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
 
In association with
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.