Litigation - ITC Section 337 Patent Litigation
An important court for global IP disputes
The globalization of business activity, coupled with rapid development of new technologies and new products, has created an unprecedented level of competition that often leads to international disputes over intellectual property rights. Many of these disputes are resolved at the U.S. International Trade Commission (ITC), where Finnegan litigates every day.
The ITC handles IP disputes involving imported goods under Section 337 of the U.S. Tariff Act. These cases have the potential to shut foreign competitors out of the U.S. market or to preserve an importer's continued access to U.S. consumers. Finnegan's combination of specific ITC litigation experience and deep technical expertise can provide the advantage needed to succeed in this specialized forum.
Complex technology, law, and procedures
Litigating in the ITC has a unique set of challenges—presenting technologically complicated cases in a court that can make or break the commercial success of the products at issue. Nearly 95 percent of Section 337 cases involve patent infringement disputes; most of which concern complex technology. Like U.S. district court patent infringement actions, Section 337 cases require a command of patent law, the scientific or technical background to efficiently and knowledgeably evaluate the technology or product, a working understanding of the patent prosecution process that produced the patents at issue, and the patent litigation experience to formulate strategy and focus judges on the essential issues. But Section 337 protects IP rights by providing an administrative remedy under a unique trade statute—so attorneys need a working knowledge of international trade law, the Administrative Procedure Act, the ITC’s Rules of Practice and Procedure, and the prior decisions of the ITC and the Federal Circuit related to these disputes. Additionally, the ITC usually operates under expedited schedules that may result in two-week trials on the merits in as few as 180 days from the outset of the case. Finnegan thrives in these high-stakes, technical, and specialized procedural cases.
Unmatched experience
ITC cases are 10 times more likely to go to trial than a district court patent infringement case. Thus, it is essential to have a firm with ITC trial experience to see clients through from beginning to end. ITC trials typically involve hundreds or even thousands of evidentiary exhibits, and direct testimony is often written instead of oral. The evidentiary record must be crafted to satisfy both the administrative law judge and the ITC commissioners who may later review and revise the decision. Only those litigants that are thoroughly prepared can demand the most favorable settlements on the courthouse steps or proceed with confidence to defend their rights at trial.
In the past five years, Finnegan attorneys have been involved in nearly 20 percent of Section 337 cases. More than 100 of the firm’s attorneys have litigated at the ITC, and seven of them previously worked at the ITC as either staff trial attorneys or advisors to the administrative law judges. Finnegan’s ITC practice draws upon all the firm’s practice groups—Electrical and Computer Technology, Biotechnology/Pharmaceutical, Chemical/Metallurgical, Mechanical, and Trademark—to forge litigation teams with the working knowledge of the law and technology necessary for success. During the past 10 years, more than half of all ITC cases have involved electrical and IT-related technologies and semiconductors. Finnegan has nearly 100 lawyers and another 40 professionals who have at least one degree in electrical engineering, computer science, or some other form of specialized IT 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 sometimes attacked in reexamination proceedings at the U.S. Patent and Trademark Office. This process is regularly handled by our patent prosecutors, many of whom are former PTO patent examiners. Those patents are often asserted in counterpart district court actions where we call on our jury trial lawyers. And nearly all 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 U.S. Court of Appeals for 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—Brussels, 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 more than 25 languages, with particular fluency in Chinese, Japanese, Korean, French, German, and Spanish. The ITC’s procedures put these resources to work 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.