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U.S. International Trade Commission Issues Long-Awaited Rule Amendments to Section 337 Practice

By Wilson Sonsini Goodrich & Rosati

On April 26, 2018, the International Trade Commission (ITC) published its long-awaited amendments to its Rules of General Application, Adjudication, and Enforcement. The amendments address a host of issues including the splitting or severance of investigations, early resolution on potentially dispositive issues, subpoena practice, and other procedures intended to address concerns about investigations conducted under Section 337 of the Tariff Act of 1930 (19 U.S.C. Section 1337).

The ITC first published proposed amendments on September 24, 2015, in a Notice of Proposed Rulemaking for 19 C.F.R. Parts 201 and 210 (NOPR) and received comments from six entities, including law firms, legal organizations, and a group of industry participants.

The ITC indicates that it believes the amendments will increase the efficiency of its Section 337 investigations and reduce the burdens and costs on the parties and the agency.

Several amendments address early rulings or requests for the same on potentially dispositive issues that would dispose of the entire investigation, including codifying the ITC’s 100-day pilot program. In addition, the amendments authorize the administrative law judge (ALJ) to hold expedited hearings on such issues. An ALJ will have discretion to stay discovery of any remaining issues during the pendency of the 100-day proceeding. An initial determination ruling on a potentially dispositive issue in a 100-day proceeding is due within 100 days of institution of an investigation so designated. These amendments are reflected in Rules 210.10(b)(3), 210.42(a)(3) and 210.43(a)(1). Although the NOPR had proposed permitting ALJs to designate potentially dispositive issues for inclusion in a 100-day proceeding and for parties to file requests for such by motion, the ITC declined to institute these provisions in view of concerns expressed by the commentators.

A pair of amendments, to Rules 210.10(a) and 210.14, respectively, permit the ITC to institute separate investigations based on a single complaint or permit the presiding ALJ to sever an investigation into two or more investigations where necessary to allow efficient adjudication. The ITC clarified the proposed rule so that the ITC can determine to institute multiple investigations based on a single complaint “for efficient adjudication.” The ITC declined to provide specific criteria in favor of flexibility, but noted that severance would likely occur where the complaint alleges a significant number of unrelated technologies, diverse products, unrelated patents, and/or unfair methods of competition or unfair acts such that the resulting investigation, if implemented as one case, may be unduly unwieldy or lengthy. The ITC expects that the Office of Unfair Import Investigations will raise the issue of possible multiple investigations with complainants during pre-institution draft complaint review process where concerns arise. An ALJ may determine to sever an investigation into two or more investigations at any time prior to or upon thirty days form institution and may be based upon a motion from any party. The severed investigations will be assigned to the same ALJ unless reassigned at the discretion of the chief ALJ.

Proposed amendments to Rule 210.32(e) sought to clarify subpoena practice and to bring the ITC’s subpoena practice in closer conformity with the Federal Rules of Civil Procedure. The amendments provide that a party upon which a subpoena has been served may file an objection to the subpoena or motion to quash within ten days of receipt of the subpoena or as the ALJ may provide. In particular, the ITC sought to capture the burden shifting of the Federal Rules of Civil Procedure such that when a subpoenaed entity files and objection, the burden shifts to the requesting party, requiring the requester to file for relief. The ITC’s purpose was to require the requesting party to prove that information it seeks form the subpoenaed party is relevant and not burdensome. The amendments clarify that that after an objection is made and negotiations fail, the requesting party must provide notice before seeking judicial enforcement. The ITC noted that the ALJ may potentially require that the parties meet and confer prior to the filing of a request for judicial enforcement.

Additional amendments address a host of issues, including clarifying rules regarding sanctions for abuse of discovery, conforming the preservation of privilege between counsel and expert witnesses to practice in federal district court, allowing the use of agreed-upon designated deposition testimony in lieu of live witness testimony, and affording parties in enforcement and temporary relief proceedings the opportunity for a hearing.

For more information on practice before the ITC or related matters, please contact any member of the intellectual property litigation and counseling practice at Wilson Sonsini Goodrich & Rosati.

Compliments of Wilson Sonsini Goodrich & Rosati, member of the EACCNY