International Trade Commission.
Final rule.
The United States International Trade Commission (“Commission”) amends its Rules of Practice and Procedure concerning rules of general application, adjudication, and enforcement. The amendments are necessary to make certain technical corrections, to clarify certain provisions, to harmonize different parts of the Commission's rules, and to address concerns that have arisen in Commission practice.
This regulation is effective August 6, 2008.
James Worth, Office of the General Counsel, United States International Trade Commission, telephone 202–205–3065. Hearing-impaired individuals are advised that information on this matter can be obtained by contacting the Commission's TDD terminal at 202–205–1810. General information concerning the Commission may also be obtained by accessing its Internet server at
Section 335 of the Tariff Act of 1930 (19 U.S.C. 1335) authorizes the Commission to adopt such reasonable procedures, rules, and regulations as it deems necessary to carry out its functions and duties. This rulemaking seeks to update certain outdated provisions and improve other provisions of the Commission's existing Rules of Practice and Procedure. The Commission is amending its rules covering investigations under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337) (“section 337”) in order to increase the efficiency of its section 337 investigations. The Commission published a notice of proposed rulemaking (NOPR) in the
Although the Commission considers these rules to be procedural rules which are excepted from notice-and-comment under 5 U.S.C. 553(b)(3)(A), the Commission invited the public to comment on all the proposed rules amendments.The NOPR requested public comment on the proposed rules within 60 days of publication of the NOPR. Subsequently, the Commission extended the deadline for submitting comments by six weeks. 73 FR 8836 (Feb. 15, 2008). Further, in response to a request from the Embassy of the People's Republic of China, the Chairman granted an extension by letter of March 20, 2008, to the Chinese government and relative Chinese enterprises to submit comments until April 30, 2008. The Commission received a total of five sets of comments, one each from the ITC Trial Lawyer's Association (ITCTLA), the Intellectual Property Owners Association (IPO), the American Intellectual Property Law Association (AIPLA), the law firm of Adduci, Mastriani & Schaumberg LLP (AMS), and the Ministry of Commerce of the People's Republic of China (MOFCOM).
The Commission carefully considered all comments that it received. The Commission's response is provided below in a section-by-section analysis. The Commission appreciates the time and effort the commentators devoted to the task.
As required by the Regulatory Flexibility Act, the Commission certifies that these regulatory amendments will not have a significant impact on small business entities.
The final regulations contain four changes from those proposed in the NOPR. These changes are summarized here.
First, with regard to § 210.11(b), relating to the service of the complaint, the Commission has substituted the word “complainant” for “party”. Second, with regard to § 210.12(a)(9)(viii), the Commission has determined to require that complainants provide claim charts with the filing of the complaint to specify the allegations of infringement with regard to each independent patent claim asserted, rather than just one exemplary claim per patent.
Third, with regard to § 210.39, the Commission adopted the commentators' suggestion to require the parties to notify the Commission of the issuance or dissolution of a stay of a parallel district court proceeding only if the issuance or dissolution actually occurs, and to provide ten days for the parties to notify the Commission.
Fourth, the Commission has withdrawn its proposal to eliminate reference to the position of chief administrative law judge in §§ 210.15, 210.20, 210.58, and 210.75.
A comprehensive explanation of the rule changes is provided in the section-by-section analysis below. The section-by-section analysis includes a discussion of all eleven modifications suggested by the commentators. Many positive comments were received for the majority of the 50 specific proposals in the NOPR. The proposals for which only positive comments were received are unchanged.
The NOPR proposed to amend § 201.16 to allow all parties one extra day to respond to documents served by overnight delivery, and to conform § 201.16 to §§ 210.6 and 210.7. AMS supports the proposed revision. MOFCOM suggests that the Commission amend 19 CFR 201.16 to clarify whether or not all the parties should be served via the same method. MOFCOM suggests that persons located in a foreign country continue to be afforded ten additional calendar days to respond under 19 CFR 201.16, as the rule currently allows. The current rule, however, allows ten extra days to persons located in a foreign country when service is by first-class mail, and the proposed amendment does not affect this provision. Therefore, the rule is unchanged from the proposed rule.
