UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`Before the Honorable Paul J. Luckern
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN AUTOMOTIVE PARTS
`
`Inv. No. 337-TA-557
`
`RESPONDENTS’ OPPOSITION TO COMPLAINANT FORD GLOBAL
`TECHNOLOGIES, LLC’S MOTION TO AMEND THE PROTECTIVE ORDER
`
`I.
`
`INTRODUCTION
`
`Respondents Keystone Automotive Industries, Inc., U.S. Auto Parts Network, Inc.,
`
`3 G,? rtJ
`c-7
`rt71
`Gordon Auto Body Parts Co., Ltd, Y.C.C. Parts Manufacturing Co., Ltd., TYC Brother I n d d a
`2 - 22
`a I
`
`Co., Ltd., and Depo Auto Parts Ind. Co., Ltd (collectively “Respondents”) submit this
`
`memorandum in opposition to Complainant Ford Global Technologies, LLC’s motion requERin4
`-4 x, r’
`3”-J
`-<
`
`;1.->j-T1
`
`I
`
`i: ,; <
`I + c A
`
`that the protective order be modified to permit Complainant’s in-house counsel access to
`
`Respondents’ confidential business information. Complainant’s motion is meritless.
`
`Complainant has failed to cite any applicable precedent or to otherwise justify the sweeping
`
`departure from standard Commission practice it currently seeks. Accordingly, the motion should
`
`be denied.
`
`11.
`
`ARGUMENT
`
`Complainant’s motion entirely ignores the wealth of well-established, controlling
`
`precedent in the ITC that counsels against amendments to the standard Commission protective
`
`orders. The Commission has made clear time and again that the burden of establishing a need to
`
`amend or modify a protective order to include in-house counsel rests with the party that seeks the
`
`amendment. See Akzo N.V. v. Int’l Trade Comm’n, 808 F.2d 1471, 1484 (Fed. Cir. 1986), cert.
`
`

`
`denied, 482 U.S. 909 (1987); Certain Rotary Wheel Printers, Inv. No. 337-TA-145, 5 I.T.R.D.
`
`1933, 1937 (Nov. 4, 1983); Certain Integrated Repeaters and Products Containing Same, Inv.
`
`No. 337-TA-430, Order No. 6 (June 13,2000). The Administrative Law Judge (“ALJ”), in fact,
`
`explained that precedent during the preliminary conference held on February 14,2006.
`
`Nonetheless, Complainant persists in bringing a motion that borders on the frivolous.
`
`The Commission has adopted (and the Federal Circuit has upheld) a three-part balancing
`
`test which allows in-house counsel access to confidential information “only in extraordinary
`circumstances and under the close supervision of the [Administrative Law Judge] .” Certain
`
`Rotary Wheel Printers, 5 I.T.R.D. at 1935. The three factors are:
`
`the moving party’s need for the confidential information
`(1)
`sought in order to adequately prepare its case;
`
`the harm such disclosure would cause the party submitting
`(2)
`the information; and
`
`the ITC’s interest in maintaining the confidentiality of the
`(3)
`information sought.
`Akzo N. V., 808 F.2d at 1484; Certain Data Storage Systems and Components Thereof, Inv. No.
`
`337-TA-471, Order No. 9 at 3 (Oct. 31,2002); Integrated Repeaters, supra, Order No. 6 at 3-4 .
`
`Complainant bears a heavy burden. In Section 337 investigations, it is “the exception
`
`rather than the rule to release confidential information to in-house counsel.” Rotary Wheel
`
`Printers, 5 I.T.R.D. at 1935. As a general rule, in-house counsel is provided access to
`
`confidential information only where the parties agree to the disclosure or where in-house counsel
`
`already has access to the same information. Id. Indeed, Complainant cites no case in which,
`
`absent the agreement of all parties, the Commission, in a Section 337 investigation, has granted
`
`such a motion to allow in-house counsel to gain access to the opposing parties’ confidential
`
`business information.
`
`2
`
`

