Practice Tips

The University of Baltimore School Of Law To Host IP Symposium Relating To Section 337 Issues

By Eric Schweibenz
|
Mar
05
On March 26, 2010, The University of Baltimore School of Law’s Intellectual Property Law Journal, Intellectual Property Law Society, and International Law Society are hosting an Intellectual Property symposium.  The theme of this year’s symposium is:  “The Domestic Impact of Intellectual Property in a Global Economy” and will address issues and trends related to intellectual property litigation in the United States stemming from international markets for goods, services, and IP.  The symposium will be held from 9:00 a.m. to 1:00 p.m. in the Business Center Auditorium & Atrium of the University and there is no cost to attend. Further information about the event can be found here.
Share

Read More

Did You Know…The Office Of Unfair Import Investigations Is An Independent Third Party In Section 337 Actions?

By Eric Schweibenz
|
Jun
17
In Section 337 actions before the International Trade Commission (the “Commission”), the Office of Unfair Import Investigations (the “Commission Investigative Staff” or “OUII”) serves as an independent third party representing the public interest.  OUII’s principal task is to help create a complete record on all contested issues so that the Commission can properly enforce the provisions of Section 337.  This is necessary because, unlike with district court litigation, a Section 337 action “is not purely private litigation ‘between the parties’ but rather is an ‘investigation’ by the Government into unfair methods of competition or unfair acts in the importation of articles into the United States.”  Young Eng’rs, Inc. v. U.S. Int’l Trade Comm’n, 721 F.2d 1305, 1315 (Fed. Cir. 1983). OUII can trace its origins back to the Trade Act of 1974 (the “Trade Act”), which instituted significant changes in the procedures for Section 337 actions.  Prior to the passage of the Trade Act, the provisions of the Administrative Procedure Act (“APA”) did not apply to Section 337 actions, and there was therefore very limited participation by the private parties after institution of an investigation -- the Commission investigated complaints directly.  This changed drastically after the enactment of the Trade Act.  The private parties suddenly had substantial new rights to participate directly in Section 337 proceedings.  The problem, however, was that now the Commission could not directly communicate with the private parties ex parte because it was serving as an administrative fact-finder.  To remedy this situation, OUII (originally known as the Unfair Import Investigations Division or “UIID”) was created so as to represent the public interest in the proceeding and help the Commission reach a correct and fully informed determination. OUII plays a number of critical roles in Section 337 investigations, beginning even before a complaint is filed.  Complainants typically consult with OUII before filing in order to ensure the technical sufficiency of the draft complaint and to improve the likelihood of having the Commission institute an investigation based on the complaint.  During the 30-day period following the filing of the complaint, OUII consults with the Complainant and proposed Respondents and then makes a recommendation to the Commission on whether to institute an investigation. Once the Commission institutes an investigation, OUII’s primary role is to aid in the creation of a complete record in order to support the public’s interest in a correct and fully-informed decision by the Commission.  To this end, OUII can propound written discovery and participate in depositions just like the private parties.  OUII independently briefs the issues relevant to the public interest and will generally take a position on most of the critical legal issues in the investigation. After an ALJ issues an Initial Determination, OUII remains an independent third party to the investigation and participates in briefing during review by the Commission.  If the Commission’s Final Determination is appealed to the Federal Circuit, however, it is the job of the Office of the General Counsel to represent the Commission on appeal.  OUII continues to play a role in the enforcement of the Commission’s determination, and participates in any formal enforcement proceedings.
Share

Read More

Princo Appeal: Patent Pools and Standards at the Federal Circuit

By Eric Schweibenz
|
Jul
23
The U.S. Court of Appeals for the Federal Circuit (CAFC) has now heard the en banc arguments in Princo Corp. v. Int’l Trade Comm’n, (2007-1386) and is set to rule on the case in the near future.  See our February 26, 2010 post for further background. The en banc re-hearing focused on two main issues:
  • Whether an agreement between developers of a new standard to license a patent to be used only under the standard (thus foreclosing the creation of a competing standard) should be held anti-competitive without addressing the relevant market for the standards or proving injury to competition as a result of the agreement; and
  • Whether such an agreement, even if found to be anti-competitive, can be a proper basis for a patent misuse defense preventing enforcement of other patents used to practice the standard.
While it is difficult to predict how the CAFC will rule in Princo, in order to determine whether the license agreement is anti-competitive on its face, the court will likely consider the possible effects of such an agreement. One possible anti-competitive effect that could result from an agreement of this type relates to what would happen if a particular standard, which is the subject of such an agreement, fails.  For instance, it may be the case that two standards are in direct competition.  There may be patents that are considered essential to both standards.   If one of the standards was to fail due to widespread adoption of the competing standard, and an agreement such as the one at issue in Princo is in place, developers of the failed standard would be left with a number of essential patents that may be unavailable for inclusion in a pool linked to the surviving standard.  As a result, the pro-competitive advantage provided by the pooling of essential patents would have been impeded.  In contrast, if an agreement between developers of a new standard to license a patent to be used only under the standard was found to be anti-competitive on its face, such agreements would be disfavored, and the resultant problems would be avoided. In addition, it is possible that a ruling that is consistent with the FTC’s amicusbrief may result.  The FTC’s amicus brief takes the position that an agreement not to license a patent except for uses complying with a particular standard should be justified only when done ex ante (i.e., before the standard is finalized), and only when reasonably necessary to further pro-competitive technical collaboration. Whatever the outcome, the CAFC ruling in the Princo case could have significant effects in the area of patent pools and standards.  A ruling is expected soon.
Share

Read More

Corporate Counsel Magazine Includes ALJ Luckern On Its List Of The 25 Most Influential People In IP

By Eric Schweibenz
|
Sep
17
On September 9, 2010, Corporate Counsel Magazine published a list of the 25 most influential people in the intellectual property practice area.  Chief ALJ Paul J. Luckern was listed along with other judges including , U.S. Supreme Court Justice Anthony Kennedy, U.S. Court of Appeals for the Federal Circuit Judges Michel and Rader, and Judge T. John Ward of the U.S. District Court for the Eastern District of Texas.

According to the article:
The International Trade Commission has enjoyed soaring popularity of late.  Indeed, the ITC is on pace this year to see its docket of so-called 337 patent investigations nearly double from where it stood in 2006.  That was the year the U.S. Supreme Court handed down a decision that limited the ability of federal district court judges to grant injunctive relief in patent infringement cases.  That decision immediately raised the ITC's profile, thanks to the agency's ability to issue exclusion orders that bar infringing products from entering the United States.  "Ever since the Supreme Court restricted injunctive relief, plaintiffs have been rushing toward us.  That's all we do here," says Luckern, who oversees judges, assigns cases, sets deadlines for when investigations must be completed, and hears claims himself, including separate recent disputes involving Nokia Corporation, Apple Inc., and Panasonic Corporation.  Luckern has also traveled throughout Asia, educating foreign lawyers about the intricacies of ITC patent disputes.  No wonder foreign-based companies are increasingly taking their patent wars to the commission.


