Top Ten Pointers for Responding to a Third-Party ITC (International Trade Commission) Subpoena
Jun 01, 2012 Top Ten Download PDF
By Teresa Summers
By Teresa Summers, Associate, Morrison & Foerster LLP
1. Application for a Subpoena
Rule 210.32(a) provides for the issuance of subpoenas upon timely application to the presiding ALJ. Rule 210.32(a) provides for two types of subpoenas for which application may be made: a subpoena ad testificandum, which requires a person to appear and testify at a deposition, a prehearing conference, or at a hearing; and a subpoena duces tecum, which requires a person to produce specified documents. A copy of the application is generally not provided to the subpoenaed party, nor is there a requirement in the ITC Rules for the applicant to do so. The ALJ shall rule on all applications and may issue subpoenas when warranted. See Rule 210.32(a)(3).
2. Timing for Serving Subpoena
Rule 210.32 does not set forth a specific time by which an application for subpoena must be received by the ALJ. Similarly, in most ITC investigations, there is no ALJ ground rule providing for a set deadline for submitting applications for subpoena. As a procedural matter, however, a subpoena should be served sufficiently in advance of the close of fact discovery in order to allow the subpoenaed party sufficient time to file a motion to quash without violating the discovery deadline. See Radios, ITC Inv. No. 337-TA-476, Order 16 (Dec. 17, 2002) (criticizing the applicant for tardiness).
3. Scope of Subpoena
Subpoenas may be used by any party in an ITC investigation to obtain testimony, documents, or other physical exhibits for the purposes of discovery or for use as evidence. A subpoena requiring a person to produce specified documents, papers, books, or other physical exhibits at the taking of a deposition, at a prehearing conference, at a hearing, or under any other circumstances, must specify the material to be produced as precisely as possible, showing the general relevancy of the material and the reasonableness of the scope of the subpoena. See Rule 210.32(b). When used for discovery purposes, a subpoena may require a person to produce and permit the inspection and copying of nonprivileged documents, papers, books, or other physical exhibits that constitute or contain evidence relevant to the subject matter involved and that are in the possession, custody, or control of such person. Id. It is common for third parties to negotiate over the scope and timing of responses to ITC subpoenas.
4. Motion to Limit or Quash Subpoena
Pursuant to 19 C.F.R. 210.32(d), “[a]ny motion to limit or quash a subpoena shall be filed within such time as the administrative law judge may allow.” The test for determining whether a subpoena should be quashed involves balancing (1) the relevance of the discovery sought, (2) the need of the requesting party, and (3) the potential hardship to the responding party. See Optical Disk Controller, ITC Inv. No. 337-TA-506 (Sept. 17, 2004); see also EPROM, ITC Inv. No. 337-TA-395, Order 78 (Feb. 10, 2000) (granting motion to quash subpoena issued to respondent’s former counsel where prior submissions on issue of inventorship were a matter of public record).
5. Party Objections
Parties to the ITC proceeding may also move to quash a subpoena issued to a nonparty. In Zero-Mercury-Added Alkaline Batteries, ITC Inv. No. 337-TA-493, Order 116 (Feb. 9, 2004), the respondents moved to quash three subpoenas on the ground that their testimony would be duplicative of information already present in respondents’ discovery responses. Complainants acknowledged that the three witnesses they subpoenaed would be unnecessary if complainants were allowed to rely on the respondents’ admissions in its discovery responses at the hearing. The ALJ noted that discovery responses are generally not admitted into evidence without a corroborating witness. The ALJ denied the motion to quash, ruling that “[u]nless the parties are willing to stipulate to the information contained in the discovery responses, the witnesses will be required to fully comply with the newly issued subpoenas.” Id.
6. Witness Fees
Commission Rule 210.32(f) provides that any person compelled to appear in person to depose or testify in response to a subpoena must be paid the same as are paid witnesses with respect to proceedings in the courts of the United States. One exception is with respect to salaried employees of the United States summoned to depose or testify as to matters related to their public employment; such individuals shall be paid in accordance with the applicable Federal regulations. See Rule 210.32(f). The fees and mileage are to be paid by the party seeking the subpoenaed deponents or witnesses appear. Id. The witness fees are to be paid by the date for compliance with the subpoena. Id. However, failure to timely tender fees will not invalidate the subpoena. Id.
7. Requests to Produce Another Entity’s Information
Nonparties generally are not held to be “in control” of the documents of a parent company or worldwide affiliates unless the nonparty has a legal right to obtain these documents or has in the past exhibited control over these documents. See Encapsulated Integrated Circuit Devices, ITC Inv. No. 337-TA-501, Order 102 (Sept. 8, 2005) (finding on remand that nonparty’s earlier access to certain documents of its parent established “control”). In Encapsulated Integrated Circuit Devices, ITC Inv. No. 337-TA-501, Order 63 at 4-5 (June 7, 2004), the ALJ provided a list of factors to test whether a subpoenaed party has control over a sister corporation such that the subpoena can reach documents of a sister corporation: whether (1) the alter-ego doctrine justifies piercing the corporate veil; (2) the subsidiary was an agent of the parent in the transaction giving rise to the lawsuit; (3) the relationship between the parent and subsidiary is such that the agent-subsidiary can secure documents of the principal parent to meet its own business needs and documents helpful for use in litigation; (4) there is access to documents when the need arises in the ordinary course of business; or (5) the wholly-owned subsidiary was a marketer and servicer of the parent’s product.
8. Requests for Confidential Information and Protective Order Protection
A Protective Order will issue in every ITC action to protect the confidentiality of party information. Protective Orders not only contain provisions to protect the confidential business information of the parties, these Orders also contain provisions to protect the confidential business information of nonparties that supply confidential information pursuant to an ITC subpoena. ITC Protective Orders are more stringent than those typically issued in district court. The ITC is diligent in protecting confidential information, acknowledging that the possibility of unwanted disclosure of confidential information would have a chilling effect on the willingness of parties or non-parties to provide confidential information.
9. Judicial Enforcement
In the event the subpoenaed party fails to timely comply with the subpoena, the party who requested issuance of the subpoena may seek judicial enforcement by submitting a motion for enforcement to the presiding ALJ. The ALJ will determine whether the request is appropriate and, if so, will then certify the request for judicial enforcement to the ITC. See Rule 210.32(g). The request must be accompanied by copies of relevant papers and a written report from the ALJ regarding the purpose, relevance, and reasonableness of the subpoena. Id.
10. Receipt of Third-Party Subpoenas from More Than One Party to the ITC Action
Given the large number of parties often involved in ITC cases, as well as the widespread use of subpoenas in ITC cases, it is not uncommon for a third party to receive subpoenas from more than one party to an ITC action. Although at least one ALJ has noted his disapproval of issuing multiple subpoenas on the same party, see Electric Power Tools, ITC Inv. No. 337-TA-284, Order 58 (Feb. 10, 1989), multiple subpoenas have issued. It is also not uncommon for multiple parties to jointly serve subpoenas on third parties. See Optical Waveguide Fibers, ITC Inv. No. 337-TA-189, Order 24 (1984), Order 43 (Oct. 10, 1984).
Reprinted with permission from the Association of Corporate Counsel (ACC)
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