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Volume X, Number 190

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COVID-19’s Impact on Section 337 Investigations at the U.S. International Trade Commission (Part I)

Like many other Federal Agencies and U.S. District Courts, the U.S. International Trade Commission (“ITC”) is open for business during the COVID-19 crisis, but on a limited basis. Modifications to the ITC’s business began on March 17, 2020. On May 14, 2020, the ITC’s COVID-19 Action Plan was extended through July 10, 2020. Although limited discovery is proceeding in many investigations, Washington DC’s “Stay-at-Home” Order and world-wide travel restrictions are likely to delay resolution of pending investigations. This article addresses how the ITC is handling in-person hearings under Section 337 of the Tariff Act of 1930 (“Section 337”) during the COVID-19 crisis. Part II will address modifications to the ITC’s electronic filing system, service of documents and discovery.

In-Person Hearings and Meetings, Generally

Effective March 17, 2020, the ITC Building was closed and all ITC employees began teleworking. At the same time, the ITC postponed all in-person Section 337 hearings for 60 days. On May 14, 2020, the postponement of in-person hearings was extended until July 10, 2020. The ITC’s Administrative Law Judges (“ALJ”) are working to schedule new dates for in-person hearings. The ITC has instructed ALJs that they may otherwise conduct their investigations in accordance with established procedures. Although the Office of Unfair Import Investigations (OUII) remains available to review draft Section 337 complaints during the COVID-19 crisis, potential Complainants should contact OUII to discuss remote procedures and timing for review, instead of scheduling an in-person meeting.

Evidentiary Hearings

As of March 17, there were 27 pending investigations that were in the late stages of the proceedings – meaning the evidentiary hearing was complete, a successful motion for summary determination had been filed, or the complaint had been withdrawn. These investigations were largely unaffected by the COVID-19 crisis, other than some minor delays, generally unrelated to COVID-19.

As of March 17, only a few pending investigations had evidentiary hearings scheduled for March, April, May or June 2020. In some of these investigations, ALJs have moved the hearing to a later specific date. See, e.g., 337-TA-1166 (ALJ Lord), 337-TA-1170 (ALJ Elliott, in the first instance) and 337-TA-1173 (ALJ McNamara). In other investigations, ALJs have postponed hearings indefinitely. See, e.g., 337-TA-1162 (ALJ Elliott), 337-TA-1167 (Chief ALJ Bullock), 337-TA-1170 (ALJ Elliott, after an initial specific deferral date), 337-TA-1172 (ALJ Shaw), 337-TA-1178 (ALJ Shaw), 337-TA-1179 (Chief ALJ Bullock) and 337-TA-1185 (ALJ Shaw).

For investigations with hearing dates in July, August or September 2020, ALJs have been proactive in extending discovery to account for COVID-19’s impact on discovery and re-setting specific dates for evidentiary hearings in the fall, with the hope that the ITC will be open by then. See, e.g., 337-TA-1175 (ALJ Elliott), 337-TA-1181 (ALJ Lord), 337-TA-1182 (ALJ Cheney), 337-TA-1186 (ALJ Lord) and 337-TA-1190 (ALJ Lord). But ALJ McNamara still has two evidentiary hearings scheduled for the end of July and August – 337-TA-1180 and 337-TA-1187.

Once the ITC opens, the procedures for conducting in-person hearings may change from the general practices in the past. For example, in several investigations, the parties have already raised issues regarding receipt of evidence without a sponsoring witness (see, e.g., 337-TA-1167) and the use of deposition transcripts and witness statements instead of live testimony (see, e.g., 337-TA-1166).

The Future of Section 337 Investigations

The COVID-19 crisis has not had an immediate impact on the number of Section 337 complaints filed at the ITC—six complaints were filed in the two months following announcement of the COVID-19 Action plan, which is consistent with historical averages and with the number of complaints filed in the first three months of 2020. But the long term impact of COVID-19 is difficult to predict. An economic slowdown might cause potential Complainants to delay filing a complaint to save and/or postpone legal costs. An economic slowdown also might decrease the volume of products imported into the United States, thereby reducing the number of infringing imports. On the other hand, as competition with imported products becomes more intense, the need for a company to effectively enforce its Intellectual Property rights will increase. Regardless of the long term impact of COVID-19 on the economy, however, the ITC is demonstrating that it can be flexible and adapt in times of crisis.

