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Section 337/ITC Litigation


 

Steptoe & Johnson LLP wins the Section 337 cases it takes to trial. In the course of successfully representing both complainants and respondents in more than 115 Section 337 investigations, we have won all of our trials since 2004.  For more than 35 years, Steptoe attorneys have litigated, settled, and won Section 337 cases. Steptoe 337 attorneys are ranked by Chambers as leaders in International Trade, and the firm is consistently ranked by IP Law & Business as one of the most active before the International Trade Commission (ITC). Our cases have involved the most complex technologies often involving more than a billion dollars in trade in a single case.

Our Experience
Steptoe attorneys have handled a wide variety of cases—all having two things in common—short time lines and many interacting issues. Whether by settlement or trial, we obtain decisions that meet our clients’ business needs. Our deep experience is necessary to find the tipping point in Section 337 cases that leads to success. Our attorneys have experience with the entire range of unfair import practices including patent infringement, trade dress and trade secret misappropriation, copyright infringement, false advertising, false design of origin, passing off, false labeling, and product disparagement, among others.  In addition, we have represented clients in Section 337 cases involving a variety of industries including high tech, consumer products, automotive manufacturing, medical devices, and chemical manufacturing.

Our Section 337 background goes beyond representing clients before the ITC, members of our team include a former senior investigative attorney at the ITC, a member of the Executive Committee for the ITC Trial Lawyers Association, the only association of attorneys dedicated solely to practice under Section 337, and a former President of the Federal Circuit Bar Association. Another attorney served as President of the ITCTLA for 2003-2004. We provide clients with a robust understanding of the public policy issues that influence the ITC and USTR as we work hand in hand with our highly respected International Trade practice, led by a former Deputy US Trade Representative – the office designated with responsibilities for Presidential review of final affirmative Section 337 hearings - whose policy knowledge and government experience is unsurpassed.

About Section 337
Under Section 337, companies seek to obtain ITC orders that exclude from the United States imported products that are deemed to compete unfairly with the domestic industry. Monetary damages cannot be granted under Section 337.  Most commonly, Section 337 investigations address patent, trademark, and copyright infringement issues, but have also involved antitrust, trade secret, breach of contract, and similar claims.

Section 337 investigations are administrative proceedings, but proceed much faster than federal district court cases, often with decisions issued within a year.  An Administrative Law Judge (ALJ) presides over the investigation, which has three parties:

  • Complainant—the party filing the complaint with the ITC; 
  • Respondent—the party or parties manufacturing, importing, and selling the accused products; and
  • Staff—Commission investigative staff attorneys, who represent the public interest and who take a position on the issues in the investigation before the hearing begins.


 

