Precedential No. 24: TTAB Says Reference to Documents (in Russian) Does Not Satisfy FRCP 33(d)

Applicant WDS responded to certain interrogatories by referencing its business records, pursuant to FRCP 33(b). The documents were in Russian. Opposers moved to compel supplemental responses that did not reference the Russian documents. The Board granted the motion to compel. Johnson & Johnson and RoC International S.A.R.L. v. Obschestvo s ogranitchennoy;otvetstvennostiu "WDS", 95 USPQ2d 1567 (TTAB 2010) [precedential].


Under TTAB precedent, a party seeking to invoke Rule 33(b) must meet three conditions: (1) it "must identify documents which the responding party knows to contain the responsive information, and may not merely agree to provide access to a voluminous collection of records which may contain the responsive information;" (2) it "may not rely on the option to produce business records unless it can establish that providing written responses would impose a significant burden on the party;" and (3) even if the responding party meets the above two requirements and “can identify particular documents in which the inquiring party will find its answers, the inquiring party must not be left with any greater burden than the responding party when searching through and inspecting the records."

Furthermore, "the determination and weighing of the parties’ respective burdens is only necessary and appropriate if the responding party already has established that it would be unduly burdensome for it to provide written answers to the interrogatories, and if its responses to the interrogatories have specified in sufficient detail the business records from which the answers to the interrogatories can be ascertained.” The third requirement, if at issue, often will not be met “because the responding party will have greater familiarity with its own records and will generally have a lesser burden than the inquiring party when searching through the relevant records.”

The Board found that Applicant failed to demonstrate that it would be unduly burdensome to provide separate and full answers to the interrogatories. Furthermore, Applicant failed to specify in detail the records from which the answers may be drawn.

The fact that the documents are in Russian "further complicates matters." The Board was unaware of any precedential decision involving foreign language documents, but several non-precedential decisions favored Opposers' position.

The Board noted that it need not reach the third condition here, but for completeness "and so as to dispel any doubt about the Board's frustration with applicant's approach to discovery," the Board considered that condition anyway. It found that "applicant’s burden to ascertain the answers from its business records is far less than opposers’ burden of surmising an answer, and that opposers’ burden is dramatically increased because the documents are in Russian."

The Board, in short, was not pleased with Applicant's position:

Applicant’s approach clearly thwarts the exchange of discoverable information as Fed. R. Civ. P. 33(d) contemplates because, as stated by opposers, "it forces the responding party first to translate all documents, then to wade through each document in an effort to identify responsive information, and then to guess which of that information was intended by the responding party as comprising the balance of the answer to a given interrogatory."

Finally, the Board pointed out that "[b]y requiring written responses ... in English, the Board is only requiring applicant and its counsel to summarize and explain what they found (when they reviewed the documents for production) and why the responses are contained in the documents."

And so the Board granted the motion to compel.

TTABlog comment: This, I think, cannot be a welcome decision for parties in non-English speaking countries. But you know what they say in Russia: "tough s*#tsky."

Text Copyright John L. Welch 2010.