ITC Section 337 Investigations: Trends and Significant Court Rulings in 2018
Recent amendments to governing rules and Commission and Federal Circuit decisions continue to shape the practice of trade and intellectual property law in investigations under Section 337, 19 U.S.C. § 1337, in the U.S. International Trade Commission (ITC). On April 26, 2018, the ITC issued amendments to its Rules of Practice and Procedure, which are intended “to increase the efficiency of its section 337 investigations and reduce the burdens and costs on the parties and the agency.” The amendments apply to investigations instituted after June 7, 2018. Also in 2018, the Commission and Federal Circuit issued important opinions relating to issues specific to practice under Section 337, including domestic industry, public interest, and remedies.
Listen as a panel of industry practitioners discuss the latest developments and significant court rulings relating to ITC Section 337 investigations. They will present an in-depth analysis of the investigation framework. Speakers will also offer practical tips and strategies that will help litigators overcome challenges.
In a LIVE Webcast, the speakers will discuss:
- ITC Section 337 – An Overview
- Latest Trends and Developments
- Notable Court Rulings and Decisions
- Practical Tips and Best Practices
- Common Risks and Pitfalls
- What Lies Ahead
Jordan Coyle, Partner
Orrick, Herrington & Sutcliffe LLP
- ITC remains busy, but 2018 saw return to more typical number of new investigations
- What this means for ITC litigants, especially in light of recent departures of two ALJs (Essex in fall 2017 and Pender in fall 2018) and less than full complement of commissioners
- Highlights from new ITC rules
- Codified 100-day proceeding
- One complaint may result in multiple investigations
- Streamlined some discovery procedures
- Complaint must identify expiration date of patents
- Rise of inter partes proceedings at CBP
- Statistics regarding usage and results
- Procedural overview
- 2018 Federal Circuit decisions regarding section 337
- DBN Holdings, Inc. v. ITC, No. 17-2128 (Fed. Cir. Nov. 27, 2018)
- Converse, Inc. v. ITC, No. 16-2497 (Fed. Cir. Oct. 30, 2018)
- Diebold Nixdorf, Inc. v. Int'l Trade Comm'n, 899 F.3d 1291 (Fed. Cir. 2018)
- Laerdal Medical Corp. v. ITC, No. 17-2445 (Fed. Cir. Dec. 7, 2018)
- What this means for ITC litigants
Stephen J. Akerley, Member
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
- Interplay of PTAB Proceedings and ITC Investigations
- Stays Pending Instituted IPRs
- Evidentiary Use and General Consideration of PTAB Determinations and Decisions
- IPR Estoppel and Other ITC Quirks
- Impact of PTAB Proceedings at the Remedy Stage
- Tailoring Remedy
- Delays in LEO Execution
- Use of Certification Provisions
- Trending Away From Broad Exclusion?
- Trade Secrets at the ITC
- Impact of the DTSA on Trade Secret Filings
- A New Reason to Consider the ITC - Manitowoc Cranes LLC v. Sany America Inc. and Sany Heavy Industry Co., Ltd., No. 1:13-cv-00677 (E.D. Wisc. Dec. 11, 2017)
Daniel M. McGavock, Vice President and Intellectual Property Practice Leader
Charles River Associates
- Overview of Economic Prong of Domestic Industry
- (A) significant investment in plant and equipment
- (B) significant employment of labor or capital
- Claiming activities of licensees [applies to subsections(A) and (B)]
- (C) substantial investment in its exploitation, including engineering, research and development, or licensing.
- Nexus requirement between claimed investments and asserted IP
- Production-driven vs. revenue-driven licensing
- Issues and Recent Rulings Relevant to the Economic Prong of Domestic Industry
- What qualifies as “significant” or “substantial?”
