By: Yury Kalish and Blaney Harper – One of the advantages of bringing a dispute to the ITC is the ease with which service of process can be accomplished against foreign respondents. Unlike in district court, the rules at the ITC merely require that the ITC mail the complaint to the respondent – service is complete upon mailing. This advantage is especially significant since some reports indicate that service of foreign defendants, such as Chinese corporations, in district court is taking as long as 2 years.

In federal district court, service of process must comply with the Federal Rules of Civil Procedure. For defendants in China, this means service must be “by any internationally agreed means of service that is reasonably calculated to give notice, such as those authorized by the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents.” Rule 4(f)(1). Service under the Hague Convention has always been a protracted and complicated process. For example, in a recent case filed in the District of Delaware, the plaintiff notified the court that it had been trying to effect service for more than a year and that they had received an indication from the Ministry of Justice in Beijing that the process could take up to two years.   Clearly, waiting two years for return of proof of service can derail a plaintiff’s carefully laid plans for pursuing litigation.

In contrast, the ITC Rules and Procedures allow the investigation to proceed against a foreign respondent without waiting for any proof of service. “[U]pon institution of an investigation, the Commission shall serve [copies] of the nonconfidential version of the complaint, the nonconfidential exhibits, and the notice of investigation upon each respondent; and [c]opies of the nonconfidential version of the complaint and the notice of investigation upon the embassy in Washington, DC of the country in which each proposed respondent is located as indicated in the Complaint.” 19 C.F.R. § 210.11(a)(1). Service is effected “[b]y mailing or delivering a copy” of the document, whether the service is by the Commission or by a party and service “is complete upon mailing of the document.” 19 C.F.R. § 201.16.

Respondents have 20-30 days from the date of service of the complaint to which to file a written response to the complaint and the notice of investigation. If a respondent in an ITC investigation chooses to ignore a complaint served on them, it would do so at its own peril. Under rule 210.16, if a party doesn’t respond to the complaint , the party will be in default, which can carry significant implications for a respondent because the ITC may issue an exclusion order, a cease and desist order, or both” against a defaulting respondent.

Takeaway

Parties considering whether to pursue litigation in a district court or the ITC should look carefully at the potential delays associated with filing suit in district court only. ITC investigations proceed very quickly because service only requires that the relevant materials be mailed to the foreign respondent and their country’s embassy in Washington D.C. With the proper strategy, an ITC investigation could be completed before service of a foreign defendant was effected in a corresponding district court case. Respondents should be aware of these requirements and the consequences for ignoring the complaint after it has been mailed to them.

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Blaney Harper, who co-chairs the Firms intellectual property ITC practice, focuses on strategic patent litigation representing electronics, software, and information technology companies in matters such as patent enforcement in United States District Courts and the International Trade Commission (ITC). Blaney also represents and counsels clients concerning patent portfolio development and patent prosecution and appeal, including Inter Partes Review, in the USPTO. Blaney co-chairs the Firm's ITC practice and is the IP Practice Coordinator for the Washington Office.