A party sued at the US International Trade Commission (ITC) for patent infringement has various options in responding to the potential threat to its market in the United States.  In certain instances, those options can be limited or impractical.  A very effective response to minimize such a threat is to redesign the accused products to ensure that they are outside any reasonable scope of the patent claims.  It is normally best to have these redesigned products addressed during the initial ITC investigation.  Sometimes, however, this is not possible and the redesigned product is not ready until after an exclusion order has entered and is being enforced by US Customs.  In such a situation, time is critical.  In order to preserve market share, a company must be able to continue its customer supply despite the exclusion order.  While various procedures have existed to have redesigned products addressed by the ITC (Advisory Proceeding) or by US Customs (letter ruling request), the time that such procedures take may make them unworkable.  In February 2015, the ITC has implemented a new pilot program to try to shorten the time such proceedings take at the ITC.

The new pilot program will test expedited procedures for modification and advisory opinion proceedings.  While such proceedings themselves are not new, the stated purpose of the pilot program is to clarify for US importers, prospective importers, and intellectual property rights holders the options available for obtaining timely, transparent, and binding decisions on whether new or redesigned products are covered by existing remedial orders issued by the ITC.  Certain of these procedural approaches have the potential to save both the time and expense required to resolve the appropriate scope of existing ITC remedial orders.

In a modification proceeding, the ITC determines whether a redesigned or new product is covered by an existing remedial order (be it an exclusion order, consent order, or cease and desist order) and whether the order should be modified to “carve-out” such redesigned or new products.  All parties involved in the underlying investigation may participate and present evidence.  Modification decisions may be appealed to the Court of Appeals for the Federal Circuit.  In an advisory opinion proceeding, the ITC determines whether the importation of a redesigned or new product would violate an existing remedial order.  Such a proceeding may be sought by any prospective importer, and all parties involved in the underlying proceeding are also permitted to participate and present evidence.  ITC advisory opinions are not appealable. 

Under the pilot program, when the ITC commences a modification or advisory opinion proceeding that presents only a “pure question of law,” the ITC’s Office of General Counsel (OGC) will conduct the proceeding, with the final decision normally issued within 60-90 days of the publication of the ITC’s notice in the Federal Register. 

Where a proceeding involves only “minimal factfinding,” the ITC’s Office of Unfair Import Investigations (OUII) will conduct the proceeding, with the ITC’s final decision normally issued within 90-180 days from the date of publication of the ITC’s notice to conduct the proceedings.  In the last year, the ITC has referred two advisory opinion requests to OUII with instructions to issue a report approximately 90 days after the referral, with the final ITC decision due approximately 45 days after the issuance of OUII’s report.  In Certain Kinesiotherapy Devices and Components Thereof, Inv. No. 337-TA-823, OUII’s report concluded that the requestor’s products were outside the scope of the existing exclusion and cease and desist orders.  OUII’s report was subsequently adopted as the final decision of the ITC.  In Certain Cases for Portable Electronic Devices, Inv. Nos. 337-TA-867/861, the request for an advisory opinion was withdrawn after the ITC referred the matter to OUII. 

Finally, where a modification or advisory opinion proceeding requires “extensive factfinding,” the ITC will refer the matter to an Administrative Law Judge (ALJ) for issuance of an initial ruling, with the final ITC decision issuing within six-to-nine months from the date of the publication of the ITC’s notice of the proceeding.  This has been the ITC’s traditional method of conducting modification and advisory opinion proceedings. 

While it is too soon to know for certain, the enhanced role of OGC or OUII in certain proceedings may lead to expedited ITC determinations, to the benefit of all involved parties.  To the extent that a party seeking a determination from the Commission can demonstrate that only a pure question of law is presented or that only minimal factfinding is required, it may be possible to obtain a decision in less time than that of the ITC’s traditional approach of assigning all such matters to an ALJ.  Parties should be mindful of these various procedures in presenting their positions to the ITC.