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Section 337/ITC Litigation

Steptoe & Johnson LLP has a great deal of experience successfully representing both complainants and respondents in Section 337 investigations. Over the course of nearly 30 years, Steptoe attorneys have handled more than 85 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 in cases before the International Trade Commission (ITC). Steptoe has litigated a wide variety of unfair import cases under Section 337, including very complex matters that include every possible act that the ITC considers unfair.

Our Investigative Experience
As noted above, Steptoe attorneys have expertly handled a wide variety of cases—litigating many cases to final decisions, and settling and licensing many others, on terms favorable to our clients.  These cases have involved a wide range of alleged unfair important practices, including the following:

  • Patent infringement
  • Registered and common-law trademark infringement 
  • Trade dress misappropriation 
  • Copyright infringement 
  • Failure to mark country of origin 
  • False advertising 
  • False designation of origin 
  • False labeling 
  • Passing off 
  • Product disparagement
  • Tortuous interference with contractual relations 
  • Trade secret misappropriation

We have represented clients in investigations relating to all areas of unfair competition cases that have involved such diverse products as the following:

  • Automotive condensers
  • Digital image storage/retrieval devices
  • Watercraft and sports equipment 
  • Shoes 
  • Plasma display panels 
  • Chemical blends and products 
  • Flash memory circuits 
  • Computer equipment 
  • Fungicides 
  • Detectors and alarms 
  • Tools 
  • Machining components 
  • Automated fingerprint identification systems 
  • Tires 
  • Point-of-sale (POS) terminals 
  • Global positioning systems

Our attorneys boast considerable familiarity with the ITC; one has worked as senior investigative attorney and is on the Executive Committee for the ITC Trial Lawyers Association, the only association of attorneys dedicated solely to practice under Section 337. Another attorney served as president of the association for 2003-2004.

Our Section 337 practice is part of the firm’s International Trade Department and the Intellectual Property group in the Technology Department, which together include over 80 practitioners.

About Section 337
Under Section 337, companies obtain ITC orders that exclude from the United States imported products that are deemed to compete unfairly with the domestic industry. 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.

