On April 26, 2018, the U.S. International Trade Commission issued long-awaited new rules. The new rules will publish shortly in the Federal Register and take effect 30 days after publication.
Many of the new rules either make clerical corrections or harmonize different rules that have been updated through the years. Several of the new rules will dramatically impact Section 337 practices going forward. The following rules highlight some of the important changes of which practitioners should be aware.
Severance: The most significant new rules grant the Commission and ALJs the authority to sever a single case into one or more cases. 19 C.F.R. §§ 210.10(a)(6) and 210.14(h). Before these new rules issued, the Commission had authorized an ALJ to sever a complaint into multiple cases. In Certain Electronic Devices, Including Mobile Phones, Tablet Computers, and Components Thereof, Inv. No. 337-TA-1038, the Commission authorized the presiding ALJ to sever the investigation into multiple cases and the Chief ALJ to reassign the severed case to another ALJ. Notice, 82 Fed. Reg. 8626-27. Chief ALJ Bullock assigned himself as presiding ALJ, severed the case into two case,each having four patents, and assigned the severed case to another ALJ (Inv. No. 337-TA-1039). The new rules specifically authorize the Commission to sever a complaint into multiple cases “where necessary to allow efficient adjudication.” 19 C.F.R. § 210.10(a)(6). The new rules also authorize an ALJ to sever a case upon motion or sua sponte for “efficient adjudication.” 19 C.F.R. § 210.14(h). If an ALJ severs a case, the severed cases will remain with the same ALJ unless the Chief ALJ reassigns the severed case(s) to a different ALJ.
100-Day Proceeding: The next significant new rule formalizes the Commission’s “100-Day proceedings.” 19 C.F.R. §§ 210.10(b)(3), 210.42, 210.43. Previously, under the Commission’s 100-Day proceedings, the Commission would identify an issue as potentially dispositive and require the ALJ to issue a decision on that issue within 100 days of institution. The Commission has implemented a 100-Day proceeding eight times (seven times after the Commission formally announced its pilot program (see https://www.usitc.gov/press_room/featured_news/pilot_program_will_test_early_disposition_certain.htm)). The new rules provide additional guidance regarding the proceeding, including that it may only be instituted by the Commission (§ 210.10(b)(3)), the ALJ may stay discovery on other issues (id.), a party must seek review within 5 days of any initial determination on a 100-day proceeding (§ 210.43(a)(1)), an initial determination will become final 30 days after issuance unless subject to review (§ 210.42(h)), and the Commission must determine whether to review an initial determination within 30 days after its issuance (§ 210.43(d)(1)).
Subpoenas: The new rules allow a third party to submit objections to a subpoena, and the party that obtained the subpoena may request judicial certification after receiving the objections. 19 C.F.R. § 210.32(d)(1). A third party’s only previous option was to file a motion to quash. The new rule affords third parties more flexibility in responding to subpoenas.
Scope: The new rules clarify that the notice of institution will clearly state the scope of the investigation, identifying products or categories of products at issue. 19 C.F.R. § 210.10(b)(1). The new rule aligns the notice of institution with existing requirements that the Complaint identify the scope of products at issue (19 C.F.R. § 210.12(a)(12)).
Service: The new rules allow the ALJ to impose requirements for electronic service to ensure the proper handling of documents containing confidential business information. 19 C.F.R. § 201.16(f). The Commission issues annual reports on any investigations into possible breaches of an administrative protective order (see 83 Fed. Reg. 17843-49), and the new rule is generally intended to provide security consistent with evolving technology.
Expert discovery: The new rules protect drafts of expert reports akin to the protections afforded by Federal Rule of Civil Procedure 26. 19 C.F.R. § 210.27(e)(5) and (g)(3). Although parties often reach informal agreements regarding expert discovery, this rule formalizes those provisions and imposes them on all parties, including any Staff Attorney from the Office of Unfair Import Investigations.
There are several other revisions (e.g., the complaint must identify the expiration date of any asserted patent (19 C.F.R. § 210.12(a)(9)), but the above highlights some of the key changes of which parties should be aware.