By Eric Schweibenz
At the ITC, each of the Administrative Law Judges (“ALJ”) employ their own unique set of Ground Rules.  Most ALJs have a ground rule that requires production of existing English language translations of any document produced during discovery.  See, e.g., Chief ALJ Luckern Ground Rule 4(v) in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658).

The bounds of this particular ground rule were tested in Certain Microlithographic Machines and Components Thereof (Inv. No. 337-TA-468) (Order No. 8).  In that investigation, respondent ASML (citing Ground Rule 4(v)) sought to compel all existing English language translations of more than 100,000 pages of Japanese language documents produced in discovery by complainant Nikon.  In response, Nikon argued that of the approximately 32,000 documents (totaling around 600,000 pages) that it produced, its counsel selected and compiled 304 of those documents to be translated for further study and use in the litigation.  Nikon further argued that the selection and compilation of these documents represented Nikon’s counsel’s work product and thus were immune from discovery. 

ALJ Bullock disagreed and ordered Nikon to produce English language translations for all of subject documents.  Specifically, ALJ Bullock determined that “[i]f during discovery the supplier of a document has it translated in order to aid in screening its contents for relevance, materiality, and non-privilege prior to production, and the supplier determines at the conclusion of that process that the original document should be produced, it follows that all copies of that document, and thus all translations, are equally relevant, material and non-privileged, and are therefore subject to production as well.  If that were not the case, then the original document would not have to be produced either.”

Different results may occur in district court litigation where translations withheld under similar assertions of the attorney work-product doctrine may be given protection against challenges for their disclosure.  By way of comparison, in Fleischmann v. McDonald’s Corp., 244 F.R.D. 434 (N.D. Ill. 2007), McDonald's similarly asserted that translations created at the direction of an attorney in preparation of litigation constituted attorney work-product. There, the district court agreed with McDonald’s. See also Brunetti v. Federal Bureau of Investigation, 357 F. Supp. 2d 97, 110 (D.D.C. 2004) (holding that a letter translated into Italian qualified as work-product, as it was prepared by an attorney in anticipation of litigation); In re Air Crash Disaster Near Warsaw, Poland on May 9, 1987, 1996 U.S. Dist. LEXIS 22712 (E.D.N.Y. Nov. 19, 1996) (holding that because English translations were prepared in anticipation of litigation at the direction of attorneys, those documents constituted attorney work-product and were thus immune from discovery).

Accordingly, ITC litigants should be aware that when preparing English language translations of foreign-language documents produced in discovery, such English language translations may be required to be produced.

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