Filing / Service of Documents

Like many other courts and government agencies, the ITC is not requiring original signature documents to be filed during the COVID-19 crisis. Under the ITC’s COVID-19 Action Plan, the ITC also has waived standard procedures that require parties to file a large volume of documents, including complaints and documents containing Confidential Business Information (“CBI”) on paper, CD-ROM, and other physical media in Section 337 investigations.[1] The ITC approved temporary amendments to Rule 210.4(f)(2), Rule 210.75, Rule 210.76, and Rule 210.79 to permit parties to file Section 337 complaints, exhibits, attachments, and appendices electronically. As before, the ITC will only accept electronic filings through its Electronic Document Information System (“EDIS” https://edis.usitc.gov). Under the current procedures, parties must electronically file public and confidential portions of a submission separately and select the correct security level for each to protect CBI. Physical samples normally submitted with a complaint should be retained by counsel for Complainant.

The additional electronic filings may cause some delays. Complainants should be aware that a complaint will not be accepted as soon as it is filed on EDIS. A complaint will not be considered to be accepted until the ITC staff can review and approve the filing. Complainants should expect additional time for review will be required and should file documents as early in the day as possible so that review can be completed on the same business day. Documents filed at the end of the business day likely will not be approved until the following day, which could affect the official acceptance date.

Normally, the ITC is responsible for service of the complaint and all supporting information on the named Respondents. The ITC has approved temporary amendments to Rules 210.11(a) and 210.75 to require Complainants, rather than the ITC, to serve each proposed Respondent and appropriate embassy with nonconfidential copies of the complaint, and any appendices, supplements, motions for temporary relief, exhibits, and attachments, upon notice of institution of investigation. Complainants must also provide proof of service. This change significantly increases the burden on a Complainant, particularly when Respondents are smal, difficult to locate foreign entities. Under the temporary procedures, once the ITC is ready to issue a Notice of Investigation (NOI), the Office of the Secretary will email Complainant’s counsel to provide the materials and instructions for service. The Certificate of Service for the NOI will indicate the parties the Complainant is responsible for serving. The Complainant will be responsible for filing proof of service, such as tracking and shipment confirmation, on EDIS.

Complainants may use electronic service only if the Complainant and Respondent have agreed to electronic service in writing. Complainants will be required to provide documentation of a Respondent’s consent to electronic service as part of their proof of service. Respondents consenting to electronic service should be aware that while Rule 201.16(e) provides additional time to respond to the complaint for Respondents that receive the materials via express delivery, Respondents that receive the material electronically will not be given additional time for responding to the complaint under the temporary procedures. The parties, however, can agree on response times and/or requests for extensions of time as per previous practices, subject to the ALJ’s Ground Rules for their investigation.

Under the COVID-19 Action Plan, documents normally served by the ITC in paper copy will be made available for electronic download by lead counsel. The ITC has approved a temporary amendment to Rule 210.7(b) to require attorneys who designate themselves as lead attorneys or representatives for service of process to provide the ITC with their individual work email address (not a group email address) for service of documents under the amended procedures. The ITC will allow parties not represented by counsel to provide an individual email address for service of public documents. If the ITC does not have a method of serving unrepresented parties electronically, the ITC and ALJs will direct Complainants to effect service for ITC documents (including filings and discovery related materials for OUII) in hard copy, when necessary.

Confidential documents issued by the ALJ and the ITC will only be available for download from a folder in a secure file sharing platform. Access to the system will only be given to lead counsel for each party via the individual email address noted above. The ITC will send an email to lead counsel when documents are added to the folder for download. Public documents issued by the ALJ and the ITC will be available for download from EDIS. The ITC will use the same email address used for confidential service to give notice each time documents are added to EDIS. Unrepresented parties that have provided an individual email address will also be served in this manner.

Discovery

Other than the postponement of in-person hearings, discovery is proceeding in most investigations with some modifications and delays due to limitations on travel and other business conduct in the United States and throughout the world. ALJs are conducting scheduling conferences and other minor hearings telephonically. ALJs have been accommodating parties’ requests for discovery modifications such as conducting depositions remotely, allowing more time for foreign discovery, lifting the requirement for face-to-face settlement conferences, etc. Remote review of source code, however, has become a difficult issue to navigate in some circumstances. Nevertheless, even for investigations where hearings have been postponed, ALJs are generally maintaining the pre-hearing briefing schedule, taking into account extensions of discovery and other COVID-19 crisis issues, so that the parties can be ready for a hearing once the current restrictions are lifted.

