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ITC Section 337 Actions

Major corporations are increasingly turning to the US International Trade Commission (ITC) to resolve their intellectual property disputes.


Intellectual Property Practice of the Year 2017

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 eight-office presence in Hong Kong, Mainland China, Thailand, 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”).

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