PublishedDecember 16, 2022

A few potential cases (and a percolating issue?) to watch at the ITC

On a recent episode of Ropes & Gray’s Talkin’ Trade podcast, my colleagues and I mentioned a few current developments at the International Trade Commission (ITC) that we will be watching closely. Notably, Administrative Law Judge Cameron Elliot recently issued interesting orders in a few of his investigations, requiring the complainants in those cases to disclose information about their parent corporations (if any such parents exist). 

But ALJ Elliot did not issue these orders for all of his cases—he issued them only for Inv. Nos. 1323 (Certain Video Processing Devices and Products Containing the Same), 1332 (Certain Semiconductors and Devices and Products Containing the Same), and 1340 (Certain Electronic Devices, Semiconductor Devices, and Components Thereof). He did not provide a specific reason as to exactly why he singled out these three investigations, but upon a closer look, the complainants in all three are non-practicing entities. One can assume that he does not feel that the publicly available information on the complainants allows him to know who exactly is standing behind the curtain, so to speak—which can be important for a variety of reasons, including evaluating conflicts.

In each investigation, ALJ Elliot’s disclosure order simply requires the complainant to “file a corporate disclosure statement identifying any parent corporation of Complainant and any publicly held corporation possessing an ownership interest in Complainant, or state that there is no such corporation.” Notably, unlike the federal district courts, where corporate disclosure statements are required under the Federal Rules of Civil Procedure, the ITC does not have a standard requirement that this information be disclosed. Neither the ITC Rules of Practice and Procedure nor any administrative law judge’s Ground Rules include a corporate disclosure requirement, and, to my knowledge, no administrative law judge at the ITC has required it in the past. 

Non-practicing entities have accounted for roughly 20% of all Section 337 investigations in recent years, so if ALJ Elliot’s orders continue and are replicated by other judges, it will have consequences for a large share of cases at the ITC

Elsewhere, disclosure orders in Federal Courts have been making headlines. In particular, District of Delaware Chief Judge Colm Connolly’s April 2022 disclosure order, his series of hearings related thereof, and his much-publicized nearly 80 page memorandum defending these inquiries have been the subject of much comment and debate.

Are we seeing moves across venues to bring greater transparency to non-practicing entity ownership and funding arrangements, or are these isolated incidents that will not be replicated more broadly? Only time will tell, and I, for one, will be following along closely. 

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Matthew Rizzolo

Partner, Ropes & Gray

Matt is a seasoned litigator who works with companies across industries, developing and implementing creative strategies to enforce clients’ intellectual property rights and defend clients from infringement claims. Matt leads the firm’s practice in Section 337 actions before the United States International Trade Commission and has significant experience litigating patent cases in a variety of jurisdictions, including federal district courts throughout the United States, the Court of Federal Claims, the Federal Circuit, and before the Patent Trial & Appeal Board, as well as in IP-related proceedings before U.S. Customers and Border Protection.  His practice encompasses all facets of litigation, from pre-suit investigation through trial, post-trial proceedings, and appeals. Matt has counseled clients in cases involving a wide variety of technical fields, including smartphones, video gaming devices, computer software and hardware, telecommunications, and Internet-related services, as well as biotechnology and pharmaceuticals. He has additional experience in drafting and negotiating patent and technology licensing agreements, and is registered to practice before the U.S. Patent & Trademark Office.

He is a co-host of Ropes & Gray’s IP(DC) podcast, which focuses on intellectual property developments emanating from Washington, DC. While at a previous law firm, Matt also co-founded and wrote for The Essential Patent Blog, a legal blog that focuses on issues relating to standard-essential patents. Prior to law school, Matt worked in various technical and engineering positions for Cooper Industries, an electrical products manufacturer, as part of Cooper’s Operations Leadership Program.

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