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Section 337/ITC Litigation
In more than three decades of litigation before the International Trade Commission (ITC), our lawyers have produced successful results in more than 130 Section 337 cases (for both complainants and respondents). Steptoe’s Section 337 lawyers are consistently ranked by Chambers as leaders in International Trade, and the firm has been ranked as one of the most active law firms before the ITC according to ITC surveys by IP Law & Business and Corporate Counsel magazines. Intellectual Asset Management magazine calls our practice “a rare and winning combination of trade expertise, a deep bench of technically trained lawyers, adept IP litigators, and an international office network to ensure that all angles are covered.” Our cases have implicated the most complex technologies often involving more than a billion dollars in trade in a single case.
Understanding Our Clients’ Needs
Steptoe handles a wide variety of cases that all have two things in common: short time lines and interacting issues. By partnering with our clients we gain an understanding of the complex issues that they are trying to remedy through their Section 337 case, while providing them an understanding of the public policy and procedural issues that influence the ITC and United States Trade Representative, and the policy implications of each client’s particular case. To that end, we use all the resources of our firm to find the tipping point that leads to our gauge of success - obtaining a decision that meets our client’s business needs.
These resources include utilizing our robust experience in government affairs and in the ITC. Partners at Steptoe that are integral to the Section 337 practice have served as a Deputy US Trade Representative - the office designated with responsibilities for Presidential review of final affirmative Section 337 decisions - as members of the executive committee for the ITC Trial Lawyers Association (ITCTLA), and another as its former president. Other lawyers who practice with this group include a former administrative law judge at the ITC who presided over dozens of matters involving unfair trade practices and intellectual property rights in a variety of technologies.
With this experience - which is enhanced with the technical knowledge and litigation skills of the patent lawyers who form the core of our litigation teams - Steptoe has been able to structure compelling arguments for clients that present challenging cases. At times, our lawyers have recast arguments to make them more accessible to the singular requirements of the ITC, and to ITC Commissioners. At other times, when the public interest is considered, our government affairs group has been able to reach out to elected representatives to brief them about our matters, often with favorable results. In the example of a recent case, Steptoe was enlisted to defend a client that had suffered a ruling that declared that the client was in violation of Section 337. Our Section 337 lawyers were assisted by members of our government affairs and litigation groups in a multi-pronged effort to craft a rebuttal so compelling that the ITC not only reversed the initial ruling, but terminated further proceedings, resulting in a total victory for the client.
Our lawyers have experience with the entire range of unfair import practices including:
- Patent infringement
- Trademark and counterfeiting
- Copyright infringement
- Trade dress and trade secret misappropriation
- False labeling
- Steptoe completed a research project for the Chinese Ministry of Commerce (MOFCOM) that culminated in a handbook on trade secret investigations at the International Trade Commission. The handbook provides a business oriented guide for MOFCOM to use in teaching Chinese companies about trade secrets litigation and trade secrets misappropriation. It may also be used by MOFCOM to assist Chinese companies in responding to Section 337 investigations and US federal and state court litigation involving alleged trade secret misappropriation. (2014)
- Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software (2013), USITC Inv. No. 337-TA-882 - Representing LG Electronics against claims asserted by Black Hills Media, LLC alleging infringement of six patents involving digital media devices.
- Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (2013), USITC Inv. No. 337-TA-874 – Representing respondent Moët Hennessy USA, Inc. in a patent infringement investigation brought by Lamina Packaging Innovations, LLC regarding the use of laminated packaging for Dom Perignon and Moët Chandon products.
- Integrated Circuit Devices and Products Containing the Same (2013), USITC Inv. No. 337-TA-873 - Representing respondent LG Electronics in a patent infringement matter brought by Tela Innovations, Inc. The complaint names ten respondents and alleges infringement of seven patents involving advanced integrated circuit manufacturing processes.
- Cases for Portable Electronic Devices (2012), USITC Inv. No. 337-TA-861 - Represented named respondent AliBaba in a patent infringement investigation brought by Speculative Product Design, LLC. The complaint sought a general exclusion order barring the importation and sale of one-piece protective cases for portable handheld electronic devices. Alibaba was withdrawn from the complaint prior to the institution of the investigation.