Share

Read More

President Obama Nominates Jimmie Reyna For A Seat On The Federal Circuit

By Eric Schweibenz
|
Sep
30
On September 29, 2010, President Obama’s Office of the Press Secretary issued a press release announcing the nomination of Jimmie V. Reyna for a seat on the U.S. Court of Appeals for the Federal Circuit. According to the press release:
Jimmie Reyna is a partner in the Washington, D.C. office of the law firm Williams Mullen, PC.  He is a renowned international trade lawyer respected for his deep expertise in trade policy, business regulation, and compliance law. He also has a distinguished track record of leadership in the Hispanic legal community. Reyna joined Williams Mullen as a partner in 1998.  Previously, he practiced with the firm of Stewart and Stewart starting as an associate in 1986 and becoming a partner in 1993.  His Washington, D.C.-based practice has emphasized work on antidumping and countervailing duty cases, as well as trade policy and trade negotiation matters.  Reyna began his legal career in New Mexico as an associate at the insurance defense law firm of Shaffer Butt, Thornton & Baer from 1979-1981, and he had his own law practice in Albuquerque from 1981 to 1986, handling civil rights, domestic relations, immigration, and criminal law matters, in many instances on a pro bono basis. As a recognized expert in the field of international trade law, Reyna has since 1994 been a U.S. panelist for disputes arising under Chapter 19 of the North American Free Trade Agreement (NAFTA), addressing antidumping and countervailing duty cases.  He also has been on the U.S. Indicative List of Non-Governmental Dispute Settlement Panelists for disputes arising under the dispute settlement mechanism of the World Trade Organization (WTO) since 1995.  He has published two books on international trade, and has a third, International Trade Laws and Customs Regulations of Latin America, slated for publication later this year. Reyna served as National President of the Hispanic National Bar Association (HNBA) in 2006-07, and has held several leadership positions on American Bar Association (ABA) committees and sections.  He has served on numerous boards and councils, including those of the Community Services for Autistic Adults and Children, the Advisory Council of the Mid-Atlantic Hispanic Chamber of Commerce, the National Hispanic Leadership Agenda, the HNBA Foundation, the U.S.-Mexico Law Institute, the Albuquerque Hispano Chamber of Commerce, and the Hispanic Culture Foundation.  He was honored with the HNBA’s Extraordinary Leadership award in 2007, and has been named to the “Super Lawyers” list in Washington, DC (2007, 2009, 2010) and nationally (2009), as well as to the “Best Lawyers in America” list (2010 and 2011). Reyna was born and raised in New Mexico.  He received his B.A. from the University of Rochester in 1975 and his J.D. from the University of New Mexico School of Law in 1978.
Share

Read More

Patents Post-Grant Blog Discusses Stays Pending Reexamination

By Eric Schweibenz
|
Oct
06
On October 6, 2010, the Patents Post-Grant Blog posted an article regarding the issue of stays pending reexamination at the U.S. Patent and Trademark Office as it relates to the ITC, and more particularly, Motiva, LLC’s October 1, 2010 complaint against Nintendo Co., Ltd. and Nintendo of America, Inc.  See our October 4, 2010 post for more details.
Share

Read More

Commissioner Williamson Named Vice Chairman Of ITC

By Eric Schweibenz
|
Nov
11
On November 9, 2010, the ITC issued a press release announcing that Irving A. Williamson has been designated by President Barack Obama as Vice Chairman of the Commission for the term that will expire on June 16, 2012. According to the press release:
Vice Chairman Williamson was nominated to the USITC by President George W. Bush on September 7, 2006; renominated on January 9, 2007; and confirmed by the U.S. Senate on February 1, 2007. He was sworn in as a member of the Commission on February 7, 2007, for a term expiring on June 16, 2014. Vice Chairman Williamson has more than 40 years of experience in the international and trade policy fields. Prior to his appointment, he was for seven years President of Williamson International Trade Strategies, Inc., a New York-based consulting firm that advised clients on legal, policy, and regulatory issues affecting international trade and business. As a consultant, he worked with over 20 U.S. Agency for International Development (USAID) and other donor- funded projects, advising countries on World Trade Organization (WTO) accession, compliance, and participation; he has also conducted WTO and other trade-related training programs all over the world. Much of his work focused on trade with Africa and the Middle East. From 1993 to 1998, Vice Chairman Williamson was Deputy General Counsel in the Office of the U.S. Trade Representative (USTR). In this position, he served as chairman of the interagency Section 301 Committee, which investigated foreign trade barriers, and worked on implementing legislation for the WTO and the North American Free Trade Agreement. He served as acting general counsel for seven months, helping manage a 14-attorney office that was engaged in more than 30 dispute settlement proceedings and which was named best government international law office in May 1997. Vice Chairman Williamson played a role in developing President Bill Clinton's Partnership for Economic Growth and Opportunity in Africa initiative and represented USTR in negotiations with the Congress on the African Growth and Opportunity Act legislation. Following his USTR service, Vice Chairman Williamson was Vice President for Trade, Investment, and Economic Development Programs at the Africa-America Institute in New York. From 1985 to 1993, he was the manager of trade policy for the Port Authority of New York and New Jersey. Prior to that, Vice Chairman Williamson served for 18 years as a Foreign Service Officer with the U.S. Department of State. Vice Chairman Williamson holds a Bachelor of Arts degree in history from Brown University, a Master of Arts degree in international relations with an emphasis on African studies and international economics from the Johns Hopkins School of Advanced International Studies, and a Juris Doctor degree from the George Washington University Law School. He is married to Cheryl A. Parham, has two children, Patrick and Elizabeth, and resides in New York City.
Share

Read More

Did You Know … ITC Remedial Orders Can Be Modified Or Rescinded?