The NOPR proposed to amend § 210.7 to require that each party designate one attorney or agent to receive service of process. The ITCTLA proposes that a party designate a single attorney to receive service from the Commission and from the Office of Unfair Import Investigations (“OUII”) of hard copies of all papers, but that the private parties also be authorized to agree to serve several co-counsel for the same parties using either electronic or hard copy means. The Commission has not adopted this proposal because the parties currently may agree to serve extra copies on each other by electronic or hard copy means; this practice would not be disturbed by the Commission
The NOPR proposed to amend § 210.11(b) relating to service of the complaint. The proposed amendment does not alter the existing regulatory language which describes the ability of a party to effect personal service: “With leave from the presiding administrative law judge, a party may attempt to effect personal service of the complaint and notice of investigation upon a respondent, if the Secretary's efforts to serve the respondent have been unsuccessful. If the party succeeds in serving the respondent by personal service, the party must notify the administrative law judge and file proof of such service with the Secretary.” The term “party” is defined in § 201.2 as “any person who has filed a complaint or petition on the basis of which an investigation has been instituted, or any person whose entry of appearance has been accepted pursuant to § 201.11(a) or (c).” Given this definition, MOFCOM states that it is unclear what “a party” refers to in § 210.11(b). In light of this comment, the word “complainant” is substituted for the term “party” in order to clarify the persons affected.
The NOPR further proposed amending § 210.12 by adding new paragraphs (a)(9)(iv) and (a)(10)(i) and (a)(10)(ii) to reduce the number of copies of license agreements that complainants must file, and by amending paragraphs (c)(1), (d), (f), and (g), such that the submission of license agreements would be required only in those instances where (i) the complainant relies upon its status as a licensee for purposes of standing or (ii) the complainant relies upon the domestic activities of a licensee in support of its domestic industry contentions, and that in these instances, the license be submitted as an exhibit to the complaint (which would ultimately be served upon the respondents), rather than as an appendix item, and that all licensees of the asserted rights would also have to be identified in the complaint. The ITCTLA states that it supports the amendment of section 210.12(c)(1); the ITCTLA did not submit any comments with regard to sections 210.12(d), (f), and (g). AMS supports the proposed revisions. MOFCOM objects to the proposed amendment, arguing that respondents will typically ask for license agreements during discovery anyway. Because the license agreements may contain business information which is not essential to the allegations made against the respondents, the Commission has determined that the balance of interests favors waiting until identified respondents designate specific representatives to sign the administrative protective order before serving license agreements which are not essential to the understanding of the allegations made against them. Because the respondents will still receive the license agreements in discovery in a timely fashion, the Commission has determined to issue the rule unchanged from the proposed rule.
The NOPR proposed to revise § 210.12(a) to require claim charts to be filed with the complaint to specify both allegations of infringement by any respondents and satisfaction of the domestic injury requirement by the complainant. The ITCTLA states that it supports the Commission's clarification that there should be a separate requirement for domestic industry claim charts and infringement claim charts. AMS supports the proposed revision. MOFCOM suggests that the Commission investigative attorney and the administrative law judges should “pre-review” complaints to make a “preliminary assessment of the scope of the claims” and to determine whether there is
The Commission agrees that clarification of the scope of the claims at an early stage of the investigation will foster earlier resolution of disputes. Therefore, the Commission has determined to require a separate claim chart to demonstrate the allegations of infringement by respondents with regard to each independent claim, rather than just one exemplary claim per asserted patent. The Commission believes that the rule would not add to the burden that the complainant must already undertake in order to fulfill its obligations to file a non-frivolous complaint under existing Commission Rules 210.4(c)–(d), 19 CFR 210.4(c)–(d), which are modeled in part on Rule 11 of the Federal Rules of Civil Procedure.
The NOPR proposed to amend §§ 210.15, 210.20(a), 210.58, and 210.75(b)(3) by eliminating reference to the chief administrative law judge. AMS does not support the proposed revision. The ITCTLA notes that, although there is not at present a chief administrative law judge, there may be a need or desire to designate a chief administrative law judge as the number of administrative law judges increases, and therefore the Commission may wish to retain this reference. The AIPLA has the same concerns as AMS and the ITCTLA, and notes that, in view of the growing caseload, the Commission has advertised a position for a fifth administrative law judge. The AIPLA observes that a chief administrative law judge could coordinate a reply from the administrative law judges to any suggestion posed to them. IPO suggests that a chief administrative law judge could increase the efficiency of the Commission and could aid in the training of new administrative law judges, could aid in consistent application of the Commission's rules, and could speak on behalf of the administrative law judges on matters such as requests for resources. AMS submits that the references to a chief administrative law judge do not cause harm or confusion even though there currently is no chief administrative law judge, and suggests that the rule should be maintained in order to provide the Commission flexibility to appoint a chief administrative law judge in the future. AMS notes that the Commission might find a chief administrative law judge to be a helpful representative for the administrative law judges to speak on their behalf on particular matters, receive suggestions or concerns, and possibly coordinate responsibility for certain matters relating to administrative law judges.
