ITC Litigation: How Discovery in the ITC is Different from Federal Court

As we previously discussed in our post outlining the timeline of a typical Section 337 investigation,[1] discovery proceeds very quickly. It commences the day after the Notice of Investigation is published in the Federal Register (even before respondents answer the complaint),[2] operates on shorter deadlines than in district court, and can be relentless. Apart from the speed at which parties are expected to gather evidence, however, there are some key differences in discovery in an ITC proceeding as opposed to district court litigation. Here, we highlight some of the most notable differences:

• ITC discovery is not strictly governed by the Federal Rules of Civil Procedure. Discovery obligations of parties in an ITC investigation are subject to a different set of rules defined by the Code of Federal Regulations (19 C.F.R. 210.27 - 210.34). The Administrative Law Judge ("ALJ") assigned to your investigation may further refine discovery requirements in their Ground Rules. Although many similarities exist as to the form of discovery (e.g., document requests, interrogatories, depositions), more notable differences include the fact that discovery opens before the parties begin to discuss case schedule and that responses to discovery requests are much shorter 10 days as opposed to the standard 30-day time period for responding in district court. Nonetheless, while the ITC rules take precedence, ALJ's have looked to the Federal Rules for guidance when they deem it appropriate.[3]
• Protective Orders are automatically issued by the ALJ. The ITC is very strict in the handling of confidential information collected and submitted in its proceedings, and one of the very first orders issued by the ALJ is the Protective Order. In the ITC, every attorney that seeks to access confidential information must subscribe to the Protective Order a practice not typically required in district court. The ITC has also historically imposed severe sanctions for violations of its Protective Orders.[4] If parties wish to add additional protections such as special treatment of source code or attorneys that also prosecute patents in a similar subject matter parties may move to amend the Protective Order. The ITC's confidentiality practices depart from that of district courts, which favor public disclosure over confidentiality.[5] For example, a party's designation of information as confidential business information is usually sufficient to seal all or part of a filing in the ITC, whereas that same party would need to file a motion to seal and obtain an order granting that motion in district court. Similarly, the ITC routinely seals the courtroom when discussing confidential matters, but sealing a courtroom for a hearing or trial in district court is extremely rare.
• Staff Attorneys from the Office of Unfair Import Investigations ("OUII") may participate in the investigation. In some cases, the ITC's OUII may designate one or more staff attorneys, formally known as the Commission Investigative Attorney, to participate in an investigation. The staff attorney functions independently to represent the public interest in the investigation, and fully participates as another party.[6] For example, a party would need to confer with the staff attorney and all other named parties prior to filing a motion. A party would need to serve all copies of pleadings or discovery on the staff attorney. The staff attorney also argues and present OUII's positions before the ITC at all hearings.
• Default fact deposition limits are higher in the ITC. The ITC allows complainants, as a group, to take no more than five fact depositions per respondent, or no more than 20 fact depositions whichever is greater. Respondents may take no more than 20 fact depositions and the Staff attorney may take no more than 10 fact depositions.[7] These limits are double the 10-deposition limit in district court.[8]
• Default interrogatory limits are higher in the ITC. The ITC allows parties to serve written interrogatories not to exceed 175, including discrete subparts.[9] This is significantly higher than the 25 interrogatory limit, including discrete subparts, in district court.[10]
• Parties must apply for issuance of subpoenas to third parties. In the ITC, parties must apply to the ALJ for issuance of subpoenas to third parties. If approved, the ALJ will then sign the subpoenas that may then be served by the requesting party on the third party, usually via an overnight delivery service.[11] In district court, a subpoena may be issued by any attorney permitted to practice in that court and does not require advance approval from the court.[12]
• Depositions of foreign witnesses typically must take place where the foreign witness resides. A sticking point in many cases is where to take depositions of foreign witnesses, including party witnesses residing outside of the United States. In the ITC, the normal practice is to take depositions at a location most convenient to a witness unless there is a showing of hardship or unusual circumstance.[13] This means traveling to where a foreign witness resides to take a deposition. It may also mean accommodating that country's laws regarding depositions. For example, in Japan, depositions can only be conducted in a U.S. embassy or consulate office. A question that remains to be answered is whether, and how, the current pandemic may qualify as a showing of hardship or unusual circumstance, as parties continue to navigate how best to conduct discovery in view of coronavirus restrictions and foreign laws some of which may bar the ability to take a deposition altogether.

More questions? Contact the authors or visitFish's Intellectual Property Law Essentials.

[1] "ITC Litigation: The Section 337 Investigation Timeline," July 9, 2020, available at https://www.fr.com/itc-litigation-rise-popularity-section-337/.

[2] 19 C.F.R. 210.28(a), 210.29(b), 210.30(b), and 210.31(a).

[3] See, e.g., Certain Cold Cathode Fluorescent Lamp ("CCFL") Inverter Circuits and Products Containing Same, Inv. No. 337-TA-666, Order No. 28 (Sept. 16, 2009) and cases cited therein.

[4] See, e.g., Certain Plasma Display Panels and Prods. Containing Same, Inv. No. 337-TA-445, Order No. 15 (May 8, 2001) (imposing sanctions, including precluding use of certain third party documents, and recommending ITC issuance of public reprimand of law firm for breach of protective order).

[5] While courts also protect confidential information in litigation, courts must weigh the public's presumptive right of access to judicial documents. Gambale v. Deutsche Bank AG, 377 F.3d 133, 140 (2d Cir. 2004); Nixon v. Warner Commc'ns, Inc., 435 U.S. 589, 597 (1978). See also "What Happens in the ITC Stays in the ITC - Except for Related District Court Cases," Sept. 11, 2017.

[6] "The U.S. International Trade Commission: Section 337 Investigations, Answers to Frequently Asked Questions," USITC Pub. No. 4105, at 1-2 (Mar. 2009), available at https://www.usitc.gov/intellectual_property/documents/337_faqs.pdf.

[7] 19 C.F.R. 210.28(a). For some investigations, a Staff attorney representing the public through the U.S. Office of Unfair Import Investigations may be assigned.

[8] Fed. R. Civ. P. 30(a)(2); see "Navigating Fact Discovery in a Patent Case," (July 1, 2020), available at https://www.fr.com/fish-litigation/navigating-fact-discovery-in-patent-case/.

[9] 19 C.F.R. 210.29(a).

[10] Fed. R. Civ. P. 33(a).

[11] 19 C.F.R. 210.32.

[12] Fed. R. Civ. P. 45(a)(3).

[13] See, e.g., Certain Sintered Rare Earth Magnets, Inv. No. 337-TA-855, Order No. 50 at 5 (Jan. 25, 2013); Certain Encapsulated Integrated Circuits, Inv. No. 337-TA-501, Order No. 17 at 2 (Mar. 22, 2004).