`
`Here, Complainant has not made the requisite extraordinary three-part showing (1) that it
`
`would be unable to adequately present its case, (2) that there would be no harm to Respondents,
`
`and (3) that a compelling justification exists for overriding the Commission’s paramount interest
`
`in maintaining the confidentiality of the parties’ sensitive business information.
`
`A.
`
`Complainant Has Not Shown That It Cannot Adequately Present Its Case
`Without The Requested Amendment To The Protective Order
`
`First and foremost, Complainant has not shown that it will be unable to adequately
`
`prepare its case unless in-house counsel gains access to Respondents’ business information.
`
`Ford merely states that its in-house counsel “routinely provides Ford’s outside counsel with
`specialized knowledge of the automotive industry . . . .” (Compl. Memorandum at p. 5.) Ford
`
`fails to explain, however, why or how this assistance is required for Ford to adequately present
`
`its case.
`
`As was apparent at the February 14,2006 discovery conference, this Investigation
`
`concerns design patents that Ford alleges covers various fragments of the overall design of
`
`Complainant’s F-150 truck. The overarching focus of this Investigation will be on whether
`
`Complainant can circumvent the time-honored exhaustion doctrine and rely on its design patents
`
`to defeat consumers’ right of repair. Additional key issues will include whether each of
`
`Complainants’ 14 patents cover subject matter that is non-functional, novel, and non-obvious.
`
`Complainant fails to explain how any of these issues implicate Respondents’ confidential
`
`information, and further fails to show why in-house counsel’s access to Respondents’
`
`confidential information is needed to allow Complainant to effectively present its case on these
`
`or any other issues in this Investigation. Indeed, Ford fails even to explain why in-house counsel
`
`needs Respondents’ confidential information to perform the stated function of providing outside
`
`counsel with “specialized knowledge of the automotive industry.”
`
`3
`
`

`
`To the extent automotive expertise is needed to understand, interpret, or apply any
`
`confidential information produced by Respondents, Complainant Ford can rely on outside
`
`experts, who are eligible to receive confidential business information provided all requirements
`
`of Paragraph 4 of the Protective Order are met. Again, Ford fails to establish why outside
`
`counsel, assisted by independent experts, cannot adequately prepare and present its case in this
`
`Investigation. See Data Storage Systems, supra, Order No. 9 at 4 (“Complainant has not
`
`explained how this cadre of highly trained individuals [outside counsel and independent experts]
`is inadequate to prepare and present its case in this Investigation without . . . [in-house counsel
`
`having] access to respondents’ confidential business information.”).
`
`In short, Complainant fails to show a need for access by in-house counsel to
`
`Respondents’ confidential business information. It’s motion should be denied on this basis
`
`alone. See Rotary Wheel Printers, 5 I.T.R.D. at 1937 (“Until and unless the requisite need is
`
`shown, there exists no jurisdiction for granting access to confidential information, no matter how
`
`minimal the impact of disclosure would be.”); see also Certain Monolithic Microwave Integrated
`
`Circuit Downconverters and Products Containing the Same, Including Low Noise Block
`
`Downconverters, Inv. No. 337-TA-384, Order No. 8 at 12-15 (May 15, 1996) (“The issue of
`
`need is the starting point for any assessment of whether to grant [in-house counsel] access to
`confidential business information . . . .”).
`B.
`
`Complainant Has Not Shown That The Respondents Will Not Suffer Harm If
`Their Information Is Disclosed To In-House Counsel
`
`Second, Ford has not met its burden of showing why Respondents’ confidential business
`
`information in this Investigation should be treated differently, and denied the protection routinely
`
`afforded Respondents’ in all other Section 337 investigations. “When confidential information is
`
`disclosed to the employee of a competitor, the risk of the competitor obtaining an unfair business
`
`4
`
`

`
`advantage may be substantially increased.” Data Storage Systems, supra, Order No. 9 at 5
`
`(citing Akzo, 808 F.2d at 1483). Ford alleges that Respondents and Complainant are competitors
`
`in the market for automotive replacement parts. Respondents have produced sensitive propriety
`
`information, including the identity of Respondents’ customers, sales data, and design and
`
`development materials.
`Complainant seeks to place this sensitive information in the hands of an employee (Mr.
`Daniel Stock). Complainant asserts that Mr. Stock is not involved in “competitive
`
`decisionmaking,” and therefore insists he is not positioned to misuse or exploit Respondents’
`confidential business information. Complainant, however, concedes that Mr. Stock’s “primary
`
`responsibilities for Ford include selecting, supervising, and assisting Ford’s outside counsel in
`
`litigation relating to intellectual property matters, including patent litigation.” (Compl.
`Memorandum at 5 (emphasis added).) Complainant further indicates that Mr. Stock “is also the
`
`person at Ford that would initiate settlement discussions in patent litigation such as the present
`
`proceeding.” (Compl. Memorandum at 6.)
`
`Far from justifying Ford’s request to depart from time-honored Commission practice,
`
`these assertions in fact provide further grounds for denying Ford’s motion. In the Data Storage
`
`Systems investigation, the ALJ held that in-house counsel, like Ford’s in-house counsel, who
`
`directed litigation should not receive the opponent’s confidential business information, even
`
`though he was not involved in competitive decisionmaking: “Given the broad scope of the
`
`duties of [in-house counsel] the Administrative Law Judge finds that it is reasonable to assume
`
`that confidential information obtained in this investigation may at least inadvertently be used to
`
`benefit complainant’s competitive position in the future.” Data Storage Systems, supra, Order
`
`No. 9 at 5-6 (citing Motorola Znc. v. Znterdigital Tech Corp., 1994 U.S. Dis. LEXIS 20714 at 15
`
`5
`
`

