The ITC has always viewed its ability to gather and protect confidential business information as crucial to its ability to perform its mission.  See Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1482-85 (Fed. Cir. 1986) (“[T]he Commission is heavily dependent on the voluntary submission of information.”).  The ITC’s strong confidentiality provisions—and its regular practice of enforcing them—are evidence of this commitment.  However, there is an exception to those confidentiality provisions for certain related district court cases.  Under 28 U.S.C. § 1659(b), if the district court case involves the same parties as the Section 337 proceeding and the district court case was stayed due to the ITC proceeding, after dissolution of the stay, “the record of the proceeding before the United States International Trade Commission shall be transmitted to the district court and shall be admissible in the civil action, subject to such protective order as the district court determines necessary.”  28 U.S.C. § 1659(b).  The purpose of this statute is to promote judicial efficiency.  See In re Princo Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007) (stating that the “legislative history [of § 1659] explains that ‘use of the Commission record could expedite proceedings and provide useful information to the court’” (quoting H.R. Rep. No. 103-826(I), at 142 (1994))).  This transfer of an ITC record can encompass confidential materials, as this use of an ITC record is explicitly exempted from the ITC’s confidentiality provisions.  See 19 C.F.R. § 210.39(b).

However, the ITC has refused to transfer its records to court or administrative proceedings other than the district court cases spelled out in 28 U.S.C. § 1659.  When a party objects to a disclosure, Administrative Law Judges (“ALJs”) have concluded that such a disclosure would violate the protective order and have not, as yet, identified any good cause for amending the protective order to allow such inter-proceeding disclosures.  For example, the Commission affirmed an ALJ’s denial of a request to transfer materials to foreign proceedings.  See, e.g., Viscofan S.A. v. U.S. Int’l Trade Comm’n, 787 F.2d 544, 547-48 (Fed. Cir. 1986) (describing ITC’s refusal to declassify confidential information for use in a foreign court proceeding, noting the ITC’s statement that “‘[e]vidence in a section 337 is gathered solely for the purposes of that proceeding’”).  Likewise, the Commission rejected a request to transfer records to the Patent Trial and Appeal Board (“PTAB”) for inter partes review (“IPR”) proceedings involving identical parties.  Certain Dental Implants, No. 337-TA-934, Notice of Comm’n Decision to Review in Part a Final Initial Determination, 6 (U.S.I.T.C. Jan. 14, 2016).  Although the Commission merely stated that the authority for its decision was contained in 19 C.F.R. § 210 (the provisions regarding Section 337 investigations), the Office of Unfair Import Investigations (“OUII”) laid out five grounds for denying the request: (1) the PTAB proceedings provide their own procedure for obtaining discovery; (2) IPR proceedings are administrative and “an alternative to civil litigation,” and thus cannot benefit from 28 U.S.C. § 1659(b); (3) there is insufficient evidence that the PTAB’s protections of confidential information match those of the ITC; (4) the ITC “represented that CBI submitted in this Investigation would only be used for purposes of this Investigation”; and (5) the “desire to avoid potential duplicative discovery in the IPR proceedings is an insufficient ground to override the Commission’s compelling interest in protecting CBI in order to fulfill its mission.”  Certain Dental Implants, No. 337-TA-934, OUII’s Response to Complainants’ Motion to Amend the Protective Order, 2-3 (U.S.I.T.C. Nov. 2, 2015).

In short, if a party seeks to offer confidential information produced in the ITC in another proceeding (other than a related district court proceeding), a modification of the protective order is unlikely to be successful.  Instead, pursue discovery in the other proceeding or identify the most critical information and seek to have it de-designated.

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