ITC amends Rules of Practice and Procedure

For the second time in two months, the US International Trade Commission (ITC) has amended its Rules of Practice and Procedure concerning adjudication and enforcement. The new set of amendments addresses concerns that have arisen about the scope of discovery in Section 337 proceedings at the ITC, and specifically affect 19 CFR 210.27 – that is, ITC Rule 210.27, titled “General provisions governing discovery”.

On 15th May 2013 the ITC stated in its notice of final rule that “[t]he 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”. Before publication in the Federal Register of its notice of proposed rulemaking regarding Rule 210.27, the ITC considered e-discovery proposals, standards and model orders from various sources, including the ITC Trial Lawyers Association, the Federal Circuit Advisory Council, several US district courts, the administrative law judges’ own ground rules and portions of the Federal Rules of Civil Procedure that relate to limitations on discovery and e-discovery. After publication of the notice of proposed rulemaking, which requested public comments, the ITC received and considered eight sets of comments from bar associations, law firms and private corporations, including Dell Inc, Hewlett-Packard Company and Toyota Motor Corporation.

Amended Rule 210.27:

• Provides specific limitations on electronically stored information.
• Requires the administrative law judge to limit – by order – discovery under certain circumstances (eg, if the discovery sought is unreasonably cumulative or duplicative, the party seeking discovery has had ample opportunity to obtain the information or the burden of the proposed discovery outweighs its likely benefit). 
• Adds new provisions concerning privileged information and attorney work product.

The amendments will take effect 30 days after the date of publication of the ITC’s notice of final rule in the Federal Register, which generally occurs about a week after the final rule notice issues.

On 20th May 2013 certain other amendments to the ITC rules, published in the Federal Register on 19th April, became effective. Those amendments include limits on discovery to control costs and promote efficiency, as well as enhanced pleading requirements to increase notice to respondents and the public. Perhaps most importantly, with respect to discovery limitations, Rule 210.28 now provides that complainants may take a maximum of 20 fact depositions or five fact depositions per respondent, whichever is greater, and respondents as a group are limited to no more than 20 fact depositions, while Rule 210.29 now limits the number of interrogatories that any party may serve on any other party to 175. In addition, related to domestic industry pleading, Rule 210.12 (governing the contents of the complaint) now requires the complainant to plead with particularity whether it alleges a domestic industry that exists or a domestic industry that is in the process of being established (and if the latter, facts showing that the complainant is actively engaged in steps leading to the exploitation of its IP rights, and that there is a significant likelihood that an industry will be established in the future), facts supporting the existence or creation of the claimed domestic industry allegedly affected by the Section 337 violation, and any relevant operations of licensees.