On April 19, 2013, the U.S. International Trade Commission published final amendments to certain of its Rules of Practice and Procedure that govern Section 337 investigations, 78 Fed. Reg. 23474 (April 19, 2013). These amendments were first proposed in January, and according to the Federal Register notice, little has changed since then. The Federal Register notice states that it is effective May 20, 2013; however, it is not clear whether or how the amendments limiting discovery apply to pending investigations.
It appears the changes with the biggest impact on practitioners are:
Numeric limitations on interrogatories and depositions.
Additional requirements for what must be in a complaint.
Service by express carrier (e.g., FedEx) on a foreign location, resulting in five extra days for responding, not 10, which is the case when service is by regular mail. Since the Commission serves complaints by express delivery, this effectively shortens the time for responses to the complaint and notice of investigation.
Modification to rules governing termination by consent order, including limitations on what activities can be prohibited.
Here are the amendments, in numerical order by rule as they appear in Title 19 of the Code of Federal Regulations.
Changes references to service by “overnight delivery” to “express delivery,” which is defined in 201.16(e) as “a method that would provide delivery by the next business day within the United States and refers to the equivalent express delivery service when the delivery is to a foreign location.” Clarifies how much time is provided when a service like FedEx is used for service on a party located in another country (see modification to Rule 201.16(e)).201.16(a)(4)
Service by express delivery occurs when the document is either submitted to the express delivery service or deposited “in the appropriate container for pick-up.” The summary in the Federal Register notice says that in the event a document is submitted for delivery after the last pick-up, “it is the Commission’s practice to consider the document as being served the following day.”201.16(e)
Extra time after service by express delivery. If delivery is to a domestic location, 1 day is added. If delivery is to a foreign location, 5 days are added.201.16(f)
No time is added to the period for responding when service is by electronic means.210.3
Definition of “ancillary proceeding”
Added a definition of “ancillary proceeding” – same as “related proceeding.”210.4(f)
Makes clear that the record of the proceeding as well as certain filings in TEO matters and ancillary matters must also be filed electronically.210.5(f)
Deadline for public versions of orders
New section of the rule regarding CBI. The Commission and judges must now issue public versions of confidential orders, opinions, etc., within 30 days (can be extended by order). At the request of the judge or Commission, the parties must provide support in the record for any proposed redactions.210.6
Correcting typos regarding computation of time
Corrected several confusing typos in the rule regarding computation of time.210.7
Clarifying technical amendments210.8Public versions of public interest statements
New rule provides that if a public interest statement contains confidential business information, the party can file a public version of the statement one business day later. Applies to complainant’s statements, respondent’s responses, and complainant’s replies thereto. Note that this amendment cuts into the time for a complainant to respond to a confidential statement.210.12(a)(6)
Domestic industry pleading requirements
Requires more particular pleading with respect to the domestic industry allegations. Examples of information that should be included if the domestic industry exists include “facts showing significant/substantial investment and employment,” while examples that should be included if it’s in the process of being established include “facts showing complainant is actively engaged in the steps leading to the exploitation of its intellectual property rights, and that there is a significant likelihood that an industry will be established in the future.” In the past, complaints have asserted almost as an afterthought that if a domestic industry did not exist, it was “in the process of being established.” It appears the Commission wants to get away from this practice.210.12(a)(11)
Specificity in request for relief
Request for relief must specifically state whether complainant is seeking a general exclusion order, limited exclusion order, and/or cease and desist order.210.12(a)(12)
Plain English description of products at issue
New requirement. Complaint must contain a “clear statement in plain English of the category of products accused.” The caption can still read “certain electronic devices” but this statement would further identify the products involved (e.g., phones, tablets, computers). The commentary in the Federal Register notice makes clear that this statement would not be used to construe the scope of the investigation; the scope would still be defined by the caption of the case.210.13(b)
Technical nonsubstantive amendment
Pre-institution amendments to complaint restart the 30-day clock
An amendment to a complaint submitted prior to institution that adds a respondent or an unfair act, including adding a new patent or claim, will restart the clock with respect to the 30-day deadline by which the Commission must vote on whether to institute an investigation. It also restarts the clock for submitting public interest statements.210.14(b)(1)
Motions to add respondent must be served on proposed new respondent
Requires that a motion to amend the complaint by adding a respondent be served on the proposed respondent. This requirement had been in the general rule on motions (210.15) and often overlooked by litigants.210.14(g)
Consolidation of investigations
New rule. Puts the authority to consolidate investigations in the hands of the Commission, but if both investigations are before the same ALJ, the ALJ may consolidate. Point of confusion – the proposed rule included a provision that if the two investigations were before different judges, the chief judge could consolidate the investigations if the two presiding judges agreed. The final rule is silent on the procedure for when the two investigations are before different judges, but the Federal Register notice says the final rule is unchanged from the proposed rule. In at least one instance where this situation arose, the Commission’s investigative attorneys filed consolidation motions before each of the different judges and eventually the chief judge reassigned the investigations to effect the requested consolidation.210.16,
Procedures for notice of default
Clarifying that when a respondent has filed a notice of intent to default, the ALJ does not have to go through the two-step process of first issuing an order to show cause, followed by an initial determination finding the respondent in default.210.21
Judge has discretion to limit service of motion to terminate
The Commission declined to issue a blanket rule providing that confidential motions seeking to terminate on the basis of a settlement agreement need not be served on counsel for co-respondents, but clarified that the ALJ has the discretion to so limit service of the agreement.210.21
Consent order stipulation signed only by respondent
Clarifies the contents of a consent order stipulation; clarifies that only the respondent need sign it.210.21
Motions to terminate based on good cause or consent order and “other agreements”
Brings motions to terminate in line with the rule on terminating by settlement agreement. These motions now must contain a statement that there are no other agreements, written or oral, express or implied, between the parties regarding the subject matter of the investigation; if there are, they must be provided.210.21(c)(4)(iii)
Limits on contents of consent order
The language of consent orders has never been uniform. The rule now states that the Commission will not issue consent orders “with terms beyond those provided for in this section, and will not issue consent orders that are inconsistent with this section.” The rule now requires a statement that the respondent will not engage in certain acts. A consent order should not include prohibitions on other acts.210.28
Limitation on number of depositions (I)
Restricts the number of fact depositions. Complainants: five per respondent or total of 20, whichever is greater. Respondents: As a group, 20. Staff: Can notice 10 fact depositions and can sit in on as many of others as staff wants. Related respondents count as one respondent for this rule. (Note: Rule is silent on how to treat related complainants. If you represent related complainants, it’s probably a good idea to get the judge to address this in a ground rule.) Judge may increase the number of depositions for good cause shown.210.28
Limitation on number of depositions (II)
Each notice to a corporation to designate deponents counts as one deposition.210.29
Limitation on number of interrogatories
Limits the number of interrogatories that can be served on a party to 175. Related respondents treated as one party. (Again, no reference to related complainants.)210.43
Shortening period of time for petitions for review
Shortens the period for petitioning for review of an ID that would terminate the investigation in its entirety on summary determination – from 10 business days to 10 calendar days.210.50
Deadline for public versions of remedy, bonding, and public interest submissions
Public versions of submissions on remedy, bonding, and public interest are due one business day after the filing of the confidential version.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.