`
`(D. Nev. 1998)). That decision applies with equal force here. Whether or not Mr. Stock
`
`participates in forming business strategies, his role as litigation counsel may require him, for
`
`example, to consider future legal action against Respondents relating to their development,
`
`manufacture, or sale of replacement products not at issue in this Investigation. At a minimum,
`
`the potential thus would exist for Respondents’ confidential information to be unfairly used in
`
`such circumstances.
`
`Ford also asserts that its in-house counsel is an “upstanding member of the bar” who
`
`takes “ethics and professional responsibility very seriously.” (Compl. Motion at 5-6.)
`
`Respondents do not question Ford’s in-house counsel’s ethics and background. What is at issue
`
`here is the risk that a competitor will obtain an unfair business advantage-a risk that is
`
`substantially increased where confidential information is released to an employee of a
`
`competitor. See Akzo, 808 F.2d at 1483; Data Storage Systems, supra, Order No. 9 at 5 . Even
`
`where the competitor’s employee is a member of the bar, and therefore is fully aware of the need
`
`to respect the provisions of a protective order, there is no guarantee that the employee will be
`
`able to “compartmentalize the information he learns in the course of his investigation and
`
`unfailingly dismiss it from his mind when discharging his other duties.” Certain Process,
`
`Apparatus, and Components ThereoJ for the Production of Spunbond Nonwoven Fabric, and
`Fabric Made Therefrom, Inv. No. 337-TA-237, 1990 ITC LEXIS 237 at * 7, Order No. 6 (June
`
`27, 1990).
`
`C.
`
`Complainant Has Not Shown That Its Need For Access Overrides The
`Commission’s Interest In Preserving Confidentiality
`
`Finally, Complainant fails to provide any justification for the Commission ignoring the
`
`paramount interest in “maintaining the confidentiality of information under a protective order.”
`
`Indeed, the Commission’s policy of maintaining the confidentiality of information submitted by
`
`6
`
`

`
`respondents and third parties is “critical to the operation of Section 337 Investigations.” Data
`
`Storage Systems, supra, Order No. 9 at 6 (citing Zntegrated Repeaters, Order No. 6 at 3 ); see
`
`also Certain Transport Vehicle Tires, Inv. No. 337-TA-390, Order No. 12 at 3 (December 24,
`
`1996). As has often been stated, and as the Federal Circuit has recognized, the Commission
`
`heavily depends on the voluntary submission of information in order to discharge its statutory
`
`responsibilities in a timely manner:
`
`Disclosure of sensitive materials to an adversary would
`undoubtedly have a chilling effect of the parties’ willingness to
`provide the confidential information essential to the Commission’s
`fact finding processes.
`
`Akzo, 808 F.2d at 1483. In addition, such disclosure would have a chilling effect on third-
`
`parties’ willingness to provide information, which in turn would undermine the Commission’s
`
`ability to make a fair determination on a complete record, potentially resulting in broader harm to
`
`parties not before the Commission, as well as to the public at large. See Data Storage Systems,
`
`supra, Order No. 9 at 5-6.
`
`In its Motion, Complainant ignores the controlling precedents discussed above. Instead,
`
`Complainant relies on Matsushita Elec. Zndus. Co. v. U.S., 730 F.2d 1465 (Fed. Cir. 1991), U.S.
`
`Steel Corp. v. U.S., 730 F.2d 1465 (Fed. Cir. 1984), and various district court decisions. None of
`
`these cases involve Section 337 proceedings and jurisprudence, and none, including the
`
`Matsushita and U.S. Steel Federal Circuit decisions, has any bearing or relevance to the present
`
`motion. Matsushita and U.S. Steel involve an anti-dumping petition. In fact, the Federal Circuit
`in U.S. Steel explained that its decision in the antidumping context has no bearing on the
`
`stringent safeguards for confidential business information the Commission provides in Section
`
`337 proceedings. “Our decision here bears no relation to, and can have no effect on, ITC’s rule
`
`7
`
`

