In Certain Wireless Standard Compliant Electronic Devices,
Including Communication and Tablet Computers, Inv. No.
337-TA-953, Order No. 44 (Jan. 22, 2016), the Administrative Law
Judge ("ALJ") emphasized the importance of strictly
complying with U.S. International Trade Commission
("ITC") rules, even with a routine filing such as a joint
motion to terminate based on a settlement agreement. Thus, before
filing a complaint with the ITC, complainants should have a clear
understanding of the significant differences between litigation in
district courts and litigation before the ITC.
Statutory Framework
While Rule 41 of the Federal Rules of Civil Procedure permits
federal district court litigants to dismiss a case merely by filing
a stipulation of dismissal signed by all the parties, parties to a
Section 337 investigation must file a motion requesting termination
of the investigation. 19 C.F.R. § 210.21. A motion for
termination based on settlement must include "copies of the
licensing or other settlement agreements."
§ 210.21(b)(1). The settlement agreement, like most
documents filed in Section 337 investigations, has to be filed
"electronically." 19 C.F.R.
§ 210.4(f)(4).
The Case
The ITC instituted a patent infringement investigation against
Apple Inc. based on a complaint filed by Swedish telecom company
Ericsson. Eventually, the parties settled and moved for the ITC to
terminate its investigation. Citing the commission's rules, the
ALJ instructed the parties to file an unredacted electronic copy of
the settlement agreement. However, concerned about
"inadvertent unauthorized distribution," the parties only
submitted physical copies of the unredacted settlement agreement
and electronic copies of a heavily redacted version of the
settlement agreement.
The ALJ declared that the submitted agreements were insufficient.
According to the ALJ, she was legally precluded from terminating
the investigation without an electronically filed, unredacted
settlement agreement. Furthermore, the ALJ declared that the
parties had provided no reason why their settlement agreement
merited special treatment. The ALJ therefore ordered the parties to
show cause: (i) why she should not herself file an electronic copy
of the settlement agreement as part of any initial determination
terminating the investigation; and (ii) why she should not sanction
the parties' attorneys at least in the amount they billed on
their work on the motions to terminate.
Take Away
A party seeking to institute an ITC investigation should understand
that agreements settling the dispute will have to be filed with the
ITC, albeit confidentially. Although it remains possible that, in
extenuating circumstances, parties might succeed in convincing an
ALJ to accept something other than an electronic copy of the
settlement agreement, this seems unlikely. The ALJ's order
highlights the need for a complainant to carefully assess whether
it is comfortable with the commission's rules for conducting
investigations (including the rules concerning termination of
investigations) prior to filing its complaint.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.