As we previously reported (here), after almost 3 years, new rules for ITC patent cases will go into effect in June. The new rules will apply to all ITC investigations instituted after June 7, 2018.
The new rules include several significant changes, including the formalization of the 100-Day Pilot Program, the ability for the ITC to institute multiple investigations based on a single complaint and the ability for the ALJ to sever an investigation into multiple investigations. Practitioners seem to agree that the Commission and the ALJs are likely to utilize these new tools to more effectively manage their dockets and issues that may influence whether a single complaint ultimately results in multiple investigations includes the number of respondents and the number of patents/claims at issue.
Several other changes that will impact practice before the ITC will also go into effect on June 7th. While these additional changes have received less publicity, they are important to understand. Some of these changes include:
- § 201.16 – changes to address service by electronic means, including service by the Commission and the between the parties.
- § 210.10 – changes to require the Notice of Institution to define the scope of the investigation in plain language to make explicit what accused products or category of accused products will be the subject of the investigation
- § 210.12 – changes to require the inclusion of the expiration date of each asserted patent in the complaint.
- § 210.27 – changes to expand privilege and work product protection to drafts of expert reports and communications between attorneys and expert witnesses concerning trial preparation.
By more clearly defining the accused products that will be the subject of an investigation, the ITC hopes to limit disputes between the parties related to the scope of the investigation. The change to the rules to require complainants to include the expiration date of each patent may enable the ITC to utilize this information to facilitate institution of multiple investigations, severance of an investigation into multiple investigations and/or the use of the 100-day proceeding. Patents with early expiration dates may be handled separately from other patents in an investigation. The changes to the rules concerning expert drafts and preparation will have significant implications on the manner in which attorneys work with experts, much like the similar change several years to the federal rules.
Practitioners should be aware that the rules governing practice at the ITC differ from the rules that govern district court litigation and should familiarize themselves with the new ITC rules. Even experienced practitioners should review these new rules to ensure they understand and comply with them for investigations instituted after June 7th. Finally, for strategic reasons, practitioners should take particular care in deciding on the number of patents to include in a complaint.