`
`establishing a per se ban on disclosure to in-house counsel in its administrative proceedings.”
`
`U.S. Steel, 730 F.2d at 1468.
`
`As the Federal Circuit explained in Akzo-a post-U.S. Steel decision actually addressing a
`
`Section 337 protective order-“we have neither found nor been directed to any judicial decision
`
`in this country mandating, in the circumstances present here, that business confidential
`
`information must be made available to inside management.” Akzo, 808 F.2d at 1485 (emphasis
`
`in original). Finally, it is insufficient to claim, as Ford does here, that in-house counsel may be
`
`provided access to confidential information in other courts. See Integrated Repeaters, supra,
`Order No. 6 at 5 (holding that protective order in 0 337 investigation should not be modified to
`
`give in-house counsel access to opponent’s confidential information, even where such access
`
`was permitted under protective order in stayed parallel district court litigation). The district
`
`court decisions on which Ford relies at pages 3-4 of its memorandum thus are irrelevant and in
`
`no way support the unusual, unprecedented relief Complainant now seeks.
`
`111. CONCLUSION
`
`Ford’s motion flies in the face of long-standing Commission precedent. Not only has
`
`Ford failed to adequately address that precedent, it has not even acknowledged its existence.
`
`Contrary to that precedent, Ford has failed to make the requisite showing that its in-house
`
`counsel must have access to Respondents’ confidential business information in order for
`
`Complainant to adequately prepare its case, that Respondents’ confidential information is less
`
`deserving of protection than that of other Section 337 litigants, or that the Commission should
`
`disregard its strong interest in protecting confidential information voluntarily produced in
`
`discovery by parties justifiably relying on the safeguards of a Section 337 protective order.
`
`Indeed, permitting in-house counsel access to Respondents’ confidential information over the
`
`Respondents’ objection could significantly hamper the Commission’s ability to ensure timely
`
`8
`
`

`
`compliance with discovery requests in this and future investigations. Accordingly, the
`
`Complainant’s Motion to Amend the Protective Order should be denied.
`
`Respectfully submitted,
`
`Basil J. Lewris
`Robert D. Litowitz
`Smith R. Brittingham IV
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`901 New York Avenue, N.W.
`Washington, DC 20001-4413
`(202) 408-4000
`(202) 408-4400 fax
`
`John R. Alison
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`12D, 167 Tun Hwa North Road
`Taipei 105, Taiwan, R.O.C.
`01 1-886-22-712-7001
`01 1-886-22-712-7080 fax
`
`Attorneys for Respondents
`
`9
`
`Dated: March 6,2006
`
`

`
`Certain Automotive Parts
`
`Inv. No. 337-TA-557
`
`CERTIFICATE OF SERVICE
`
`I, Joanna Grauel, hereby certify that on March 6,2006, a copy of the forgoing document
`was filed and served as indicated:
`
`The Honorable Marilyn R. Abbott, Secretary
`U.S. International Trade Commission
`500 E Street, S.W., Room 112
`Washington, D.C. 20436
`(Original and 6 Copies)
`
`The Honorable Paul J. Luckern
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, S.W., Room 317
`Washington, D.C. 20436
`(2 Copies)
`
`Juan Cockburn, Esq.
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, S.W., Room 401
`Washington, D.C. 20436
`
`Counsel for Ford Global Technologies:
`
`Ernie L. Brooks
`Frank A. Angileri
`Sangeeta G. Shah
`Brooks Kushman P.C.
`1000 Town Center
`Twenty-Second Floor
`Southfield, Michigan 48075
`
`V. James Adduci I1
`Adduci, Mastriani & Schaumberg LLC
`1200 I
`Street N. W.
`Washington, D.C. 20036
`
`Via Hand Delivery
`
`0 Via First Class Mail
`0 Via Overnight Courier
`0 Via Facsimile
`0 Via Electronic mail
`0 Via First Class Mail
`[XI Via Hand Delivery
`0 Via Overnight Courier
`0 Via Facsimile
`0 Via Electronic mail
`0 Via First Class Mail
`[XI Via Hand Delivery
`0 Via Overnight Courier
`0 Via Facsimile
`0 Via Electronic mail
`
`0 Via First Class Mail
`0 Via Hand Delivery
`[XI Via Overnight Courier
`0 Via Electronic mail
`Via Facsimile
`
`0 Via First Class Mail
`[XI Via Hand Delivery
`0 Via Overnight Courier
`0 Via Facsimile
`0 Via Electronic mail
`
`,
`
`ERSON, FARABOW,
`& DUNNER, L.L.P.
`-TT
`901 New York Avenue, N.W.
`Washington, D.C. 20001
`(202) 408-4000
`
`~