Practice Areas & Industries: Eversheds Sutherland (US) LLP


ITC Section 337 Litigation Return to Practice Areas & Industries

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Sutherland attorneys have an extensive track record of defending clients in the fast growing, fast-moving area of ITC Section 337 actions.

The International Trade Commission has ramped up investigations under Section 337 of the Tariff Act of 1930—significantly increasing the number of investigations it has launched over the past five years. Sutherland attorneys are a step ahead of the trend, ready to assist clients in this fast-growing challenge. Under Section 337, the ITC polices imported goods that infringe patents, trademarks or copyrights, or otherwise represent unfair competition. When companies are named in Section 337 litigation, they must contend with complex issues on a fast timeline. They need lawyers who can hit the ground running, understand the technical issues and are not afraid to litigate.

The Sutherland Intellectual Property Litigation team has a proven ability to guide clients successfully through ITC cases. For inexperienced companies, the pace of ITC investigations can be overwhelmingly fast. The timelines are far more compressed than typical federal litigation. Before requesting an investigation of an importer alleging Section 337 violations, the complainant has to undertake a great deal of research. As a result, companies named in a complaint are inherently a step behind and must get up to speed quickly.

And the stakes are high. ITC Section 337 investigations can have far-reaching effects, including barring whole classes of products from importation into the U.S. if they infringe. Since these types of investigations name manufacturers and customers as respondents, they threaten to interrupt normal business operations. The ITC also has the authority to issue a general exclusion order barring all imports of an infringing item, even by importers that are not parties to the investigation. With so much on the line, clients turn to Sutherland to find attorneys with IP knowledge and relevant experience.

Why Sutherland
Agility. ITC procedures have much shorter deadlines than court cases. Sutherland’s IP Litigation team can quickly get up to speed, ensuring that our clients have as much time as possible to develop and implement the best strategy for each matter.

We staff cases leanly, so matters can proceed quickly and cost-effectively.

Technical know-how. Many of our IP lawyers have specialized and advanced degrees in electrical engineering, computer engineering, mechanical engineering, chemical engineering, chemistry, molecular genetics, medicine and other scientific disciplines. We understand the technical aspects of our clients’ products, allowing us to advocate effectively.

A team approach. At Sutherland, we coordinate efforts between litigators and prosecutors, so we can spot issues and react quickly under the compressed time pressures of ITC Section 337 litigation. We identify all infringement and potential invalidity scenarios and respond thoroughly.

Deep familiarity with the ITC processes. For complainants, ITC investigations can be less expensive than traditional lawsuits, while burdening those being investigated. Sutherland attorneys know how the process works and what strategies complainants utilize, and can respond appropriately.

Willingness to fight for clients. ITC decisions can be difficult to overturn on appeal, proceedings are expedited, and discovery can be quick and broad, which often pressures respondents to settle. Sutherland attorneys have a great deal of litigation experience and are ready to do what it takes to meet the client’s business needs.

Nuts and Bolts
Sutherland guides clients through every step of the ITC Section 337 litigation proceeding’s fast-paced process, including:

  • Responding to complaints within the 20-day window
  • Investigating and evaluating claims and possible defenses
  • Developing an overall strategy for the case, including whether to seek a settlement
  • Conducting pre-hearing discovery
  • Representing clients during the hearing before the ITC Administrative Law Judge
  • Petitioning for Commission review of Initial Determination, when necessary
  • Working with clients to appeal cases to the U.S. Court of Appeals for the Federal Circuit, when appropriate

Take Action
Companies importing goods into the United States are more frequently finding themselves litigating at the ITC. Through our combination of deep technical knowledge and extensive industry experience, Sutherland’s IP litigators give our clients a competitive advantage in litigating ITC Section 337 disputes.

Selected Experience
Sutherland successfully appeals patent infringement case in U.S. Court of Appeals for the Federal Circuit.
Sutherland represented General Protecht Group, an international electronics manufacturer, in its appeal of an ITC exclusion order, which the U.S. Court of Appeals for the Federal Circuit reversed after concluding that the client’s products did not infringe the asserted patents. Sutherland also obtained a U.S. Customs ruling that the client’s new product did not infringe those patents, clearing the product for import while the appeal was pending and while the ITC finally rescinded the exclusion order post-appeal.

Won a four-week ITC Section 337 parallel import trial on behalf of Bearings Limited, Inc., an importer/wholesaler.
Represented Bearings Limited, Inc., an importer/wholesaler, in a Section 337 trademark infringement action before the ITC. After a four-week trial and a remand for further fact finding, the ITC issued its determination finding no violation of Section 337 by our client and the other respondent importers. This is believed to be the first time that importers have ever prevailed in a Section 337 parallel import case at the ITC.

Articles Authored by Lawyers at this office:

Revised 2017 Antitrust Guidelines for IP Licensing; Qualcomm Ensnared in New Antitrust Suits for Licensing Activities
Ann G. Fort,Robert R.L. Kohse, January 20, 2017
On January 12, 2017, the U.S. Department of Justice and the Federal Trade Commission issued updated “Antitrust Guidelines for the Licensing of Intellectual Property” for the first time since 1995. The updated Guidelines are intended to play a fundamental role in the agencies’...

A Smaller Bite for Apple? Supreme Court Limits Damages for Design Patent Infringement
Ann G. Fort,Anna C. Halsey, December 09, 2016
In a case reversing a $399 million damages award to Apple, the U.S. Supreme Court has held unanimously that an “article of manufacture” under the design patent damages statute can be anything from an entire product to a single component of a multi-component product. The decision made...

