The International Trade Commission (ITC) is an increasingly popular venue for intellectual property rights enforcement. Under 19 U.S.C. § 1337 (Section 337), the ITC conducts investigations and provides relief for intellectual property rights holders by barring the importation or sale after importation of goods that infringe upon a utility patent, design patent, trademark, or copyright, or goods that are made using misappropriated trade secrets.
Section 337 authorizes the ITC to investigate a wide variety of unfair methods of competition and unfair acts in the importation of goods. At the conclusion of a Section 337 Investigation, the ITC can issue an exclusion order barring goods from being imported into the United States, and barring the sale of existing inventories of imported goods in the United States, requiring their destruction or removal from the country.
An exclusion order is a unique and powerful remedy that poses a daunting problem for foreign manufacturers, who risk losing access to the U.S. market, and for domestic importers and sellers, who risk a disruption of their supply of goods found to infringe. Moreover, the ITC can issue a general exclusion order barring all products from any source. As such, Section 337 Investigations are often “bet-the-company” litigations for respondents.
Section 337 Investigations are fast paced, with evidentiary hearings (trials) often occurring less than one year after an investigation is instituted, as detailed in our exemplary timeline of a Section 337 Investigation. Developments in patent law over the last several years have made litigation in U.S. district court less attractive for patent owners, and have caused a renewed interest in the ITC as the venue of choice in the United States for asserting IP rights.
The exclusion order remedy is enforced by U.S. Customs and Border and Protection (CBP) at U.S. ports of entry. Violations of an exclusion order are addressed before the ITC in enforcement proceedings. Requests to import goods that design-around the intellectual property in an exclusion order are addressed by the CBP under 19 C.F.R. § 177 (often referred to as Rule 177 proceedings) or the ITC in an advisory opinion proceeding.
Navigating Complainants and Respondents Through ITC Investigations
Perkins Coie attorneys have represented complainants and respondents in Section 337 Investigations, including large and small companies, and U.S. and foreign litigants. Our team includes a former ITC Senior Staff Attorney from the Office of Unfair Import Investigations (OUII). The collective experience of our team spans dozens of investigations, allowing us to provide clients with guidance on the intricacies of ITC law and procedure, from filing of the complaint through appeals to the Federal Circuit, and in proceedings before CBP. Our team includes practitioners in Washington D.C. and offices across the United States.
Leveraging Award-Winning IP and Appellate Practice Experience
Our Section 337 team is part of our Intellectual Property practice consisting of over 225 attorneys, 130 with degrees in electrical engineering or computer science, including 15 Ph.D.s, and 30 with degrees in life science fields, including 12 Ph.D.s. We have the experience and resources to handle Section 337 Investigations in a wide range of technical fields, including semiconductors, electronics, networking equipment, pharmaceuticals, medical devices, bioengineering and chemical sciences. Our team also leverages the firm’s core competencies in a variety of areas, including patent litigation, inter partes review patent validity challenges before the USPTO Patent Trial and Appeal Board (PTAB), Federal Circuit appeals, trademark law, copyright law, district court litigation and others.
Our strengths in International Trade Commission Section 337 practice and related intellectual property practice areas are well-recognized:
- Recognized by Corporate Counsel magazine for multiple years as one of the top 10 law firms with the most International Trade Commission investigation matters, including a #1 ranking in the last year the survey was conducted
- Recognized by the Financial Times as a "Standout” in Intellectual Property for the firm’s successful defense of client HTC in ITC Investigation No. 337-TA-726. Perkins Coie was one of only four firms in the top category (Standout) and one of only 15 firms ranked in the IP category overall
- Ranked third by Lex Machina nationally, in 2016 and 2017, among “Firms That Landed The Most Patent Defense Suits Last Year”
- Ranked sixth in "Top Law Firms Representing Patent Owners" before USPTO PTAB in 2016
- Named by Law360 as one of the “Firms That Dominated the Federal Circuit” in 2016 and 2017
- Named by Law360 as an appellate "Practice Group of the Year" in 2018
- Named “Law Firm of the Year – Patent Law,” U.S. News Best Lawyers®, 2018, 2014, 2013
- Recognized by Managing Intellectual Property as one of the top 10 law firms nationwide handling USPTO PTAB IPR proceedings for petitioners in 2016
- Recognized in multiple years by Docket Navigator among the top 10 law firms representing parties in IPR, CBM and PGR proceedings before the USPTO PTAB
- Named “Law Firm of the Year – Trademark Law,” U.S. News Best Lawyers®, 2016
Recommended for Chinese Complainants and Respondents
Since 2013, the Ministry of Commerce of the People’s Republic of China (MOFCOM) has selected Perkins Coie as one of a handful of U.S. firms recommended to provide legal consultation in relation to Section 337 Investigations and related legal issues. Perkins Coie has Mandarin-speaking lawyers and staff, and our offices in Beijing and Shanghai are available to provide on-the-ground support for Chinese litigants, including patent analysis and e-discovery services.
Practical Representation Focused on Client Business Objectives
Intellectual property rights holders considering relief under Section 337, and companies accused of violating Section 337, need knowledgeable counsel to navigate the complex issues, short time frames and high stakes associated with these investigations. Our team of veteran litigators work to achieve our clients’ business objectives in a cost-effective manner.
Successfully defended a client in the first-ever “100-day” hearing initiated under the ITC’s new pilot program designed to resolve patent infringement allegations within 100 days. The ITC determined that there was insufficient economic investments in the United States relating to the asserted patents to establish a domestic industry and terminated the investigation.MORE
We obtained the first-ever delay of an ITC exclusion order for our client based on public interest considerations in a decision, Inv. No. 337-710, that is routinely cited by others seeking similar relief. With the extra time, we were able to obtain approval for our client to import a “design around” alternative without disrupting its supply chain.MORE
Successfully defended our client in a patent infringement action at the ITC using a small litigation team and a legal strategy that was recognized by the Financial Times’ U.S. Innovative Lawyers Report, 2013MORE