The proposed amendments and revisions pertaining to eliminating the references to chief administrative law judge are withdrawn.
The NOPR proposed to amend § 210.28 to conform with the practice in the U.S. district courts under the Federal Rules of Civil Procedure whereby the stenographer is given the responsibility of serving copies of a deposition on all parties to the case. Under current Commission practice, the party taking the deposition is given this responsibility, and the only party currently required to be served with a copy is the Commission investigative attorney. AMS supports the proposed revision. MOFCOM comments that it is unclear under the proposed rule when a party will be notified that a transcript of a deposition is available, how a party can obtain a copy, and how much money the party should pay. No other specific comments were received. Because the rule charges the stenographic reporter with the distribution of the transcripts, and the concomitant responsibility of notifying the parties of the availability of the transcripts and their cost, the rule is unchanged.
The NOPR proposed to amend § 210.39(b) to require the filing of written notice with the Secretary whenever (1) a section 337 party/civil action litigant asks the court to issue an order staying the civil action, and (2) whenever the district court issues an order dissolving the stay and directing the Commission to transmit all or part of the record to the court. The proposed amendment requires that a party file written notice with the Commission on the same day that it asks the district court to stay the civil proceeding. The purpose of the proposed amendment is to clarify current Commission rule 210.39(b) and to make the rule more consistent with 28 U.S.C. 1659(b).
The ITCTLA agrees with clarifying § 210.39(b) and making it consistent with 28 U.S.C. 1659(b), but suggests that a party be required to notify the Commission only if the district court issues a stay of its proceedings or dissolves such a stay, stating that it would not be necessary to notify the Commission of a motion for a stay because a motion could be withdrawn or superseded by other events. The ITCTLA suggests an amendment to require parties to notify the Commission within ten days of the issuance or dissolution of a stay by the district court. AMS supports the ITCTLA's proposed amendment.
The ITCTLA suggestion would require the parties to notify the Commission only if there were an actual change in the status of the district court proceeding, and would clarify the time for parties to notify the Commission of the imposition of the stay or dissolution of the stay. Because the Commission finds this clarification to be beneficial, the commentator's suggestion is adopted in the rule.
The NOPR proposed to amend § 210.42(a)(1)(i) to provide that the administrative law judge would issue his final initial determination no later than four months before the target date for completion of the investigation, regardless of whether the target date has been set at over 15 months as the current rule provides. The NOPR proposed to amend §§ 210.42(h)(2) and 210.43(d)(1) to provide that the Commission will have two months to determine whether to review a final initial determination and two months for final disposition of the investigation in all investigations. The NOPR further proposed to amend § 210.51(a) by providing that if the target date set by order of the administrative law judge does not exceed 16 months from the date of institution, the order of the administrative law judge shall be final.
The ITCTLA comments that it believes the proposed rule would create a default target date for completion of most investigations of 16 months. The ITCTLA contends that the proposed rule would be counter to the legislative history of the current statutory guidance on time for completion of investigations. The ITCTLA cites a
IPO comments that it believes the current rules are adequate to provide efficient resolution of section 337 proceedings while at the same time allowing for extensions of time when necessary. IPO adds that its members place much value in the Commission's prompt and effective resolution of section 337 investigations “particularly when compared to the pace of typical intellectual property disputes in the U.S. District Court system.” IPO comments that the proposed rule would turn the exception into the rule, contrary to the stated goal of efficiency. IPO expresses concern that the proposed rule would also open the door to further expansion of time limits in future, and hence would “proceed down a slippery slope.” IPO relies on section 337 and its legislative history. IPO suggests the hiring of additional administrative law judges and supports the filling of any vacant administrative law judge positions.