Evidentiary Hearings

As of March 17, there were 27 pending investigations that were in the late stages of the proceedings – the evidentiary hearing was complete, a successful motion for summary determination had been filed, or the complaint had been withdrawn. These investigations were largely unaffected by the COVID-19 crisis, other than some minor delays, generally unrelated to COVID-19.

As of March 17, only a few pending investigations had evidentiary hearings scheduled for March, April, May or June 2020. In some of these investigations, ALJs have taken the approach of moving the hearing to a later specific date. See, e.g., 337-TA-1166 (ALJ Lord), 337-TA-1170 (ALJ Elliott, in the first instance) and 337-TA-1173 (ALJ McNamara). In other investigations, ALJs have postponed hearings indefinitely. See, e.g., 337-TA-1162 (ALJ Elliott), 337-TA-1167 (Chief ALJ Bullock), 337-TA-1170 (ALJ Elliott, after an initial specific deferral date), 337-TA-1172 (ALJ Shaw) and 337-TA-1178 (ALJ Shaw).

For investigations with hearing dates in July, August or September 2020, ALJs have been proactive in extending discovery to account for COVID-19’s impact on discovery and re-setting specific dates for evidentiary hearings in the fall, with the hope that the ITC will be open by then. See, e.g., 337-TA-1175 (ALJ Elliott), 337-TA-1181 (ALJ Lord) and 337-TA-1182 (ALJ Cheney). But ALJ McNamara still has an evidentiary hearing scheduled in 337-TA-1180 for the end of July/early August.

Once the ITC opens, the procedures for conducting in-person hearings may change from the general practices in the past. For example, in several investigations, the parties have already raised issues regarding receipt of evidence without out a sponsoring witness (see, e.g., 337-TA-1167) and the use of deposition transcripts and witness statements instead of live testimony (see, e.g., 337-TA-1166).

The Future of Section 337 Investigations

Although the COVID-19 crisis has not had an immediate impact on the number of Section 337 complaints filed at the ITC (six complaints were filed in the two months following announcement of the COVID-19 Action plan, which is consistent with historical averages and with the number of complaints filed in January – March 2020), the long term impact of COVID-19 is difficult to predict. An economic slowdown might cause potential Complainants to delay filing a complaint to save and/or postpone legal costs. An economic slowdown also might decrease the volume of products imported into the United States, thereby reducing the number of infringing imports. On the other hand, as competition with imported products becomes more intense, the need for a company to effectively enforce its Intellectual Property rights will increase. Regardless of the long term impact of COVID-19 on the economy, however, the ITC is demonstrating that it can be flexible and adapt in times of crisis.

[1] Specifically, the ITC temporarily waived Rule 210.4(f)(3)’s paper copy requirements, as they pertain to documents filed under Rules 210.4(d), 210.8, 210.13, 210.14, 210.15, 210.16, 210.17, 210.18, 210.19, 210.20, 210.21, 210.23, 210.24, 210.25, 210.26, 210.33, 210.34, 210.35, 210.36, 210.38, 210.40, 210.43, 210.45, 210.46, 210.47, 210.50, 210.52, 210.53, 210.57, 210.59, 210.66, 210.70, and 210.71; and the paper copy requirements set forth in Rules 210.4(f)(6)(ii), 210.4(f)(7)(i), and 210.8, as well as the paper filing or copy requirements in the ITC’s Handbook on Filing Procedures, with which Rule 210.4(f)(i) requires compliance.

© Copyright 2020 Squire Patton Boggs (US) LLPNational Law Review, Volume X, Number 150

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About this Author

Adam R. Hess Partner  intellectual property IP litigation
Partner

Adam Hess has more than 25 years of experience representing clients in intellectual property (IP) litigation and counseling clients on IP matters involving a wide array of technologies.

Adam has significant experience as lead counsel in Section 337 investigations at the US International Trade Commission (ITC). He has represented many clients against subpoenas related to ITC investigations. He works with Customs and Border Protection on matters concerning the enforcement of ITC exclusion orders.

Adam serves as lead counsel in federal district court litigation and international...

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