Going Au Naturel: New York Federal Judge’s Recent Decision Represents the Increasing Class Action Litigation Risks of “Natural” Product Labels
Melissa A. Conrad-Alam,Ann G. Fort,Gregory S. Kaufman,Ronald W. Zdrojeski, October 04, 2016
In today’s competitive food and beverage industry, product labeling plays a significant role in marketing. Labels touting a product’s “natural” ingredients or health benefits allow manufacturers to charge a premium for their product and capture market share. Natural product...

EU Leaders Approve EU-U.S. Privacy Shield
, July 14, 2016
The European Union’s (EU) Article 31 committee, which is made up EU member states, has voted to approve the EU-U.S. Privacy Shield. This Trans-Atlantic Privacy Shield data transfer procedure replaces the safe harbor data transfer arrangement that was struck down by the European Court of...

Brexit Impact on European Patents and Trademarks
Karissa F. Blyth,Peter G. Pappas, June 24, 2016
On June 23, in the popularly-termed “Brexit” referendum, the United Kingdom voted to exit the European Union, a decision which will have wide-ranging effects, including potential effects on intellectual property rights in the UK.

Solidifying Claim Construction in Inter Partes Review - Cuozzo Allows Patent Office to Govern the Inter Partes Review Process
Karissa F. Blyth,Ann G. Fort,Robert R.L. Kohse,Peter G. Pappas, June 23, 2016
On June 20, the U.S. Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 2016 WL 3369425 (June 20, 2016) upheld the Patent Office’s long-held policy of construing a patent claim according to its broadest reasonable construction even in review and also barred judicial...

Righting Copyright Wrongs Remains Elusive - Kirtsaeng Leaves Fee Awards to District Court Discretion
Ann G. Fort,James H. Johnson,Robert R.L. Kohse,Peter G. Pappas,Daniel J. Warren, June 17, 2016
On June 16, the U.S. Supreme Court’s decision in Kirtsaeng v. John Wiley & Sons Inc., No. 15-375, resolved a circuit court split by reaffirming the test district courts should use to determine whether to award attorney’s fees to the prevailing party in copyright litigation. The...

Stay Out of the Weeds: Egregious, Not Garden-Variety, Patent Infringement Is Subject to Enhanced Damages
Ann G. Fort,Walter S. Freitag,Robert R.L. Kohse,Peter G. Pappas,William L. Warren, June 15, 2016
On June 13, the U.S. Supreme Court unanimously rejected the Federal Circuit’s rigid two-part test for awarding enhanced damages in patent cases. In two cases decided together, Halo Elecs., Inc. v. Pulse Elecs., Inc., and Stryker Corp. v. Zimmer, Inc., the Court found that the Federal...

Implementing the Whistleblower Immunity Notice Provision under the Recently-Enacted Federal Defend Trade Secrets Act
Ann G. Fort,Matt Gatewood,Peter G. Pappas,William L. Warren,Gail L. Westover, May 20, 2016
The Defend Trade Secrets Act, signed into law on May 11, 2016, includes a whistleblower immunity notice provision. An employer that wants to preserve maximum recoveries for misappropriation against an employee should take action now.

UPDATE: Federal Defend Trade Secrets Act Signed Into Law; Employers May Need to Notify Employees
Ann G. Fort,Matt Gatewood,Peter G. Pappas,William L. Warren,Gail L. Westover, May 13, 2016
After overwhelming passage in both the House and Senate, President Obama signed the Defend Trade Secrets Act into law on April 11, 2016. The Act provides a truly uniform, nationwide set of standards for protecting trade secrets, plus a private right of action to sue in federal court. By creating a...

UPDATE: Federal Defend Trade Secrets Act Clears the House, Passage into Law Expected
Ann G. Fort,Matt Gatewood,Peter G. Pappas,William L. Warren,Gail L. Westover, April 28, 2016
As expected, overwhelming support for the Defend Trade Secrets Act of 2016 led to its passage in the U.S. House of Representatives yesterday by a 410-2 vote. During the floor debate, one Congressman noted that “Congress has the responsibility to give industries the tools they need to protect...

Federal Defend Trade Secrets Act Clears the Senate: Is the Uniform Act on Life Support?
Ann G. Fort,Matt Gatewood,Peter G. Pappas,William L. Warren,Gail L. Westover, April 12, 2016
The U.S. Senate has unanimously approved a bill increasing the protections available to companies for their commercial secrets. The Defend Trade Secrets Act of 2016 (DTSA or the Act) provides for the first time a truly uniform, nationwide set of standards protecting trade secrets, plus a private...

Panama Papers Leak 11.5 Million Documents, Exposing Public Officials
, April 11, 2016
On Sunday, April 3, 11.5 million confidential documents exposing a widespread system of global tax evasion were made public as a result of a hack. The documents, which were records of the Panamanian corporate service provider and law firm Mossack Fonseca, were obtained by an anonymous source,...

EU-U.S. Privacy Shield - Full Text Released
Daniel E. Frank,Mark D. Herlach,Brian M. Murphy,Robert D. Owen,Brian L. Rubin, March 08, 2016
On February 29, 2016, the European Commission released the text of the EU-U.S. Privacy Shield. The text reveals the details of a new framework that will place stronger obligations on U.S. companies to protect the personal data of EU citizens. It will also involve heightened compliance requirements...