AMS does not support the revision, contending that it would effectively lengthen the time for completion of these investigations by one month, and AMS believes the proposed revision runs counter to the goal expressed in section 337 and its legislative history to resolve investigations “at the earliest practicable time.” AMS understands that the increasing number and complexity of investigations have made it difficult to complete all investigations in 12 to 15 months but suggested that the Commission keep the current practice of granting itself additional time on a case-by-case basis. AIPLA's comments identify the same concerns as AMS, the ITCTLA, and IPO.
The Commission believes that the proposal to allow the administrative law judge to set a target date of 16 months by order rather than by initial determination would not set 16 months as the default length for every case nor change the current length of investigations, but would merely allow the administrative law judge to set 16 months as a target date by order where necessary. The Commission acknowledges that there have been certain investigations recently which have exceeded 15 months due to such factors as stays pending other proceedings and reassignment of cases due to the retirement of an administrative law judge, as well as the resource constraints relative to the recent surge in caseload. The Commission has been working to hire additional administrative law judges and staff and intends to revisit this rule after additional personnel and resources have been made available to the Office of Administrative Law Judges, including
The Commission notes that historically, the statute allowed 18 months for “more complicated” cases. “More complicated” referred to investigations “of an involved nature owing to the subject matter, difficulty in obtaining information, the large number of parties involved, or other significant factors.” 19 CFR 210.59(a) (1993). Typically these were investigations that required greater discovery because they (1) included multiple patents (and claims), (2) involved complex technology, and/or (3) included multiple respondents.
Historical practice shows that the “more complicated” designation was used only where necessary.
The amendment to allow investigation target dates to be set at 16 months by order was proposed in view of the proposed four-month period for the Commission to complete its review. However, nothing in the proposed rule mandates a 16-month target date in every case, and the Commission does not expect the judges to set a 16-month target date in every investigation. Moreover, the administrative law judges currently have authority to set target dates by initial determination longer than 15 months. Therefore, we do not expect that this change will increase the number of investigations with target dates longer than 15 months. The rule change, however, will streamline Commission practice by making it less likely that the Commission will need to extend its “whether to review” deadline. Moreover, the parties will have a more predictable date for responding to Commission requests for any briefing on review when the Commission deadline for determining whether to review a final ID is 60 days in every investigation. Therefore, the rule is unchanged from the proposed rule.
The NOPR proposed to amend § 210.43(b)(1) to require that any petition for review exceeding 50 pages in length be accompanied by a summary not to exceed ten pages, that responses to petitions should similarly contain such summaries, and that there be a 100-page limit exclusive of the summaries for the length of petitions for review of final initial determinations on a matter other than temporary relief. The ITCTLA opposes the proposed rule because initial determinations and their associated findings of fact may themselves be hundreds of pages and hence would be hard to address in a 100-page petition for review. In this connection, the ITCTLA notes that the technology itself may be complex and difficult to address in 100 pages, and that under current § 210.43(b)(3), issues not addressed in a petition for review will be deemed waived. AIPLA makes similar observations and further notes that some investigations involve multiple parties, multiple patents, multiple claims and claim limitations, and contested issues of claim construction, validity, and infringement. AIPLA supports the proposal that a party must include a summary to provide an overview of longer petitions for review. AMS comments that it does not support the proposed rule because some complex investigations have initial determinations which would be too lengthy to address in a 100-page petition for review. AMS also notes that it would be necessary to address an issue to preserve it for an appeal to the Federal Circuit, as reflected in the proposed amendment to § 210.43(b)(3). MOFCOM also comments that it believes 100 pages are insufficient.
The commentators' main concern is the need for the parties to preserve issues for appeal before the Commission and the U.S. Court of Appeals for the Federal Circuit. Yet the Federal Rules of Appellate Procedure, which apply to the Federal Circuit, limit principal briefs to 30 pages, 14,000 words, or 1,300 lines of text if monospaced. Rule 7(A), (B). Given the court's page limitations, the Commission believes it is reasonable to conclude that a 100-page petition for review could accommodate all issues which a party may wish to preserve for a possible appeal to the Federal Circuit. Moreover, the Commission believes that the page limits will increase the quality of analysis by encouraging the parties to focus on what they perceive to be reversible errors. Therefore, the rules are unchanged from the proposed rule.
