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ITC Section 337

Sidley has one of the premier International Trade Commission (ITC) practices in the world. In conducting patent litigation before ITC, Sidley leverages the experience of lawyers with decades of experience litigating patent disputes under Section 337 of the Tariff Act of 1930 in the ITC and the firm’s nationally recognized Patent Litigation, International Trade and Appellate practices. By staffing teams with experienced, trial-tested lawyers from these practice groups, we believe we are able to provide exceptional service to our clients facing offensive or defensive proceedings before the Commission.

Section 337 Actions and the U.S. International Trade Commission

A patent gives its owner the right to exclude others from making, using, selling, offering for sale or importing the patented invention in the United States. Yet enforcing those rights can be a protracted process. When the infringing activity is the importation of a patented article or an article made by a patented process, it may be difficult to take effective action against all of the relevant parties through conventional litigation in the courts.

Section 337 of the Tariff Act of 1930 provides for the investigation of any unfair act in the importation of articles into the United States, including the enforcement of intellectual property rights. While almost all Section 337 investigations involve the alleged infringement of U.S. patent rights, the statute authorizes investigations to enforce other intellectual property rights such as trademarks, trade secrets, and copyrights as well as address other unfair methods of competition. Where the unfair act does not involve infringement of a government-issued right, such as a patent, the complaining party will need to demonstrate actual or threatened injury to a domestic industry before the ITC will initiate an investigation. Section 337 is available to all who own and exploit an intellectual property right in the United States regardless of whether the complaining party is based in the U.S. or abroad.

A Section 337 case is initiated by filing a detailed complaint with the ITC in Washington, D.C. The Commission institutes an investigation and assigns both an Administrative Law Judge (ALJ) to preside over the investigation and an attorney from the Office of Unfair Import Investigations (OUII) to represent the public interest in each investigation. The ALJ will perform all of the functions of a trial court e.g., oversee discovery, construe the patent claims, receive briefing from all parties including OUII, receive relevant evidence through formal evidentiary hearings under the Administrative Procedures Act and issue an initial determination regarding infringement and validity and a recommended determination regarding any appropriate remedy.

The Commission reviews the ALJ’s determination and, if the Commission finds a violation of Section 337, it may issue an exclusion order banning imports of the infringing goods, administered by the U.S. Customs and Border Protection. It may also issue a cease-and-desist order, enforced by the Commission, requiring a party to stop all commercial activity relating to the infringing products (e.g., selling from inventory) subject to substantial civil penalties for violation. The Commission may also issue temporary exclusion and cease and desist orders, using guidelines similar to those for preliminary injunctions in a court, to curb infringing activity through the imposition of a bond pending formal resolution of the investigation.

Each remedial order issued by the Commission is reviewed by the President through the Office of the U.S. Trade Representative to ensure that there is no negative impact on U.S. trade policy. Thereafter, final determinations by the Commission are appealable to the U.S. Court of Appeals for the Federal Circuit and ultimately the Supreme Court.

While a Section 337 investigation is similar to a patent litigation in the District Court, there are significant differences. One is the speed of the proceeding. It is not unusual for a trial on all issues to be scheduled within 6-9 months of the institution of the investigation, and only 12 to 15 months to reach an initial determination. In contrast, district court litigation usually will take from two to four years to reach an initial determination, and often will proceed at an uncertain pace. The ITC’s accelerated timetable imposes greater time-pressure, cost, and litigation burdens on the parties to the case. Knowledge of forum, including the “unwritten rules” of practice and policies, is often vital in the successful administration of a Section 337 case.

Sidley’s Approach to ITC Litigation

Effective representation in a Section 337 investigation requires a team with a broad range of legal skills. In-depth knowledge about the substantive patent law issues and technology in the case, as well as significant experience in managing fast-paced litigation are, of course, essential. Since a Section 337 investigation is an administrative proceeding, knowledge and experience in administrative law and practice is also required. Finally, depending on the nature of the case, it may be necessary to analyze the effect of an imported article on the domestic market, and to invoke principles of global trade law, or to urge a course of action on grounds rooted in public policy. The latter tasks require unique knowledge and experience with the agencies of the U.S. Government that will play a role in the final decision of the ITC in any particular proceeding.

To litigate patent cases before the ITC, Sidley creates teams using lawyers drawn from its IP Litigation, International Trade and Appellate Practice groups. Sidley ITC litigation teams include lawyers with substantial experience before each forum that may be involved in a proceeding, including the ITC Office of Unfair Import Investigations, the ITC Office of the General Counsel, the Office of the U.S. Trade Representative, the White House, the Federal Circuit, Supreme Court and U.S. Customs and Border Protection. Together, our lawyers are uniquely disposed to respond to the special challenges of pursuing or defending a Section 337 complaint from filing through all necessary levels of appeal and enforcement of an exclusion order. Our breadth of experience in litigating intellectual property cases, combined with our unmatched experience in international trade policy and practice, allow us to bring powerful resources to bear in an ITC proceeding to secure an effective resolution.