Noteworthy

Representative Matters

  • Certain Short-wave Length Light Emitting Diodes, Laser Diodes and Products Containing Same, USITC Inv. No. 337 – TA – Representation of Toshiba Corporation against allegations of patent infringement involving a process on making a wide-band gap semiconductor capable of emitting certain wave lengths of light. 
  • Certain Buffer Systems and Components thereof used in Container Processing Lines, USITC Inv. No. 337-TA-609. Representing KHS USA, Inc. and KHS AG against allegations of patent infringement involving a patent on an accumulation or buffer tables used as a component of bottling plant conveyor systems.  
  • Certain Hard Disk Drives, Components Thereof, and Products Containing the Same (2207), USITC Inv. No. 337-TA-616-Representing respondent Toshiba America Information Systems against allegations of patent infringement for a process involved in making hard disk drives.
  • Certain Endoscopic Probes for Use in Argon Plasma Coagulation Systems (2006), USITC Inv. No. 337-TA-569 - Representing respondents Canady Technology LLC and Canady Technology Germany GmbH against allegations of patent and trademark infringement with regard to medical devices.
  • 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 trademark 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 section 337 violations. Investigation terminated in its entirety on the basis of a settlement agreement between the complainants and sole respondent.
  • 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.
  • Certain Weather Stations and Components Thereof (2005), USITC Inv. No. 337-TA-537 – Successfully defended respondent Hidecki Electronics in this patent-based investigation, which was terminated due to a withdrawal of the complaint.
  • 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 patent owner.
  • 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 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 a an agreement for continuing licensing payments from Sony Corp., settling ITC action and federal court suit over digital camera image-related patents.
  • 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.
  • Certain Automotive Measuring Devices, Products Containing Same, and Bezels for Such Devices (2003 - present)
  • Certain Compact Disc and DVD Holders (2002)
  • Certain Abrasive Products and Processes for Making Same (2002)
  • Certain Organizer Racks and Products Containing Same (2001)
  • Certain Personal Watercraft and Components Thereof (2001)
  • Certain Plasma Display Panels and Products Containing Same (2000)
  • Certain Enhanced DRAM Devices Containing Embedded Cache Memory Registers, Components Thereof and Products Containing Same (1998)
  • Certain Acesulfame Potassium and Blends and Products Containing Same (1997)
  • Certain Transport Vehicle Tires (1997)
  • Flash Memory Circuits and Products Containing Same (1996-1997)
  • Audible Alarm Devices for Divers (1995)
  • Vehicle Security Systems and Components Thereof (1994)
  • Static Random Access Memories, Components Thereof, and Products Containing Same (Settlement Agreement 1993)
  • Integrated Circuit Telecommunication Chips and Products Containing Same, Including Dialing Apparatus (1993)
  • Dynamic Sequential Gradient Compression Devices and Component Parts Thereof (1992)
  • Condensers, Parts Thereof and Products Containing Same, Including Air Conditioners for Automobiles (1992)
  • Certain Internal Mixing Devices and Components Thereof (1992)
  • Certain Self-Inflating Mattresses (1990)
  • Certain Electric Power Tools, Battery Cartridges, and Battery Chargers (1990)
  • Concealed Cabinet Hinges and Mounting Plates (1989)
  • Noncontact Tonometers (1988)
  • Picture-In-A-Picture Video Add-On Products and Components Thereof (1987)
  • Battery-Powered Smoke Detectors (1987)
  • Garment Hangers (1987)
  • Miniature Hacksaws (1987)
  • Amorphous Metal Alloys and Amorphous Metal Articles (1987)
  • Certain Upper Body Protector Apparatus for Use in Motosports (1986)
  • Multi-Level Touch Control Lighting Switches (1986)
  • Certain Automatic Bowling Machine Printed Circuit Boards (1985)
  • Convertible Rowing Exerciser (1985)
  • Tennis Rackets (1984)
  • Certain Alkaline Batteries (1984)
  • Trolley Wheel Assemblies (1984)
  •  Composite Diamond Coated Textile Machinery Components (1984)
  • Poultry-Cut Up Machines (1984)
  • Minutiae-Based Automated Fingerprint Identification Systems (1984)
  • Copper-Clad Stainless Steel Cookware (1983)
  • Certain Caulking Guns (1983)
  • Heavy-Duty Staple Gun Tackers (1983)
  • Certain Cupric Hydroxide Formulated Fungicides and Cupric Hydroxide Preparations Used in the Formulation Thereof (1983)
  • Sneakers With Fabric Uppers and Rubber Soles (1983)
  • Certain Molded-In Sandwich Panel Inserts and Methods for their Installation (1982)
  • Large Video Matrix Display Systems and Components Thereof (1981)
  • Rotatable Photograph and Card Display Units and Components Thereof (1980)
  • Coat Hanger Rings (1980)
  • Surveying Devices (1980)
  • Airtight Cast-Iron Stoves (“Stoves I”) (1979)
  • High Voltage Circuit Interrupters and Components Thereof (1979)
  • Precision Resistor Chips (1979)
  • Thermometer Sheath Packages (1979)
  • Novelty Glasses (1979)
  • Apparatus for the Continuous Production of Copper Rod (1979)
  • Synthetic Gemstones (1979)
  • Flexible Foam Sandals (1979)
  • Combination Locks (1979)
  • Roller Units (1979)
  • Monumental Wood Windows (1979)
  • Luggage Products (1978)
  • Food Slicers (1978)
  • Skateboards and Platforms Therefor (1978)
  • Molded Golf Balls (1978)
  • Numerically Controlled Machining Center and Components Thereof (1978)
  • Light Shields for Sonar Apparatus (1978)
  • Dot Matrix Impact Printers (1978)
  • Steel Toy Vehicles (1978)
  • Display Devices for Photographs and the Like (1978)
  • Welded Stainless Steel Pipe and Tube (1978)
  • Chicory Root—Crude and Prepared (1977)
  • Exercising Devices (1977)
  • Color Television Receiving Sets (1977)
  • Reclosable Plastic Bags (1977)
  • Bismuth Molybdate Catalysts (1976)
  • Monolithic Catalytic Converters (1976)
  • Chain Door Locks (1976)
  • Doxycycline (1975)

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