By Eric Schweibenz
|
Mar
29
Under Commission Rule 210.76, any person who believes that “changed conditions of fact or law, or the public interest” require that an exclusion order, cease and desist order, or consent order be modified or set aside can petition the Commission for such relief.  The petition must state the changes sought and the changed circumstances warranting such action, together with supporting materials and argument.  The Commission can also consider such action sua sponte.  The Commission may provisionally accept the petition, at which point notice will be published in the Federal Register and service of both the petition and the notice will be made on the former parties to the investigation.  Any person may file an opposition to the petition within 10 days of service.  See 19 C.F.R. § 210.76(a)(1). If the petitioner was previously found in violation of Section 337 and requests a determination that it is no longer in violation, or requests modification or rescission of an order issued pursuant to Section 337(d), (e), (f), (g), or (i), the burden of proof is on the petitioner.  See 19 C.F.R. § 210.76(a)(2). A public hearing on the petition may be held either before the Commission, or before an ALJ who then issues a recommended determination (RD) to the Commission.  After considering the information placed on the record, the Commission will take such action as it deems appropriate.  See 19 C.F.R. § 210.76(b).  Importantly, there are no statutory or regulatory time limits on Rule 210.76 proceedings.  In certain cases, a Commission order modifying an exclusion order may be appealed to the Federal Circuit.  See, e.g., Allied Corp. v. ITC, 850 F.2d 1573, 1579-80 (Fed. Cir. 1988). In addition, under Rule 210.77, the Commission may, in the event of a temporary emergency with formal enforcement proceedings pending, immediately modify or rescind a prior order without hearing or notice.  Such immediate action would be taken when necessary to prevent the violation of a Commission order and when “subsequent action by the Commission would not adequately repair substantial harm caused by such violation.”  19 C.F.R. § 210.77(a).  However, before taking such action, the Commission must consider the effect of such action on “the public health and welfare, competitive conditions in the U.S. economy, the production of like or directly competitive articles in the United States, and U.S. consumers.”  19 C.F.R. § 210.77(b). There have been several examples of modification proceedings in practice.  For instance, in Certain Steel Rod Treating Apparatus and Components Thereof (Inv. No. 337-TA-97), the Commission invoked its power under Section 337(h) to modify or rescind orders due to changed conditions.  In that investigation, the Commission had issued an exclusion order based in part on the finding that the subject patent was valid.  Thereafter, respondents successfully argued in district court that the patent was invalid and unenforceable.  As a result, the Commission revoked the exclusion order. Likewise, in Certain Composite Wear Components and Welding Products Containing Same (Inv. No. 337-TA-644), the Commission recently temporarily rescinded its limited exclusion order and cease and desist order against respondents pending resolution of the validity of the subject patent by the Federal Circuit.  The patent had been declared invalid by a district court in a declaratory judgment action brought by respondents.  See our January 20, 2011 and February 14, 2011 posts for more details. The Commission may not, however, modify the remedy while parallel litigation is still pending in district court.  For example, in Certain Integrated Repeaters, Switches, Transceivers and Products Containing Same (Inv. No. 337-TA-435), the Commission did not delay issuing a limited exclusion order when there was a concurrent district court action involving the subject patent, noting that “the Commission’s rules provide adequate means for modification of an exclusion order if and when that should become necessary.”  Comm’n Op. on Remedy, Public Interest and Bonding at 22 (Aug. 16, 2002). Design-arounds frequently give rise to modification proceedings.  For example, in Certain Amorphous Metals and Amorphous Metal Articles (Inv. No. 337-TA-143), the Commission had commenced Section 337 proceedings against several importers of steel products to determine whether the processes used to make the imported products would infringe a patent held by Allied Corporation.  That investigation led to the issuance of a general exclusion order for the importation or sale of amorphous metal articles or alloys made by the infringing processes.  The Commission then granted petitions for advisory opinion proceedings filed by respondents who sought advice that the importation of articles made by their “newly-developed” processes would not violate the exclusion order.  The Commission also sua sponte initiated exclusion order modification proceedings, which were consolidated with the advisory opinion proceedings for hearing.  The presiding ALJ issued an initial advisory opinion (IAO) and RD that the new processes did not infringe Allied’s patent, and recommended modification of the exclusion order.  Allied petitioned the Commission to review the ALJ’s IAO and RD.  Upon review, the Commission issued an advisory opinion supplementing the ALJ’s IAO, as well as an order modifying the exclusion order.  The modified order set out procedures to be followed by those desiring to import articles covered by the order, which included:  (1) petitioning the Commission to institute further proceedings as appropriate to determine whether the amorphous metal articles sought to be imported fall outside the scope of the order and therefore allowed entry into the U.S., and (2) certifying to the U.S. Customs Service that the articles sought to be imported were manufactured by a process that the Commission determined to be outside the scope of the order.  On appeal, the Federal Circuit affirmed the Commission’s modified exclusion order, but held that the advisory opinion was not a final determination and thus not reviewable.  Allied Corp., 850 F.2d at 1578-80. Similarly, in Certain Wire Electrical Discharge Machining Apparatus and Components Thereof (Inv. No. 337-TA-290), the Commission had instituted formal enforcement proceedings to determine whether respondents’ newly-designed wire electrical discharge machining apparatus infringed certain claims of complainant’s patent, in violation of earlier cease and desist orders.  Those proceedings were terminated on respondents’ motion after a district court granted partial summary judgment that the newly-designed apparatus did not infringe the claims of the patent covered by the Commission’s cease and desist orders.  See Notice of Termination of Formal Enforcement Proceeding, 55 Fed. Reg. 51356 (1990). Additional examples of “changed conditions of fact or law” giving rise to modification proceedings are set forth below: In Certain Miniature Plug-In Blade Fuses (Inv. No. 337-TA-114), the Commission had issued a general exclusion order for imported miniature plug-in blade fuses having a “product configuration and/or packaging” that simulated complainant’s trade dress.  Thirteen years later, a German company not involved in the original investigation challenged the validity of complainant’s trademark registrations in district court, successfully arguing that the individual features of complainant’s fuse housing and the overall configuration of those features were functional, thus rendering the registrations invalid and unenforceable.  The Commission instituted a modification proceeding sua sponte and solicited submissions from interested persons and entities, but did not hold a public hearing or delegate the proceeding to an ALJ.  Having found that the conditions which led to the general exclusion order no longer exist, the Commission modified the order by deleting the reference to product configuration.  See Notice of Exclusion Order Modification (Mar. 20, 2002). In Certain Novelty Glasses (Inv. No. 337-TA-55), the Commission had conducted an investigation of the alleged unauthorized importation of certain novelty beverage glasses that infringed complainants’ trademarks and trade dress, finding a violation of Section 337 and issuing an exclusion order.  The exclusion order required complainants to report to the Commission, on a semi-annual basis, whether complainants were continuing to use the subject trade dress.  When complainants failed to submit the required reports, the Commission ordered complainants to show cause why the exclusion order should not be rescinded pursuant to Interim Rule 211.57.  Thereafter, the Commission modified the exclusion order to state that, if complainants fail in the future to timely comply with the reporting requirement, and if they also fail to submit the required information within thirty days of receiving written notice from the Commission that the reporting requirement has been violated, then the Commission may rescind the exclusion order without further notice or proceedings.  See Comm’n Notice of Modified Exclusion Order, 57 Fed. Reg. 12339 (1992). In Certain Plastic Encapsulated Integrated Circuits (Inv. No. 337-TA-315), the Commission had issued a limited exclusion order and cease and desist orders upon finding a violation of Section 337 in the unlicensed importation of circuits manufactured by an infringing process.  The orders did not explicitly cover licensed products, and the limited exclusion order allowed entry of products that the manufacturer or importer certified were covered by a license.  The cease and desist orders contained quarterly reporting requirements.  Complainant Texas Instruments (TI) petitioned for modification of the orders, asking the Commission to decide the dollar amount of patented product respondent Analog could import under a limited license Analog had acquired when it purchased a cross-licensee (PMI) of TI.  Pursuant to Interim Rule 211.57, the Commission provisionally accepted TI’s position that Analog could only sell up to the amount of PMI’s sales of licensed plastic encapsulated integrated circuits at the time of its acquisition ($15 million), and published a notice in the Federal Register setting a schedule for responses.  Analog and the Commission Investigative Staff argued in opposition that, under the cross-license, Analog could sell patented product up to the amount of PMI’s sales of all licensed products at the time of acquisition, or $94 million.  The Commission decided in favor of Analog, but agreed with TI that the reporting provision in the cease and desist orders should be modified to ensure that Analog’s sales do not exceed the $94 million ceiling.  See Modified Order to Cease and Desist (July 2, 1993). In Certain Hardware Logic Emulation Systems and Components Thereof (Inv. No. 337-TA-383), complainant Quickturn had filed a motion for temporary relief simultaneously with its complaint, which was provisionally accepted by the Commission.  The ALJ subsequently issued an initial determination granting Quickturn’s motion, which was adopted by the Commission.  The Commission determined that a temporary limited exclusion order and a temporary cease and desist order directed to respondents was the appropriate form of temporary relief, and that bond would be set at 43% of the entered value of the imported articles.  Quickturn later petitioned the Commission under Rule 210.76 for an increase in respondents’ TEO bond rate from 43% to 180% of entered value of the subject emulation systems in light of the entered values that respondents had declared to the U.S. Customs Service, arguing that evidence gathered during the permanent relief phase of the investigation revealed that the TEO bond rate established during the temporary relief phase was inadequate to protect Quickturn from injury.  The Commission amended the temporary exclusion order to increase the TEO bond rate to 180% when the entered value did not equal the transaction value as defined in 19 C.F.R. § 152.103.  See Comm’n Op. on Pet. to Modify Temporary Relief Bond (Sept. 27, 1997).
Share