Representative Matters

  • Certain Automotive GPS Navigation Systems, Components Thereof, and Products Containing The Same (2011) Inv. No. 337-TA-814 – Representing respondents Hyundai Motor Company, Kia Motors Corporation, and Nissan Motor Co. Ltd. against allegations of patent infringement by Beacon Navigation GmbH. The four patents at issue relate to Global Positioning System (“GPS”) technology. Beacon Navigation GmbH is seeking exclusion of cars containing infringing automotive GPS units from the United States, which could affect up to thirty percent of our clients’ US business.
  • Certain Devices for Improving Uniformity Used in a Backlight Module and Components Thereof and Products Containing The Same (2011) Inv. No. 337-TA-805 – Representing the LG respondents against allegations from complainant ITRI International Inc. of importation into the US and sale of certain devices for improving uniformity used in a backlight module which are used in display devices, such as digital televisions and monitors.
  • Certain Motion-Sensitive Sound Effects Devices And Image Display Devices and Components and Products Containing Same (2011) USITC Inv. No. 337-TA-787 – Represented Intec, Inc. against allegations from complainant Ogma, LLC of patent infringement involving motion-sensitive sound effects devices which are used in, e.g., video games and other applications.  The case settled favorably to Intec in a confidential settlement agreement.
  • Certain Protective Cases and Components Thereof (2011), USITC Inv. No. 337-TA-780 – Represented respondent AliBaba against allegations from complainant Otter Products LLC, of patent infringement involving protective cases for electronic devices such as smartphones and tablet computers. The case terminated based on a successful settlement agreement. Additionally represented Cellairis Franchise and Global Cellular after taking over from prior counsel and negotiated a successful settlement agreement.
  • Certain Electronic Digital Media Devices and Components Thereof (2011) USITC Inv. No. 337-TA-796 – Representing respondent Samsung against allegations brought by Apple Inc. of patent infringement related to mobile phone handsets and tablet computers.
  • Certain Electronic Devices, Including Wireless Communication Devices, Portable Music And Data Processing Devices, And Tablet Computers (2011) USITC Inv. No. 337-TA-794 – Representing complainant Samsung to assert the infringement of five patents related to certain electronic devices, including smart phones, portable music and data processing devices, and tablet computers.
  • Certain Game Devices, Components Thereof, and Products Containing Same (2011) USITC Inv. No. 337-TA-757 - Represented Datel Design & Development, Inc., Datel Design & Development Ltd., Datel Direct Ltd., Datel Holdings Ltd., and Datel Electronics Ltd. against allegations of patent infringement involving wireless video game controllers. The case terminated based on withdrawal of the complaint by Microsoft after Discovery.
  • Certain Semiconductor Chips and Products Containing Same (2011) USITC Inv. No. 337-TA-753 – Representing respondent Seagate Technology against allegations brought by Rambus Inc. of patent infringement involving six patents covering memory controller and chip-to-chip interface technologies. 
  • Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof (2010) USITC Inv. No. 337-TA-752 - Representing complainant Motorola to assert the infringement of six patents related to gaming devices. The matter involves all US Xbox sales by Microsoft and is currently in the post-hearing phase, awaiting the initial determination.
  • Certain Mobile Devices And Related Software (2010) USITC Inv. No. 337-TA-750 - Representing respondent Motorola, a leader in the telecommunications industry, against allegations by Apple, Inc. of patent infringement with regard to smart phone devices. A final decision is expected May 14, 2012.
  • Certain Wireless Communication Devices, Portable Music And Data Processing Devices, Computers and Components Thereof (2011) USITC Inv. No. 337-TA-745 – Representing complainant, Motorola Mobility, Inc., to assert the infringement of nine patents related to smart phone devices against Apple, Inc.  Awaiting the initial determination.
  • Certain Mobile Devices, Associated Software, and Components Thereof (2010) USITC Inv. No. 337-TA-744 - Represented respondent Motorola Mobility, Inc., a leader in the telecommunications industry, against allegations of patent infringement on nine smart phone patents brought by Microsoft Corporation.  Microsoft withdrew two of the patents prior to the hearing in recognition of Motorola’s defenses.   An initial determination made by the Administrative Law Judge held that Motorola’s products did not infringe six of the seven remaining Microsoft’s patents. A final decision is expected by April 20, 2012.
  • Certain MLC Flash Memory Devices and Products Containing Same (2009) USITC Inv. No. 337-TA-683 – Represented respondents Sony Corporation and Sony Electronics Inc. in an action involving certain flash memory devices including MP3 players, solid state flash drives, digital video cameras, cellular telephone handsets, and flash memory cards.
  • Certain Cold Cathode Fluorescent Lamp ("CCFL") Inverter Circuits and Products Containing Same (2009), USITC Inv. No. 337–TA–666 – Represented respondent Microsemi Corporation against claims by O2 Micro International Ltd. and O2 Micro Inc. that a violation of Section 337 existed based on infringement of one or more claims of four patents. The investigation was terminated as to Microsemi Corporation following a finding of no violation.
  • Certain Semiconductor Integrated Circuits and Products Containing Same (2008), USITC Inv. No. 337-TA-665 – Represented respondent Seagate Technology against allegations by Qimonda AG of patent infringement with regard to semiconductor integrated circuit chips and downstream products containing those chips. The ITC found in Seagate's favor that the patents were invalid, not infringed and that Qimonda had no domestic industry. In a Rule 36 affirmance, the Federal Circuit rejected Qimonda AG's appeal and affirmed the ITC's ruling that found Seagate and LSI did not infringe Qimonda AG's patents and that Qimonda did not have a domestic industry.
  • Certain Flash Memory Chips and Products Containing Same, (2008), USITC Inv. No. 337-TA-664 – Represented respondents Sony Corporation and Sony Corporation of America against allegations by Spansion, Inc. of patent infringement by Sony products incorporating flash memory devices (e.g., USB flash drives, personal computers, MP3 players, etc.).
