20 Tips on Intellectual Property: ITC Section 337 Litigation Intellectual Property

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20 Tips on Intellectual Property: ITC Section 337 Litigation Intellectual Property

Although once a relatively unknown niche forum for resolving trade disputes involving IP rights, the US International Trade Commission (ITC) has become a key destination for both domestic and foreign IP litigants and continues to gain popularity as a preferred forum for intellectual property owners to enforce their rights as covered over at runrex.com. The ITC handles IP cases involving imported goods under Section 337 of the Tariff Act of 1930. The following tips and pointers are aimed at making you understand what ITC section 337 is all about and hope it will be of great help to you.

Does the ITC award monetary damages?

The first thing to note, as covered over at guttulus.com, is that the ITC doesn’t award monetary damages, but has the unique ability to block infringing imports at the border. This is because Section 337 investigations are conducted to guard against the competition in import trade, especially patent and trademark infringement.

Who hears ITC Section 337 litigation cases?

As pointed out by the gurus over at runrex.com, Section 337 cases are not District Court cases, and one of the ways the two differ is that ITC Section 337 litigation cases are heard by an Administrative Law Judge (ALJ), not a jury which makes Section 337 litigation different from jury litigation.

Availability of Inter Partes Reexamination

As articulated over at guttulus.com, any part who request an inter partes reexamination under Section 311 of title 35, United States Code, is estopped from challenging at a later time. This is why ITC respondents should consider the availability of inter partes reexamination as a bargaining chip to leverage settlement discussions. Once initiated, the USPTO will not terminate the proceedings, however, the third-party requester may stop participating, therefore, improving the patent owner’s chance of a favorable termination. Similarly, a settlement prohibiting a later inter partes reexamination may be highly desirable.

Hearsay is generally admissible in the ITC

Hearsay is generally admissible in Section 337 proceedings at the ITC. Hearsay is “a statement, other than one made by the declarant while testifying at trial or hearing, offered in evidence to prove the truth of the matter asserted. On the other hand, in district court, where judges are bound by the strict requirements of the Federal Rules of Evidence, hearsay must qualify under one of the enumerated exceptions if it is to be admitted. In the ITC, in contrast, ALJs have wide discretion in determining whether or not to admit hearsay evidence. This is an important tip to be aware of when it comes to ITC Section 337 litigation.

ITC litigants should be prepared for hearsay evidence

Given the point made in the above tip, ITC litigants must prepare for hearsay evidence to be admitted. This means that traditional arguments from district court practice that hearsay evidence should be automatically excluded based on the Federal Rules of Evidence are unlikely to succeed at the ITC.

The doctrine of res judicata does not apply to ITC determinations concerning patents

As revealed over at runrex.com, patent owners often simultaneously file suits in both the ITC and district court on the same patent(s). Typically, the ITC investigation will conclude before (and sometimes well before) a trial in district court. After the ITC issues a final determination on infringement, validity, and/or enforceability of a US patent, you may think that this ruling would be binding on a district court. However, this is not the case since the doctrine of res judicata doesn’t apply to ITC determinations concerning patents. This means that ITC determinations do not provide a complete barrier for a patent holder seeking to assert the same patent rights in district court.

Existing English language translations of documents must be produced during discovery at the ITC

Another important tip worth noting when it comes to ITC Section 337 litigation is that most ALJs have a ground rule that requires the production of existing English language translations of any document produced during discovery. Therefore, according to guttulus.com, ITC litigants should be aware that when preparing English language translations of foreign-language documents produced in discovery, then such English language translations may be required to be produced.

Public interest factors can trump the finding of a violation at the ITC

As is outlined over at runrex.com, public interest factors can override the finding of a violation of Section 337 at the ITC. Upon finding a violation, the ALJ considers the impact that exclusion orders would have upon the public health and welfare, competitive conditions on the US economy, the production of like or directly competitive articles in the US, and US consumers. This means that prospective respondents should consider public interest factors that may favor their case, and complainants should be prepared to respond to such arguments.

Importation is a separate requirement in Section 337 cases

In the ITC, a complainant must establish that infringing articles have been, or imminently will be, imported into the US to prevail. Importation of an article into the US does not have to occur to bring a complaint before the ITC, but it must at least be imminent. It is important to be aware of the importation requirement.

