The United States International Trade Commission (ITC) has amended its Rules of Practice and Procedure concerning rules of general application, adjudication and enforcement with respect to Section 337 investigations, 19 C.F.R. Rule 10.16 and Part 210. On July 12, 2012, the ITC published a notice of proposed rulemaking (NOPR) that proposed to amend certain rules of practice and procedure at the ITC. The ITC considered public comments concerning the NOPR and issued its final rules on April 11, 2013. Additionally, on October 5, 2012, the ITC published another NOPR addressing certain additional amendments concerning e-discovery procedures and issued a final rule based on this NOPR on May 15, 2013.

April 11, 2013 Final Rules

The amendments to the ITC rules are mostly procedural in nature. However, perhaps most importantly in terms of substance, the ITC has also changed certain pleading requirements under the amended rules. In particular, Rule 210.12(a) has been amended to require the complainant to plead domestic industry allegations in the complaint with more particularity by providing a “detailed” description of the alleged domestic industry that exists or, if a domestic industry is alleged to be in the process of being established, a showing that the complainant is actively engaged in steps leading to the exploitation of its intellectual property rights, and that there is a significant likelihood that an industry will be established in the future. Additionally, new paragraph (11) of Rule 210.12(a) requires the complainant to specify in the complaint whether it is requesting relief in the form of a general exclusion order, a limited exclusion order, and/or a cease-and-desist order. Furthermore, the Commission has added new paragraph (12) to Rule 210.12(a) to require the complainant to identify the accused products with a clear statement in “plain English” in order to put the public on notice of the specific types of products involved.

There are two significant changes to discovery in Section 337 investigations pursuant to the amended rules. First, Rule 210.28(a) has been amended to limit the number of depositions. Complainants will be limited to a maximum of five fact depositions per respondent, or no more than 20 fact depositions, whichever is greater. Respondents, as a group, will be limited to a maximum of 20 fact depositions. If the Commission investigative attorney is a party, he or she may take a maximum of 10 fact depositions and is permitted to participate in all depositions taken by the other parties to the Investigation. Under these rules, each corporate deposition notice counts as only one fact deposition. Second, Rule 210.29(a) has been amended to limit the number of interrogatories that may be served by each party to a maximum of 175, including all discrete subparts. The presiding administrative law judge (ALJ) may increase the number of depositions or interrogatories upon a showing of good cause. The Commission also clarified that all related respondents are to be treated as a single entity for purpose of these rules.

The amended rules also include several provisions addressing confidential submissions. The ITC has amended Rule 210.5 to require that the Commission or a presiding ALJ issue a public version of any confidential documents within thirty days, unless good cause exists to extend that deadline. Additionally, the rule provides that parties must provide support in the record for any claim of confidentiality upon request by the Commission or the ALJ. Furthermore, the new rules provide that public versions of certain documents must be provided within one day after the deadline for filing the submission, including pre-institution submissions on the public interest filed by the complainant and responses to recommended determinations.

May 15, 2013 Final Rules

The final rules issued on May 15 addressed, for the first time, e-discovery in Section 337 investigations by including several additional provisions to Rule 210.27. The ITC noted that “the intended effect of the amendments is to reduce expensive, inefficient, unjustified, or unnecessary discovery practices in agency proceedings while preserving the opportunity for fair and efficient discovery for all parties.” New paragraph (c) in Rule 210.27 provides for specific limitations on electronically stored information and states that a “person need not provide discovery of electronically stored information from sources that the person identifies as not reasonably accessible because of undue burden or cost.” However, if electronically stored information is withheld from discovery because it is not reasonably accessible, the party seeking the information may file a motion to compel discovery, in response which the person from whom discovery is sought must show that the information is not reasonably accessible because of undue burden or cost. If that showing is made, the ALJ may order discovery from such sources upon a showing of good cause.

New paragraph (d) of Rule 210.27 provides that the ALJ must limit the frequency and extent of discovery otherwise allowed if the ALJ determines that the discovery sought is unreasonably cumulative or burdensome, among other considerations. Additionally, new paragraph (e) of the same rule addresses privilege claims in response to discovery requests and imposes a requirement that the party claiming privilege must produce to the requester a privilege log identifying specific information within 10 days of making the claim. The rule also specifies the procedure for inadvertently produced privileged documents. The parties may waive compliance with or otherwise modify these requirements by written agreement, and the ALJ may order a different period of time for compliance for good cause shown. The prior versions of paragraphs (c) and (d) of Rule 210.27 have now been renumbered as paragraphs (f) and (g).