Intellectual Property Litigation Practice

Sidley’s Intellectual Property practice includes more than 130 lawyers with experience across the full spectrum of legal issues associated with litigating patents before the ITC or district courts. We are able to complement our experience in patent litigation with the breadth and institutional resources of a full-service, global law firm.

  • We have tried many patent cases in courts around the country, developing knowledge in patent litigation and patent trials. In the ITC, we have appeared representing complainants (i.e., plaintiffs), respondents (i.e., defendants), intervenors and the public interest (i.e., OUII).
  • We have handled cases involving a wide range of technologies including mobile telephony devices, software, game consoles and controllers, semiconductor chips, digital televisions and flat panel displays, chemical compounds, global positioning systems, batteries and many other products.
  • We have handled a number of complex, broad-ranging disputes requiring careful coordination between proceedings before the ITC, district courts, the Patent and Trademark Office (PTO) and foreign jurisdications.
  • We have conducted inter partes reexamination of patents in litigation before the ITC or district courts, and are deeply familiar with the new procedures for contesting patent validity being established at the PTO in September of this year.
  • We staff our cases with patent lawyers and agents who have technical experience relevant to each case. Many of our professionals have advanced degrees or working experience in relevant fields of technology including electrical engineering, computer science and programming, mechanical engineering, physics and chemical engineering. The breadth and depth of technical knowledge found in our IP litigation practice group enables us to staff cases with individuals with the technical know-how to develop viable and persuasive theories for each case, and who can work efficiently with company witnesses and experts.

Simply put, Sidley can field an ITC litigation team that brings a special level of concentrated experience and knowledge to the complex and fast-paced ITC Section 337 patent proceedings.

International Trade and Appellate Practices

Sidley is able to complement its ability to litigate IP litigation before the ITC with lawyers drawn from the Firm’s nationally-recognized International Trade and Appellate practices.

  • We have handled appeals arising from ITC proceedings, both before administrative bodies and the Federal Circuit. In addition, our nationally-recognized appellate practice has handled several patent appeals before the Supreme Court over the past decade.
  • Several Sidley lawyers served as attorneys in the Office of the United States Trade Representative (USTR), and are intimately familiar with both the staff and practices of the USTR.
  • Sidley lawyers are deeply familiar with the policy variables that influence review decisions by the USTR and the White House, and have counseled or intervened to advocate client interests in several ITC proceedings.

Representative ITC Section 337 Patent Cases

Sidley’s International Trade and Intellectual Property lawyers have successfully represented numerous clients in Section 337 patent cases in the International Trade Commission. Representative cases on which our lawyers have worked include:

Certain Rubber Resins and Processes for Manufacturing Same, 337-TA-849. Representing Respondents in alleged misappropriation of trade secrets including tackifiers.

Certain CMOS Image Sensors and Products Containing Same, 337-TA-846. Representing STMicroelectronics N.V. and STMicroelectronics, Inc. in patent litigation concerning complementary metal oxide semiconductor image sensors. This case is in the discovery stage.

Certain Electronic Devices Having a Retractable USB Connector, 337-TA-843. Representing Respondent Huawei Technology Company, Ltd. in patent litigation concerning devices having a retractable USB connector. This case has settled.

Certain Portable Communication Devices, 337-TA-827. Representing Research In Motion in patent litigation concerning I/O circuitry, mobile device operating systems, and remote procedure calls for heterogeneous network. This case has settled.

Certain Blu-Ray Disc Players, Components Thereto, and Products Containing Same, 337-TA-824. Represent respondents LG Electronics, Inc. and LG Electronics USA, Inc. in patent litigation concerning Blu-ray disc technology. This case has settled.

Certain Integrated Solar Power Systems and Components Thereof, 337-TA-811. Represent respondents Canadian Solar Inc. and Canadian Solar (USA) Inc. in patent litigation concerning solar panels. This case has settled.

Certain Game Devices, Components Thereof, and Products Containing the Same, 337-TA-757. Representing Complainant Microsoft Corporation in patent litigation concerning wireless data transmission technology. This case has settled.

Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof, 337-TA-752. Representing respondent Microsoft Corporation in patent litigation concerning cryptography relating to IEEE standards, H.264 video compression, and wireless communications. This case is currently on remand to the Administrative Law Judge.

Certain Mobile Devices, Associated Software, and Components Thereof, 337-TA-744. Representing Microsoft Corporation in an ITC case against Motorola, Inc. and Motorola Mobility, Inc. Microsoft asserted that Motorola infringes seven patents directed to smart-phone technology. The Initial Determination found a Section 337 violation.