- Lelo Inc. v. ITC, 786 F. 3d 879 (Fed. Cir. 2015)
- Certain LED Lighting Devices, LED Power Supplies, and Components Therof, Inv. No. 337-TA-1081
- Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067
- Certain Magnetic Tape Cartridges and Components Thereof, Inc. No. 337-TA-1058
- Investment/expense allocation methods
- Certain Toner Cartridges and Components Thereof, Inv. No. 337-TA-1106
- Investments in engineering and research and development can count towards subsections (A) and (B)
- Certain Solid State Storage Drives, Stacked Electronics Components, and Products Containing Same, Inv. No. 337-TA-1097
- Claims scope issues in determining the economic boundaries of the domestic industry product
- Certain Semiconductor Devices, Semiconductor Device Packages, and Products Containing Same, Inv. No. 337-TA-1010
- Properly pleading a case: existing or In the process of establishing a domestic industry
- Certain Road Construction Machines and Components Thereof, Inv. No. 337-TA-1088
- Certain Non-Volatile Memory Devices & Products Containing Same, Inv. No. 337-TA-1046
- What qualifies as “significant” or “substantial?”
Carla S. Mulhern, Managing Principal
- Overview of statutory public interest factors
- Impact on public health and welfare
- Impact on competitive conditions in the U.S. economy
- Impact on U.S. manufacturing activities
- Impact on U.S. consumers
- Critical economic factor - availability of reasonable alternatives
- Denial of remedy based on public interest considerations is rare
- Certain Automatic Crankpin Grinders, ITC 337-TA-60
- Certain Inclined-Field Acceleration Tubes and Components, ITC 337-TA-67
- Certain Fluidized Supporting Apparatus and Components, ITC 337-TA-182/188
- Some investigations have resulted in tailored remedy
- Baseband Processor Chips, ITC 337-TA-543 (“grandfather” provision allowing continued importation of existing models)
- Personal Data and Mobile Communications Devices, ITC 337-TA-710 (delay of 4 months to allow substitution of non-infringing models; exceptions for warranty replacement)
- Television Sets, ITC 337-TA-910 (delay of 12 months)
- Recent ID in 1065
Who Should Attend:
- IP and Related Attorneys and Consultants
- International Trade Law Attorneys
- In-house Counsel
- Trade Compliance Administrators and Managers
- Private and Public Companies
- Multinational Companies
Section 337 investigations pose an enormous risk. Without proper counsel, the speed, complexity and potential cost can overwhelm companies and drain precious resources. Having handled 35 such investigations, Jordan understands those risks, and how to safely and efficiently guide complainants, respondents and non-parties toward the best possible result.
Legal 500 recently described Jordan as an attorney who “offers a wealth of ITC experience and knowledge, while maintaining a level of responsiveness and approachability that is second to none." He’s managed all aspects of Section 337 investigations, including eight trials, from pre-complaint counseling and diligence to Federal Circuit appeals. The investigations have covered technologies including smartphones, tablets, televisions, automotive and engine parts, LED displays, flash memory, semiconductors, and medical devices.
Section 337 investigations pose an enormous risk. Without proper counsel, the speed, complexity and potential cost can overwhelm companies and …
Steve is a seasoned intellectual property trial lawyer who has successfully represented clients in District Courts across the United States, the US International Trade Commission and international tribunals. Currently, he is preparing for an ITC trial relating to high-speed memory modules.
His practice emphasizes patent litigation, representing patent owners and accused infringers in cases involving telecommunications, semiconductors, software, and biotech diagnostics. His experience handling both enforcement and defense representations informs his approach to developing and deploying successful strategies for his clients.
Clients have entrusted Steve to handle cases against some of the biggest technology companies in the world, enforcing patent owner rights and helping them to secure individual settlements of more than a hundred million dollars. In his representation of accused infringers, Steve has achieved successes in the form of trial victories, summary judgment, and early settlements for nuisance amounts.
Steve is a seasoned intellectual property trial lawyer who has successfully represented clients in District Courts across the United States, …
Daniel M. McGavock is Vice President and Intellectual Property Practice Leader of Charles River Associates. For over 30 years, his business consulting practice has focused on intellectual property damages analysis, valuation, business strategy, and transactions. He has provided expert testimony in federal courts, state courts, the U.S. Court of Claims, the International Trade Commission, the Patent Trial and Appeal Board, and both domestic and international arbitrations. His testimony has addressed a broad range of financial and economic issues, including lost profits, unjust enrichment, reasonable royalty, commercial success, irreparable harm, and the domestic industry requirement in Section 337 ITC matters. Outside of litigation, he has performed intellectual property valuations for a variety of business, tax, and transactional purposes and has participated directly in licensing negotiations, strategy development, and compliance audits.