- Certain Sintered Rare Earth Magnets, Methods of Making Same and Products Containing Same (2012), USITC Inv. No. 337-TA-855 - Represented Dura Magnetics, Inc. in an investigation brought by Hitachi Metals against 29 respondents claiming infringement of four US patents related to the manufacture of sintered rare earth magnetics. The investigation was terminated as to Dura Magnetics based upon the entry of a consent order and settlement agreement.
- Certain Wireless Consumer Electronics Devices and Components Thereof (2012), USITC Inv. No. 337-TA-853 - Representing respondents Huawei Technologies Co., Ltd., Huawei Device Co., Ltd., Huawei Device USA Inc., and Futurewei Technologies, Inc. (collectively, Huawei) in a patent infringement ITC investigation brought by Technology Properties Limited LLC (TPL). The complaint asserts infringement of US Patent No. 5,809,336 (the ’336 patent) involving certain hardware used in a broad range of devices, including wireless consumer electronics devices that incorporate microprocessors, memory and/or input/output interfaces that enable connectivity. TPL has accused several Huawei smartphones and one tablet of infringing the ‘336 patent. On September 6, 2013, ALJ E. James Gildea issued an Initial Determination finding that Huawei has not infringed the asserted patent. This investigation is related to a district court action brought by TPL against Huawei Technologies Co., Ltd. in the Northern District of California (4:12-cv-03865) which also involves the ‘336 patent. The district court action is currently stayed until the determination of the ITC becomes final, including any and all appeals.
- Certain Integrated Circuit Packages Provided With Multiple Heat-Conducting Paths and Products Containing Same (2012), USITC Inv. No. 337-TA-851 - Represented LG Electronics in a patent infringement investigation brought by ITRI alleging LG’s LCD televisions contain integrated circuit packages provided with multiple heat-conducting paths that infringe one or more claims of the asserted patent. ITRI withdrew their complaint and requested that the ITC terminate the investigation. The complainant also indicated that it would not refile the case at the ITC.
- Certain Radio Frequency Integrated Circuits and Devices Containing Same (2012), USITC Inv. No. 377-TA-848 – Representing respondent Motorola Mobility Inc. in a patent infringement matter brought by Peregrine Semiconductor involving five US Patents related to technology used to significantly improve the vocal and linearity performance in radio frequency switch products, specifically mobile handset devices, such as the Droid Razr and Droid Bionic.
- Certain Products Containing Interactive Program Guide and Parental Control Technology (2012), USITC Inv. No. 337-TA-845 – Represented Mitsubishi Electric against allegations of infringement of three US patents relating to interactive program guides and parental control technology contained in certain products such as digital televisions. The case settled favorably.
- Certain Mobile Electronic Devices Incorporating Haptics (2012), USITC Inv. No. 337-TA-834 – Representing respondent Motorola Mobility, Inc. against allegations of patent infringement by Immersion Corporation. The six US patents at issue relate to the incorporation of haptic feedback technology in mobile electronic devices, including cellular phones and smartphones.
- Certain Automotive GPS Navigation Systems, Components Thereof, and Products Containing The Same (2011), USITC Inv. No. 337-TA-814 – Represented 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 related to Global Positioning System (GPS) technology. Beacon Navigation GmbH was seeking exclusion of cars containing infringing automotive GPS units from the United States, which could have affected up to thirty percent of our clients’ US business. After we notified the complainant of an intent to file a motion regarding discovery related to licensing and its domestic industry allegations, complainant withdrew its complaint and the investigation was terminated.
