MoFo@ITC
The following is an overview of a typical ITC investigation from start to finish.
Complaint and Pre-Institution
A Section 337 investigation is commenced when the complainant files a complaint with the Secretary of the ITC naming one or more respondents. During the three weeks after the filing of the complaint, attorneys at the ITC’s Office of Unfair Import Investigations (OUII) will review the complaint to determine if it complies with the ITC’s rules and sets forth the elements of a Section 337 claim in sufficient detail. OUII will then make a recommendation to the ITC’s six commissioners as to whether a Section 337 investigation should be instituted. Absent exceptional circumstances, the ITC decides whether to institute an investigation within thirty days of the filing of the complaint.
ITC complaints require more detailed allegations than complaints in district court. For instance, an ITC complaint should include a claim chart showing infringement by a representative product for each asserted independent patent claim. Before filing, complainants may submit their draft complaints in confidence to the OUII to obtain feedback regarding the form and sufficiency of the complaint.
The complaint and supporting documents must address the following key elements:
Importation
A complaint must include specific allegations regarding “[t]he importation into the United States, the sale for importation, or the sale within the United States after importation” of an infringing article by the respondent. 19 U.S.C. § 1337(a)(1)(B). Under Section 337, foreign manufacturers of infringing articles may be named as respondents even if those parties have no involvement in the actual importation. Imported “articles” under Section 337 refers to “material things” only, and not to electronic transmissions of digital data. ClearCorrect v. Intl. Trade Commn., 810 F.3d 1283 (Fed. Cir. 2015).
For purposes of the complaint, importation can be established by simply showing an instance of an article purchased in the U.S. that is marked as manufactured overseas. More complete evidence of importation can be obtained during discovery.
Unfair Act
The majority of Section 337 complaints are based on claims of patent infringement. However, Section 337 complaints may also be based on other types of “unfair acts,” including trademark infringement, copyright infringement, and misappropriation of trade secrets. For patents, Section 337 applies to imported articles that infringe an apparatus or method claim of a U.S. patent, or that are made by a process covered by a U.S. patent. Patent infringement claims at the ITC involve the same elements and defenses as in district court, including infringement, validity, and enforceability. The ITC follows the substantive patent law of the U.S. Court of Appeals for the Federal Circuit.
In a trade secrets investigation, a complainant must prove that the imported product arises from an unfair act or method of competition (e.g., trade secret misappropriation); there exists a U.S. industry that would be destroyed, substantially injured, or prevented from forming as a result of the unfair act; and a specific injury (or threat thereof) to the domestic industry. Currently, and in spite of the overall rise in trade secrets cases, only a small percentage of ITC investigations are based solely on trade secret misappropriation. However, companies looking to defend their trade secrets should consider the ITC as a potential venue, as it provides similar benefits as in a patent infringement investigation. In addition, unlike patent infringement determinations by the Commission, trade secrets decisions could be preclusive in a later district court action.
Domestic Industry
Relief under Section 337 is only available to entities that maintain (or are in the process of establishing) a U.S. domestic industry relating to the asserted IP rights. With respect to statutory IP rights:
- [A]n industry in the United States shall be considered to exist if there is in the United States, with respect to the articles protected by the patent, copyright, trademark, mask work, or design concerned—
- A. Significant investment in plant and equipment;
B. Significant employment of labor or capital; or
C. Substantial investment in its exploitation, including engineering, research and development, or licensing.
19 U.S.C. § 1337(a)(3). The domestic industry requirement focuses on the complainant’s activities in the United States pertaining to the asserted patents and is assessed in two parts:
1. The “technical prong” considers whether the complainant’s products practice the claims of complainant’s patents.
2. The “economic prong” considers whether the complainant has made significant and substantial investment in a U.S. domestic industry relating to the IP rights, including whether the complainant (or a licensee of the complainant) manufactures practicing products, conducts substantial engineering or research & development activities, or engages in substantial licensing activities in the United States. Sales and marketing activities do not qualify to satisfy the domestic industry requirement.
The domestic industry requirement focuses on investments made in the U.S., not on the citizenship of the complainant. Thus, foreign as well as domestic companies can satisfy the domestic industry requirement.
The factual development and analysis involved in establishing domestic industry is not trivial, either at the complaint stage or during the investigation. Declarations and supporting data are necessary and expert analysis and testimony is often involved.
Public Interest
Along with the complaint, the complainant must file a “statement of public interest” addressing how the requested relief “could affect the public health and welfare in the United States, competitive conditions in the United States economy, the production of like or directly competitive articles in the United States, or United States consumers.” 19 C.F.R. § 210.8(b).
In the few days following the publication of the complaint, proposed respondents and members of the public may submit comments relating to the public interest. The purpose of these submissions is to permit the ITC to consider whether it will order the ALJ to take evidence and to issue a recommended determination on the public interest.
Investigation Instituted
Within 30 days of the filing of the complaint, the ITC will vote on whether to institute an investigation. When an investigation is instituted, the Secretary of the ITC will publish a notice of institution in the Federal Register.
