Section 337 Update - Enforcing Subpoenas in Section 337 Proceedings

Welcome to the September issue of the Section 337 Update.  This newsletter is designed to provide you with practical updates and developments on Section 337 proceedings before the U.S. International Trade Commission.

Enforcing Subpoenas in Section 337 Proceedings

A party wishing to enforce a subpoena against a third party in a Section 337 Investigation should be familiar with the process outlined by the U.S. International Trade Commission (“ITC”) rules and the statute governing the ITC's ability to obtain information, 19 USC §1333.  While the statute authorizes the ITC to issue subpoenas, in the event of non-compliance, the ITC must seek the assistance of a federal district court to enforce the subpoena.  

In a recent determination for Certain Electronic Devices, Including Handheld Wireless Communications Devices,  Inv. Nos. 337-TA-667 and 673, the ITC authorized its Office of the General Counsel to seek judicial enforcement of a subpoena issued in May of this year against a non-party.  The ITC’s determination is available online.  The enforcement process July 17, 2009, when the party requesting issuance of the relevant subpoena moved for the presiding Administrative Law Judge (“ALJ”) to certify its request for the judicial enforcement. 

The procedures for obtaining and enforcing subpoenas in a Section 337 investigation are different from those set forth under the Federal Rules of Civil Procedure.  To obtain a subpoena in a Section 337 investigation, a party must first file an ex parte application with the presiding ALJ.  (19 CFR §§ 210.32(a), (e).)  The party can only serve the subpoena once it has been signed by the ALJ.  (Id.)  Where a recipient does not comply with a subpoena, the party that sought the subpoena may submit a motion to the ALJ seeking enforcement of the subpoena.  If the ALJ determines that enforcement of the subpoena is warranted, he shall certify a request for judicial enforcement of the subpoena to the Commission.  (19 CFR § 210.32(g).)  The ALJ’s certified request must be accompanied by a report that demonstrates the purpose, relevance, and reasonableness of the subpoena.  (Id.)  If the Commission grants the ALJ’s certified request, its Office of the General Counsel will enforce the subpoena through the U.S. district court that has jurisdiction over the recipient of the subpoena.  (See 19 U.S.C. § 1333(b).)

In the above referenced Section 337 investigation, a subpoena was served on a non-party law firm for the purpose of obtaining information related to the prosecution of two patents at issue in the investigation.  In response to the subpoenas, the law firm produced a limited number of privileged documents but withheld certain other documents under a claim of attorney-client privilege.  The respondent responsible for the issuance of the subpoena requested enforcement of the subpoena with respect to 15 of these withheld documents.  The ALJ certified this request, holding that the attorney-client privilege had been waived and the documents were therefore discoverable.  The ALJ also addressed the purpose and relevance of the subpoena, stating that the subpoena was being used to collect documents regarding the prosecution of patents to support the respondents’ defense.  The ALJ also held that the request for enforcement was reasonable, as the respondents only sought the production of 15 documents.  The public version of the ALJ’s certification is available online.   

Worthy of note, there is a proposed  bill, entitled “United States Court of International Trade Improvement Act,” that would simplify the process for judicial enforcement of subpoenas in ITC investigations.  The proposed bill provides that the ITC would enforce subpoenas through the United States Court of International Trade -- an Article III court with nationwide jurisdiction, rather than through the U.S. district court that has jurisdiction over the recipient of the subpoena.  No other portion of the enforcement process would be affected.  The proposed bill is available online.

Judicial Enforcement in Section 337 Proceedings 

Below please find examples of other cases where the ITC granted certified requests for judicial enforcement of subpoenas:  

• Inv. No. 337-TA-658, Certain Video Game Machines and Related Three-Dimensional Pointing Devices (granting request for judicial enforcement of subpoena duces tecum and ad testificandum against non-party individual where critical evidence regarding invalidity was exclusively in his possession, where no document was produced during the two-month period following issuance of subpoena, and where the person refused to comply with subpoena in the absence of being paid an arbitrary and exorbitant fee for his time).  The ALJ’s request and the ITC’s determination are available online. 

• Inv. No. 337-TA-596, Certain GPS Chips, Associated Software and Systems, and Products Containing Same (granting request for judicial enforcement of subpoena duces tecum and ad testificandum against non-party corporation, to the extent additional documentation and testimony exists, where corporation’s designated corporate witness was unable to give substantive testimony for many subpoena topics and where it appeared that the corporation may have additional relevant documentation that it did not produce).  The ALJ’s request and the ITC’s  determination are available online. 

• Inv. No. 337-TA-526, Certain NAND Flash Memory Circuits and Products Containing Same (granting request for judicial enforcement of a previous order that required a non-party corporation to produce documents in response to a subpoena where corporation did not produce documents within the designated period and where corporation had untimely attempted to unilaterally impose unnecessary conditions upon its production).  The ALJ’s request and the ITC’s determination are available online. 

We will periodically provide you updates on developments relating to Section 337 litigation. If you have any questions or for further information, please feel free to contact Charles Schill at 202.429.8162; Alice Kipel at 202.429.6743; or Steve Barber at 202.429.6430.