Multidisciplinary Approach to ITC Patent Litigation
Knowledge of the forum, including the “unwritten rules” of practice and policies, is vital in the successful administration of a Section 337 case. Sidley’s ITC team brings a breadth of legal skills to our Section 337 investigation work, including in-depth knowledge of substantive patent law issues and technology, significant experience in managing fast-paced litigation, and a nuanced understanding of administrative law and practice. Our work also extends to analyzing the effects of imported articles on the domestic market in the context of global trade law and public policy.
Working together across legal disciplines, our team can assist clients in responding to the challenges of pursuing or defending a Section 337 complaint, from the initial filing through to all necessary levels of appeal and enforcement of an exclusion order. Our lawyers have substantial experience before each forum involved in a proceeding, including the:
- ITC Office of Unfair Import Investigations
- ITC Office of the General Counsel
- Office of the U.S. Trade Representative
- U.S. Patent and Trademark Office
- Federal Circuit
- Supreme Court
- U.S. Customs and Border Protection
About Our Team
Sidley’s Intellectual Property Litigation practice includes lawyers with experience across the full spectrum of legal issues associated with litigating patents before the ITC, district courts, and Patent Trial and Appeal Board (PTAB). Our lawyers have tried many patent cases in courts around the country, sharpening our effectiveness in patent litigation and patent trials. Our highly experienced PTAB practitioners litigate patent validity as part of an integrated strategy with the ITC investigation.
We have handled ITC cases involving a wide range of technologies, including mobile devices, software, game consoles and controllers, semiconductor chips, digital televisions and flat-panel displays, chemical compounds, global positioning systems, solar panels, batteries, and many other products.
Members of our team have previously served in the Office of the United States Trade Representative (USTR) and are deeply familiar with the policy variables that influence review decisions by the USTR on behalf of the White House. We have counseled or intervened to advocate client interests in several ITC proceedings. Our lawyers have also handled appeals arising from ITC proceedings — both before administrative bodies and to the Federal Circuit.
Representative ITC Section 337 Patent Cases
Sidley’s lawyers have successfully represented numerous clients in ITC Section 337 patent cases. A selection of representative cases includes:
- ITC Inv. No. 337-TA-1151 — It is rare for a respondent to win an ITC case on summary determination; much more commonly, ALJs find that a dispute of material fact exists, requiring an evidentiary hearing. However, in this investigation, Sidley prevailed on behalf of its client LONGi Solar on claim construction, setting up summary determination of noninfringement. The Commission and the Federal Circuit proceeded to affirm that determination.
- ITC Inv. No. 337-TA-1089 and 337-TA-1023 — In these two investigations, complainant asserted a total of eight patents against Sidley client SK hynix, seeking to bar importation of RDIMM and LRDIMM memory modules. SK hynix provides one-third of the United States’ supply of these modules, which are a crucial component of cloud and enterprise servers, the hardware that powers much of the modern economy. Sidley won for SK hynix in both investigations and on all patents.
- ITC Inv. No. 337-TA-1026 — Complainant sought to exclude Sidley’s client, a multinational technology company, from importing its products. Following trial, the Administrative Law Judge (ALJ) ruled in favor of our client on noninfringement, invalidity, and lack of domestic industry. The Commission affirmed.
- ITC Inv. No. 337-TA-752 and 337-TA-744 — Sidley won victories in the phone wars for Microsoft in these two investigations involving gaming consoles and mobile devices. In one, Microsoft was the complainant and obtained a favorable final determination, which was affirmed by the Federal Circuit. In the other, Microsoft was the respondent and obtained a final determination of no violation.
- ITC Inv. No. 337-TA-868, 613 — After remand adopting complainant InterDigital’s claim construction, Sidley obtained a ruling of no infringement on behalf of Nokia Inc. on alleged ETSI standard essential patents.
- ITC Inv. No. 337-TA-982 — Sidley represented respondent LGE in litigation involving ETSI standard essential patents, and complainant withdrew complaint, forfeiting the case the day prior to trial.
- ITC Inv. No. 337-TA-1000 — In a case of first impression, the ALJ considered whether Section 337 jurisdiction extends to an online marketplace where third parties post products for potential sale and importation. Sidley obtained a favorable decision from the ALJ that it does not.
- ITC Inv. No. 337-TA-914 — Sidley achieved a victory on behalf of respondent Summit Agro, an importer of the chemical herbicide sulfentrazone. The complainant included a request for a temporary exclusion order, which required discovery and a hearing to be conducted just three months after the start of the investigation. Sidley prevailed in the temporary relief proceedings and, after the subsequent final hearing, secured a determination of no violation, winning on every major issue: noninfringement, invalidity, and lack of domestic industry.
- ITC Inv. No. 337-TA-849 — Sidley achieved a favorable result for chemical manufacturer Sino Legend in a case involving rubber resins. The complainant alleged that Sino Legend misappropriated over 20 trade secrets. Sidley was successful in invalidating the large majority of the alleged trade secrets and then obtained from Customs a favorable ruling of noninfringement for the economical design of the few remaining trade secrets. This paved the way for Sino Legend to continue importation of its products.