The Chief ALJ will assign an ALJ to adjudicate the case. The ALJ will issue ground rules governing discovery and other case proceedings, and issue a protective order providing for “attorneys’ eyes only” treatment of “confidential business information” (CBI). Each ALJ has his or her own unique ground rules that vary widely, including as to discovery dispute resolution, the type of briefing they permit, whether they hold Markman hearings, and the presentation of evidence at the hearing. The ALJ will often convene a preliminary conference with the parties to discuss case management issues, and issue a procedural schedule for the case. The procedural schedule will set a “target date” for completion of the investigation, typically 16 months after the investigation is instituted.
If OUII (also known as “Staff”) is named as a party in the investigation, one of its attorneys will participate in the litigation. The Staff attorney will participate in discovery, submit briefs weighing in on the issues raised in the parties’ motions and briefs, and participate at depositions and the evidentiary hearing. In recent years, Staff has been assigned to participate in approximately two-thirds of new Section 337 investigations. Because the Staff is a neutral third-party in the investigation, the ALJs may give more credit to Staff arguments than those of the other parties on some issues. Therefore, the parties often will make special efforts to communicate and cooperate with the Staff to test and develop their positions.
Discovery
Discovery begins immediately upon institution of the investigation. ITC litigants can use most of the same discovery mechanisms that are available in district court, including document requests, interrogatories, requests to admit, and depositions. Experts must submit reports and are subject to deposition.
Although discovery occurs in much the same way as in a federal district court case (with similar costs and effort), discovery in an ITC case is compressed into a period of just a few months, as compared to generally much longer timeframes in district court. Discovery responses are due 10 days after requests are served, which is significantly shorter than the 30 days permitted in district court. Discovery requests may be served and are often served on the day the Notice of Investigation is published in the Federal Register.
The ALJ's ground rules may set limits on discovery beyond those provided in the ITC's rules. The Commission and ALJs have sought in the past several years to limit the breadth of discovery (including limits on electronic discovery and subpoena practice) to curb the burden on the parties and bring ITC practice more in line with the Federal Rules of Civil Procedure. Fact depositions are limited by rule to 20 for complainant (or no more than 5 per respondent if that number is greater), 20 for respondents, and 10 for Staff. This compares to 10 depositions in district court. Interrogatory limits are set by rule at 175 interrogatories, compared to 25 in district court. As noted, however, the ALJ’s ground rules must always be consulted for additional limits and guidance. Subpoena practice has been drastically changed in recent years, placing more of the burden on the requesting party.
Claim Construction
In cases involving patents, the parties will most often exchange proposed constructions early in the case and usually submit Markman briefing concerning claim construction. Most of the ALJs hold Markman hearings. The ALJ may issue a ruling on claim construction prior to the evidentiary hearing, or may wait and include the claim construction rulings in the ALJ’s Initial Determination. In the latter case, the parties may need to argue their case under alternative constructions in their pre-hearing briefing and at the hearing itself. The ITC follows claim construction law as set down by the U.S. Supreme Court, the Federal Circuit, and district courts.
Early Resolution
The ITC provides multiple mechanisms for early resolution. Before institution, parties can request entry into the 100-day program for certain non-complex dispositive issues. Such requests should be limited to issues that are fully case-dispositive and not overly factually complex. Issues related to domestic industry and standing are often deemed too complex for resolution through the 100-day program. If the Commission orders a 100-day proceeding, then the ALJ will set a schedule to receive briefing and conduct an abbreviated hearing on the potentially dispositive issues and rule on them within 100 days of institution. Discovery on other issues in the investigation may or may not be stayed.
A proposed respondent can also request that an investigation not be instituted if a complaint fails to meet a requirement for stating a claim under Section 337, but such requests are rarely successful as the ITC is very permissive with the pleading requirements.
Under a new pilot program at the ITC, the parties may make a post-institution request for the ALJ to issue an interim initial determination (interim ID) on discrete issues that may be case-dispositive or dispose of significant parts of the case. Under this program, the ALJ would receive briefing and hold an evidentiary hearing on the discrete issues prior to the main evidentiary hearing. Issues for interim IDs could include infringement, invalidity, patent eligibility, standing, or domestic industry. The ALJ is authorized to stay discovery on other issues during the interim ID process. This pilot program was announced for investigations instituted on or after May 12, 2021, but has yet to be used in any investigation.
The ITC’s equivalent of a motion for summary judgment is a motion for summary determination, which must be filed at least 60 days before the evidentiary hearing. Parties may seek to resolve some or all of the issues in the case through summary determination, including issues such as importation and domestic industry. Unlike issues for the 100-day program or interim ID pilot program, issues resolved on summary determination are proper only if the moving party can show that there is no genuine issue as to any material fact and the issue can be resolved without an evidentiary hearing.
Other motions for termination are available before full resolution after a main evidentiary hearing. A party may move for termination on the basis of (1) withdrawal of the complaint; (2) settlement, a licensing agreement, or other agreements, such as an agreement to present the matter for arbitration; (3) a consent order; or (4) good cause.
