Accomplished, competent, dedicated and uniformly beloved by litigants, Chief Administrative Law Judge (ALJ) Paul J. Luckern is the longest-serving and most experienced ALJ handling Section 337 investigations at the International Trade Commission. He became an ALJ with the Social Security Administration in 1981 and commenced service with the ITC as an ALJ in April 1984. He was named Chief ALJ at the ITC in 2008.
Before he became an ALJ, Chief Judge Luckern’s remarkable career included a career as a chemist with Eastman Kodak, as a trial attorney focusing on IP with the US Department of Justice, as a patent examiner in the United States Patent and Trademark Office, and a stint as a patent consultant for J.R. Geigy, A.G., in Basel, Switzerland.
Chief Judge Luckern holds a JD degree and an LLM degree from Georgetown University. He received a Bachelor of Science degree in chemistry, cum laude, from Georgetown and a Master of Science degree in organic chemistry from Cornell University. He completed further graduate work under a research grant and taught chemistry at the University of Southern California.
Chief Judge Luckern met with DLA Piper partner Brian Fogarty and DLA Piper associate Saori Kaji during a recess at the Third Annual Expert Forum on ITC Litigation & Enforcement in New York City to share his thoughts and impressions on the ITC and advice for ITC litigants.
IPT: Is there an ALJ rotation at the ITC?
Luckern: Yes, and it is not a secret. It is found in 5 U.S.C. § 3105 of the APA, which uses the words “as far as practicable.” I do assign cases on a rotational basis; in other words, go down the line – Judges Bullock, Charneski, Rogers, Gildea, Essex and myself – “as far as practicable,” although there could be circumstances that prevent a rotational assignment.
IPT: Has there been a time when you thought litigants played that rotation?
Luckern: It has been difficult to tell. I have heard gossip that they do.
IPT: Do you think the ITC has enough judges?
Luckern: Right now, we do. We have six – the last one being Judge Gildea, who joined the ITC on December 1, 2008. But things could change. The caseload could increase.
IPT: Word is that the manageable average caseload is 14 to 16 cases per judge. Do you agree? Do you have an opinion on when the caseload becomes too heavy?
Luckern: No, I don’t think you can assign a number. It depends on the type of cases. You especially have to take into account the complexity of the patents, and you must also consider the complexity of any non-patent issues.
IPT: What is the one thing you would recommend trial attorneys to do?
Luckern: I think one of the things that I would recommend is to keep in mind that a hearing under the Administrative Procedure Act (APA) is not the same as a district court action. In United States v. Florida East Coast Railway Company,1 the United States Supreme Court said that the term “hearing” as used in the APA “does not necessarily embrace either the right to present evidence orally and to cross-examine opposing witnesses, nor the right to present oral argument to the agency’s decision maker.” In Citizens Awareness Network, Inc. v. United States,2 the First Circuit said further that “[t]he APA lays out only the most skeletal framework for conducting agency adjudications, leaving broad discretion to the affected agencies in formulating detailed procedural rules. In specific terms, the APA requires only that the agency provide a hearing before a neutral decision maker and allow each party an opportunity to present his case or defense by oral or documentary evidence, to submit rebuttal evidence, and to conduct such cross-examination as may be required for a full and true disclosure of the facts.”
The Commission has rules that the ALJs have to follow, but they are very broad and give ALJs a lot of discretion, which we should have. The First Circuit, in Citizen Awareness, said that “it is not arbitrary and capricious for the Commission [here, the Nuclear Regulatory Commission] to leave the determination of cross-examination, truth seeking process to the discretion of the individual hearing officer.” I have seen litigants come before me and make objections based on the Federal Rules of Civil Procedure. I give deference to those rules, but I do not have to follow them.
IPT: What is the most common mistake you see ITC litigants make?
Luckern: I can only talk about lawyers who appear before me. They should keep in mind that if there is a dispute during discovery or at the hearing among the parties, they should always first try to resolve the dispute among themselves. I have ground rules that say that in a discovery dispute, they should talk about it among themselves and, if they file anything, they also have to represent the position of the other party. Time is of the essence in ITC proceedings. Litigants also should keep in mind the time allotted for the evidentiary hearing. They should keep their eyes on the clock and focus on the jugular-vein issues. They should keep in mind that a Section 337 investigation is not static.
IPT: What issues in the ITC would you want the Federal Circuit to consider?
Luckern: It really depends upon the Commission as to what issues are presented to the Federal Circuit. The ALJs have no control over what the Commission does before the Federal Circuit. However, it appears that some 90 percent of section 337 investigations concern patents and claim construction that governs validity and infringement. So if there is an appeal to the Federal Circuit, claim construction is typically considered.
IPT: How does the Office of Unfair Import Investigations (OUII) assist ALJs?
Luckern: I treat the OUII just like any other party. OUII is not favored. Its staff does follow a different master – they don’t have a client they have to please.
IPT: What impact do you think the ITC has on foreign companies and governments?
Luckern: Well, I think there is a sentiment that section 337 cases at the ITC are similar to anti-dumping cases. That is absolutely not so! The ITC is there to protect valid patents for a limited period of time and in no way is this equivalent to anti-dumping. A Wall Street Journal article some time ago was critical about the ITC giving injunctive relief. However, section 337 investigations are not a procedure like anti-dumping where a home country may be favored. What is being done is honoring valid patents. At times in cases filed in the ITC, both parties (complainant and respondents) are foreign entities. Where we are today in this country is because of technology, and ITC proceedings protect valid patents. The ITC promotes innovation! Section 337 investigations are not discriminatory against foreigners. Companies, wherever they are based, have to establish some sort of relationship in the US via a domestic industry, but once they do that, they may come out smelling like a rose. A beautiful rose!