- Certain Devices for Improving Uniformity Used in a Backlight Module and Components Thereof and Products Containing The Same (2011), USITC Inv. No. 337-TA-805 – Represented LG Electronics and LG Displays respondents against allegations from complainants Industrial Technology Research Institution and ITRI International Inc. (ITRI) regarding infringement of its patent for LCD backlight technology. ITRI contended that LG’s LCD televisions and monitors had infringed its patent for an apparatus that it claimed ensures a backlight produces uniform illumination. The investigation went to trial in July 2012 and the ALJ issued his Initial Determination in October 2012 finding noninfringement and no domestic industry. In May 2013, the Commission affirmed Judge Essex’s construction of the patent claim terms in dispute, and also affirmed, with minor modification, Judge Essex’s findings of noninfringement and lack of a domestic industry, as well as Judge Essex’s ruling that the asserted patents claims are invalid as anticipated by prior art.
- Certain Electronic Digital Media Devices and Components Thereof (2011), USITC Inv. No. 337-TA-796 – Represented 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 – Represented 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 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 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 Mobility, Inc. to assert infringement of six patents owned by Motorola against Microsoft Corporation’s Xbox gaming devices, related software, and components. The Administrative Law Judge’s Initial Determination found a violation based on infringement by Microsoft’s Xbox gaming devices of four of the asserted patents. The ALJ recommended that the Commission issue a limited exclusion order, precluding Microsoft from importing into the United States the infringing Xbox gaming devices, associated software, and components thereof. The ALJ also recommended that the Commission issue a cease-and-desist order precluding Microsoft from undertaking domestic activities with respect to the infringing products. The Commission may review the Initial Determination and recommendations and will issue a Final Decision later this year.
- 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. The ALJ issued an initial determination finding that Motorola's Android-based mobile devices did not infringe the asserted claims of two of Apple’s three patents. The ALJ also found two of Apple's patents to be invalid and found no domestic industry with respect to two patents. The Commission reviewed, clarified, and affirmed each of the ALJ’s initial determinations.
- Certain Wireless Communication Devices, Portable Music And Data Processing Devices, Computers and Components Thereof (2010), 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.
- 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 with respect to nine patents owned by Microsoft Corporation. Microsoft withdrew its allegations as to two of the patents-in-suit prior to the evidentiary hearing in recognition of Motorola’s defenses. An Initial Determination issued by the Administrative Law Judge subsequently held that Motorola’s products did not infringe six of the seven remaining Microsoft patents. The Final Decision of the Commission affirmed the outcome of the ALJ’s Initial Determination, finding non-infringement of six patents and a violation based on one patent pertaining to ActiveSync exchange protocols relating to Outlook calendar meeting requests.
- 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 (2008), 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 respondent 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 – Represented Yekalon Industry, Inc. in a successful Section 337 investigation involving wood flooring. 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 –Represented respondent Hideki Electronics in a 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 – Represented complainant Ampex Corp. Steptoe 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 – Represented Sanford in a patent infringement investigation, and 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.
- Ranked, Chambers USA 2009 - 2014 — International Trade: Intellectual Property; Section 337 (Nationwide)
- Ranked, Legal 500 US 2012 — Patent Litigation: International Trade Commission
- Ranked, Chambers Asia-Pacific 2010 - 2012 — International Trade: International Firms
- Ranked, Chambers Global 2010 - 2013 — International Trade: Intellectual Property; Section 337 (US)
- Steptoe ranked among law firms with the most new cases at the ITC in 2011 by Corporate Counsel
- Steptoe ranked among law firms with the most new cases at the ITC in 2008 by IP Law & Business
- Steptoe cited as a leader in 337 litigation in New Math: More Foreign Companies Take Advantage of the ITC, June 2006, IP Law & Business
Select News & Events
- Steptoe Receives 77 Individual Mentions in Best Lawyers 2015
- Steptoe Receives 20 Practice, 59 Individual Mentions in Chambers USA 2014
- Law360 Names Steptoe International Trade Group of the Year for Fourth Year
- Steptoe Receives 80 Individual Mentions in Best Lawyers 2014
- Speaker, “Recent Changes in the Domestic Industry Requirement at the ITC”
- “Litigating Trade Secrets at the ITC,” In-House Counsel Forum, Spring Academy
- Speaker, “When to Initiate Settlement Discussions: Best Practices for Refining Your Internal Decision- Making Process, and Engaging in Mediation”
- Litigating Trade Secrets at the International Trade Commission
April 9, 2014