ITC Adopts Changes to Rules of Practice & Procedure in Section 337 Patent Cases
The International Trade Commission finalized changes to its Rules of Practice and Procedure concerning general application, adjudication, and enforcement in Section 337 patent investigations, adopting a July 2012 proposed rule with minor changes (see 12071129). The final rule amends the ITC’s regulations at 19 CFR 201 and 210 in order to change filing deadlines and requirements, and “address concerns that have arisen in Commission practice,” the commission said. The final rule is effective May 20.
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Highlights of changes to the ITC’s regulations include:
New requirements for complainants. The ITC is amending 19 CFR 210.12(a) to (1) require the complainant to specify whether it alleges injury to a domestic industry that exists or a domestic industry that is in the process of being established; (2) require the complainant to specify whether it is requesting a general exclusion order, a limited exclusion order, and/or cease and desist order; and (3) require the complainant to identify the accused products with a clear statement in plain English. In the proposed rule, the ITC said it would publish the plain English description in the Federal Register institution notice, but it withdrew that requirement in response to comments.
Substantial changes to complaint restart institution period. The final rule amends 19 CFR 210.14 to provide that if a complainant significantly amends a complaint prior to institution (by adding, for example, additional respondents or accused products), the amendment will restart the normal 30-day process for determining whether to institute an investigation. This change is in response to substantial amendments in past cases which, according to the ITC, have complicated the ITC’s ability to get public interest comments, placed additional demands on the ITC, and effectively reduced the 30-day period that proposed respondents normally have to review the allegations against them.
Codification of procedure for consolidation of investigations. Another amendment to 19 CFR 210.14 makes uniform and codifies its practice concerning consolidating related investigations. A new paragraph is added to provide that (1) the commission may consolidate investigations; (2) the presiding administrative law judge may consolidate investigations if both investigations are before the same ALJ; and (3) the chief administrative law judge may consolidate investigations if the investigations are before different presiding ALJs and both presiding ALJs agree that consolidation is appropriate.
Depositions and interrogatories limited. The ITC is amending 19 CFR 210.28 to place limits on depositions and interrogatories. Complainants will be limited to 20 fact depositions as a group, or 5 per respondent, whichever is greater. Respondents as a group will be limited to 20 fact depositions total. If the ITC investigative attorney is a party, he or she will be limited to 10 fact depositions (although the attorney will be permitted to participate in all depositions taken by any parties in the investigation.) Also, each party will be allowed to serve any other party with a maximum of 175 interrogatories.
In response to concerns expressed on comments on the proposed ruled, the ITC clarified that each notice for corporate designations would include all corporate representatives designated to respond, and will only count as one deposition for the purpose of this rule. Also, related respondents will be treated as one entity for the purpose of the limits, it said.
ITC required to issue public versions within 30 days. The final rule amends 19 CFR 210.5 to provide that the commission (or the presiding administrative law judge, if the ALJ has issued the document) must issue the public version of a document containing business confidential information within 30 days of issuance of the confidential version. This period will be subject to an extension by the ALJ or the commission.
Shorter deadlines for enforcement proceedings. In its final rule, the ITC maintained the requirement that the administrative law judge will issue an enforcement initial determination no later than 3 months before the target date for formal enforcement proceedings, despite opposition from commenters. Also, the Commission will have 45 days to determine whether to review the enforcement initial determination (currently the Commission has 90 days). Deadlines for petitions for review of enforcement initial determinations will accordingly be due within 10 days of service, and responses will be due within 5 days of service of the petition for review.
(See the ITC’s notice for details of many other changes to its rules of practice and procedure, including modifications to deadlines, filing requirements, etc.)