The NOPR proposed to amend § 210.71 and 210.79 and to further amend § 210.75 to clarify the procedures for the analysis of changed conditions, for the filing of enforcement proceedings, and for requests for advisory opinions. Specifically, the NOPR proposed to amend § 210.75 relating to enforcement of Commission orders to clarify that under section 337, the Commission may impose its own civil penalty which it may enforce in district court rather than having to have the district court impose the civil penalty in the first instance. MOFCOM comments that “it is confusing that the ITC, as an administrative authority, is permitted to initiate a civil action based on an administrative order.” Section 210.75 is based on the statutory authority granted by Congress to the Commission to bring civil actions in U.S. district court to enforce its orders and in aid of its jurisdiction under 19 U.S.C. 1333(c) and 1337(f)(2). The role of the courts in the enforcement of agency orders is important to agencies where necessary to ensure compliance with the administration of statutory schemes by agencies. AMS supports the revisions. No other comments were received. Therefore, the rules are unchanged.
MOFCOM also suggests that the Commission establish a procedure to suspend Commission investigations at the request of a respondent when the USPTO has instituted a reexamination proceeding of a patent at issue. MOFCOM further suggests that the Commission analyze the effect of recent jurisprudence in
Administration practice and procedure, Reporting and recordkeeping requirements.
Administration practice and procedure, Business and industry, Customs duties and inspection, Imports, Investigations.
Sec. 335 of the Tariff Act of 1930 (19 U.S.C. 1335), and sec. 603 of the Trade Act of 1974 (19 U.S.C. 2482), unless otherwise noted.
(e)
19 U.S.C. 1333, 1335, and 1337.
(f)
The additions and revisions read as follows:
(a) * * *
(3) Whenever the Commission effects service of documents issued by or on behalf of the Commission or the administrative law judge upon the private parties by overnight delivery, service upon the Office of Unfair Import Investigations shall also be deemed to have occurred by overnight delivery.
(b)
A preinstitution proceeding is commenced by filing with the Secretary a signed original complaint and the requisite number of true copies.
(a)(1)
(i) Twelve (12) copies of the nonconfidential version of the complaint along with 6 copies of the nonconfidential exhibits, and 6 copies of the confidential exhibits;
(ii) Twelve (12) copies of the confidential version of the complaint, if any;
(iii) For each proposed respondent, one copy of the nonconfidential version of the complaint and one copy of the confidential version of the complaint, if any, along with one copy of the nonconfidential exhibits and one copy of the confidential exhibits, and
(iv) For the government of the foreign country in which each proposed respondent is located as indicated in the Complaint, one copy of the nonconfidential version of the complaint.
The same requirements apply for the filing of a supplement to the complaint.
(2)
(i) Twelve (12) copies of the nonconfidential version of the complaint along with 6 copies of the nonconfidential exhibits, and 6 copies of the confidential exhibits;
(ii) Twelve (12) copies of the confidential version of the complaint, if any;
(iii) For each proposed respondent, one copy of the nonconfidential version of the complaint and one copy of the confidential version of the complaint, if any, along with one copy of the confidential exhibits;
(iv) Twelve (12) copies of the nonconfidential version of the motion for temporary relief along with 6 copies of any nonconfidential exhibits filed with the motion and 6 copies of the confidential exhibits, if any, filed with the motion;
(v) Twelve (12) copies of the confidential version of the motion for temporary relief, if any; and
(vi) For each proposed respondent, one copy of the confidential version of the motion along with one copy of the confidential exhibits filed with the motion.
The same requirements apply for the filing of a supplement to the complaint or a supplement to the motion for temporary relief.
(a)(1) Unless the Commission institutes temporary relief proceedings, upon institution of an investigation, the Commission shall serve:
(i) Copies of the nonconfidential version of the complaint, the nonconfidential exhibits, and the notice of investigation upon each respondent; and
(ii) Copies 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.
(2) If the Commission institutes temporary relief proceedings, upon institution of an investigation, the Commission shall serve:
(i) Copies of the nonconfidential version of the complaint and the notice of investigation upon each respondent; and
(ii) A copy of 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.
(3) All respondents named after an investigation has been instituted and the governments of the foreign countries in which they are located as indicated in the complaint shall be served as soon as possible after the respondents are named.
(4) The Commission shall serve copies of the notice of investigation upon the U.S. Department of Health and Human Services, the U.S. Department of Justice, the Federal Trade Commission, the U.S. Customs Service, and such other agencies and departments as the Commission considers appropriate.