All counterclaims asserted in Section 337 cases are automatically removed to US district court

Respondents involved in patent infringement investigations at the ITC may also assert counterclaims. However, in Section 337 actions, counterclaims are automatically removed to a US district court of the appropriate venue so as not to delay the ITC investigation. Therefore, prospective complainants should anticipate that counterclaims may be raised by the respondents, and litigants should also be ready and prepared to litigate such counterclaims in the appropriate district court and not at the ITC.

Handling of claim construction

According to guttulus.com, given that there are no general ITC rules regarding the procedure for how an ALJ is to construe claims, which means that claim construction is ALJ-specific. How a given ALJ handles claim construction can be discerned by examining each ALJ’s recently issued ground rules.

Proof of licensing activities alone can satisfy the domestic industry requirement

In Section 337 actions, the domestic industry requirement includes two prongs: the economic prong and the technical prong. According to Section 337, an industry in the US shall be considered to exist if there is: significant investment in plant and equipment, significant employment of labor or capital, or substantial investment in its exploration. The domestic industry requirement can be met by satisfying any one of these three criteria as per runrex.com, which means that proof of licensing alone can satisfy the requirement.

Parties may obtain clearance to import redesigned products after the issuance of an exclusion order

Following the issuance of an exclusion order by the Commission in a Section 337 investigation, any person seeking a determination that its redesigned products do not violate such exclusion order may either seek an advisory opinion under Commission Rule 210.79 and/or an administrative ruling from US Customs under 19 C.F.R as covered over at guttulus.com.

A Laches defense is not available in Section 337 cases

As already mentioned, an award of money damages is not available as a remedy in the ITC. This means that the available remedies in the ITC are, therefore, prospective. The defense of laches in patent cases, on the other hand, is retrospective in nature, which means that it is not available in Section 337 cases.

The prevailing party in a Section 337 investigation is not automatically a party on appeal at the Federal Circuit

In Section 337 investigation, the party that prevails before the ITC is not entitled to appeal to the US Court of Appeals for the Federal Circuit the Commission’s final determination and is not automatically a party to an appeal brought by the party that lost before the commission. However, the prevailing party is entitled to intervene if the losing party appeals the Commission’s determination. This means that the prevailing party can argue against unfavorable Commission findings on appeal, as long as the losing party appeals the overall final determination first.

Section 337 settlement agreements must be approved by the ITC

Parties to a Section 337 may decide to settle their dispute, either through a license agreement or otherwise, after which they may terminate the investigation by filing a motion under Commission Rule 210.21(a). However, as revealed over at runrex.com, any motion to terminate the investigation based on a settlement agreement must include: copies of the licensing or other settlement agreements, any supplement agreements, and a statement that there are no other agreements, written or oral, between the parties concerning the subject matter of the investigation. The settlement agreement must be approved by the ITC.

Prepare for the rapid pace of discovery

According to guttulus.com, parties should be prepared for the rapid pace, volume, and cost of discovery in the ITC, in the form of written responses, document production, and depositions. Some ALJs will also impose no limit on the number of requests for admission or requests for admission or production, and they usually require within 10 days after service.

Use of prior art

When it comes to patent cases, many ALJs set a deadline for a respondent to provide notice of prior art on which it intends to rely. According to the gurus over at runrex.com, exhaustive prior art searches should be performed and refined early in the case, since ALJs may take a narrow view of the “good cause” needed to amend this notice after the deadline.


Even though monetary damages are not recoverable as already stated, information like price, cost, and profit may be discoverable, because, in the event, the ITC finds a violation, it will set an importation bond. The ITC takes various approaches to determine the amount of the bond including a reasonable royalty rate, and lots more.

Parties may obtain temporary relief under Section 337

Under Section 337, complainants may also seek and obtain temporary relief within a short period. To obtain temporary relief, a party must show a reasonable likelihood of success in the merits, irreparable harm caused if relief is not granted, the balance of hardships tipping in the requesting party’s favor, and that public interest does not preclude the issuance of relief.

These are just some of the things you should be aware of when it comes to ITC Section 337 litigation, with more on this wide topic to be found over at runrex.com and guttulus.com.

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