Read More

ITC Issues Notice Regarding Reduced Role Of The Office Of Unfair Import Investigations In Section 337 Actions

By Eric Schweibenz
|
May
06
On May 2, 2011, the International Trade Commission (the “Commission”) issued a notice in the Federal Register stating that the Commission is adopting a rule amendment whereby the Office of Unfair Import Investigations (the “Commission Investigative Staff” or “OUII”) will be reducing its role in Section 337 actions.  In particular, the notice states that, going forward, OUII will not participate in a subset of Section 337 cases and will only participate selectively in another subset of cases.  By way of background, see our June 17, 2010 post for more details on the origins and historical role of OUII. The May 2 notice follows the issuance of the Commission’s Supplement to the Strategic Human Capital Plan 2009-2013 (the “Report”) on January 18, 2011, which called for a reduction in OUII’s role in view of budget constraints.  The Report states that, going forward, “OUII will give the highest priority to certain functions that draw upon its particular expertise while eliminating or reducing efforts devoted to other functions.”  To that end, OUII will continue to review draft complaints prior to filing and advise the Commission on whether to institute investigations.  However, after an investigation is instituted, the Report requests that “OUII place the highest priority on issues unique to section 337 and continue its efforts:  a) to ensure that the investigation is fully developed, b) to resolve procedural disputes without the need to resort to the presiding ALJ, and c) to facilitate settlement.” Accordingly, the Report states that “in certain investigations, OUII will participate in a selective manner on those issues on which it is able to provide the greatest added value and expertise.”  Additionally, “OUII will cease to be a party altogether in a subset of section 337 cases, which are less likely to draw upon its expertise.” The Report states that these changes are “in no way an adverse reflection on the quality or importance of OUII’s past contributions, but rather an effort by the Commission to take a balanced approach to adequately funding the ITC’s statutory missions and meeting government-wide obligations in a prudent, fiscally responsible manner.” In view of the above, the Report states that the Commission will allow a vacant OUII supervisory attorney slot to be filled, and two OUII staff attorneys that were brought on pursuant to over-hire authority, to remain.  However, the number of OUII staff attorneys will be allowed to fall from the current 17 (which includes the two over-hires) to 15 through attrition. The new rule took effect as of May 2, the date of the notice.  According to the notice, “[t]he new rule will have no substantive effect on Commission practice in conducting Section 337 investigations” but “will allow OUII the flexibility to reassign attorneys to cases as necessary without having to publish notices announcing the change in the Federal Register.”
Share

Read More

ITC Issues Proposed Rules and Procedures for Electronic Filing

By Eric Schweibenz
|
Jul
07
On July 6, 2011, the International Trade Commission (the “Commission”) issued a Notice of Proposed Rulemaking and a Notice of Proposed Handbook on Filing Procedures.  These notices are directed to proposed amendments of the Commission’s rules of practice and procedure and electronic filing procedures, respectively. Under the Commission’s proposed amendments, most documents would be required to be filed electronically.  Certain filings would require electronic filing, followed by a paper filing.  The notices provide that the amendments are intended to “increase efficiency in processing documents filed with the Commission, reduce Commission expenditures, and conform agency processes to Federal Government initiatives.”  Under the proposed amendments, parties would continue to electronically file both public and confidential documents using the Commission’s Electronic Document Information System (EDIS).  EDIS, upon submission of a document, would transmit a notice of electronic receipt to the parties.  That notice, however, will not necessarily constitute service of the document.  Specifically, with regard to Section 337 investigations, the presiding ALJ will determine whether electronic service should be permitted and parties will be required to provide written consent in order to be served electronically. The Commission indicated it would accept written comments regarding these proposed amendments from the public until August 5, 2011.  The Commission encouraged the public to provide commentary on whether the language of the proposed amendments is sufficiently clear and on how the proposed amendments could be improved, providing specific constructive alternatives where appropriate.  Such comments may be submitted to the Commission via its website, by mail, or by hand delivery.  All comments received regarding these amendments will be posted on the Commission's website.
Share

