In response to a petition for rehearing by the intervenors, the US Court of Appeals for the Federal Circuit vacated part of an earlier precedential decision noting the lack of preclusive effect of trademark decisions by the US International Trade Commission (ITC) rendered under § 337. Swagway, LLC v. Int’l Trade Comm’n, Case No. 18-1672 (Fed. Cir., Aug. 14, 2019) (Clevenger, J).

In its original (May 9, 2019) opinion, the Federal Circuit ruled that ITC determinations rendered in trademark-based disputes (such as its determinations rendered on patent issues) did not have any preclusive effect in subsequent district court proceedings (IP Update, Vol. 22, No. 6). In creating a circuit split with the Second and Fourth Circuits, the Court saw “no reason to differentiate between” the effects of an ITC trademark-related decision and a patent-related decision. The ensuing circuit split created a potential for Supreme Court review.

The intervenors (collectively Swagway), which were the complainants at the ITC, filed a combined petition for panel rehearing and rehearing en banc that questioned the preclusion ruling. The Court invited the views of the ITC, which supported the petition for rehearing, arguing that (1) the issue of preclusive effect was not sufficiently briefed to be decided by the Federal Circuit, and (2) the district court should be asked to apply preclusion, not the Federal Circuit, which decides whether preclusive effect should be given to the prior judgment.

In its revised opinion, the Federal Circuit vacated the portion of its original opinion related to the preclusion question.

Practice Note: In its revised opinion, the Federal Circuit did not go so far as to rule that an ITC determination in a trademark case will have preclusive effect in a related litigation. That remains an issue for a district court to address in the first instance