(b) With leave from the presiding administrative law judge, a complainant may attempt to effect personal service of the complaint and notice of investigation upon a respondent, if the Secretary's efforts to serve the respondent have been unsuccessful. If the complainant succeeds in serving the respondent by personal service, the complainant must notify the administrative law judge and file proof of such service with the Secretary.
The additions and revisions read as follows:
(a)
(1) Be under oath and signed by the complainant or his duly authorized officer, attorney, or agent, with the name, address, and telephone number of the complainant and any such officer, attorney, or agent given on the first page of the complaint, and include a statement attesting to the representations in § 210.4(c)(1) through (3);
(6)(i) If the complaint alleges a violation of section 337 based on infringement of a U.S. patent, or a federally registered copyright, trademark, mask work, or vessel hull design, under section 337(a)(1) (B), (C), (D), or (E) of the Tariff Act of 1930, include a description of the relevant domestic industry as defined in section 337(a)(3) that allegedly exists or is in the process of being established, including the relevant operations of any licensees. Relevant information includes but is not limited to:
(C) Substantial investment in the exploitation of the subject patent, copyright, trademark, mask work, or vessel hull design, including engineering, research and development, or licensing; or
(9) Include, when a complaint is based upon the infringement of a valid and enforceable U.S. patent—
(i) The identification of each U.S. patent and a certified copy thereof (a legible copy of each such patent will suffice for each required copy of the complaint);
(ii) The identification of the ownership of each involved U.S. patent and a certified copy of each assignment of each such patent (a legible copy thereof will suffice for each required copy of the complaint);
(iii) The identification of each licensee under each involved U.S. patent;
(iv) A copy of each license agreement (if any) for each involved U.S. patent that complainant relies upon to establish its standing to bring the complaint or to support its contention that a domestic industry as defined in section 337(a)(3) exists or is in the process of being established as a result of the domestic activities of one or more licensees;
(v) When known, a list of each foreign patent, each foreign patent application (not already issued as a patent) and each foreign patent application that has been denied, abandoned or withdrawn corresponding to each involved U.S. patent, with an indication of the prosecution status of each such patent application;
(vi) A nontechnical description of the invention of each involved U.S. patent;
(vii) A reference to the specific claims in each involved U.S. patent that allegedly cover the article imported or sold by each person named as violating section 337 of the Tariff Act of 1930, or the process under which such article was produced;
(viii) A showing that each person named as violating section 337 of the Tariff Act of 1930 is importing or selling the article covered by, or produced under the involved process covered by, the above specific claims of each involved U.S. patent. The complainant shall make such showing by appropriate allegations, and when practicable, by a chart that applies each asserted independent claim of each involved U.S. patent to a representative involved
(ix) A showing that an industry in the United States, relating to the articles protected by the patent exists or is in the process of being established. The complainant shall make such showing by appropriate allegations, and when practicable, by a chart that applies an exemplary claim of each involved U.S. patent to a representative involved domestic article or to the process under which such article was produced; and
(x) Drawings, photographs, or other visual representations of both the involved domestic article or process and the involved article of each person named as violating section 337 of the Tariff Act of 1930, or of the process utilized in producing the imported article, and, when a chart is furnished under paragraphs (a)(9)(viii) and (a)(9)(ix) of this section, the parts of such drawings, photographs, or other visual representations should be labeled so that they can be read in conjunction with such chart; and
(10) Include, when a complaint is based upon the infringement of a federally registered copyright, trademark, mask work, or vessel hull design—
(i) The identification of each licensee under each involved copyright, trademark, mask work, and vessel hull design;
(ii) A copy of each license agreement (if any) that complainant relies upon to establish its standing to bring the complaint or to support its contention that a domestic industry as defined in section 337(a)(3) exists or is in the process of being established as a result of the domestic activities of one or more licensees.
(c)
(1) One certified copy of the U.S. Patent and Trademark Office prosecution history for each involved U.S. patent, plus three additional copies thereof; and
(2) Four copies of each patent and applicable pages of each technical reference mentioned in the prosecution history of each involved U.S. patent.