Read More

ITC Names Two New Administrative Law Judges

By Eric Schweibenz
|
Oct
19
On October 17, 2011, the International Trade Commission issued press releases announcing that Thomas Bernard Pender and David P. Shaw will become administrative law judges at the ITC effective October 24, 2011. The press release relating to ALJ Pender states:
Deanna Tanner Okun, Chairman of the United States International Trade Commission (USITC), announced today that Judge Thomas Bernard Pender will become an Administrative Law Judge (ALJ) at the USITC effective October 24, 2011. Pender will manage litigation, preside over evidentiary hearings, and make initial determinations in the agency's investigations involving unfair practices in import trade. These investigations most often involve allegations of patent, trademark, and copyright infringement. Prior to joining the USITC, Pender served as an ALJ in the Office of Disability Adjudication and Review with the Social Security Administration in Richmond, VA. From July 2005 to September 2010, he was an Administrative Judge with the Office of Hearings and Appeals for the Small Business Administration in Washington, DC. He served as Chief Trial Attorney and the Director of the Contract Disputes Resolution Center for Defense Contract Management Agency from January 2002 to July 2005. Previously, Pender served as a Senior Trial Attorney in the Office of the Chief Trial Attorney of the Air Force at Wright-Patterson Air Force Base, OH; as a Deputy District Counsel for the U.S. Army Engineer District in Baltimore, MD; as a General Attorney/Trial Attorney for the U.S. Army Engineer District in Fort Worth, TX; and while on active duty in the U.S. Army, he served as Assistant Staff Judge Advocate in Bayonne, NJ, and as a Trial Defense Counsel in Tongduchon, South Korea. Pender received his JD from Emory University Law School, Atlanta, GA, and holds a bachelor's degree from the Virginia Military Institute. He is a member of the State Bar of Georgia.
The press release relating to ALJ Shaw states:
Deanna Tanner Okun, Chairman of the United States International Trade Commission (USITC), announced today that Judge David P. Shaw will become an Administrative Law Judge (ALJ) at the USITC effective October 24, 2011. Shaw will manage litigation, preside over evidentiary hearings, and make initial determinations in the agency's investigations involving unfair practices in import trade. These investigations most often involve allegations of patent, trademark, and copyright infringement. Prior to joining the USITC, Shaw served as an ALJ with the Social Security Administration's Office of Disability Adjudication and Review (National Hearing Center) in Baltimore, MD. Prior to that, he was an ALJ with the Social Security Administration's Office of Disability Adjudication and Review in Fayetteville, NC. Shaw served from 1987 to 2010 as an Attorney-Advisor in the USITC's Office of Administrative Law Judges. Shaw holds a juris doctor degree from the Washington College of Law at The American University and a bachelor's degree from George Mason University. He is a member of the Bar of the District of Columbia.
Share

Read More

Charles E. Bullock Named Chief Administrative Law Judge At The ITC

By Eric Schweibenz
|
Oct
20
On October 20, 2011, the International Trade Commission issued a press release announcing that Charles E. Bullock has been named the Chief Administrative Law Judge at the ITC. 

The ITC’s press release states:
Deanna Tanner Okun, Chairman of the United States International Trade Commission (USITC), announced today that Judge Charles E. Bullock has been named the Chief Administrative Law Judge at the USITC.

Share

Read More

David Johanson Sworn In As ITC Commissioner

By Eric Schweibenz
|
Dec
09
On December 8, 2011, the ITC issued a press release announcing that David S. Johanson has been sworn in as a U.S. ITC Commissioner for a term that will expire on December 16, 2018. According to the press release: David S. Johanson, a Republican of Texas, was sworn in today as a Commissioner of the U.S. International Trade Commission. He was confirmed by the U.S. Senate on October 31, 2011, for the term expiring on December 16, 2018. Commissioner Johanson served as International Trade Counsel on the Republican staff of the Committee on Finance of the U.S. Senate from 2003 until his appointment. Prior to his employment at the Committee on Finance, he practiced international trade law for six years at the law firm of Stewart and Stewart in Washington, D.C. Earlier in his career, Commissioner Johanson worked for Senator Phil Gramm (R-TX), Representative Wally Herger (R-CA), and Representative George Radanovich (R-CA). Commissioner Johanson holds a Bachelor of Arts degree from Stanford University, a Master of Philosophy degree from Cambridge University, and a Juris Doctor degree from the University of Texas School of Law. The U.S. International Trade Commission is an independent, nonpartisan, factfinding federal agency that provides trade expertise to both the legislative and executive branches of government, determines the impact of imports on U.S. industries, and directs actions against certain unfair trade practices, such as patent, trademark, and copyright infringement.
Share

Read More

ITC Considers Proposal To Streamline E-Discovery In Section 337 Investigations

By Eric Schweibenz
|
Feb
07
The ITC issued a brief article this week concerning a presentation that was made by Chief Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit and others relating to a proposal to streamline e-discovery in Section 337 investigations.  According to the article, the ITC has been examining issues relating to e-discovery for nearly a year, gathering input from litigants, academics, district court judges, and bar associations.  In 2010, Chief Judge Rader asked the Federal Circuit Advisory Council to study e-discovery issues and develop an e-discovery model order for consideration by district courts in patent cases.  On January 11, 2012, Chief Judge Rader and three members of the Council came to the ITC to present an analogous proposal for Section 337 investigations. The article states that the proposal tracks the approach of the district court e-discovery model order.  In particular, litigants would:
  • indicate whether electronic documents such as e-mail are being sought or not;
  • presumptively limit the number of custodians whose files will be searched, the locations of those documents, and the search terms that will be used (if litigants exceed the specified limits, they would assume the additional costs);
  • use focused search terms limited to specific contested issues; and
  • allow privileged documents to be exchanged without losing privilege.
Chief ALJ Charles E. Bullock and ITC Chairman Deanna Tanner Okun both expressed their appreciation for Chief Judge Rader and the Council’s presentation.  After the presentation, ALJ Bullock stated that he is “optimistic that the USITC will come up with a suitable approach to address litigants’ legitimate discovery needs while balancing the costs associated with e-discovery in section 337 investigations.”
Share

Read More

ITC Issues Press Release Highlighting Record Number Of Intellectual Property Infringement Cases Filed in FY 2011

By Eric Schweibenz
|
Feb
07
On February 6, 2012, the International Trade Commission (“ITC”) issued a press release highlighting the record number of new intellectual property-related investigations filed during FY 2011. According to the article, 70 new investigations were instituted under Section 337 during FY 2011, which is up from 51 new investigations in FY 2010.  Despite the record number of new filings, the average completion time for investigations concluded during FY 2011 was 13.7 months.  This is down from 18.4 months in FY 2010 and 17.9 months in FY 2009.  As expected, the majority of cases instituted under Section 337 involved allegations of patent infringement.  Lynn Levine, Director of the ITC’s Office of Unfair Imports Investigations, indicates that attorneys who practice before the ITC attribute the agency’s ever increasing Section 337 docket to the ITC’s ability to issue exclusion orders and to quickly complete investigations. Further, during FY 2011, the ITC increased the number of attorneys in its Office of the Administrative Law Judges and Office of the General Counsel, hired two new administrative law judges to replace two that had retired, and allocated funds to build a third courtroom and related work areas.
Share

Read More

U.S. District Court Judge In Texas Doubts Constitutionality Of Automatic Stay Provision Set Forth In 28 U.S.C. § 1659

