Major corporations are increasingly turning to the US International Trade Commission (ITC) to resolve their intellectual property disputes. The ITC provides several key advantages over the federal courts, including a highly accelerated procedure for investigating complaints and powerful remedies in the form of exclusion orders that are not available in federal courts. Known as “Section 337” investigations, these proceedings typically involve intellectual property rights, including allegations that imported goods have infringed patents (including utility and design patents) and trademarks (whether registered or common law). Companies can also assert other forms of unfair competition involving imported products, including antitrust claims.
The primary Section 337 remedy is an exclusion order that directs US Customs and Border Protection to block infringing imports from entering the United States. Companies may also seek cease-and-desist orders barring the sale of infringing products already imported, as well as expedited relief through temporary exclusion orders and cease-and-desist orders.
The Mayer Brown Advantage
Companies litigating Section 337 disputes need a law firm with lawyers who have extensive experience in Section 337 investigations and are schooled in international trade disputes. These companies need a law firm with a deep bench of seasoned IP litigators and an international footprint. Mayer Brown offers precisely these capabilities, and is recognized as one of the leading firms to represent litigants before the ITC.
- Skillful team. In Chambers USA, clients say our litigation team is “always up to the task . . . efficiently handling every case that comes its way.” Chambers also reported that clients described our IP litigators as “phenomenal,” “high energy,” “superb strategist[s]” and “brilliant in bringing together all the issues.” Our attorneys have handled over 45 investigations under Section 337 and include a former senior trial attorney with the ITC who has also served as President of the ITC Trial Lawyers Association and Chair of the ITC Committee of the American Intellectual Property Law Association. In addition, cases before the ITC move quickly and require a firm that can commit a large team if needed. We can staff and manage such a team swiftly. Our large IP practice, together with our 350-lawyer litigation department, brings extensive experience litigating patent and trademark disputes. Our firm’s global presence and substantive breadth provide significant resources upon which we can draw on behalf of our clients to litigate Section 337 cases efficiently and effectively.
- Full service. Our IP litigation capabilities are fully integrated with essential counseling support from other practices. Our global trade group, one of the top rated in the world (as evidenced by its rankings in Chambers USA and Chambers Global), contributes extensive experience representing companies before the ITC and Customs in trade remedy matters, including manufacturers of such products as PET resin, paper and steel products. Additionally, Mayer Brown’s Supreme Court & Appellate practice, the oldest and largest of its kind in the United States, has been ranked number one in the country by both Legal 500 United States and Chambers USA. Because many ITC decisions are appealed, this practice provides an incredible resource for our team and for our clients. Indeed, our appellate litigators regularly represent clients in some of the most important cases affecting patent law before the US Court of Appeals for the Federal Circuit in Washington, DC, which has exclusive appellate jurisdiction over the ITC’s Section 337 determinations.
- Global perspective. Our IP litigators are located in Mayer Brown’s offices throughout the United States and Europe. Additionally, as a result of our 2008 combination with JSM (formerly Johnson Stokes & Master), one of the oldest and largest law firms in Asia, we have a strong seven-office presence in Hong Kong, Mainland China, Vietnam and Singapore. That presence provides a level of experience with, and an understanding of, the Asian business and legal communities that few other firms can match. Our global footprint gives us the reach and ability to manage the international discovery issues that inevitably arise in Section 337 actions.
We have represented complainants, respondents and interested third parties in Section 337 investigations. These proceedings have included telecommunications carriers as well as manufacturers of fiber-optic communication systems, nutritional supplements, high intensity sweeteners, toner cartridges, computer forensic devices, dental positioning adjustment devices, acetic acid, personal computers, medical devices, ground fault circuit interrupters, tissue, automobile parts and laminate flooring. Our patent lawyers provide valuable experience and technical knowledge in numerous fields, including medical device technologies, biotechnology, pharmaceutical, chemistry, life sciences, electrical and mechanical engineering, telecommunications, computer hardware and software, and related manufacturing processes. In addition, we have successfully defended our clients against claims of patent, trademark and copyright infringement, unfair competition, false advertising, trade secret misappropriation and antitrust violations.
