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Patent Litigation - ITC Section 337

An important forum for IP disputes

Once a relatively unknown niche forum for resolving trade disputes involving intellectual property (IP) rights, the U.S. International Trade Commission (ITC) has become a key destination for both domestic and foreign IP litigants. Many of the highest profile IP disputes now include proceedings before the ITC. Since ITC cases go to trial faster than cases tried in almost any other forum in the world, they can be the first to be resolved in multiforum disputes and often spearhead resolution of the other related cases. Finnegan was litigating IP cases at the ITC long before it became the popular forum it is today, and we have continued to litigate there every day.

Complex technology, law, and procedures

The ITC handles IP cases involving imported goods under Section 337 of the Tariff Act of 1930. Ninety percent of Section 337 cases involve patent infringement disputes, and most of them concern complex technology. Section 337 cases can keep imported goods out of the U.S. market or preserve an importer’s continued access to U.S. consumers.

Litigating in the ITC presents a unique challenge—litigating a technologically complicated case in a short period of time, in a pressure-packed forum that can make or break the commercial success of the products at issue. Like U.S. district court patent infringement actions, Section 337 cases require a command of IP law. And since the vast majority of cases involve patent infringement, lawyers must have the scientific or technical background needed to efficiently and knowledgeably evaluate and present arguments on the key technological and legal issues that will drive the case. Further, a thorough understanding of the patent prosecution process that produced the patent(s) at issue is necessary.

Section 337 cases are not district court cases, and litigating Section 337 cases is not like litigating a jury case. Attorneys need a working knowledge of international trade law, the Administrative Procedure Act, the ITC’s Rules of Practice and Procedure, Customs procedures, and the prior decisions of the ITC and the U.S. Court of Appeals for the Federal Circuit related to these kinds of disputes. Domestic industry, importation, and remedy issues play no part in a district court case, but they are crucial in an ITC case. ITC cases have expedited schedules almost unprecedented in the United States, with the entire case—from the complaint, discovery, pretrial hearings, trial, and post-trial briefs to subsequent review by the Commission—typically happening within about 18 months. Presentation of evidence can be very different from district court, and what may persuade in one forum will fall flat in another. Finnegan attorneys have the critical combination of IP law experience, technical training, and specific ITC expertise that results in highly effective representation in these high-stakes specialized proceedings.

Unmatched experience

When competing to represent a client in a district court patent case, many lawyers tout their jury trial experience. And yet, less than five percent of district court patent cases go to trial; district court cases are more often won during the Markman and summary judgment proceedings. In contrast, at the ITC, summary determination is rare, and approximately 45 percent of Section 337 cases go to trial, all in front of an Administrative Law Judge (ALJ), not a jury. So when choosing a firm to litigate in the ITC, trial experience in the ITC is of paramount importance. ITC trials are different from district court jury trials in many ways, and the most experienced lawyers not only know about those differences, they exploit them to the client’s advantage.

In the past five years, Finnegan attorneys have been involved in 15 percent of Section 337 cases. More than 60 of the firm’s attorneys have litigated at the ITC. During the past two years, more than half of all ITC cases have involved electrical and IT-related technologies and semiconductors. Finnegan has more than 80 lawyers and nearly 20 professionals who have at least one degree in electrical engineering, computer science, or some other related form of specialized technology, and many of them have ITC experience. Finnegan also has practitioners with ITC experience in the chemical, pharmaceutical, and mechanical fields. Our attorneys have even tried ITC cases involving design patents and trademarks.

Of course, large-scale litigation often involves multiple proceedings. The patents at issue in ITC proceedings are often asserted in counterpart district court actions, where we call on our jury trial lawyers. The patents are also attacked in reexamination proceedings at the U.S. Patent and Trademark Office (USPTO). Reexaminations, as well as other new forms of post-grant proceedings, are regularly handled by our attorneys, many of whom are former USPTO patent examiners. And many ITC patent-related decisions are appealed. Finnegan’s trial teams are backed by one of the country’s leading appellate practices. Our attorneys have briefed and argued more cases before the Federal Circuit than any other law firm.

Global capabilities

ITC Section 337 cases involve the full range of formal discovery, motions, trial, and appeals, but with the added challenge of involving one or more international parties. Located in some of the world’s leading technology and business centers—London, Seoul, Shanghai, Taipei, and Tokyo—Finnegan’s international offices serve as valuable resources during multinational litigations, such as Section 337 investigations. We work with clients in real time, both around the clock and around the globe. We have dozens of professionals who are multilingual and have working knowledge of foreign cultures and business practices. Collectively, we have proficiency in nearly 20 languages, with particular fluency in Chinese, Japanese, Korean, French, German, and Spanish. Our ITC practice draws on these resources every day: documents are reviewed in their native language, depositions take place around the world, and our attorneys prepare witnesses for testimony that will be translated at trial.

  • Nearly 90 percent of Section 337 cases involve patent infringement disputes; most involve complex technology.
  • 18 months is the average time to reach a resolution, including complaint, discovery, pretrial hearings, trial, post-trial briefs, judge’s decision, and the ITC decision.
  • The ITC provides unique types of injunctive relief: “exclusion orders” that direct U.S. Customs and Border Protection to stop infringing products from entering the United States and “cease and desist” orders against named importers.
  • 60+ Finnegan lawyers have litigated at the ITC; many have litigated multiple cases.
  • Approximately 45% of ITC cases go to trial
  • Finnegan attorneys have been involved in 15% of Section 337 cases filed in the past five years.