(d)
(f)
(g)
(h)
(i)
(a)
The revisions read as follows:
(a)
(2) Any party may move at any time to terminate an investigation in whole or in part as to any or all respondents on the basis of a settlement, a licensing or other agreement, including an agreement to present the matter for arbitration, or a consent order, as provided in paragraphs (b), (c) and (d) of this section.
(b)
(2) * * * Termination by settlement need not constitute a determination as to violation of section 337 of the Tariff Act of 1930.
(c)
(2) * * *
(ii) * * * Termination by consent order need not constitute a determination as to violation of section 337. * * *
(d)
(e)
(f) * * * If the administrative law judge defers his adjudication in such a manner, his ruling on the motion for sanctions must be in the form of a recommended determination and shall be issued no later than 30 days after issuance of the Commission's final determination on violation of section 337 or termination of the investigation. * * *
(d)
(g)
(i) * * *
(4)
(b) * * *
(2) * * * The party upon whom the interrogatories have been served shall serve a copy of the answers and objections, if any, within ten days of service of the interrogatories or within the time specified by the administrative law judge. * * *
(b) * * *
(2) The party upon whom the request is served shall serve a written response within 10 days or the time specified by the administrative law judge. * * *
(b)
(d)
(g)
The additions and revisions read as follows:
(c) * * *
(5) * * *
The issue of whether sanctions should be imposed may be raised on a motion by a party, the administrative law judge's own motion, or the Commission's own initiative in accordance with § 210.25(a)(2). Parties, including the party that identifies an alleged breach or makes a motion for sanctions, and the Commission shall treat the identity of the alleged breacher as confidential business information unless the Commission issues a public sanction. The identity of the alleged breacher means the name of any individual against whom allegations are made. The Commission or administrative law judge shall allow the parties to make written submissions and, if warranted, to present oral argument bearing on the issues of violation of a protective order and sanctions therefor. If before an administrative law judge, any determination on sanctions of the type enumerated in paragraphs (c)(1) through (4) of this section shall be in the form of a recommended determination. When the motion is addressed to the administrative law judge, he shall grant or deny a motion for sanctions under paragraph (c)(5) of this section by issuing an order.
(d)
(1) A subpoena;
(2) A court or an administrative order (other than an order of a court reviewing a Commission decision);
(3) A discovery request;
(4) An agreement; or
(5) Any other written request, if the request or order seeks disclosure, by him or any other person, of the subject confidential business information to a person who is not, or may not be, permitted access to that information pursuant to either a Commission protective order or § 210.5(b).
This reporting requirement applies only to requests and orders for disclosure made for use of confidential business information in non-Commission proceedings.
(e)
(a) * * *
(2) Negotiation, compromise, or settlement of the case, in whole or in part;
(a)
(d)
(b)
(2) To facilitate timely compliance with any court order requiring the Commission to transmit all or part of the record of its section 337 proceedings to the court, as described in paragraph (b)(1) of this section, a party that requests the court to issue an order staying the civil action or an order dissolving the stay and directing the Commission to transmit all or part of the record to the court must file written notice of the issuance or dissolution of a stay with the Commission Secretary within 10 days of the issuance or dissolution of a stay by the district court.
(a)(1)(i)
(2)
(h) * * *
(2) An initial determination under § 210.42(a)(1)(i) shall become the determination of the Commission 60 days after the date of service of the initial determination, unless the Commission within 60 days after the date of such service shall have ordered review of the initial determination or certain issues therein or by order has changed the effective date of the initial
(3) An initial determination filed pursuant to § 210.42(c) shall become the determination of the Commission 30 days after the date of service of the initial determination, except as provided for in paragraph (h)(5) and paragraph (h)(6) of this section, § 210.50(d)(3), and § 210.70(c), unless the Commission, within 30 days after the date of such service shall have ordered review of the initial determination or certain issues therein or by order has changed the effective date of the initial determination.
(6) The disposition of an initial determination filed pursuant to § 210.42(c) which grants a motion for summary determination that would terminate the investigation in its entirety if it were to become the Commission's final determination, shall become the final determination of the Commission 45 days after the date of service of the initial determination, unless the Commission has ordered review of the initial determination or certain issues therein, or by order has changed the effective date of the initial determination.
