In its landmark decision in TC Heartland, which we discussed in our June 2017 issue, the U.S. Supreme Court placed limits on where a company may be sued for patent infringement. In light of this ruling, entities must carefully determine where to bring their patent suits.
One potential venue that may be appealing to patent holders is the U.S. International Trade Commission (“ITC” or the “Commission”). Pursuant to Section 337 of Tariff Act of 1930, as amended (“Section 337”), parties can file complaints with the ITC relating to unfair trade practices that have been used in the importation of goods into the United States. Various kinds of unfair trade practices can serve as the basis for a Section 337 complaint, including the infringement of statutory IP rights (e.g., patents and federally registered copyrights and trademarks). Other kinds of actionable unfair trade practices include, among other things, trade secret misappropriation, common-law trademark infringement, passing off, false designation of origin of goods, and violations of certain U.S. trade laws.
In terms of remedies, the ITC can grant any one or more of the three following kinds of relief following the finding of a violation of Section 337: a limited exclusion order (“LEO”); a general exclusion order (“GEO”); and/or a cease and desist order (“CDO”). The actual remedies that are granted will depend on the specific relief requested and whether all of the requirements for granting such relief are satisfied.
In Section 337, cases relating to patent infringement, which can involve multiple parties and multiple patents, a complainant must show: (1) the importation into the U.S., the sale for importation, or the sale within the U.S. after importation by the owner, importer, or consignee of the articles; (2) infringement by the articles of one or more claims of a valid patent; and (3) an industry in the U.S. relating to the articles protected by the patent exists or is in the process of being established (the “Domestic Industry Requirement”). Of these three elements, the Domestic Industry Requirement, which has an economic prong and a technical prong in patent infringement cases, often proves to be the most challenging one to satisfy for complainants.
Our international trade-related IP partners have considerable experience in Section 337 matters and are pleased to work with clients to develop strategies for succeeding at the ITC.