Parties will also sometimes default by failing to respond to the complaint, failing to respond to discovery, or indicating their intent to default. A party found in default will be deemed to have waived its right to appear and may be subject to relief against it, including an exclusion order, cease and desist order, or both.
Evidentiary Hearing
For all issues not resolved through early resolution, the ALJ will conduct an evidentiary hearing, which is essentially a bench trial in which the ALJ receives evidence and hears witness testimony. Prior to the hearing, the parties will submit prehearing statements and briefs setting forth their positions on all contested issues. The pre-hearing statement/brief will include a witness list, exhibit list, stipulations, and arguments on the issues. The parties may also file motions in limine.
At the hearing, the parties often present short opening statements, followed by the presentation of witness testimony. Depending on the ALJ, direct witness testimony of some or all witnesses may be submitted in the form of written witness statements, with the presentation at the hearing limited to cross-examination. In some cases, the ALJ may permit closing arguments, but these are uncommon.
Following the hearing, the parties will submit detailed post-hearing briefs setting forth the evidence and arguments on all issues.
ALJ’s Initial Determination
Following the hearing and review of the parties’ post-hearing briefs, the ALJ will issue an Initial Determination (ID) ruling on all contested issues and determining whether there is a violation of Section 337. If a violation is found, the ALJ will recommend a remedy:
- Limited Exclusion Order (LEO): The most common form of exclusion order, LEOs prohibit the importation of infringing goods made or distributed by named respondents.
- General Exclusion Order (GEO): GEOs prohibit the importation of all infringing goods regardless of whether they are sourced from a named respondent. GEOs require additional proofs, including a showing of a widespread pattern of unauthorized use of the asserted IP or a likelihood of circumvention of an LEO.
- Cease and Desist Order (CDO): CDOs prohibit named respondents from engaging in conduct relating to the infringement, such as marketing and selling infringing goods in the U.S.
The ITC has no authority to award damages or attorney fees (other than as sanctions).
Commission Review and Final Determination
The parties may file petitions for Commission review of the ALJ’s ID. Petitions for review of an ID can be filed by any party and must be filed within 12 days after service of the ID (or shorter for certain determinations). A petition must specify as to each issue for which it seeks review (1) that a finding or conclusion of fact is clearly erroneous; (2) that a legal conclusion is erroneous, without governing precedent, rule or law, or constitutes an abuse of discretion; or (3) that the determination is one affecting Commission policy.
The Commission may grant review on some or all of the petitioned issues, or deny review (in which case the ID becomes the Commission’s Final Determination). The Commission’s review is de novo. If the Commission accepts review, the Commission may request additional briefing and the Commission will issue a Final Determination affirming, reversing, modifying, or taking no position on the ID’s findings.
The Commission’s Final Determination is subject to appeal to the Federal Circuit.
Presidential Review
If the Commission issues a Final Determination finding a violation of Section 337 and imposing a remedy, there is a 60-day period during which the President of the United States (through the Office of the U.S. Trade Representative) may veto the Commission’s remedy. Such veto authority has rarely been exercised.
Most recently, President Obama prevented an exclusion order from issuing in 2013 where technology standards were implicated in an investigation involving Apple and Samsung. The administration expressed concern regarding the exclusion of products found to infringe a standard-essential patent and the effect on domestic competition. Prior to that veto, President Reagan blocked an exclusion order in a 1987 patent dispute between Texas Instruments and Samsung over computer memory chips. President Reagan also prevented an exclusion order from issuing in a 1982 trademark case involving certain alkaline batteries that Duracell claimed were being imported through the gray market.
Even absent disapproval, the review by the U.S. Trade Representative can exert pressure on the parties to reach a settlement.
U.S. Customs Enforcement
ITC exclusion orders are forwarded to U.S. Customs and Border Protection (CBP) (part of the U.S. Department of Homeland Security) for enforcement. Importers faced with an ITC exclusion order may seek rulings from CBP as to whether “redesigns” of infringing products are still subject to the exclusion orders.
In 2020, CBP created a new Exclusion Order Enforcement Branch, splitting off the existing Intellectual Property Rights Branch.
Other Considerations
In considering the use of the ITC, it is important to remember some of the advantages and disadvantages of the forum. In general, the advantages include speed of process, the breadth of discovery, the exclusive focus of the ITC’s ALJs on these cases, the lack of need to establish personal jurisdiction for purposes of exclusion orders, and the availability of a nationwide exclusionary remedy enforced by CBP. Moreover, in appropriate cases, a complainant can sue a large number of infringers in a single ITC action and obtain an LEO reaching secondary or “downstream” products of named respondents that incorporate infringing articles, or even a GEO that reaches the imports of additional unnamed infringers.
The disadvantages of Section 337 proceedings include the unavailability of damages or attorney fees, the need to show a domestic industry (not simply ownership of a U.S. intellectual property right), and the involvement of the OUII Staff as an interested and active party. ITC opinions on substantive patent law are also not binding on a federal district court. Because damages are not available at the ITC, complainants often file concurrent cases at the ITC and in federal district court asserting the same IP rights. Parallel district court cases are subject to an automatic stay upon timely request pending the resolution of the ITC case. 28 U.S.C. § 1659.