Developing a “Best Practices” Response
With our depth of experience in Section 337 investigations, Mayer Brown attorneys are thoroughly familiar with the players and the procedures involved in these proceedings. We provide effective counsel, whether to complainants or respondents, and guide our clients through every step of the process. Section 337 investigations typically reach a final decision within 16 months. Mayer Brown attorneys are there from the start and know how best to marshal the necessary facts, witnesses and documents within this expedited time-frame. We determine, no later than 60 days before the hearing, whether to request a summary determination; participate actively in the trial before the administrative law judge; make public interest, remedy and other submissions during the ITC’s review following the initial determination; lobby relevant government agencies during the Presidential review phrase; and appeal, when necessary, to the Federal Circuit.
But Mayer Brown does more than just manage the complexity of the Section 337 process. We develop a “best practices” response that is designed to secure the most positive outcome at the ITC. Our ultimate goal is to resolve disputes in the manner best suited to a client’s particular needs: this can include reaching settlements, when appropriate, via licensing arrangements, joint ventures, mergers and other means. This business-focused perspective typifies Mayer Brown’s approach to IP counseling. We help leverage IP assets and develop options that maximize clients’ flexibility, protect investments, increase market share and strengthen competitive advantages.
Achieving Precedent-Setting Results
Mayer Brown patent litigators have won precedent-setting cases before the US Supreme Court, the Federal Circuit Court of Appeals and at the ITC. Highlights include Illinois Tool Works Inc. v. Independent Ink, Inc. (a significant victory for all patent holders, in which the Supreme Court ruled that in all cases involving a tying arrangement, the plaintiff must prove that the defendant has significant market power in the tying product), and Festo Corp. v. Shoketsu Kinozoku Kogyo Kabushiki Co. (in which the Supreme Court redefined and clarified the “doctrine of equivalents”).
- Computer Forensic Devices and Products Containing Same, Inv. No. 337-TA-799. Represented respondent, CRU Acquisition Group, in Section 337 patent case involving computer forensic devices used by law enforcement agencies. After a week-long trial in August 2012, the ALJ issued, on October 26, 2012, an initial determination finding no violation of Section 337. The complainant chose not to appeal the decision, resulting in a decisive victory for our client.
- Coenzyme Q10 Products and Methods of Making Same, Inv. No. 337-TA-790. Representing, as lead counsel, Zhejiang Medicine Co., Ltd. in a patent case under Section 337 involving Coenzyme Q10, one of the top-selling dietary supplements in the United States. The case was brought by Kaneka Corporation, a huge Japanese conglomerate. After a week-long trial in July 2012, the ALJ issued, on September 27, 2012, an initial determination finding no infringement by ZMC and no domestic industry. Kaneka appealed the ALJ’s decision to the full Commission. On November 29, 2012, the Commission issued a notice affirming the ALJ’s ruling and terminating the investigation with a finding of no violation by ZMC.
- Wind and Solar-Powered Light Posts and Street Lamps, Inv. No. 337-TA-736. Represented three respondents in Canada in design patent case involving wind and solar powered light posts. Investigation was terminated with no finding of violation based on withdrawal of complaint.
- Toner Cartridges and Components Thereof, Inv. No. 337-TA-731. Served as lead counsel for several respondents, including Seine and Ninestar, the largest remanufacturers of toner and inkjet cartridges in the world, in an ITC investigation alleging patent infringement brought by Canon. The case settled, with no admission of liability, after extensive discovery and submission of expert reports.
- Certain Non-Shellfish Derived Glucosamine, Inv. No. 337-TA-668. Represented complainant Cargill, Incorporated in ITC investigation alleging infringement of patent related to process for manufacturing glucosamine from non-shellfish sources. Case resulted in favorable settlements with most of the respondents.
