Law360, New York (February 2, 2016, 12:02 PM ET) -- When a Section 337 complaint is filed with the US International Trade Commission, the ITC has 30 days to evaluate the complaint before starting an investigation. This time might be perceived as the calm before the storm, but a company sued at the ITC should make maximum use of this period by selecting counsel, hiring experts, organizing offensive and defensive discovery, and other preparations. Once the investigation starts, a company must respond to numerous external and internal demands (many unique to the ITC) in much shorter time periods than in US court proceedings. Thus, the 30 days after a complaint is filed are an important phase of an ITC investigation. For some companies, even those familiar with US district court litigation, the unique procedures and pace of a 337 investigation can be intimidating. In this series, Steptoe’s Section 337 team addresses some of the actions to be taken for maximum advantage during this time. Here, we suggest questions that a company may consider asking outside counsel candidates, as well as some initial actions to consider taking.

One of the first tasks is to retain a capable, experienced team of ITC lawyers. Ensuring that you have counsel who have handled Section 337 cases and understand the intricacies and nuances of working with, and trying cases before, the ITC is critical. Some readers have asked why a company would need to go to the trouble and expense of retaining counsel before it becomes clear that the ITC will in fact start an investigation. The answer is that, in almost all instances, the ITC starts an investigation. Unlike federal district court procedure, where complaints require only notice pleading with very few facts included, the ITC rules require intense fact pleading with ample exhibits supporting the facts alleged in the complaint. As long as those detailed requirements are met, either initially or after the ITC requests additional information of the complainant, the ITC is required by law to start an investigation. We suggest considering the following questions as you select counsel:

  • In view of the rapid pace and myriad demands of an ITC investigation, what are five first steps you would take if you were selected to act for us?
  • Given the many simultaneous activities that must occur during an ITC investigation, how would you staff this case, and how does that differ from a district court patent litigation?
  • Experts are typically the most important witness in an ITC investigation; how do you propose selecting and using consulting and testifying experts?
  • What is your experience and approach in working with ITC personnel, including the staff attorney?
  • Can you describe your experience with US Customs concerning their enforcement of ITC orders?
  • What is your approach to using redesigns in an ITC case, and did the ITC specifically address the redesign?
  • What is your win rate in Section 337 investigations, and how do you calculate that number? 

Initial Actions in Responding to an ITC Complaint

In addition to selecting counsel, a company should also consider certain other preparatory actions during the first 30 days after an ITC complaint is filed. The actions we recommend are important actions for a company to take right away, in order for it to mount an effective defense. Particular facts and circumstances will likely lead to some tailoring of these actions, but it is important to take them promptly, in the relatively calm days following the filing of a complaint.

  1. Put a litigation hold in place. The ITC recently found that a delay in implementing a litigation hold was one factor supporting the imposition of millions of dollars in sanctions against both a respondent and its ITC counsel. Thus, a litigation hold should be circulated as early as possible within the proposed respondent’s company to make relevant individuals aware of the litigation and to ensure that no documents or other information that may be relevant to a current or anticipated legal action involving the company is lost. For all relevant documents, a company should immediately adjust whatever record destruction program may be in place.
  2. Be proactive with customers. Unlike in US federal courts, the ITC may only grant injunctive relief in the form of orders barring a company from importing products or requiring imported products to be reexported. Complaints filed at the ITC are publicly available on the Internet, so when a company is named in an ITC complaint, its customers may find out and be concerned that the product supply may be stopped. Moreover, a third-party supplier (or even the complainant) may inform various customers that a suit has been filed against a competitor so that supplies may be stopped. As with many things, a proactive (as opposed to a reactive) approach is most effective. The time to trial is shorter than in US federal courts and an injunction is less likely in district courts. As such, the company sued at the ITC should promptly develop a plan to deal with customers. The following things should be considered immediately: (1) who will communicate with customers; (2) what will be said; (3) how questions will be answered generally; and (4) who will decide how to respond to specific questions.
  3. Prepare for discovery. Discovery at the ITC starts almost immediately after the ITC provides notice that it has begun an investigation. Discovery must be completed within a few months. Generally, discovery at the ITC is broader than in US federal courts and the time to respond to discovery is much shorter in the ITC. Early attention to discovery, both responsive and offensive, is necessary.
  4. Gather information to respond to the complaint. Complaints in a district court action are generally found sufficient as long as they provide adequate notice of the plaintiff’s allegations. As noted above, however, ITC complaints must provide detailed, factual support for each allegation. Similarly, under the ITC rules, a company sued at the ITC must prepare a detailed, substantive response to the complaint and notice of investigation; this response must contain much more detail than an answer to a complaint in US federal court. In addition to providing facts constituting each ground of any defenses that are pleaded, the response must also include statistical data on the quantity and value of imports of the involved articles, the Harmonized Tariff Schedule item number(s) for importations of the accused imports, a statement concerning the company’s capacity to produce the subject article, the relative significance of the United States market to its operations and the name and address of the supplier of imports if the company does not manufacture its accused imports. During the 30 day period, a company should begin gathering the information needed to prepare this detailed response that will be due 20-30 days after the complaint is served on the company sued at the ITC.
  5. Hire an expert with strong communication skills. The expert witness is often the most critical witness in an ITC investigation. Given the expedited schedule of an ITC investigation, it is important to retain and begin to work with an expert as soon as possible. The expert must explain the relevant technology and the parties’ positions on such key issues as claim interpretation, domestic industry, infringement and validity. Depending on which ITC judge is assigned to the matter, the expert’s testimony will be submitted either live (by testimony from the witness stand) or by witness statements prepared in advance of trial. In any event, the expert must have certain qualities, skills and abilities to convey the necessary information and to withstand cross-examination at deposition and at trial. While the ITC complainant may attempt to retain the best experts before filing the complaint, this is not always done. This creates an opportunity for the company sued to get the best experts. A company sued at the ITC should immediately begin identifying and interviewing expert candidates. A primary consideration must be whether this expert can explain the technology and the products at issue to people who are not steeped in the technology.