Upcoming Fordham Program on Discovery and Investigations in China

Fordham University, in conjunction with the Chinese Business Lawyers Association, the Asian American Bar Association of New York and Consilio, is hosting a program on discovery and compliance with investigations in China, Navigating the Complexities of US Litigation Abroad on Tuesday, January 24.

As I have repeatedly noted, discovery, (or lack thereof) has proven to be a crucial factor affecting IP litigation strategies.  This looks a valuable program on this important topic.  As Consilio’s website on this conference notes:

“Document collection and discovery has become an increasingly important and fraught issue in China. U.S. litigations often require the collection and review of documents in China in ways that conflict with Chinese laws, such as laws on state secrecy and financial privacy. How can discovery be conducted in China while avoiding legal financial, and ethical problems? And what about internal investigations, which often require reviews of sensitive documents and materials, which may also implicate Chinese laws and regulations? Our panels will discuss the challenges and solutions in both internal investigations in China and also document discovery in China as part of U.S. litigations.”

Sino Legend Saga Ends at US Supreme Court

The future ain’t what it used to be. (Yogi Berra)

Earlier this January, 2017, Sino Legend lost its long battle to have an ITC decision excluding its products form the US market reversed by a Supreme Court denial of its cert petition.

As I noted previously, the case presented an unusual set of circumstances, where Chinese courts had found that there had been no trade secret theft occurring in China, the USITC had found that there was trade secret infringement in an exhaustive opinion, China’s Ministry of Commerce sought a rehearing en banc after Sino Legend lost on appeal at the Federal Circuit, and a petition for certiorari was lodged by Sino Legend to the Supreme Court.  Attached are some of the US Supreme Court legal documents, including:  the petition for certiorari  (September 30, 2016); the amicus brief   of the Ministry of Commerce (Nov. 2016); the brief of   USITC in opposition (Dec 6, 2016);  brief of party respondent SI Group in opposition (Dec 6, 2016); reply of petitioners (December 20, 2016); and the Supreme Court’s denial of cert (Jan 9, 2017).

In its cert petition, MofCOM sought a reversal not only of the Sino Legend case but ultimately of the legal principle underlying the Tianrui decision.    The Chinese parties noted that in Sino Legend there a determination that there was no infringement in the case as litigated in China for facts arising in China.  As MofCOM’s brief notes:

[MofCOM] is disappointed by recent actions of the ITC. In wrongly interpreting Section 337 of the Tariff Act to allow the ITC to bar imports into the United States based on alleged actions conducted, and adjudicated, wholly within the borders of China, the ITC has impugned the sovereignty of China and refused to accord the comity expected of a trade partner.

MofCOM’s amicus brief further states:

The displeasure of [MofCOM] with what has unfolded in this, and other, recent ITC cases involving alleged trade secret violations should not go unnoticed. In this matter, there is no dispute that the alleged actions occurred entirely within China, by Chinese citizens, while working at Chinese companies. The alleged acts of misappropriation  were first raised by Complainant’s Chinese subsidiary in China. Both criminal and civil proceedings were instituted in China for these alleged misdeeds. The alleged conduct and actors in question were ultimately vindicated. However, Complainant, unhappy with the failure of proof in China, sought institution of a Section 337 proceeding in the United States based on the same conduct already adjudicated in China. The ITC conducted an investigation, ignored the rulings in China to the contrary, and determined that not only could the ITC bar products based on this conduct, but also that some of Complainant’s justify a limited exclusion order of Petitioner’s product.

The Chinese media had regrettably inaccurately described this case when it was decided at the ITC as a big victory for China involving a finding of no infringement in the US and China; rather a limited exclusion order was granted by the ITC in lieu of a general exclusion order.  China’s Supreme Court had also picked up on this inaccurate description when it regrettably determined that was one of the top 10 IP cases for 2014.  This recognition was troubling also as the complainant in the Sino Legend 337 case had sought a retrial of its case in China, which was denied by China’s Supreme People’s Court two  years later, in 2016.

The differences in final results in the US and Chinese decisions may also be due in part to disparate emphases in trade secret adjudication, with Chinese courts emphasizing similarities of technology between the parties, and the US courts relying more on unfair access to the technology by the alleged misappropriator.  One lesson of this saga is that comity may be more challenging to apply in trade secret litigation, which remains a relatively unharmonized area of IP law among various countries, and which is further weakened by differences in civil procedure including the limited availability of pre-trial discovery in China and many other countries.

Economics and IP Position At AIT/Taiwan

The American Institute in Taiwan has posted a position for an economic specialist in Taipei.  This is a local-hire position (for those ordinarily resident in Taiwan, and others). In addition to knowledge of Chinese and English, the position requires a Master’s degree in business, engineering, economics or law or related field.  The position entails, among other things,  “researching and drafting cables and other reports on policy, legal, and business developments in the high-tech, digital economy, cybersecurity, intellectual property rights (IPR), and labor sectors.”   The application deadline is February 12, 2017.