- Certain Vein Harvesting Surgical Systems, Inv. No. 337-TA-645. Represented the complainant in an ITC investigation alleging infringement of two patents relating to innovative technology for minimally invasive harvesting of healthy blood vessels for uses such as heart bypass surgery. The case involved novel issues relating to induced infringement and was settled on favorable terms after extensive fact discovery and submission of expert reports.
- Certain Short Wavelength Light Emitting Diodes, Laser Diodes, and Products Containing Same, Inv. No. 337-TA-640. Served as lead trial counsel representing Hitachi Ltd. and Hitachi America, Ltd. in a patent infringement investigation relating to laser diodes and laser-emitting diodes.
- Certain Acetic Acid, Inv. No. 337-TA-633. Served as lead counsel for the Sopo respondents in China in a patent case brought by Celanese alleging infringement of a process patent for manufacturing acetic acid. After two months of vigorous defense of the case by Sopo, the complainant, Celanese, voluntarily withdrew its complaint and the investigation was terminated in favor of Sopo with no finding of violation.
- Certain Sucralose, Sweeteners Containing Sucralose, and Related Intermediate Compounds Thereof, Inv. No. 337-TA-604. Represented six different respondents, including two manufacturers in China, in a case brought by Tate & Lyle alleging infringement of process patents relating to the production of sucralose and certain intermediate compounds. In September 2008, the ALJ issued an initial determination finding no violation by our clients based on non-infringement and other grounds. On April 4, 2009, after a full review of the decision, the Commission upheld the ALJ’s findings there was no violation of Section 337. Tate & Lyle chose not to appeal the ITC’s decision and voluntarily dismissed its parallel district court action, resulting in a complete victory for our clients.
- Certain Wireless Conference-Calling Devices, Components Thereof, and Devices Containing Same, Inv. No. 591. Represented GN Netcom A/S, a Danish company, and its US subsidiary named as respondents in a case alleging infringement of patent relating to wireless conference-calling devices. After initial discovery, we submitted a draft motion for sanctions against the complainant, alleging the existence of material misrepresentations in the complaint; a week later, the complainant withdrew its complaint and agreed to termination of the ITC investigation.
- Certain Personal Computer/Consumer Electronic Convergent Devices, Inv. No. 337-TA-558. Represented two of the respondents, Cyberlink Corporation of Taiwan and its California subsidiary, Cyberlink.com Corporation, in ITC investigation; after the investigation was successfully stayed pending reexamination, the complainant withdrew its complaint and the investigation was terminated with no finding of violation by Cyberlink.
- Certain Baseband Processor Chips and Chipsets, Transmitter and Receiver (Radio) Chips, Power Control Chips, and Products Containing Same, including Cellular Telephone Handsets, Inv. No. 337-TA-543. Represented AT&T Mobility in one of the most significant Section 337 disputes in recent years both before the ITC and on appeal at the Federal Circuit, where parties sought to preclude importation into the US of products integral to AT&T’s business, such as handsets and chipsets. The Federal Circuit reversed the ITC’s determination, resulting in a favorable outcome for our client, as reported at 545 F.3d 1340.
- Certain Ground Fault Circuit Interrupters, Inv. No. 337-TA-478. Lead counsel for Chinese respondents in case brought by Leviton alleging infringement of patent relating to ground fault circuit interrupters; complainant withdrew complaint after its motions for summary determination were denied and draft motion for sanctions was served.
- Certain Acesulfame Potassium, Inv. No. 337- TA-403. Lead counsel for Chinese respondent in patent case relating to acesulfame potassium brought by Nutrinova, a Hoechst subsidiary; one patent found invalid and not infringed, the other not infringed; decision successfully defended through Commission and Federal Circuit review. This was the first case won by a Chinese respondent under Section 337 after going to trial.