  • Certain Tunable Laser Chips, Assemblies and Products Containing Same (2008), USITC Inv. No. 337-TA-662 – Represented complainant JDS Uniphase Corporation, a California-based company and leading provider of optical products for the telecommunications industry, to assert the infringement of patents involving tunable laser chips used to transmit optical data signals at various wavelengths. Case was terminated based on settlement agreements with the respondents taking limited licenses.
  • Certain Prepregs, Laminates, and Finished Circuit Boards (2008), USITC Inv. No. 337-TA-659 – Represented respondent Guangdong Shengyi Sci. Tech Co., Ltd. against allegations from complainant Isola USA Corporation, of patent infringement involving a process for manufacturing the base materials for printed circuit boards (PCBs), used to direct electrical signals in advanced electrical equipment. The complaint was withdrawn after all respondents except Shengyi signed consent orders or settlement agreements. Shengyi remained free to continue selling its products.
  • Certain Variable Speed Wind Turbines and Components Thereof (2009), USITC Inv. No. 337–TA–641 – Represented respondents Mitsubishi Heavy Industries, Ltd., et al., in an action involving three patents owned by General Electric on wind turbines. The ITC found in Mitsubishi's favor that the patents were not infringed and that there was no domestic industry and that one patent lacked proper inventorship.
  • Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same (2008), USITC Inv. No. 337 – TA – 640 – Represented Toshiba Corporation against allegations of patent infringement involving a process for making wide-band gap semiconductors capable of emitting certain wavelengths of light. Many respondents settled; however, the complaint against Toshiba was withdrawn just prior to trial.
  • Certain Hard Disk Drives, Components Thereof, and Products Containing the Same (2007), USITC Inv. No. 337–TA–616 – Represented respondent Toshiba America Information Systems against allegations of patent infringement for a process involved in making hard disk drives. The complaint was withdrawn by the complainant prior to trial.
  • Certain Buffer Systems and Components thereof used in Container Processing Lines (2007), USITC Inv. No. 337-TA–609 – Represented KHS USA, Inc. and KHS AG against allegations of patent infringement involving a patent on accumulation or buffer tables used as a component of bottling plant conveyor systems. The investigation was terminated based on a settlement and license agreement entered into by KHS.
  • Certain Endoscopic Probes for Use in Argon Plasma Coagulation Systems (2006), USITC Inv. No. 337–TA–569 – Represented respondents Canady Technology LLC and Canady Technology Germany GmbH against allegations of patent and trademark infringement with regard to medical devices. After trial, the complainant's patent was found not to be infringed by Canady and there was also a finding of no domestic industry. The ALJ thus found no violation and this decision was affirmed by the Commission. The Commission decision was affirmed on appeal by the Federal Circuit.
  • Certain Foam Footwear (2006), USITC Inv. No. 337–TA–567 – Represented respondent Australia Unlimited against allegations of trade dress and design patent infringement related to foam shoes. Succeeded in having trade dress allegations dismissed and negotiated a settlement based on cross-licensing of design patents.
  • Certain Devices for Determining Organ Positions and Certain Subassemblies Thereof (2005), USITC Inv. No. 337–TA–555 – Represented Resonant Medical Inc. in this matter involving alleged patent infringement. Investigation terminated on the basis of a settlement agreement which permitted a start-up company respondent to continue selling the accused complex medical device.
  • Certain Laminated Floor Panels (2005), USITC Inv. No. 337–TA–545 – Achieved a 337 victory for Yekalon Industry, Inc., in this wood flooring investigation. The Administrative Law Judge found that the new product design developed by the Steptoe team with the client during the early part of the investigation did not infringe the three patents. This non-infringing product allowed Yekalon to continue selling in the US market when other respondents’ products were excluded.
  • Certain Weather Stations and Components Thereof (2005), USITC Inv. No. 337–TA–537 – Successfully defended respondent Hideki Electronics in this patent-based investigation, which was terminated due to a withdrawal of the complaint.
  • Certain Digital Image Storage and Retrieval Devices (2004), USITC Inv. No. 337–TA–527 – On behalf of complainant, Ampex Corp., obtained an initial licensing fee of $40 million, and an agreement for continuing licensing payments from Sony Corp., settling ITC action and federal court suit over digital camera image-related patents. An additional complaint against Sanyo on the same patents was settled by Sanyo taking a license prior to institution of the investigation.
  • Certain Point of Sale Terminals and Components Thereof (2004), USITC Inv. No. 337–TA–524 – Represented respondent Lipman USA and Lipman Electronic Engineering against allegations of patent infringement on point of sale terminals (e.g., for swiping credit cards). Succeeded in forcing patent owner to withdraw complaint and persuaded the Administrative Law Judge to issue a seven figure sanction against the complainant.
  • Certain Ink Markers and Packaging Thereof (2004), USITC Inv. No. 337–TA–522 – Obtained a general exclusion order for all ink markers and packaging that infringe or are confusingly similar to Sanford’s trademarks or trade dress for SHARPIE® ink markers.
  • Certain Automotive Measuring Devices, Products Containing Same, and Bezels for Such Devices (2004), USITC Inv. No. 337–TA–494 – Represented respondents American Products Company, Inc., Equus Products, Inc., GR Motorsports, Inc., and Hiper Industries, Inc. against claims of registered trademark infringement, common law trademark infringement, and trade dress infringement by Auto Meter Products, Inc. Succeeded in having the investigation terminated as to these respondents based on settlement agreements. A limited exclusion order and cease and desist orders were issued against the remaining respondents.
  • Certain Bearings and Packaging Thereof (2003), USITC Inv. No. 337–TA–469 – Represented SKF USA in this investigation related to alleged infringement of registered and common law trademarks, dilution of trademarks, and various acts in violation of the Lanham Act. 

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