IPT: So many things are made overseas and you have fewer domestic activities than you did 10 or 20 years ago. Does that pose a problem in terms of the ways litigants establish domestic industry?
Luckern: I don’t want to say it is harder to establish domestic industry, but the law with respect to domestic industry is very fluid right now, so it depends on what is being done with imports. Clearly, if US corporations manufacture everything overseas, I don’t see how they feel they can complain, but I think you have to look at the cases and see what is going on. Again, it is a very fluid situation and it is important to be aware of case law. It is a challenge, but based on the increased number of cases filed here, complainants are meeting that challenge.
IPT: Would you give any advice to a foreign company as a respondent?
Luckern: Let’s face it: litigation costs in the ITC are enormous. The first choice a foreign company named as a respondent has to make is whether it wants to fight. How important to that country is it to be able to import into the US? If it doesn’t mean that much, what is the point of spending so much money to defend it? But if the company wants to have the US as a market, it should fight, because default may lead to exclusion.
As a complainant, the party should complete its research before filing a complaint. A complainant should know what it is getting into, know that the process is not static and that it can change overnight. And always, both parties should keep in mind that with much of the fluid technology today, if they can settle the case, they should. Although the ITC is fast, it could take time being appealed to the Federal Circuit and maybe being remanded, and business management wants decisions. Litigants should keep settlement in mind at all times.
IPT: What legacy do you want to leave in the ITC?
Luckern: Respect for the ALJs. I think they are all doing a good job, just like all lawyers before the ITC. For the ALJs, it is not easy, but I think the work is interesting.
IPT: What do litigants most often misunderstand about the ITC?
Luckern: They think section 337 litigation is retaliatory. This is not true. We have no biases; we look at patents and we decide whether the patent is infringed or not infringed, valid or invalid, enforceable or not enforceable.
IPT: Would you ever stay a section 337 investigation?
Luckern: Given the many unknown factors with reexamination in the Patent Office and given that sometimes you don’t get the final decision until it goes to the Federal Circuit, I don’t think there are too many circumstances where stays happen. And that is the way it should be, keeping in mind the Congressional mandate that a final decision at the ITC should be made as expeditiously as possible.
IPT: If a litigant brought a motion to stay pending reexamination would you deny it?
Luckern: I don’t prejudge. I would be reluctant to grant a stay because Congress has told us that we should issue opinions as expeditiously as possible. That is why people come to us. The overriding factor is that Congress told us what to do. Granting a stay when you don’t know when the final results will come out would be contrary to that Congressional mandate.
IPT: Will the ITC consider uniform ground rules? Why, and why not?
Luckern: It is not the ITC, but the ALJs. I don’t see how it can happen. I tried to do it with mediation. I don’t think it is ever going to happen, and I don’t think different ground rules are a bad thing. My ground rules indicate that I let the parties say what they want. Individual judges may have many reasons why they want to do something particular. I remember a conversation with a law clerk about one case in which the parties raised many issues in their complaint, and I asked the clerk, “Why do they do it; why don’t they just hit on the main issues?” And the clerk said, “Because that is what the clients want.” There are considerations that parties have to abide by that I don’t know anything about.
IPT: Is there anything else you would advise ITC litigants?
Luckern: They should realize that the judges are there to make a clear record and present it to the Commission, and the Commission can make de novo findings based on the record. The parties should aid the ALJ in creating the clearest record. Sometimes people object or interrupt witnesses during evidentiary hearings. I can’t call up a party two weeks after the record is closed and say, “You made a motion to strike but it is not clear from the record what you were talking about.” There are times when experts or counsel at the evidentiary hearing use a pointer and do not put in words what they are pointing to. Those specifics will not appear in the record, and I can’t question the participants after the record is closed.
IPT: Anything else?
Luckern: As I said before, the private counsel should work together. If there is going to be a dispute, they shouldn’t bring every issue de novo to the judge. Time is of the essence! Also, private counsel should be courteous to one another. Name calling, expressing hatred, refusing to communicate are all inappropriate. I’m not going to listen to that. The parties and their counsel are in conflict but I don’t see how they can think they are advancing their case when they’re not willing to talk to each other.
Keep in mind that ITC investigations do not always settle and are not static, so you have to follow the changes. If there are multiple respondents in a case, some of them can settle out.
I have heard some people talk about cost. Sometimes respondents will work together. I think in China, for example, trade associations can be helpful for respondents in China. That process can be difficult in the US because the parties may be competitors and there are antitrust law issues here in the US. Litigants should refrain from frivolous filings and objections. When there is an issue of fact, usually motions for summary determinations are not granted and sometimes you wonder why they are being filed. Sometimes you sit back and wonder what attorneys in evidentiary hearings are doing! It’s not my job to tell litigators how to litigate. But in my 27 years at the ITC, I have at times wondered why lawyers are so performing and thought “Wow, that presentation could really hurt them.”
1. 410 U.S. 224 (1973)
2. 391 F. 3d 338 (1st Cir. 2004)