"When joining battle gives you an advantage, you must do it."

– Sun Tzu, The Art of War


Defending IP infringement claims before the International Trade Commission can be daunting. Liberal discovery, condensed trial schedules and broad injunctive relief – including authorizing U.S. Customs to seize products at the border – combine to create a treacherous litigation environment. Respondents have strong incentives to seek summary dismissal from Section 337 investigations. As a practical matter, summary judgments (known as summary determinations in ITC parlance) have been difficult to obtain. In recent months, however, ITC administrative law judges (ALJs) have granted summary determinations in favor of respondents, highlighting the potential rewards of putting complainants to their proofs at the early stages of an investigation.

Summary determination in Section 337 proceedings is analogous to summary judgment under the Federal Rules of Civil Procedure. Summary determination shall be granted if "there is no genuine issue of any material fact and the moving party is entitled to summary determination as a matter of law."1 As in the summary judgment context, the moving party bears the initial burden of establishing the absence of any material fact and that it is entitled to summary determination as a matter of law. Once that showing is made, the burden then shifts to the opposing party to "set forth specific facts showing that there is a genuine issue for trial. This evidence must be real and substantial, not merely colorable, and all inferences are drawn in favor of the non-moving party."2

Summary determination motions can be particularly effective where the complainant has the burden of proof such as on infringement, importation (or sale for importation) of the accused products, and domestic industry. Of course, in a patent infringement matter, the need for claim interpretation may pose a challenge to an early summary determination. As the Federal Circuit has observed, under the Supreme Court's decision in Celotex, one need only argue that the adverse party cannot sustain its burden of proof to require the party to adduce evidence to support its claims (or to show specific types of discovery needed to delay resolution of the motion).3

Respondents in Section 337 investigations often are wary of moving for summary determination. A common concern is that putting complainants to their proofs early in the investigation will force them to sharpen their theory of the case. And, because the ITC's pleading rules require significant pre-investigation fact gathering, complainants typically can marshal sufficient issues of material fact to defeat summary determination. But several recent matters suggest that ITC administrative law judges will hold complainants to their burden of producing "real and substantial" evidence of disputed issues of fact, and will grant summary determination in favor of respondents where that burden is not sustained. For example:

  • In Certain Video Game Systems and Controllers, Inv. No. 337-TA-743 (Feb. 11, 2011), ALJ Rogers granted respondents' motion for summary determination on grounds that the "economic prong" of the domestic industry requirement was not satisfied. On review, the ITC reversed the grant of summary determination, posing a set of questions that the parties were to answer as the investigation progressed. Ultimately, after the evidentiary hearing and on review of the ALJ's final Initial Determination, the ITC affirmed the ALJ's determination that the economic prong of the domestic industry requirement was not met.
  • In Certain Drill Bits and Products Containing Same, Inv. No. 337-TA-844 (July 9, 2012), ALJ Rogers again granted respondents' motion for summary determination after finding no material facts supporting importation. Respondents provided declarations and documentary evidence in support of their motion which demonstrated that the only importation of the accused drill bits occurred before the asserted patents had issued. Although complainants disputed those assertions, the ALJ found that they offered no contrary facts. On that basis, the ALJ granted the summary determination. This was affirmed by the ITC.
  • In Certain Dynamic Random Access Memory and NAND Flash Memory Devices and Products Containing Same, Inv. No. 337-TA-803 (August 21, 2012), ALJ Gildea granted respondents' motion for summary determination of non-importation after finding the complainants were unable to demonstrate that respondents were involved in the manufacture, importation, sale for importation or sale within the United States of the accused articles. See also Certain Static Random Access Memories and Products Containing Same, Inv. No. 337-TA-792 (Feb. 14, 2012), where Chief ALJ Bullock granted what seems to have been an unopposed motion for summary determination of no importation.

In sum, these cases will serve as a valuable precedent for respondents seeking pre-trial dismissal from Section 337 investigations. Depending upon the particular circumstances, an early summary determination may be an effective way to call the whole thing off at the ITC.