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 (ITCInternational Trade Commission) 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 disclosureOne of the primary objectives of the patent system. In return for the government-granted right to exclude that is embodied in the patent, the inventor must disclose to the public through his patent the invention for which protection is sought. Inventors unwilling to disclose their invention to the public may instead opt for trade secret protection. order simply requires the complainant to “file a corporate disclosureOne of the primary objectives of the patent system. In return for the government-granted right to exclude that is embodied in the patent, the inventor must disclose to the public through his patent the invention for which protection is sought. Inventors unwilling to disclose their invention to the public may instead opt for trade secret protection. 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 disclosureOne of the primary objectives of the patent system. In return for the government-granted right to exclude that is embodied in the patent, the inventor must disclose to the public through his patent the invention for which protection is sought. Inventors unwilling to disclose their invention to the public may instead opt for trade secret protection. statements are required under the Federal Rules of Civil Procedure, the ITCInternational Trade Commission does not have a standard requirement that this information be disclosed. Neither the ITCInternational Trade Commission Rules of Practice and Procedure nor any administrative law judge’s Ground Rules include a corporate disclosureOne of the primary objectives of the patent system. In return for the government-granted right to exclude that is embodied in the patent, the inventor must disclose to the public through his patent the invention for which protection is sought. Inventors unwilling to disclose their invention to the public may instead opt for trade secret protection. requirement, and, to my knowledge, no administrative law judge at the ITCInternational Trade Commission 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 ITCInternational Trade Commission.
Elsewhere, disclosureOne of the primary objectives of the patent system. In return for the government-granted right to exclude that is embodied in the patent, the inventor must disclose to the public through his patent the invention for which protection is sought. Inventors unwilling to disclose their invention to the public may instead opt for trade secret protection. orders in Federal Courts have been making headlines. In particular, District of Delaware Chief Judge Colm Connolly’s April 2022 disclosureOne of the primary objectives of the patent system. In return for the government-granted right to exclude that is embodied in the patent, the inventor must disclose to the public through his patent the invention for which protection is sought. Inventors unwilling to disclose their invention to the public may instead opt for trade secret protection. 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.