Certain Flash Memory Chips and Products Containing Same, 337-TA-735. Representing respondent RIM in patent litigation concerning Flash memory fabrication and process technologies. This case has settled.

Certain Liquid Crystal Display Devices, Including Monitors, Televisions, and Modules, and Components Thereof, 337-TA-741/749. Representing Realtek Semiconductor in an investigation that involves five patents relating to LCD technology, of which one was asserted against Realtek. The Administrative Law Judge concluded, based on admissions the firm secured from the opposing expert at trial, that firm client Realtek did not infringe the asserted patent and is not in violation of 19 U.S.C. §1337(a)(1).

Certain Game Controllers, 337-TA-715, Represented Microsoft Corporation in efforts to curb the import of unlicensed video game controllers alleged to infringe six Microsoft design patents on its Xbox gamepads. This matter was resolved based on a cessation of imports and introduction of a re-designed controller by the respondents.

Certain Display Devices Including Digital Televisions and PC Monitors, 337-TA-713. Representing Chimei Innolux Corporation in an investigation that involves on-screen menu displays, closed captioning, encryption and secure data transfer technology.

Certain Wireless Communication System Server Software, Wireless Handheld Devices, and Battery Packs, 337-TA-706. In this investigation, Motorola asserted that all RIM BlackBerry’s infringed 5 Motorola patents relating to encryption, memory architecture, user-interface, battery control circuitry, and network architecture technology.

Certain Rubber Antidegradants, Antidegradant Intermediates and Products Containing Same, 337-TA-652. Represented respondent Sinorgchem Co., a Chinese chemical manufacturer. The ALJ granted Sinorgchem’s motion for summary determination. The Commission declined to review the initial determination and terminated the Investigation in its entirety.

Certain Computer Products, Computer Components And Products Containing Same, 337-TA-628. Representing respondent ASUS in patent litigation concerning products implementing power supplies, variable speed fans, and Network Address Port Translation. ASUS prevailed on all claims after full hearing on merits. The ALJ’s decision was affirmed by the Commission.

Certain Portable Navigation Computing Devices and Associated Computer Software, 337-2654. Represented complainant, Microsoft Inc. in filing a complaint at the ITC alleging infringement of five (5) patents. The case settled favorably to our client prior to institution of the investigation.

Certain Flash Memory Controllers, Drives, Memory Cards, and Media Players and Products Containing Same, 337-TA-619. Represented respondent LG Electronics in an investigation brought by SanDisk, Inc. alleging patent infringement by flash memory control chips. The ALJ found no infringement and no violation of Section 337. After consideration of certain claim construction issues, the Commission affirmed the finding of no infringement and no violation of Section 337.

Certain Digital Televisions and Certain Products Containing Same and Methods of Using Same, 337-TA-617. Represented respondents, AmTran Technology Co., Proview Technology and Vizio, Inc. in a patent infringement investigation brought by Funai Electric and Thomson involving digital televisions (“DTV,” specifically digital television transmission technology and television display technology). The Commission issued a limited exclusion order (later reversed on appeal to the Federal Circuit) but U.S. Customs and Border Protection issued an advance binding ruling that new design-around DTVs were not subject to the exclusion order and could continue to be imported.

Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same, Investigation 337-TA-605. Represented respondent STMicroelectronics N.V. The complainant, Tessera Technologies, Inc., asserted two patents against ST NV and other respondents Qualcomm, Motorola, Freescale, AMD and Spansion. The ALJ ruled that the respondents did not infringe the asserted patents. Subsequently the Commission reversed the ALJ's determination. Appeals have been made to the Federal Circuit.

Certain Baseband Processor Chips and Chipsets, Transmitter and Receiver (Radio) Chips, Power Control Chips, and Products Containing Same, Including Cellular Telephone Handsets, 337-TA-543. Co-counsel for intervenor Cellco Partnership dba Verizon Wireless in the remedy phase of this investigation. We participated in the remedy hearing before the ALJ and briefing on the "downstream products" issue. Our client Verizon Wireless settled.

Certain Rubber Antidegradants, Antidegradant Intermediates, and Products Containing the Same, 337-TA-533. Represented respondent, Sinorgchem Co., a Chinese chemical manufacturer. The ALJ originally ruled that Sinorgchem infringed the complainant's patents and the Commission entered a limited exclusion order banning importation of antidegradants used predominantly in automobile tires. Upon appeal the matter was remanded to the ITC for a determination of infringement under the doctrine of equivalents based on the claim construction urged by Sinorgchem.

Sinorgchem Co., Shandong v. U.S. Int’l Trade Comm’n, 511 F.3d 1132 (Fed. Cir. 2007). The ALJ on remand found no infringement. The Commission rejected complainant's petition for review and terminated the Investigation with a finding of no violation of Section 337.