By Eric Schweibenz
|
Feb
20
On February 15, 2012, U.S. District Court Judge Lee Yeakel, seated in the U.S. District Court for the Western District of Texas, issued an order staying a litigation between Plaintiff Freescale Semiconductor, Inc. and numerous defendants, including, among others, Vizio, Inc. and Sanyo Electric Co., Ltd.  The Defendants brought an unopposed motion to stay the district court action pursuant to 28 U.S.C. § 1659 and the court’s inherent authority to stay in light of an ongoing parallel Section 337 investigation between the parties. By way of background, under 28 U.S.C. § 1659(a), upon timely request of a Section 337 respondent, who is also a party in a civil action, a “district court shall stay, until the determination of the Commission becomes final, proceedings in the civil action with respect to any claim that involves the same issues involved in the proceeding before the Commission.”  A respondent’s request for a stay is deemed timely only if made within (1) 30 days after being named as a respondent in the ITC proceeding, or (2) 30 days after the district court action is filed, whichever is later.  See our February 23, 2010 post for more details. According to the order, Judge Yeakel “continues to doubt the constitutionality of the statute’s requirement that a district court ‘shall stay’ a case.”  While Judge Yeakel did not make a holding in this regard, he noted that this “provision appears to go beyond the legislative powers granted to Congress under Article I of the U.S. Constitution.”  Accordingly, Judge Yeakel denied the motion under 28 U.S.C. § 1659(a), but granted the motion pursuant to the Court’s inherent authority.       In light of the Court's order here, defendants filing a motion to stay in a parallel district court action should provide district courts with the option of granting such motion pursuant to 28 U.S.C. § 1659(a) or the Court's inherent authority to stay ongoing litigation.
Share

Read More

Did You Know…Parties May Request A Shortened Period During Which Opposition Motions May Be Filed?

By Eric Schweibenz
|
Apr
11
Investigations at the ITC already move very quickly, but did you know that the parties can make investigations move even more rapidly?  For example, under 19 C.F.R. § 210.15(c), parties to an ITC investigation have 10 days after service of any written motion to respond, unless a longer or shorter time is designated by the presiding Administrative Law Judge (“ALJ”) or the Commission.  Accordingly, most Ground Rules provide that a party may request a shortened response time during which the opposing party may respond to its motion. By way of example, ALJ Gildea’s Ground Rule 3.7 states that “[a] motion shall include any request to shorten the period of time during which other parties may respond to the motion.  The fact that a shortened response time is requested shall be noted in the title of the motion and the motion shall include an explanation of the grounds for such a request.  A request for a shortened response time shall not be made through a separate motion.”  See also Chief ALJ Bullock Ground Rule 3.7, ALJ Essex Ground Rule 3.7, ALJ Rogers Ground Rule 3.7, and ALJ Pender Ground Rule 5.1.3.  Typically, the movant’s request for a shortened response period is granted when an expedited response is required to meet the deadlines imposed by the ALJ’s procedural schedule or the time set for the hearing is near.  See, e.g., Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers, Inv. No. 337-TA-794, Order No. 29 (Feb. 13, 2012) (granting shortened response time for motion for protective order in light of the “fast approaching deadline for discovery”); Certain Video Game Systems and Wireless Controllers and Components Thereof, Inv. No. 337-TA-770, Order No. 25 (October 17, 2011) (granting shortened response time for motion to amend the trial schedule in light of the “upcoming deadlines related to expert disclosures”); Certain Microprocessors, Components Thereof, and Products Containing Same, Inv. No. 337-TA-781, Order No. 12 (Sept. 26, 2011) (granting shortened response time for motion to amend the procedural schedule in light of the “impending Markman deadlines in this Investigation”); Certain Polyimide Films, Products Containing Same, and Related Methods, Inv. No. 337-TA-772, Order No. 32 (February 27, 2012) (granting shortened response time for motion for sanctions due, in part, to the “short time left before the start of the hearing in this matter”); Certain Wind and Solar-Powered Light Posts and Street Lamps, Inv. No. 337-TA-736, Order No. 17 (July 27, 2011) (granting shortened response time for motion to terminate       “[b]ecause the hearing is set to commence next week”).    When no such exigent circumstances exist, or other good cause is not shown, motions for a shortened response period are frequently denied.  See, e.g., Certain Electronic Devices With Graphics Data Processing Systems, Components Thereof, and Associated Software, Inv. No. 337-TA-813, Order No. 5 (Feb. 13, 2012) (denying request for shortened response time with respect to motion to compel document production in light of the fact that fact discovery is ongoing and does not close for four months); Certain Mobile Telephones and Modems, Inv. No. 337-TA-758, Order No. 11 (June 24, 2011) (denying request for shortened response time with respect to motion to compel production of witnesses as a result of the movant’s failure to show good cause); Certain Electronic Devices, Including Mobile Phones, Portable Music Players, and Computers, Inv. No. 337-TA-701, Order No. 21 (July 16, 2010) (denying request for shortened response time where “there has been insufficient demonstration of exigent circumstances outweighing the appearance of prejudice to the other parties”). Thus, while a request for a shortened response time may accompany any motion at the ITC, use of this procedure may be best reserved for instances where an expedited response is required to maintain the integrity of the ALJ’s procedural schedule or the hearing process.
Share

Read More

Did You Know … Beloit Does Not Authorize The Commission To Deprive Losing Parties The Right To Appeal Any Issue Noticed For Review?

By Eric Schweibenz
|
Apr
23
The Federal Circuit recently issued a precedential opinion in General Electric Co. v. ITC, 670 F.3d 1206 (Fed. Cir. 2012).  See our March 1, 2012 post.  In this opinion, the Court addressed its 1984 decision in Beloit, which gave the Commission the “liberty to reach a ‘no violation’ determination on a single dispositive issue,” such as non-infringement.  Beloit Corp. v. Valment Oy, 742 F.3d 1421, 1423 (Fed. Cir. 1984).  In other words, under Beloit, the Commission could dispose of investigations by reaching final determinations as to some, but not all dispositive issues.  Recognizing that the approach carried a risk of remand, the Court reasoned that the risk was outweighed by the benefits of easing the burden on a Commission that was often faced with “numerous complex issues … within rigid time limits,” and saving “the parties, the Commission, and this court unnecessary cost and effort.”  Id.  On appeal in Beloit, the Respondent was precluded from arguing the issues of validity and domestic industry, as the Commission only took a position on non-infringement.  Id. at 1422-23.  This issue of judicial appeal, when the Commission takes no position on certain issues in disposing of a Section 337 action, was addressed by the Federal Circuit in the General Electric case.  In the General Electric (“GE”) investigation, the ALJ found that Respondent infringed three patents, including U.S. Patent No. 6,921,985 (the ‘985 patent); that the three patents were unenforceable or invalid; that GE had domestic industry with respect to two of the three patents; and that there was a violation of Section 337.  The parties petitioned for review and the Commission issued a Notice of Review, indicating that it would review all issues in the decision, except importation and the intent element of inequitable conduct.  With respect to the ‘985 patent, however, the Commission only addressed the technical prong of the domestic industry requirement in reversing the ALJ’s determination and finding no violation of Section 337.  See our January 9, 2010 and March 5, 2010 posts for more details on the Commission’s final determination in this investigation.  Complainant GE appealed to the Federal Circuit on all issues relating to the ‘985 patent that the Commission noticed for review, including those that the Commission did not take a position on in disposing of the investigation.  Relying on Beloit on appeal, the Commission argued that GE had no basis to appeal issues that the Commission noticed for review, but did not address in the Final Determination.  General Electric Co., 670 F.3d at 1219 (“The Commission holds that when the full Commission does not review an issue that it noticed for review, that issue is removed from access to judicial review.”).  The Commission asserted that this procedure was established by the Federal Circuit in Beloit, and confirmed by 19 C.F.R. § 210.45, which states that the Commission “may take no position on specific issues or portions of the initial determination of the administrative law judge.”  The Federal Circuit rejected the Commission’s arguments, stating that “no statutory or regulatory provision contemplates excluding a fully litigated ITC decision from access to judicial review.”  Id.  Regarding Beloit, the Court explained that “Beloit dealt with the situation in which the prevailing party in the Commission sought judicial review of other issues that the Commission did not reach … [and] held that the prevailing party had no right of appeal, and that issues which had not been reviewed by the Commission were not appealable by the party that prevailed in the Commission.”  Id. at 1220 (emphasis added).  However, “Beloit did not authorize the Commission to deprive the losing party of its right of judicial appeal.”  Id. (emphasis added).  The Court relied on 19 U.S.C. § 1337(c), which provides that “[a]ny person adversely affected by a final determination of the Commission … may appeal such a determination … to the United States Court of Appeals for the Federal Circuit.”  The Court further relied on 19 C.F.R. § 210.42(h)(2), which provides that “issues decided by Initial Determination and not reviewed by the full Commission become final, and are appealable to the Federal Circuit,” a right that “cannot be negated by taking no position on the issue.”  Id.  Thus, a losing party at the ITC may appeal any issue noticed for review, irrespective of whether the Commission decided the issue in the Final Determination. In General Electric, the Court remanded to the Commission for “undefined further proceedings, for which one may be confident only of further time and cost in the Commission and upon re-appeal to this court.”  Id.  Although the practical implications of the Federal Circuit’s decision in General Electric are not yet fully appreciated, the decision may significantly increase the Commission’s workload.  Moreover, if the decision requires the Commission to decide every issue noticed for review when disposing of an investigation, in order to avoid a remand, it may make things much more difficult for the ITC to conclude its investigations “at the earliest practicable time” and with “expeditious adjudication,” as required by 19 U.S.C. Section 1337(b)(1).
Share

