facts are not privileged—facts, like test results, created in anticipation of litigation and pursuant to counsel’s instructions, are privileged.  However, if the facts are relied upon, waived, or subject to a substantial need from an opposing party, then they are not shielded from discovery.  Here, the complainants withheld testing results and methods that they used as support for their infringement and technical domestic industry contentions.  That reliance alone waived any privilege protection and, accordingly, ALJ Elliott ordered that the complainants must produce the relied upon testing details.  This order came with an important caveat, though: there was no larger subject-matter waiver.  The waiver, and corresponding production, was cabined to only the testing that the complainants actually relied on, not all testing performed.  This conclusion follows from the Supreme Court’s decision nearly 45 years ago in U.S. v. Nobles, 422 U.S. 225, 240-41 (1975), which stand for the proposition that the scope of waiver is commensurate with the use of the material that would otherwise be protected. 

This case is a useful reminder that complainants at the ITC should apply rigor in their approach to testing prior to filing suit, and should take care when using such pre-suit evidence during Section 337 investigations.  For example, a blanket reference in discovery responses to complaint claim charts, which include pre-suit testing, may well expose such testing results and methods to disclosure.  Due to the heightened pleading requirements under the Commission rules, many complainants include detailed and extensive claim charts at the pleading stage.  But as this case shows, relying during the pleading stage or during discovery on attorney-guided testing included in those charts can be a double-edged sword.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume IX, Number 253


About this Author

 Andrew H. DeVoogd Member Boston Mintz Patent Litigation Licensing & Technology Transactions International Trade Commission Strategic IP Monetization & Licensing Federal District Court IP Due Diligence

Drew is an experienced patent litigator and trial attorney whose work encompasses a broad range of technologies. He regularly represents clients in high stakes International Trade Commission investigations involving some of the world's largest technology companies. He also litigates patent matters and other business disputes in federal district courts around the country, and advises clients in complex IP licensing and related transactions. Drew excels at helping clients make sense of nuanced legal issues while developing effective strategies to protect and leverage their intellectual...

Kara Grogan Trade & Patent Attorney Mintz Levin

Kara focuses her practice on Section 337 cases in the International Trade Commission, patent litigation, and assisting clients with licensing agreements. She has experience in drafting motions, discovery requests, and license arrangements. She works with clients in a broad range of industries, including consumer products and technology.

Kara was a Law Clerk at Mintz in 2018. While attending law school, she served as a law clerk in the Office of Unfair Import Investigations at the US International Trade Commission; a legal intern at a Massachusetts-based global athletic footwear and apparel company; and a judicial intern for the Hon. George A. O’Toole Jr., who is now a Senior US District Court Judge for the District of Massachusetts. In law school, she was a staff member and a publications editor for the Northeastern University Law Review.

Prior to attending law school, Kara was a paralegal at two intellectual property law firms: one based in Massachusetts and the other in Connecticut. In those roles, she conducted legal research, reviewed discovery, and drafted interrogatories for US patent litigation. She also helped prepare US patent and trademark applications and foreign filings. Earlier, she was an account executive at a sports and entertainment sponsorship and marketing agency in Connecticut and a seasonal partnership marketing employee with the National Hockey League.