In Certain Wireless Standard Compliant Electronic Devices, Including Communication and Tablet Computers, Inv. No. 337-TA-953, Order No. 44 (Jan. 22, 2016), the Administrative Law Judge ("ALJ") emphasized the importance of strictly complying with U.S. International Trade Commission ("ITC") rules, even with a routine filing such as a joint motion to terminate based on a settlement agreement. Thus, before filing a complaint with the ITC, complainants should have a clear understanding of the significant differences between litigation in district courts and litigation before the ITC.
While Rule 41 of the Federal Rules of Civil Procedure permits federal district court litigants to dismiss a case merely by filing a stipulation of dismissal signed by all the parties, parties to a Section 337 investigation must file a motion requesting termination of the investigation. 19 C.F.R. § 210.21. A motion for termination based on settlement must include "copies of the licensing or other settlement agreements." § 210.21(b)(1). The settlement agreement, like most documents filed in Section 337 investigations, has to be filed "electronically." 19 C.F.R. § 210.4(f)(4).
The ITC instituted a patent infringement investigation against Apple Inc. based on a complaint filed by Swedish telecom company Ericsson. Eventually, the parties settled and moved for the ITC to terminate its investigation. Citing the commission’s rules, the ALJ instructed the parties to file an unredacted electronic copy of the settlement agreement. However, concerned about "inadvertent unauthorized distribution," the parties only submitted physical copies of the unredacted settlement agreement and electronic copies of a heavily redacted version of the settlement agreement.
The ALJ declared that the submitted agreements were insufficient. According to the ALJ, she was legally precluded from terminating the investigation without an electronically filed, unredacted settlement agreement. Furthermore, the ALJ declared that the parties had provided no reason why their settlement agreement merited special treatment. The ALJ therefore ordered the parties to show cause: (i) why she should not herself file an electronic copy of the settlement agreement as part of any initial determination terminating the investigation; and (ii) why she should not sanction the parties’ attorneys at least in the amount they billed on their work on the motions to terminate.
A party seeking to institute an ITC investigation should understand that agreements settling the dispute will have to be filed with the ITC, albeit confidentially. Although it remains possible that, in extenuating circumstances, parties might succeed in convincing an ALJ to accept something other than an electronic copy of the settlement agreement, this seems unlikely. The ALJ’s order highlights the need for a complainant to carefully assess whether it is comfortable with the commission’s rules for conducting investigations (including the rules concerning termination of investigations) prior to filing its complaint.