Read More

To Quash Or Not To Quash – That Is One Of The Questions (Among Many) To Ask When Served With A Third-Party Subpoena From The ITC

By Eric Schweibenz
|
May
25
The U.S. International Trade Commission’s (“ITC”) popularity as a venue for deciding intellectual property disputes continues to rise.  Even if a company is not named as a respondent, the increasing number of investigations at the ITC bring an increased possibility of being served with third-party subpoenas.  While no entity looks forward to being involved with a Section 337 investigation between other parties, understanding how to respond to these subpoenas, as compared to district court subpoenas, can make things proceed more efficiently. Third Party Subpoenas Issued By The ITC Section 210.32 of the ITC Rules governs issuance of subpoenas, including third party subpoenas.  Parties apply for subpoenas to the Administrative Law Judge (“ALJ”) assigned to handle the investigation.  The ALJ can issue subpoenas to third parties which can be served anywhere in the United States.  The subpoenas typically include a copy of the Ground Rules and, if the issuing party is seeking confidential information, a copy of the Protective Order issued in the investigation. Though these subpoenas do not issue out of a United States district court, ignoring the subpoena is not a viable option.  ITC subpoenas can be ultimately enforced by a United States District Court with jurisdiction over the recipient.  The enforcement mechanism, however, is fairly complex which may provide some leverage in negotiating limits to the subpoena. Moving to Quash or Modify Many of the matters before the ITC are important cases, and the litigants leave no stone unturned.  When a third party may have helpful information, many ITC litigants do not hesitate to ask the ALJ to issue a subpoena seeking extensive documents and testimony.  If you receive a third party subpoena which you believe is overly broad or unduly burdensome, you have options.  As a threshold matter, you can always reach out to the party that requested the subpoena to be issued and try to come to an agreement narrowing the scope of the requests.  In fact, the Ground Rules of the investigation might require you to make a good faith effort to resolve the dispute before filing a motion to quash.  If that fails, the ITC Rules provide a means for challenging the subpoena.  Under the rules, it is possible to either completely quash the subpoena or have the subpoena modified to limit its scope. Review The ALJ’s Ground Rules However, before you file a motion to quash or modify a subpoena, it is critical to review the Ground Rules which are issued by the ALJ for each investigation.  These Ground Rules are typically included with the subpoena when it is issued.  It is important to carefully read, understand and follow the Ground Rules, which have relevant information regarding responding to subpoenas, resolving disputes, and moving to quash or modify the subpoena.  The Ground Rules may provide procedural safeguards and relief in responding to the subpoena.  But beware – failure to follow the Ground Rules can extinguish your right to relief from the subpoena.  A recent example of this type of issue occurred in Certain Electronic Devices with Communication Capabilities, Components Thereof, and Related Software, Inv. No. 337-TA-808, Order No. 10 (March 9, 2012) (hereinafter “Certain Electronic Devices”).  In that investigation, third party Openwave filed a motion to quash a subpoena issued on behalf of Apple arguing, among other things, that Apple had violated a Ground Rule that required subpoenas to be issued in time to allow for the filing of a motion to quash.  Unfortunately for Openwave, while the ALJ rejected its Ground Rules argument, he found that Openwave itself had violated the Ground Rules by failing to certify that it had made a good faith effort to resolve the dispute.  This failure alone, ALJ Pender noted, was sufficient grounds to deny the motion.  See our March 15, 2012 post for more information on this order.  The lesson here is that, although there are some protections given to third parties, failure of a third party to comply with the Ground Rules can lead to harsh results.  Bad results for non-parties failing to follow the rules are not uncommon.  For example, Chief ALJ Bullock recently denied a non-party motion to quash that was filed after the date set in his Ground Rules.  Certain Digital Televisions and Components Thereof, Inv. No. 337-TA-789, Order No. 48 (April 24, 2012).  See our April 27, 2012 post for more details on this order.  Include Detailed Evidence In Your Motion To Quash Simply put, you need evidence and detailed arguments to support your motion to quash.  The party seeking to quash the subpoena bears the burden of proof, so mere attorney argument that the subpoenas are, say, overly broad and unduly burdensome will not succeed.  See, e.g.Certain Electronic Devices discussed above.  Though this will require some up-front expenditure of resources to determine what documents you have and where they reside, it is a necessary investment if you stand any chance of succeeding. The Relevant Factors ALJ’s typically weigh three factors when considering whether to quash or modify a subpoena:  (1) the relevance of the discovery sought, (2) the need of the requesting party for the information; and (3) the potential hardship to the party responding to the subpoena. The burden of proof falls on the party seeking to quash or modify a subpoena and this burden is higher when moving to quash the subpoena in its entirety.  See Truswal Sys. Corp. v. Hydro-Air Eng’g. Inc., 813 F.2d 1207, 1210 (Fed. Cir. 1987).  This is a consideration that should factor into the decision regarding the scope of the relief you seek – since you might obtain sufficient relief by filing a motion for a more limited form of protection.  1.  Relevance of Discovery The ITC permits parties to obtain discovery on any non-privileged matter that is relevant to any claim or defense.  ITC Rule 210.27(b).  Subpoenas can issue for any documents in a company or individual’s “possession, custody or control.”  ITC Rule 210.32(b).  Traditional relevance arguments can prevail here.  For example, if it is demonstrated that the requested documents are not relevant to any prong of the analysis, the party moving to quash can prevail.  See, e.g., Certain Dynamic Random Access Memory and NAND Flash Memory Devices, Inv. No. 337-TA-803, Order No. 23 (Feb. 13, 2012) (quashing subpoena seeking information not relevant to investigation.)  See also our February 20, 2012 post for more details on this order. Another issue to consider is whether you truly have possession, custody or control of the documents sought by the subpoena.  Sometimes parties have subpoenas issued to a subsidiary that are actually attempts to gain documents owned by a foreign parent corporation.  If that is the case, the subpoena can be quashed or modified on that basis.  The party seeking the documents bears the burden of proving control.  To determine if a subsidiary has control, the ITC considers whether: (1) the alter ego doctrine warrants “piercing the corporate veil”, (2) the subsidiary was an agent of the parent in the transaction giving rise to the lawsuit, (3) the agent-subsidiary can secure documents from the principal-parent to meet its own business needs and documents helpful for use in litigation, (4) the subsidiary can access the documents when the need arises in the ordinary course of business, and (5) the subsidiary was a marketer and servicer of the parent’s products in the United States.  U.S. Int’l Trade Comm’n v. ASAT, Inc., 411 F.3d 245, 254 (Fed. Cir. 2005).  Simply sharing some documents during the ordinary course of business is insufficient to deem a subsidiary as having control. Id. at 255. 2.  Need of the Requesting Party for the Information The fundamental question for this prong is not whether the requesting party needs the documents; it is whether they need the documents from you.  Subpoenas seeking, for example, publicly available documents or documents in the possession of one of the parties can be quashed or modified on that basis.  See Certain Adjustable Keyboard Support Systems and Components Thereof, Inv. No. 337-TA-670, Order No. 18 (Sept. 29, 2009).  See also our October 5, 2009 post for more details on this order. 3.  Potential Hardship of Responding Party Traditional hardships, such as the expense or disruption of searching for relevant documents or providing testimony, are relevant in determining whether to quash or modify.  See Certain Adjustable Keyboard Support Systems and Components Thereof,  Inv. No. 337-TA-670, Order No. 11 (August 29, 2009).  See also our September 1, 2009 post for more details on this order.   But there is another, related form of hardship that has found success at the ITC.  Several nonparties have successfully had subpoenas quashed or modified because the subpoenas were worded in such a way that it required the nonparty to perform a claim construction or detailed technical analysis in order to comply with the subpoena.  For example, ALJ Pender quashed a subpoena as unduly burdensome because it required a nonparty to perform a detailed technical analysis just to determine what documents might be relevant.  See Certain Light-Emitting Diodes and Products Containing Same, Inv. No. 337-TA-798, Order No. 20 (March 1, 2012).  See also our March 8, 2012 post for more details on this order.  Conclusion Third-party subpoenas are a common way of obtaining information in ever-popular ITC investigations.  If you find yourself a subpoena target, it is important to stay calm and quickly evaluate how you want to respond.  If you choose to fight the subpoena you have numerous tools at your disposal.  Be sure, however, to review the Ground Rules controlling your investigation and provide detailed factual and legal arguments to support your motion to quash or modify an issued subpoena.
Share