On appeal to the Federal Circuit, a team of Sidley ITC and appellate lawyers successfully represented respondent Qualcomm. In a major victory for our clients and a landmark decision in ITC jurisprudence, Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 545 F3d 1340 (Fed. Cir. 2008), the Federal Circuit found that unnamed third parties could not be subject to a limited exclusion order issued by the ITC. Additionally, the Sidley team successfully argued certain patent infringement and validity issues.

Certain Disc Drives, Components Thereof, 337-TA-516. Represented Complainant Seagate Technology Inc. in a suit alleging infringement of seven patents relating to technology contained in micro-disc drives. After the first day of trial, the dispute settled favorably when respondent agreed to cease manufacture of all products that were the subject of the complaint.

Certain Encapsulated Integrated Circuit Devices and Products Containing Same, 337-TA-501. Representing complainant Amkor. We are asserting two patents relating to semiconductor packaging technology. We successfully obtained an Initial Determination from the ALJ that the respondent Carsem infringes our client's patent rights, and that the claims are valid and enforceable and have a domestic industry.

Certain Digital Display Controllers and Products Containing Same, 337-TA-491. Prosecuted patent infringement case on behalf of Genesis Microchip against MStar Electronics and other parties involving digital scaling and multiple display format controller chips. Case won after full hearing on the merits; exclusion order issued barring all accused products from entry into the United States.

Certain Digital Display Controllers and Products Containing Same, 337-TA-481. Prosecuted patent infringement case on behalf of Genesis Microchip against MRT Electronics and Trumpion Microelectronics involving flat panel controller chips. Case won after full hearing on the merits and review by the Commission; exclusion order issued barring all accused products from entry into the United States.

Certain Semiconductor Memory Devices and Products Containing Same, 337-TA-470. Represented complainant Mosel Vitelic, in investigation asserting three patents on semiconductor chip memory devices, against Hitachi and Elpida Memory. The case settled with our assistance.

Certain Programmable Logic Devices and Products Containing Same, 337-TA-453. Represented respondent Xilinx in an investigation involving patents relating to programmable logic device semiconductor chips. The investigation settled favorably for our client prior to trial.

Certain Field Programmable Gate Arrays and Products Containing Same, 337-TA-441. Represented complainant Xilinx in patent infringement investigation involving semiconductor circuit patents, asserting three patents on field programmable gate arrays. The investigation settled favorably for our client after trial.

Certain HSP Modems, Software and Hardware Components Thereof, and Products Containing Same, 337-TA-439. Represented complainant PCTel in patent infringement investigation involving telecommunication modems, filed against ESS. The ALJ ruled that ESS infringed one of PCTel's patents. The investigation settled favorably for our client.

Certain Semiconductor Memory Devices and Products Containing Same, 337-TA-414. Represented respondent Mosel Vitelic Corporation in a patent investigation brought by Micron Technology with respect to four semiconductor process patents. Micron withdrew one patent prior to trial and after trial, the ALJ found that all three remaining patents were not infringed, invalid over prior art, unenforceable due to inequitable conduct, and lacking a domestic industry (a so-called “grand slam” defense victory). Thereafter, the investigation was settled.

Certain Rechargeable Nickel Metal Hydride Anode Materials and Batteries, and Products Containing Same, 337-TA-368. Represented respondents Toshiba Battery Co., Ltd., Toshiba America Information Systems, Inc., and Toshiba America Consumer Products, Inc. in a patent infringement investigation filed by Ovonic Battery Company, Inc. and Energy Conversion Devices, Inc. alleging infringement by Japanese battery manufacturers of certain patent rights. The investigation settled prior to trial.

Certain Integrated Circuit Telecommunication Chips and Products Containing Same, Including Dialing Apparatus, 337-TA-337. Represented complainant SGS-Thomson Microelectronics against three chip manufacturers involving three patents directed toward telecommunication chip technology. The Commission found a violation of Section 337 and issued an exclusion order in favor of our client SGS-Thomson.

Certain Static Random Access Memories, Components Thereof, and Products Containing Same, 337-TA-325. Represented complainant SGS-Thomson in an investigation involving four patents covering SRAM semiconductor technology. The respondent was the Japanese semiconductor manufacturer Seiko-Epson. The investigation terminated in favor of our client.

Certain Dynamic Random Access Memories, Static Random Access Memories, and Products Containing Same, 337-TA-312. Represented complainant SGS-Thomson in an investigation involving eight SGS-Thomson patents directed toward SRAM and DRAM semiconductor technology. The investigation terminated in favor of our client.

Certain Catalyst Components and Catalysts For The Polymerization of Olefins, 337-TA-307. Represented respondent Toho Titanium in patent infringement investigation brought by Montedison and Himont. The investigation settled favorably for Toho with our assistance.