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.
ITC Section 337
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.
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 of 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.
Sidley’s Intellectual Property practice includes more than 90 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, sharpening our effectiveness in patent litigation and patent trials. In the ITC, we have appeared representing complainants (i.e., plaintiffs), respondents (i.e., defendants), and intervenors.
- 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.
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.
- 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.
- 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 and a half.
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 Memory Modules and Components Thereof (337-TA-1089) – Defending respondent SK hynix against second patent infringement case brought by Netlist against RDIMM and LRDIMM memory modules.
- Certain Insulated Beverage Containers (337-TA-1084) – Defended respondent Alibaba in investigation including trademark and copyright claims in case initiated by YETI Coolers, LLC. This case has settled.
- Certain Audio Processing Hardware, Software, and Products Containing the Same (337-TA-1026) – Defended respondent Apple in patent case initiated by Andrea Corp. Commission found no violation.
- Certain Memory Modules and Components Thereof (337-TA-1023) – Defended respondent SK hynix against patent infringement claims brought by Netlist against RDIMM and LRDIMM memory modules. Commission found no violation.