(i)
The additions and revisions read as follows:
(a)
(b) * * *
The petition for review must set forth a concise statement of the facts material to the consideration of the stated issues, and must present a concise argument providing the reasons that review by the Commission is necessary or appropriate to resolve an important issue of fact, law, or policy. If a petition filed under this paragraph exceeds 50 pages in length, it must be accompanied by a summary of the petition not to exceed ten pages. Petitions for review may not exceed 100 pages in length, exclusive of the summary and any exhibits.
(3) * * * In order to preserve an issue for review by the Commission or the U.S. Court of Appeals for the Federal Circuit that was decided adversely to a party, the issue must be raised in a petition for review, whether or not the Commission's determination on the ultimate issue, such as a violation of section 337, was decided adversely to the party.
(5)
(c)
(d)
(c)
(b)
(d)
(ii) A respondent may file a motion addressed to the administrative law judge who last presided over the investigation for the return of its bond within 90 days after the expiration of the Presidential review period under 19 U.S.C. 1337(j). If that administrative law judge is no longer employed by the Commission, the motion shall be addressed to the Commission.
Notwithstanding the provisions of § 210.11 regarding service of the complaint by the Commission upon institution of an investigation, on the day the complainant files a complaint with the Commission (see § 210.8(a)(1) and § 210.8(a)(2) of subpart B of this part), the complainant must serve non-confidential copies of both documents (as well as non-confidential copies of all materials or documents attached thereto) on all proposed respondents and on the embassy in Washington, DC of the country in which each proposed respondent is located as indicated in the Complaint. If a complainant files any supplemental information with the Commission prior to institution, nonconfidential copies of that supplemental information must be served on all proposed respondents and on the embassy in Washington, DC of the country in which each proposed respondent is located as indicated in the complaint. The complaint, motion, and supplemental information, if any, shall be served by messenger, overnight delivery, or equivalent means. A signed certificate of service must accompany the complaint and motion for temporary relief. If the certificate does not accompany the complaint and the motion, the Secretary shall not accept the complaint or the motion and shall promptly notify the submitter. Actual proof of service on each respondent and embassy (e.g., certified mail return receipts, messenger, or overnight delivery receipts, or other proof of delivery)—or proof of a serious but unsuccessful effort to make such service—must be filed within 10 days after the filing of the complaint and motion. If the requirements of this section are not satisfied, the Commission may extend its 35-day deadline under § 210.58 for determining whether to provisionally accept the motion for temporary relief and institute an investigation on the basis of the complaint.
(b) If the Commission determines that the complaint, motion for temporary relief, or any exhibits or attachments thereto contain excessive designations of confidentiality that are not warranted under § 201.6(a) of this chapter, the Commission may require the complainant to file and serve new non-confidential versions of the aforesaid submissions in accordance with § 210.54 and may determine that the 35-day period under § 210.58 for deciding whether to institute an investigation and to provisionally accept the motion for temporary relief for further processing shall begin to run anew from the date the new non-confidential versions are filed with the Commission and served on the proposed respondents in accordance with § 210.54.
(a) * * *
Notice is hereby given that the attached complaint and motion for temporary relief will be filed with the U.S. International Trade Commission in Washington, DC on ____, 20_. The filing of the complaint and motion will not institute an investigation on that date, however, nor will it begin the period for filing responses to the complaint and motion pursuant to 19 CFR 210.13 and 210.59.
If the Commission determines to conduct an investigation of the complaint and motion for temporary relief, the investigation will be formally instituted on the date the Commission publishes a notice of investigation in the
(b) * * * The supplementary notice shall be served by messenger, overnight delivery, or equivalent means. * * *
(c) * * * The parties shall serve their comments on other parties by messenger, overnight delivery, or equivalent means.
(a) While the motion for temporary relief is before the administrative law judge, he may compel discovery on matters relating to remedy, the public interest and bonding (as provided in § 210.61). The administrative law judge also is authorized to make findings pertaining to the public interest, as provided in § 210.66(a). Such findings may be superseded, however, by Commission findings on that issue as provided in paragraph (c) of this section.
(a)
(b) * * *
(4) * * *
(ii) Bring civil actions in a United States district court pursuant to paragraph (c) of this section (and section 337(f)(2) of the Tariff Act of 1930) to recover for the United States the civil penalty accruing to the United States under that section for the breach of a cease and desist order or a consent order, and to obtain a mandatory injunction incorporating the relief the Commission deems appropriate for enforcement of the cease and desist order or consent order; or
(c)
(a)
By order of the Commission.