Daniel M. McGavock is Vice President and Intellectual Property Practice Leader of Charles River Associates. For over 30 years, his …
Carla Mulhern, Managing Principal, Analysis Group; M.Sc., economics, London School of Economics and Political Science; B.S., mathematics, Bucknell University
Ms. Mulhern specializes in the application of economic principles to issues arising in complex business litigation. She has testified on damages issues arising in commercial litigation matters such as intellectual property disputes in a number of district and state Courts. As well, she has provided testimony on economic issues arising in the context of Section 337 investigations at the International Trade Commission (ITC). At the ITC, Ms. Mulhern has testified on a variety of economic issues including domestic industry, remedy, bond, commercial success, and public interest. Her litigation experience spans a variety of industries, including pharmaceuticals, medical devices, automotive, entertainment, consumer products, computer hardware and software, semiconductors, and telecommunications. In non-litigation matters, Ms. Mulhern has assisted clients in valuing intellectual property and other business assets in the context of strategic alliances and joint ventures. She is a member of the American Economic Association and the Licensing Executives Society, and is a frequent writer and speaker on issues related to intellectual property valuation and damages assessment.
Carla Mulhern, Managing Principal, Analysis Group; M.Sc., economics, London School of Economics and Political Science; B.S., mathematics, Bucknell University Ms. Mulhern …
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Method of Presentation:
On-demand Webcast; Group-Internet Based
Experience in International Trade Law
NASBA Field of Study:
Business Law – Technical
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About Orrick, Herrington & Sutcliffe LLP
Orrick is a leading global law firm with a particular focus on serving clients in the technology, energy and financial sectors. We are recognized worldwide for delivering the highest-quality, commercially oriented legal advice and fostering a culture of innovation and collaboration with our clients, among our lawyers and staff and within our communities. Founded in San Francisco a century and a half ago, Orrick today has approximately 1,100 lawyers across the United States, Europe and Asia. Our platform offers clients a distinctive combination of local insight and consistent global quality across our key market locations.
About Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Mintz is an Am Law 100 firm with more than 550 attorneys and other senior professionals serving clients worldwide. They have a strong technology sector focus and represent innovative companies throughout the business lifecycle.Major areas of legal expertise with which they provide clients include Corporate Transactions; Intellectual Property; Employment, Labor & Benefits; Litigation; Real Estate; and Tax. As a firm, Mintz represents clients in a wide range of industries, inclusive of traditional industries such as insurance, retail, and real estate, and in those developing cutting-edge technologies to improve lives, including medical devices, software, telecommunications, computer science, biotechnology, diagnostics, digital health, and many more.
About Charles River Associates
Charles River Associates is a leading global consulting firm that offers economic, financial, and strategy expertise to major law firms, corporations, accounting firms, and governments around the world.With proven skills in complex cases and exceptional strength in analytics, CRA consultants have provided astute guidance to clients in thousands of successful engagements. We offer litigation and regulatory support, business strategy and planning, market and demand forecasting, policy analysis, and risk management consulting.
Our success stems from the outstanding capabilities of our consultants, many of whom are recognized as experts in their respective fields; our close relationships with a select group of respected academic and industry experts; and from a corporate philosophy that stresses interdisciplinary collaboration and responsive service.
About Analysis Group
Analysis Group is one of the largest international economics consulting firms, with more than 950 professionals across 14 offices in North America, Europe, and Asia. Since 1981, we have provided expertise in economics, finance, health care analytics, and strategy to top law firms, Fortune Global 500 companies, and government agencies worldwide. Our internal experts, together with our network of affiliated experts from academia, industry, and government, offer our clients exceptional breadth and depth of expertise.