If implemented largely as proposed, these changes will be among the most far-reaching in the modern period of Section 337 litigation.

In a recent Notice of proposed rulemaking, the U.S. International Trade Commission (ITC) promulgated wide-ranging proposed changes to its Rules of Practice and Procedure.¹ If implemented largely as proposed, which is likely given the ITC's history of follow-through with administrative rulemaking, these changes will be among the most far-reaching in the modern (i.e., post-1988) period of Section 337 litigation.

The ITC's Rules of Practice and Procedure are the analog to the Federal Rules of Civil Procedure. Found principally in 19 C.F.R. § 210.1, et seq., these rules cover all aspects of agency adjudication, including protective orders, forms of pleadings, motions practice, discovery, hearings, intra-agency review (appeals) and remedies.

If enacted substantially as proposed, practitioners (and their paralegals) may need to re-familiarize themselves with fundamental procedural guidelines. The proposed changes are pervasive, affecting, at least in part, a plurality of the existing regulations. These include:

• Pleading with particularity an allegation in the complaint that the complainant is relying on a domestic industry in the process of being established;
• Specifically pleading the relief (i.e., limited or general exclusion order and cease and desist order);
• Resetting the 30-day institution period where the complainant makes substantial pre-institution amendments to the complaint;
• New time calculations for service of documents;
• Limitations on the numbers of interrogatories and depositions.

Among the more significant proposed changes are discovery limitations. The ITC seeks to codify the prevailing practice of the Administrative Law Judges (ALJs) that a party may serve no more than 175 interrogatories, including subparts, on another party.² In a substantial departure from existing practice, the ITC seeks to impose a limit on the number of depositions. The proposal is to limit the complainants as a group to a maximum of five fact depositions per respondent, or no more than 20 fact depositions total, whichever is greater. The ITC seeks to limit the respondents as a group to a maximum of 20 depositions total.³ This may be increased on written motion for "good cause shown."

The presumptive 20-deposition total limitation for respondents is likely to be problematic. Most Section 337 cases involve several patents and most patents have multiple inventors. Each one of these inventor depositions will take away from the available number of fact depositions. Combined with the additional depositions necessary to challenge the complainant's domestic industry allegations, there may be insufficient depositions to explore issues where the information is often in the custody of third parties, such as validity. As ITC jurisprudence has often been very conservative in the definition of "good cause,"⁴ this limitation would consistently inure to the detriment of respondents if enacted.

Moreover, there has been a proliferation of respondents in the post-Kyocera⁵ era. The number of respondents in each case is also likely to increase as a result of the restriction on the ability to join defendants in district court infringement actions under § 299 of the America Invents Act. Coordination among these increasingly large numbers of respondents, who are often commercial competitors, is concomitantly difficult.

The public has until September 10, 2012, to provide written comments to the ITC on the proposed amendments. While the ITC generally adopts its own proposals, it has demonstrated a willingness to fine tune those proposals in response to thoughtfully prepared public commentary on any prospective shortcomings. Parties who are prospective ITC litigants and their counsel, thus, should consider carefully reviewing the proposed changes and submit comments within the allotted time.

For Further Information

If you have any questions about this Alert, please contact Rodney R. Sweetland III, Michael G. McManus, any member of the ITC Section 337 Litigation Practice Group or any attorney in the firm with whom you are in regular contact.

Notes

1. 77 Fed. Reg. 41120 (July 12, 2012).
2. 77 Fed. Reg. at 41124.
3. Id.
4. See, e.g., Certain Kinesiotherapy Devices and components Thereof, Inv. No. 337-TA-823, Order No. 27 (July 10, 2012) (mistaken deadline in Procedural Schedule issued by ALJ was not "good cause" to change the deadline where parties failed to inform ALJ of error).
5. Kyocera Wireless Corporation v. International Trade Commission, 545 F.3d 1340 (Fed. Cir. 2008) (holding that to be covered by a limited exclusion order the party must have been named as a respondent in the ITC proceeding).

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