Section 337 investigations are a critical tool for any company seeking to establish and enforce intellectual property rights to support a worldwide business. Quickly obtaining comprehensive relief at the US International Trade Commission (ITC) can provide a significant competitive edge to a successful complainant; it can also be fatal to a losing respondent. With so much at stake, the ITC is home to some of the highest-profile litigation in the world.
Under 19 U.S.C. § 1337 (Section 337 of the Tariff Act of 1930), the ITC has broad powers to investigate claims of patent, trademark and copyright infringement, as well as other unfair methods of competition and unfair acts (such as trade secret theft), connected to the importation of products into the US. Section 337 provides companies with relevant operations in the US – regardless of their nationality – an opportunity to obtain injunctive relief from the ITC that excludes infringing products from importation into the US and prohibits a broad range of commercial activity within the US, such as the sale of inventories of infringing products already in the US.
Why Choose Us
- Straddling the intersection of intellectual property and trade law, Section 337 investigations demand a multidisciplinary approach that very few law firms can provide. Litigating a Section 337 investigation is not like litigating a jury case in the US District Court. In addition to intellectual property law, lawyers handling Section 337 investigations need a deep understanding of the ITC’s Rules of Practice and Procedure, each ALJ’s Ground Rules, CBP’s practices and procedures, and international trade law and policy.
- Our Section 337 practice team is part of our overall Intellectual Property & Technology Practice; it also draws on our renowned International Trade Practice.
- We handle all aspects of Section 337 matters, including pre-filing counseling, discovery, hearings, petitions for review and enforcement. In addition, our lawyers have experience representing third parties in connection with subpoenas related to Section 337 investigations and third parties that have been implicated by enforcement activities associated with ITC Exclusion Orders. Our lawyers have handled ITC matters across a wide range of technologies, including acid-washed denim, solar cells, automotive components, mosquito traps, office furniture, nutritional supplements, cell phones and more. In 2020, our Section 337 team handled matters involving a diverse range of intellectual property rights, including utility patents, design patents, trademarks and copyrights.
- Our lawyers regularly track Section 337 developments and are active in bar associations focused on Section 337 practice, including the ITC Trial Lawyers Association and the IPO’s ITC Committee. One of our lawyers regularly drafts publications for the ITC Trial Lawyers Association’s Monthly Reporter and was a founding member of the IPO ITC Committee’s Advanced Practice Seminar. One of our lawyers was part of a group from the ITC Trial Lawyers Association that travelled to China to make presentations in multiple Chinese cities relating to the conduct of Section 337 investigations.
- Our international trade and public policy lawyers complement the technical and litigation skills of the Intellectual Property & Technology Practice in providing comprehensive client service in Section 337 investigations. Our international trade lawyers have extensive knowledge concerning the economic issues that can arise in Section 337 domestic industry analysis and a deep understanding of the US Customs procedures applicable to ITC Exclusion Order enforcement. Our public policy professionals provide especially valuable counsel at the initiation phase of these investigations, where foreign governments are notified and the public interest is evaluated, and at the presidential review stage, where the office of the US Trade Representative may become involved.
- With our unique combination of disciplines, along with a footprint that can facilitate the conduct of litigation by providing access to personnel, offices, language skills and local knowledge in locations spanning the globe, we provide 24/7 “boots on the ground” support to our clients with unmatched opportunities for comprehensive handling of any Section 337 investigation, whether as a complainant or a respondent.
Our approach to Section 337 investigations is a practical one that accounts for the differences between Section 337 litigation and other types of intellectual property litigation. Paramount among these differences is the speed of Section 337 investigations and the size and scope of the permitted discovery. We work closely with our clients at each step of the proceeding to ensure that they are prepared for the various obligations and that their practical and strategic goals for the litigation are met. We work with each client to develop a unique strategy that accounts for the probability of taking the matter through a hearing before an ALJ, the likelihood of success, the extent of discovery required and the possibility of alternative dispute resolution.
While many investigations truly are “bet-the-company” cases, others are not. We take a pragmatic approach to managing investigations by focusing on a client’s short- and long-term business strategies. Although many ITC investigations proceed to a hearing, and our team manages investigations with this in mind, we also look for strategic opportunities to resolve an investigation before the hearing.
Because Section 337 investigations proceed on an expedited basis, inexperienced parties and counsel can quickly find themselves at a significant disadvantage. Preparation for discovery should begin as soon as possible, even before the investigation is instituted, as discovery will begin almost immediately upon institution and even before a response to the complaint is due. Deadlines for responding to discovery and motions are short, usually only 10 days, and extensions of time are only available in limited circumstances.
We do not overlook the issues unique to Section 337 investigations, such as importation of the accused products and the existence of a domestic industry. Given the speed at which Section 337 investigations proceed, lawyers inexperienced in Section 337 investigations tend to focus on the issues with which they are familiar, such as patent validity and infringement, and can lose a case based on these trade law issues.
Developing a sound working relationship with the OUII staff attorneys is also important to handling ITC investigations, and only comes from experience in this unique environment. We regularly communicate with the staff attorneys to make sure that our case is well understood.
Understanding the relationship between CBP and the ITC is vital to a client’s overall strategy in a Section 337 investigation. Throughout an investigation, we keep in mind the practical realities that CBP faces when enforcing an Exclusion Order and we litigate the case, gathering information that will assist CBP when possible.
We also recognize that Section 337 investigations often do not proceed in a vacuum. We consider a multifaceted approach and, when appropriate, we will coordinate a Section 337 investigation with litigation in other countries, a companion action in the US District Court and/or proceedings at the Patent Trial and Appeal Board (PTAB).
Section 337 investigations have the reputation of being some of the most intensive intellectual property litigation in the world. The intensive nature of these matters can be overwhelming to many litigants, but our team’s experience demonstrates Section 337 investigations can be managed in a cost-effective manner. Indeed, our team has utilized a variety of alternative fee arrangements to maximize our value to our clients.