ITC Proceedings / Section 337

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With a proven track record at the ITC and in the intellectual property litigation community, Ropes & Gray’s ITC litigators are among the most capable at handling 337 investigations.

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“This group is held in high regard for litigation and rights management, and is a favorite for due diligence work.” Chambers USA
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Overview

In today’s fast-paced and technology-centered economy, the U.S. International Trade Commission (ITC) has become a forum of choice for IP rights holders looking for speed and certainty. So-called 337 investigations are quick, complex and challenging, requiring highly skilled attorneys who can bring to bear a combination of litigation excellence and technical knowledge of the ITC’s unique procedural framework. Ropes & Gray’s ITC litigators have the experience and reputation to offer clients the best counsel on 337 investigations.

The ITC and Section 337

The ITC is a quasi-judicial federal agency in Washington, D.C. with broad investigative powers on matters of trade. Among other responsibilities, the ITC conducts Section 337 investigations concerning imports that allegedly infringe IP rights, such as patents, trademarks and copyrights, or other unfair methods of competition and unfair acts. Under Section 337 of the U.S. Tariff Act of 1930, articles found to violate Section 337 can be excluded from further importation and the responsible parties can be subject to cease and desist orders.

Experienced, Highly Regarded Advocates

As many firms race to develop ITC practices, prospective clients often want to know what sets Ropes & Gray apart. Several factors distinguish our ITC capabilities:

  • Leading ITC Experience. From pre-suit diligence through hearing, review, appeal and post-exclusion customs work, our ITC practice actively represents major clients every step of the way. Our practice includes first-chair ITC trial lawyers, nationally ranked in publications including Chambers Global, Chambers USA, IAM Patent 1000, Managing IP, and Legal 500. In addition, in the last five years, we have prevailed on every Initial Determination after an evidentiary hearing on the merits.
  • A Legacy of IP Excellence. Ropes & Gray can leverage the talent of over 110 IP professionals with a broad array of technical skills and knowledge. These individuals are the best and the brightest in the IP community and have won some of the most storied victories in patent history. 
  • A Global IP Presence. With experienced IP attorneys resident in the United States, Europe and Asia, we are ideally positioned to manage the international aspects of 337 investigations efficiently and cost-effectively.
  • Cross-Practice Excellence. While most Section 337 investigations involve patent infringement, the ITC has increasingly become a forum for litigating complex business disputes involving non-patent claims. Ropes & Gray provides its clients with unmatched value through the seamless integration of its IP litigators with those in non-patent areas such as antitrust, anti-corruption, false advertising/unfair competition, and trade secrets.

Experience

In the last several years, Ropes & Gray has been involved in some of the most high-profile investigations at the ITC:

  • We represented Roku in its ITC investigation against Universal Electronics. Following trial, the Administrative Law Judge issued an initial determination finding no violation and two of the patents Universal Electronics asserted against Roku as invalid, which was adopted by the Full Commission.
  • As part of a multijurisdictional dispute, we represented Emerson Electric in an investigation related to four patents covering mesh network technology adverse to non-practicing entity SIPCO LLC. Successfully secured a final determination of no violation of Section 337.
  • We represented Samsung in an investigation filed by Pictos f/k/a Imperium involving allegations of trade secret misappropriation and patent infringement.
  • We achieved favorable decisions on behalf of TiVo in three ITC investigations against competitor Comcast concerning interactive program guide and digital video recording technology. In the first and second investigations, achieved findings of violation from the Commis­sion and exclusion orders against Com­cast. The multiyear dispute culminated in a settle­ment and 15-year license agreement, agreed to after the ALJ recommended the issuance of an exclusion order in the third investigation, and just prior to the ITC’s final decision.
  • We represented a major pharmaceutical company in a non-patent Section 337 investigation at the ITC, who asserted claims of unfair competition and false advertising of FDA approval by manufacturers and sellers of unauthorized generic versions of a branded drug used to treat gastrointestinal disorders. This case was the first designated by the Commission under its pilot program for an early determination on Section 337’s “domestic industry” and “injury” requirements.
  • We represented Michael Todd True Organics (maker of Soniclear®) in an investigation involving three patents and trade dress claims brought by competitor Pacific Bioscience Laboratories.
  • We represented a major consumer retailer in an investigation involving six patents generally directed to methods of using a laser to scribe a material such as fabric.
  • We represented Spansion (and several of its customers) adverse to Macronix in four investigations relating to patents directed to features and fabrication of FLASH memory devices. Following trials in two of the investigations, the global dispute was successfully settled before a decision was reached.
  • We represented Samsung Electronics in an investigation involving two patents concerning technology relating to analog or digital television signal receivers and won summary determination of no infringement of either patent.
  • We represented a multinational alcoholic beverages company in the first investigation of the ITC’s pilot program for possible early disposition of cases. Following an accelerated trial on the economic prong of domestic industry, the Commission found that the complainant failed to satisfy the economic prong and terminated the investigation.
  • We represented Samsung Electronics as a respondent in this investigation relating to seven patents concerning 3G and 4G capable devices. Based largely on the defenses developed by Ropes & Gray for two of three asserted patents at trial, ALJ Essex issued an opinion finding no violation. Just ten days before ALJ Essex issued his opinion, Ropes & Gray obtained a favorable settlement for our client, ending all litigation.
  • We represented Motorola adverse to Microsoft in an investigation relating to five patents directed to wireless networking and digital video processing features of Microsoft’s Xbox 360 system. Following a January 2012 trial, the ALJ issued an initial determination that section 337 was violated due to infringement of four of the five patents and recommended that Xbox systems be excluded from further importation.
  • We represented Motorola adverse to Research in Motion (RIM) in an investigation relating to five patents directed to features of RIM’s BlackBerry devices. Our representation of Motorola in the ITC brought a rapid and successful conclusion to a three-year global dispute between Motorola and RIM.
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