Read More

Practical Impact Of The Office Of Unfair Import Investigations Reduced Role – Since May 2011, OUII Only Participating In About 65% Of Newly-Instituted Section 337 Investigations

By Eric Schweibenz
|
Jun
15
Further to our May 6, 2011 post concerning the ITC’s plan to reduce the role of the Office of Unfair Import Investigations (the “Commission Investigative Staff” or “OUII”) in Section 337 investigations, we have examined the issue further and provide an update on the rate at which OUII has been participating in newly-instituted Section 337 actions in the time since the Commission issued its May 2, 2011 notice.  By way of background, OUII serves as an independent third party representing the public interest in Section 337 actions.  OUII’s principal task is to help create a complete record on all contested issues so that the Commission can properly enforce the provisions of Section 337.  This is necessary because, unlike with district court litigation, a Section 337 action “is not purely private litigation ‘between the parties’ but rather is an ‘investigation’ by the Government into unfair methods of competition or unfair acts in the importation of articles into the United States.”  Young Eng’rs, Inc. v. U.S. Int’l Trade Comm’n, 721 F.2d 1305, 1315 (Fed. Cir. 1983).  See our June 17, 2010 post for more details on the origins and historical role of OUII. On May 2, 2011, the Commission issued a notice stating that the Commission was adopting a rule amendment whereby OUII would be reducing its role in certain Section 337 actions.  The notice followed the issuance of the Commission’s Supplement to the Strategic Human Capital Plan 2009-2013 (the “Report”) on January 18, 2011, which called for a reduction in OUII’s role in view of budget constraints.  The Report stated that the reduction in OUII’s role was “in no way an adverse reflection on the quality or importance of OUII’s past contributions, but rather an effort by the Commission to take a balanced approach to adequately funding the ITC’s statutory missions and meeting government-wide obligations in a prudent, fiscally responsible manner.”    Based on our review, in the time since the rule amendment went into effect on May 2, 2011, the Commission has instituted seventy-seven (77) new Section 337 investigations (Inv. Nos. 337-TA-772 through 337-TA-848).  The Notices of Investigation (“NOI”) for these seventy-seven investigations indicate that OUII has not participated as a party in seventeen (17) of them:  Inv Nos. 337-TA-772, 337-TA-784, 337-TA-785, 337-TA-792, 337-TA-798, 337-TA-801, 337-TA-802, 337-TA-810, 337-TA-819, 337-TA-821, 337-TA-830, 337-TA-834, 337-TA-837, 337-TA-840, 337-TA-844, 337-TA-845, and 337-TA-847.  Further, it appears that in ten (10) additional investigations instituted after the rule amendment went into effect (Inv. Nos. 337-TA-774, 337-TA-778, 337-TA-782, 337-TA-783, 337-TA-793, 337-TA-807, 337-TA-818, 337-TA-820, 337-TA-825, and 337-TA-841), OUII issued a notice after the issuance of the NOI indicating that it would not participate or would cease participating in the investigation.  We note that OUII has also issued notices indicating that it would cease participating in certain investigations that were already pending as of May 2, 2011, but our analysis here is limited to new investigations instituted after the rule amendment went into effect.  In view of the above, thus far, OUII appears to have participated as a party in 50 of the 77 investigations that have been instituted since the rule amendment went into effect on May 2, 2011.  This translates into a participation rate of roughly 65%.
Share

Read More