Under 19 C.F.R. § 210.79, the ITC can issue an advisory opinion “as to whether [a] person’s proposed course of action or conduct would violate a Commission exclusion order, cease and desist order, or consent order.” On November 7, 2016, The Office of Unfair Import Investigation (“OUII”) issued its report in Certain Foam Footwear, ITC Inv. No. 337-TA-567 (Advisory Opinion Proceeding) recommending an advisory opinion that the requesters’ products do not violate the Commission’s remedial orders. Of note, the Staff recommended that the scope of the advisory opinion be limited to the products actually named in the requesters’ petition.

The Case

In 2006, Crocs filed a section 337 complaint alleging infringement of one utility patent and one design patent. Crocs ultimately prevailed and the Commission issued a General Exclusion Order and Cease and Desist Orders. See Certain Foam Footwear; Final Commission Determination of Violation; Issuance of a General Exclusion Order and Cease and Desist Orders; and Termination of the Investigation, 76 Fed. Reg. 43723-24 (July 21, 2011).

In 2016, Double Diamond and U.S.A. Dawgs, Inc. of Las Vegas, Nevada (collectively, the “Requesters”) petitioned for an advisory opinion that their “Fleece Dawgs” footwear without straps was outside the scope of the remedial orders. The Commission instituted an advisory opinion proceeding and, pursuant to the Commission’s pilot program for expedited procedures, referred it to OUII.

In its report, OUII found that strapless shoes could not infringe the claims of the utility patent, all of which required a “strap section.” Report at 11-17. OUII also found that the subject articles did not infringe the design patent, in part based on the lack of a strap. While the Requestors asked for the Commission’s opinion of a number of their products that do not have straps, OUII limited its decision to the specific products listed in the petition, because those were “the only products for which photographs and/or physical exhibits have been provided.” Report at 9. Requesters had not identified any other products “by name and model number, nor ha[d] they offered any evidence, such as product literature, product photographs, design drawings, or declarations, as specifically requested by OUII, that would enable the Commission to consider whether those products fall within the scope of any remedial order.” Report at 11.

The Commission should issue its final decision in late December.

Takeaway

Parties seeking an advisory opinion from the Commission should provide detailed information on all models of the subject articles for which the party is seeking an advisory opinion. OUII appears not to be inclined to simply opine in the abstract about infringement—it wants to focus its analysis on specific products with specific properties.