United States: Comments On ITC's Proposed Amendments To Rules, Including Making The 100-Day Pilot Program Permanent

On September 24, 2015, the ITC published a Notice of Proposed Rulemaking ("NOPR") to make several amendments to its Rules of Practice and Procedure, including, inter alia, (1) codifying and expanding the pilot program for early resolution of potentially dispositive issues within 100 days of institution, (2) allowing for institution of multiple investigations based on a single complaint, and (3) requiring the notice of institution to specify the accused products within the scope of the investigation.  See our prior post regarding the NOPR.  Six companies and non-profit organizations, including the Intellectual Property Owners Association ("IPO"), the ITC Trial Lawyers Association ("ITCTLA"), and the ITC Working Group ("ITCWG"), submitted comments on the proposed amendments.  Comments regarding the most significant proposed rules changes are discussed below.

100-Day Program for Designation of Case-Dispositive Issues

Under the proposed rules amendments, the ITC would codify and expand the 100-day pilot program it announced in June 2013 for the identification and early adjudication of potentially dispositive issues.  See our previous client alert.  The pilot program allows the Commission to identify potentially case-dispositive issues in the notice of investigation and directs the presiding Judge to issue an initial determination ("ID") on the designated issues within 100 days of institution.  The proposed rule would expand the pilot program by allowing, within 30 days of institution, (a) parties to file a motion asking the Judge to designate a potentially case-dispositive issue for early ruling; and (b) the Judge, on his or her own initiative, to designate a potentially case-dispositive issue for expedited ruling.  The Judge would issue an ID within 100 days of any such designation.

Commenters generally supported codification of the existing 100-day pilot program.  However,  several commenters expressed concern that the proposed expansion of the program to allow 100-day designations after institution could encourage disruptive motions practice or otherwise delay Section 337 proceedings.  For example, the ITCWG, a group of companies in the technology and automotive industries concerned about the use of the ITC by patent assertion entities, commented that the proposed expansion of the program to allow post-institution designations "may invite motions practice that will likely have no meaningful benefit.  Specifically, it is unlikely that parties or the ALJ will be in a better position in the first 30 days of an investigation to assess whether an issue is more suitable for assignment than the Commission will be during its pre-institution review."  Another concern regarding 100-day designations was raised by the IPO, which urged the Commission to provide for a mandatory stay of discovery on other issues during the 100-day proceeding and during Commission review of the resulting ID to ensure the program did not unintentionally increase the burden and expense of a Section 337 proceeding.  Other commenters suggested that the Judge be afforded additional time to issue an order designating an issue for early ruling beyond the proposed 30 days allotted to parties to move for such a designation; that the Commission clarify what constitutes a "potentially dispositive issue" (e.g., must it be capable of disposing of an entire investigation); and that the rule provide a deadline for the Commission to determine whether to review an ID or issue its own determination on the designated dispositive issue.

Institution of Multiple Investigations Based on a Single Complaint and Severance of an Investigation

Under the proposed rules amendments, the Commission could institute multiple investigations based on a single complaint, where necessary, to limit the number of technologies and/or unrelated patents asserted in a single investigation.  Also, the Administrative Law Judges would have the authority to sever an investigation into two or more investigations prior to or upon issuance of the procedural schedule.

Several commenters asserted that this proposed amendment is unnecessary since the Commission and Judges have consolidated and severed investigations in the past and have expressed concern that the proposed amendment could lead to increased motions practice.  For example, the IPO commented that "the proposed rule's silence regarding whether a severed case stays with the originally assigned administrative law judge might invite motions for severance that are actually attempts at 'administrative law judge shopping.'"  Several commenters also requested that the Commission provide the criteria by which it will evaluate whether to institute multiple investigations based on a single complaint or sever an investigation.  Other commenters suggested that the respondent be allowed to request severance and to object to it.  The ITCTLA suggested that a Judge's decision to sever should be in the form of an order rather than an ID to avoid delays stemming from the review process for IDs.

Identifying Accused Products in Notice of Institution

Under the proposed rules amendments, the notice of institution would have to specify in plain language the accused products that will be within the scope of the investigation.

Most commenters supported the Commission's effort to narrow the products potentially within the scope of an investigation, but suggested that instead of specifying the accused products, the notice of investigation should identify the types or categories of accused products within the scope of the investigation.  For example, the ITCWG expressed concern that complainants in some investigations "seek improper discovery on product types that have not been formally accused" and suggested that the Commission may wish to consider language in the notice specifying the "type of accused products."  In particular, the ITCWG suggested that when software is at issue, the Commission should consider enumerating the specific accused software rather than merely referring to devices, such as smartphones, in the notice.  All commenters except the China Chamber of Commerce for Import & Export of Machinery & Electronic Products ("CCCME") opposed limiting the scope of investigations to the specific products identified in the complaint.  The CCCME proposed that "the description of the scope of the investigation shall include the product code of respondent's alleged infringing product to avoid ambiguity."

Subpoenas

The proposed amendments would clarify that a party served with a subpoena may serve objections to or move to quash the subpoena within 10 days of receipt of the subpoena, with the possibility of requesting an extension of time for good cause shown.

Commenters generally supported the Commission's effort to bring its subpoena practice into closer conformity with the Federal Rules of Civil Procedure.  However, several commenters suggested that the proposed amendments be modified to (a) allow the Judges more flexibility with regard to extensions for serving objections and filing motions to quash subpoenas and (b) provide subpoena recipients with an opportunity to interpose objections before filing a motion to quash.  In this regard, commenters suggested that a "good cause" showing should not be a prerequisite for extending the proposed 10-day period to serve objections or move to quash.   The ITCTLA also commented that it is unclear from the proposed amendments whether, upon service of objections the subpoenaed party would have discharged its obligations with respect to the subpoena, or would have to simultaneously file both objections and a motion to quash if it seeks to limit a subpoena.  Several commenters suggested that a motion to quash should be allowed within 20, rather than 10, days of receipt of the subpoena in order to allow adequate time within which to meet and confer regarding objections to the subpoena before filing a motion to quash.

Breach of Protective Order

The proposed amendments would remove the mandatory requirement that the Commission or Judge allow the parties to make written submissions or present oral arguments bearing on the issue of violation of a protective order and the appropriate sanctions therefor.  The proposed rule would give the Commission or Judge the discretion to allow these written submissions.

The ITCWG recommended against amendment of the protective order enforcement procedures. The group expressed concern that the proposed amendment would not promote transparency and understanding of investigative proceedings and would introduce uncertainty into the process.  The ITCWG also observed that the comment accompanying the proposed amendment "appears to suggest that the Commission need not notify a party whose CBI was breached."  The IPO also expressed concern that it was unclear whether the proposed changes would affect the notice of an alleged or actual breach and, therefore, supported leaving the current rule unchanged.

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Lynn I. Levine
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions