Article

Cross-Border Discovery at the ITC

14 Mar 2022

Litigants in Section 337 investigations at the International Trade Commission (“ITC”) can seek discovery from foreign third parties by means of either (1) Hague letters of request, or (2) letters rogatory. These highly similar mechanisms permit a party to request judicial assistance from foreign courts to obtain documents or deposition testimony from foreign third parties that decline to provide the information voluntarily.

Because these procedures can take considerable time to complete and the timeframe for ITC discovery is relatively short, parties should be prepared to commence foreign discovery as early as possible in the investigation. This article provides some practical information regarding the use of Hague letters of request and letters rogatory as part of discovery in an ITC investigation.

Hague Letters vs. Letters Rogatory

The United States is a signatory to the Hague Convention on Evidence (“Hague Convention”). Convention adopted at the Eleventh Session of The Hague Conference on Private International Law, Oct. 26, 1968, 23 U.S.T. 2555. If the foreign discovery sought is within the jurisdiction of another signatory country, then the Hague Convention provides a standardized means to request that information through a Letter of Request (“Hague Letter”). For a list of signatories to the Hague Convention, see Hague Conference on International Law, HCCH Members.

Alternatively, when seeking foreign discovery in countries that are not Hague Convention signatories, a party may seek discovery through a letter rogatory. See 28 U.S.C. § 1781. The main difference is that letters rogatory are submitted to the foreign judicial authority through the U.S. Department of State (“State Department”), while Hague Letters can be submitted directly to the foreign authority.

The typical process for obtaining, transmitting, and executing a Hague Letter or letter rogatory in an ITC investigation includes the following steps:

  1. The party files a motion with the Administrative Law Judge (“ALJ”) in the ITC investigation seeking an order recommending that the District Court for the District of Columbia (“D.D.C.”) issue a Hague Letter or letter rogatory to the appropriate judicial authority of the foreign jurisdiction.
  2. The party submits the ALJ’s recommendation to the D.D.C., which then issues the Hague Letter or letter rogatory.
  3. For Hague Letters: The party submits the Hague Letter to the judicial authority in the foreign jurisdiction (the “Foreign Authority”). For a list of Foreign Authorities by country, see Hague Conference on International Law, HCCH Authorities (Per Party).

    For Letters Rogatory: The party submits the letter rogatory to the State Department, which transmits it to the judicial authority in the foreign jurisdiction.
  4. The foreign court then acts on the Hague Letter or letter rogatory under its country’s laws and regulations, and obtains the requested testimony and/or documents.

Format of Hague Letters

In general, the Hague Letter must identify (1) the authority requesting its execution (D.D.C.) and the foreign authority requested to execute it, (2) the names and addresses of the parties, (3) the nature of the proceedings, and (4) the evidence to be obtained. Additionally, Hague Letters may optionally state: (1) the names and addresses of the persons to be examined, (2) the questions to be put to the persons examined, (3) the specific documents requested, (4) any special form the evidence must take, and (5) any special method or procedure to be followed. Model Hague Letters can be found here: Hague Conference on International Law, Practical Operation Documents.

Importantly, the Hague Letter must typically be in the language of the Foreign Authority, or be accompanied by a certified translation. For instance, a Hague Letter transmitted to Switzerland should be written in or translated into German, French or Italian, depending on the canton. As another example, a Taiwan court executing a Hague Letter will conduct any examination of witnesses itself based on written questions (depositions by attorneys are not permitted), so such questions should be translated into Mandarin. Although the Hague Convention, by default, requires signatories to accept a Hague Letter in English or French, many countries opted out of this requirement.

Parties should carefully examine the requirements for the particular country in which the discovery is sought. Many countries provide online guidance regarding what is required in a Hague Letter. Because a rejected Hague Letter may translate into several months delay, it may also be advisable to engage local counsel to smooth the process.

Format of Letters Rogatory

In general, letters rogatory must include (1) a formal request for international judicial assistance; (2) a brief synopsis of the case; (3) information identifying specific persons to be served; (4) a list of specific questions to be asked in the form of written interrogatories; and (5) a list of documents to be produced. The State Department provides both a general guide for letters rogatory and country-specific information, such as the required format of the letters, service of process, arrangement of depositions, and authentication of documents. See U.S. Department of State, Preparation of Letters Rogatory.

As with Hague Letters, letters rogatory must typically be translated into the language of the foreign jurisdiction. Parties should carefully examine the requirements for the particular country in which the discovery is sought.

Obtaining Hague Letters or Letters Rogatory

Parties must obtain the signature of a judge before submitting a Hague Letter to a Foreign Authority or a letter rogatory to the State Department. Some countries do not accept Hague Letters or letters rogatory issued by an Administrative Law Judge. See Certain Systems for Detecting and Removing Viruses or Worms, Inv. No. 337-TA-624, Order No. 14 at 1 (July 2, 2008) (“the Federal Republic of Germany does not regard the Hague Evidence and Service Conventions as applying to administrative cases”); see also Certain Display Devices, Including Digital Televisions and Monitors (“Certain Display Devices”), Inv. No. 337-TA-713, Order No. 8 at 2 (June 10, 2010) (noting “there is no evidence that the Commission is, in fact, a ‘tribunal’ as defined by the Inter-American Convention on Letters Rogatory”). As a result, parties in an ITC investigation typically file a motion with the ALJ for recommendation to the D.D.C. to issue a Hague Letter or letter rogatory.

In its motion to the ALJ for a recommendation to the D.D.C. to issue a Hague Letter or letter rogatory, the party should explain how the deposition testimony and/or documents requested are relevant to the investigation, how the requests are narrowly tailored to obtain the relevant information, and why the party is unable to obtain the relevant information by other means. See e.g., Certain Marine Sonar Imaging Systems, Products Containing The Same, and Components Thereof (“Certain Marine Sonar Imaging Systems”), Inv. No. 337-TA-926, Order No. 3 at 2-3 (Sept. 30, 2014).

The ALJ can decline a motion for a recommendation to issue a Hague letter or letter rogatory for failure to make these showings. In Certain Marine Sonar Imaging Systems, for example, the respondents were required to file corrected letters rogatory because the original request for prior art information included an overly broad date range that extended well after the patent’s filing date. Id. at 5-6. In Certain Display Devices, the ALJ denied a motion for letters rogatory because the moving party failed to show it had exhausted traditional means of discovery, such as subpoenas. See Certain Display Devices, Inv. No. 337-TA-713, Order No. 8 at 3 (June 10, 2010). Certain ALJs have also rejected unopposed motions for foreign discovery. See e.g., Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof, Inv. No. 337-TA-868, Order No. 22 at 3 (May 10, 2013) (denying a motion for issuance of a Hague Letter for failure to show refusal of third party to provide information).

The ALJ can also deny a motion for a Hague Letter or letter rogatory if the letters do not meet the specific format requirements. In Certain Personal Computers, the ALJ rejected the submitted letters rogatory as deficient, because they contained overbroad deposition topics and document requests, instead of narrowly-tailored written questions. See Certain Personal Computers, Monitors and Components Thereof, Inv. No. 337-TA-547, Order No. 10 at 2-3 (Feb. 8, 2005). The ALJ noted that Taiwan courts obtain witness testimony using specific written questions. Id. at 2. The ALJ also found that the letters rogatory failed to identify the specific person to be served and failed to include certified translations in Mandarin Chinese. Id. at 3. Parties should be aware of such country-specific requirements when they prepare their letters rogatory.

Transmitting Hague Letters or Letters Rogatory

Hague Letters can be directly sent to the Foreign Authority for processing. See Hague Conference on Private International Law, HCCH Authorities (Per Party). For the purposes of transmission and/or to keep track of the Hague Letter, it is helpful to engage local counsel.

By contrast, letters rogatory are usually sent by the State Department through diplomatic channels to the foreign court. Parties may attempt to transmit letters rogatory directly to the foreign court through a local attorney, if such direct transmission is permitted. Once a letter rogatory is transmitted to the foreign court, the court will execute the letter under its country’s laws and regulations. In many courts, local attorneys may be needed to shepherd the letter rogatory through the process and obtain the desired discovery. Once executed, the letter rogatory is transmitted back to the State Department and then sent back to the court that originally signed the letter.

The United States, Mexico, and certain Central and South American countries are parties to the Inter-American Convention on Letters Rogatory and Additional Protocol. For parties to this agreement, requests for service of letters rogatory should be sent to the U.S. Central Authority, U.S. Department of Justice, Civil Division, Office of Foreign Litigation, via its contractor, Process Forwarding International. Process Forwarding International transmits the letters rogatory to the corresponding Central Authority in the foreign country.

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Because the execution of Hague Letters or letters rogatory can take considerable time, an ITC party must file its motion for issuance of such letters as early as possible in the investigation to have any chance of obtaining usable discovery. Because fact discovery in ITC proceedings is usually limited to approximately 4-6 months, there is a substantial risk that the time required to complete the foreign discovery may extend beyond the discovery cutoff, rendering such discovery potentially unusable. A party should also consider retaining foreign counsel to help expedite the process once the Hague Letter or letter rogatory has been transmitted to the foreign jurisdiction.

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