By: Yury Kalish and David Maiorana – Late last week, the International Trade Commission (“ITC”) finalized changes to its rules, which changes were first proposed in late 2015. The new rules are expected to be published in the Federal Register in early May 2018 and will go into effect 30 days later. They will only apply to 337 investigations instituted after the 30-day period and will not be retroactively applied to ongoing investigations.

Some changes are procedural and intended to modernize and streamline practice at the ITC, while others are substantive, and are designed to provide the Commission and ALJs with additional tools to conduct investigations quickly and efficiently. The changes generally fall into three categories – providing increased flexibility to institute investigations; formalizing opportunities for early resolution; and streamlined discovery practice.

As expected, the new rules formalize the rarely used 100-Day Pilot Program (see previous discussions here and here) which provides an opportunity to obtain an initial determination on potentially dispositive issues within 100 days. In a bid to improve the use of this program, ALJs are now empowered to hold expedited hearings on any designated issue and will also have discretion to stay discovery of any remaining issues during the pendency of the 100-day proceeding. The ITC decided not to include one of the changes proposed in 2015, whereby ALJs would have been able to designate potentially dispositive issues for inclusion in a 100-day proceeding following institution of an investigation.

Some of the changes increase flexibility by allowing the ITC to institute multiple investigations from a single complaint. The Commission may now substitute the single consideration of efficient adjudication for such a split and ALJs will now have the discretion to sever an investigation into two or more investigations within 30 days of institution of the investigation.

As a practical matter, the flexibility for ALJs to split investigations early may be the most significant change to the rules because it enables the ALJs to better manage their dockets. It would not be surprising to see more complex investigations being split into two or more parallel investigations or to see investigations split such that they proceed on different schedules.

Finally, several discovery related rule changes focus on bringing the ITC’s subpoena practice more in line with the Federal Rules of Civil Procedure. Specifically, a party may serve subpoena objections or move to quash a subpoena within the later of 10 days after receipt of the subpoena or within such time as the ALJ may allow. If an objection is made, the party that requested the subpoena may move for a request for judicial enforcement upon reasonable notice to other parties.

Takeaway

After a rulemaking process that took almost two years, the ITCs new rules will take effect this summer. Litigants at the ITC should familiarize themselves with these rules to ensure compliance and to identify opportunities for creating strategic advantages. The ability for the ITC to split a single complaint into multiple investigations will likely be a closely watched issue.

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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a USPTO examiner along with 20 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the ITC. Dave has experience in diverse technology areas, including teeth whitening, diapers, fem care products, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.